Brad Frazer, The Daily Record Newswire
Remember the Marlboro Man, that stalwart image of the American west? In addition to his iconic status as a symbol of ruggedness, he was used by the Philip Morris tobacco company to sell millions and millions of cigarettes from 1954 to 1999.
For Philip Morris, the Marlboro Man was the brand behind the cigarettes. And that brand was tightly controlled: If someone printed advertisements or magazines or t-shirts that capitalized on that image without authorization, Philip Morris would act to shut it down-quickly. Philip Morris could do this, in large part, because back in the old days it was hard and expensive to copycat a brand, meaning that the universe of infringers was likely finite and quantifiable, and thus manageable.
Fast forward to the Internet Age. Today, anyone with access to the Internet can find, copy, distribute and exploit for good or evil virtually any brand, photo, symbol, image or logo. For example, assume I wished to print up 100 t-shirts with the Nike Swoosh logo on them to sell at a flea market or on eBay. All I'd have to do is find the image on the Internet, right-click on it, "Save As" the image to my hard drive, print off an iron-on transfer, buy 100 t-shirts on Amazon.com and spend an afternoon ironing the images onto my supply of t-shirts. Total cost: less than $300, and never mind the potential illegality of my actions. Now multiply that by the number of people who have (a) Internet access, (b) a printer, (c) an iron and (d) nefarious intent, and you can see the problem created by the Internet in terms of policing and protecting your brand.
Increased opportunities for mischief like this created by the Internet demand that businesses either adopt a laissez-faire attitude about such misappropriations of their hard-won brands, or adopt the following strategies to increase the odds they can remain sharp and competitive with strong enforceable brands:
1. Be vigilant. Monitor how your business' brands and images and names are being used by third parties on the Internet. You can do this with commercial services like MarkMonitor, or you can use Internet word and image search engines to periodically canvas cyberspace to see how your content is being used. Certain search engines allow you to set up customized "alerts" to send you emails when selected criteria (your names or brands, for example) are used on the Internet.
2. Register your trademarks and brands with the United States Patent and Trademark Office. Although trademarks can exist in the United States without registration as common-law trademarks, registration gives you enhanced remedies against online infringers. Many social media companies and search engines will turn a deaf ear to a plea for help addressing online infringements without a trademark registration.
3. Proactively register Internet domain names that invoke your brands and trademarks before someone else can. You've all heard stories of the guy who went out to check the availability of a domain name and when he went back later to register it, it was gone and he had to buy it back from the interloping registrant. That actually happens, and it has a name: "front running." Thus, to avoid front running, register domains at the same time you search them.
4. Proactively obtain social media usernames, handles and platforms that identify and support your brand before someone else can and preferably before launch. If you are getting ready to launch a new service in 2015 and it's going to be called, e.g., "NewServ," you want to secure the Facebook page "facebook.com/newserv" before someone else can get it.
5. Proactively register your copyrights in the elements of your brand that contain copyrightable subject matter. For example, if your logo is sufficiently creative and could function as a stand-alone drawing or work of art, register your copyright in it (assuming you can prove you own the copyright-but that's a different issue). This will give you the ability to use copyright law in addition to trademark law to enforce parts of your brand elements if they are misused on the Internet.
Remember the converse of this issue is also true: the Internet has spawned multiple new ways for businesses to create common-law trademark rights, and so if you launch a new product or service without being fully cognizant of who might already have common-law rights in the chosen name for your new product or service, you could get sued for trademark infringement within weeks or months of your launch. A trademark search is thus recommended prior to launch.
If you are vigilant and use these mostly very inexpensive tools to monitor, register and enforce your brand elements, you will be well positioned to make sure that consumers find you on the Internet and not your competitors, a scammer or a pornographer, any of whom might be using your brand elements without your permission.
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Brad Frazer is a partner at Hawley Troxell, where he practices Internet law, publishing law and copyright law. He is a published novelist and a frequent author of Internet content. He may be reached at bfrazer@hawleytroxell.com.
Published: Tue, Feb 17, 2015
