Electronics: Facebook, Instagram, iPhones, and Beyond

Back in 2015, Tesla sued a third-party source for selling fake Teslas. This was a response to a similar lawsuit by Scion, owned by Toyota, that accused third-party dealers of selling non-automated vehicles and therefore being in violation of Telsa’s trademarking rights. One of the central tenets of the intellectual property (IP) defense strategy is the need to distinguish the intellectual property rights held by brand owners from the effects of the products. In Tesla’s case, the defendants were selling counterfeit brands, so the seller was not arguing the utility of the counterfeit brand, but rather the economic damage and consumer confusion.

Unfortunately, these secondary infringement defenses may be losing their effectiveness today because of social media. Basically, brand owners are finding themselves unable to exclude third-party marketers. Consumers will now share information, photos, and purchases without getting permission or realizing the broader implications of their actions. With social media, there are now many brand protection issues surrounding the commercial distribution of content, photos, and products.

Back in 2015, Tesla sued a third-party source for selling fake Teslas.

Consider Facebook’s placement of an ad asking kids for “special” photos for their passport picture. The image is clearly asking for “special” activities, not vacations. What happens if your friends trade dream vacation photos? Could there be any commercial implications or could a federal or state court judge automatically assume that they’re not ads?

More recently, Facebook’s role in sharing family photos from China upset many Chinese users. As China cracks down on information about the alleged existence of Falun Gong (a controversial religious group the Chinese government considers a cult), there was an online petition to have Facebook remove content about it from their platform. The site responded with their standard apologetic comments about transparency and tone.

Ultimately, because of the seemingly unlimited role and ability of Facebook and other social media platforms to generate content and distribute it, many users are getting lost in the branding and commercial opportunities.

Here’s another issue with third-party marketing or distribution: Brand awareness will be much harder to build on social media platforms as a back-door tactic for distributing products and services. If brands such as Netflix (Netflix used a Twitter hashtag campaign in 2014 to promote a quarter-hour short film that came out on Netflix on the same day as many of its television premieres) and Amazon (the creation of a popup store at New York’s Times Square a week before “Mad Men” debuted on Amazon and featuring Steve Buscemi in a guest role) can use social media as a promotional tool, what is stopping other brands from jumping in and doing the same thing?

Not only is this information oversharing, but it is also a signal to other users of the brand that there is something wrong with a brand. Furthermore, if people get the message that “Tim cares about your data,” they will develop “digital allergy” to that brand (competition, familiarity, ethics) that is unlikely to be overcome.

To provide brand awareness, brand owners might want to think of strategies to directly target certain key people who can then spread the message beyond the social media platform to other consumers. A good example of this is IBM’s popular hashtags.

Like electric vehicles, a viable alternative to copyright infringement is the real-world model. Rebranding has the potential to provide clear paths for clear management of these brand violations. The real problem is a societal problem; something that can’t be solved through a legal strategy.

Emily Trevino and Sujeet Kala are attorneys at Van Ness Feldman, a Washington, D.C.-based intellectual property law firm.

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