"Brandjacking"! Is your brand safe online?

With the ever increasing use of internet for business, trademark brand names are being assaulted from all angles online. “Brandjacking” is an activity whereby someone acquires or otherwise assumes the online identity of another entity for the purposes of acquiring or altering that person's or business's brand reputation or equity. This is usually the use of brand images, names, and other identifiers to trick customers, and involves techniques such as search engine manipulation, PPC (pay per click) scams, cybersquatting, counterfeits, piracy, phishing, malware, and traffic diversion.

In the social networking arena, a “brandjacker” may attempt to seek to damage the reputation of the target brand for malicious or political reasons, which may or may not be directly financial, but the resulting effects on the target brand holder may often have adverse financial implications – eg, negative publicity may result for a corporation in lost sales or a reduced share price, or for a sportsperson, it may result in the termination of a lucrative sponsorship deal.

At a recent seminar presented by Professor Lisa Ramsey (Professor of Law, University of San Diego) and hosted by the University of Melbourne’s Centre for communications and media law (CMCL) and Intellectual Property Research Institute of Australia (IPRIA) it was discussed whether trademark infringement laws should apply to the unauthorised use of trademarked brand names on Facebook™, Twitter™, and other social network sites?

Professor Ramsey discussed how in the US, it is currently unclear whether infringement laws apply if the “brandjacker” is not advertising or selling goods or services, since there is a requirement for “use in commerce” of the mark for infringement provisions to apply. In the US there must also be a balance of free speech interests (ie first amendment) when deciding whether trademark infringement laws apply, and it is generally considered that where a trade mark is being used in parody, satire, criticism, comparative advertising, news reporting, and other commentary on the social network sites and there is no confusion about the source of this expression, this expressive use of the mark should be outside of the scope of the US trademark infringement laws.

Australia will soon be facing these same issues, if its not already, so watching how the US deals with this will be really interesting.

UWS Innovation &Consulting (ip@uws.edu.au) advise our staff and students in this area. Others can find Professor Ramsey’s full discussion paper at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1498557