Corporate & Commercial 09 April 2021

Users Beware #busted

We have all seen hashtags or tags giving another party a ‘shout out’ online.  Likewise, we might share business’ posts to provide a small business with exposure to your individual social network.

Often these ‘tags’ or ‘shares’ are a sign of appreciation and support for a business, and why not contribute some free marketing for a product or service you genuinely like (influencers exempt)?

A trade mark provides the trade mark owner with the exclusive right to use their registered trade mark or instruct others as to how to use their registered trade marks.

So when does your social media activity cross the line into trade mark infringement?

If you are sharing a post online originally put up by the trade mark owner, this does not constitute infringement* (*our comments regarding copyright infringement below).  When you are simply attributing a hashtag, or tagging a trade mark owner in a photo of a genuine product purchased from the trade mark owner this is also not considered trade mark infringement.

Trade Mark Infringement

To establish infringement a trade mark owner needs to ascertain, that they are the owner of a current registered trade mark; and that you are using their trade mark, or a substantially identical or deceptively similar trade mark without their authority.

Possible trade mark infringement could include:

(a) attaching a trade mark logo to a fake product;

(b) changing a logo or registered trade mark and claiming it as your own;

(c) using registered trade marks in paid social media advertising as an illegal distributor; or

(d) having a user name that incorporates a registered trade marks.

Facebook, Instagram and Twitter provide avenues of complaint for trade mark infringement by way of a prescribed form on their websites when an owner is asserting infringement.

For a third party to be successful in blocking or removing your use (and potentially suspending your account) via Facebook, Instagram and Twitter, they are required to provide details of their intellectual property rights and evidence of the infringing conduct.

Facebook, Instagram and Twitter by no means adjudicate a dispute, however if your account was suspended, you would need to apply to Facebook, Instagram or Twitter to have your account reinstated and state you will no longer infringe the relevant party’s intellectual property.

In addition, infringing conduct could invite a trade mark owner to issue a cease and desist letter, which could be the first step in court proceedings.

Courts can issue injunctions against infringing behaviour and award damages, depending on the extent of the trade mark infringement.  In addition, and as one would expect, enforcing infringement through a Court can incur significant legal fees for both Applicant and Respondent.  Where possible, settlement or agreement outside the court room is desirable and asking for legal assistance in these negotiations is highly recommended.

Copyright Online

Copyright is not able to be registered in Australia.  Copyright automatically attaches to text, images and music under the Copyright Act 1968 (Cth).  The categories of protected copyright material include textual material, computer programs, compilations, artistic works, dramatic works, musical works, cinematograph films, sound recordings, broadcasts.

In some instances, even use of 10% of a third party’s copyright requires permission, enabling the copyright owner to establish the terms of use.  Even if you reword someone else’s copyright works, if it uses the essential part of the works, you will need to ask the copyright user for permission.

Under the Copyright Act 1968 (Cth) you have an obligation to credit the author when you use their work, unless the author has agreed not to be credited, or it is not ‘reasonable’ to credit them.

When posting online, beware of using other people’s material and when in doubt, ask for permission in advance.

Melissa Parker.
Melissa Parker Senior Paralegal Corporate & Commercial View profile
Tom White.
Tom White Principal Corporate & Commercial View profile
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