With 313 million monthly active Twitter users and more than 1.7 billion active Facebook users, social media platforms have become powerful tools for intellectual property to be shared online. Because of this, individuals and companies must think carefully about how they share their own content and the content of others.
Inside Counsel recently sat down with Dale Cendali and Claudia Ray, partners at Kirkland & Ellis, a nationally recognized provider in the IP litigation space. Cendali has successfully litigated and tried numerous high-profile cases, and has argued before the U.S. Supreme Court. Her practice involves copyright, trademark, false advertising, patent, Internet, and trade secrets law, as well as defamation, the right of publicity, privacy, complex contract disputes. Ray represents clients across industries, including entertainment and media, financial services, technology, and consumer products, in litigation, arbitration, and administrative proceedings involving copyright, trademark, Internet, contract/licensing, and trade secret issues.
When it comes to social media and the Internet, just because the content is posted on social media does not mean that normal rules of copyright do not apply, according to Cendali. Frequently, using someone else’s copyrighted content without permission can be copyright infringement, although there are defenses such as fair use.
“Social media gives us more opportunities to use people’s names and likenesses: a person’s name can be a Twitter handle, the profile name of a Facebook page, the name of a YouTube channel, or in the title of a smartphone app,” she said.
Today, businesses get excited when a celebrity is photographed in public using its products and want to share that image. This could implicate an individual’s right of publicity, which is a state-law based claim that concerns a person’s right to control the commercial use of his or her name and likeness.
“One of the challenges of IP on social media is that social media moves quickly,” said Ray. “If someone shares copyrighted content, other individuals or businesses will often seize on that content and re-share or redistribute the content. It can become difficult to control the infringement after the content has been widely distributed.”
Cendali shared some tips for people when it comes to IP on social media. The Terms of Service sections of different social media platforms can provide you with some flexibility--typically, however, within only that platform.
“For example, when the copyright holder posts a video or other content on Twitter, the copyright holder grants Twitter and others a license to retweet the content,” she explained. “Using hashtags that include a company’s trademark in a way that is likely to cause confusion among consumers may constitute trademark infringement. There is, however, an ability to use someone else’s trademark for purposes of criticism or parody, and in those situations, confusion is unlikely.”
There are several examples of IP litigation cases in social media as of late. In the Public Impact, LLC v. Boston Consulting Grp, Inc., case for example, the plaintiff owned a registration for the mark PUBLIC IMPACT. The defendant created a not-for-profit foundation called the Centre for Public Impact and used the Twitter handle @4PublicImpact and the hashtag #publicimpact. The court granted the preliminary injunction in part enjoining the defendant from using both @4publicimpact and #publicimpact, because the use of the phrase “public impact” without the terms “Centre for” or “A BCG Foundation” created confusion, according to Ray.
In addition, the Lenz v. Universal Music Corp. case stands for the idea that copyright holders must consider fair use before issuing a takedown notice, according to Cendali. Lenz videotaped her children dancing in their kitchen while Prince’s song “Let’s Go Crazy” played in the background for approximately 20 seconds and uploaded the video to YouTube.
“Universal owns the copyright to the song and sent a takedown notice to YouTube. YouTube removed the video. Lenz sent YouTube a DMCA counter-notification pursuant to 17 USC 512(g) asserting that her video constituted fair use of ‘Let’s Go Crazy.,’” she explained.
Lenz filed suit against Universal alleging misrepresentation under 512(f) and sought a declaratory judgment of non-infringement. The court held that the DMCA requires Copyright holders to consider whether the potentially infringing material was fair use before issuing a takedown notice. An allegation that a copyright owner acted in bad faith by issuing a takedown notice without consideration of the fair use doctrine is sufficient to state a misrepresentation claim pursuant to the DMCA.
And lastly, in the Heigl v. Duane Reade, Inc. case, actress Katherine Heigl was photographed in March 2014 near a Duane Reade store in NYC by local paparazzi. Duane Reade's marketing department secured the photograph, and then posted it on Twitter and its Facebook account with captions advertising the store. The Tweet said “Love a quick #DuaneReade run? Even @KatieHeigl can't resist shopping #NYC's favorite drugstore.”
Ray said, “Heigl filed a complaint seeking $6 million in compensatory and punitive damages. The parties settled for a mutually beneficial amount. Duane Reade agreed to donate a sum to an animal welfare charity as well.”