Social Media Hazards: protecting your brand in an influencers’ world
For many consumers, especially of the millennial generation, the world of retail is inextricably linked with social media. Social media users consume content on Instagram,… Read more
For many consumers, especially of the millennial generation, the world of retail is inextricably linked with social media. Social media users consume content on Instagram, Facebook, Twitter, Pinterest etc. with every expectation that much of the content will be selling to them or otherwise contain items they can purchase, and that they will be able not only to see those items being used, enjoyed or worn by people or celebrities they know and admire, but also seamlessly purchase those items.
Social media has therefore become an indispensable platform for retail advertising, PR, consumer engagement and, ultimately, sales. However, the use of social media and the associated engagement of influencers are not without their hazards. Although the law is to an extent playing ‘catch-up’ with an ever-changing online world and new way of advertising, there are strict rules that curb how both brands and influencers conduct themselves on social media, and laws which are in a retail business’ or influencer’s arsenal if something goes wrong on social media.
In this first of a two-part special focussing on ‘Retail and Social Media’, we look at some of the pitfalls that retail brands and influencers both face on social media and the legal rights on which they might be able to rely to minimise damage. In the next instalment, we will look at the role of social media influencers and the new restrictions and obligations that they and retail businesses face.
Ownership of content on social media
Notwithstanding the casualness with which social media users share, amend, repost and repurpose content online, the default legal position is that the first author of an original work (the photographer who takes a photograph, the writer who writes the content, the designer who creates the drawing etc.) will be the owner of the copyright in it. The copyright arises automatically and gives the owner the right to prevent others from, without consent, copying the work (or a substantial part of it) or communicating it to the public. The main exception to the first author rule is where the creator of the work is in fact employed and creates the relevant work during the course of his/her employment. Then, it will be the employer who owns the copyright.
What this means is that, to the extent that an employee of a retail business creates a post for uploading on social media, that retail business will be the owner of the copyright in the content. However, that of course won’t be the case if the post features content that the employee found online already. That content, for example a selfie taken by an influencer, will be owned by the influencer. Similarly, if a business works with an influencer and encourages the influencer to create and share content featuring the business’ products, then, unless the contract with the influencer provides otherwise, the content produced will be owned by the influencer, as they are not an employee.
Although, in reality, a lot of social media users are more than happy for their photos and other content to be shared and re-posted (they may even positively encourage it, if it’s part of their business model), it should be remembered that the default is that they can object to that sharing if they want. Just because an image is posted online does not mean the owner of it consents to that image being taken, amended, and reused by anyone else on the platform. Just because an influencer is working with a brand does not mean, unless their commercial contract states otherwise, that the influencer licences their copyright works to the brand for their own use, wherever and whenever they want.
A stark reminder of this is where businesses repurpose content for their own websites or accounts without permission; and the original content owner objects. There have been examples of this where photographers have sought to enforce their copyright in images used by business online and demanded cash for the use already made. This is a completely legitimate and reasonable request but takes many social media users – both businesses and individuals – by surprise.
The only parties who have an automatic licence to do pretty much what they want with posted content are the platforms themselves, which insist on this as part of their terms of business. A retail business has no such automatic licence and could be infringing copyright if it reposts or reuses elsewhere someone else’s work; including that of an influencer.
The ‘standard practice’ of giving credit for shared content might placate some users, but legally it’s not enough. The copyright owner has the option to prevent the ongoing infringement, and/or seek financial compensation (effectively, a royalty) for that use.
Influencers and retail brands alike should bear all this in mind when reposting or sharing content, or creating new content using existing images. Best practice is to obtain permission before ‘borrowing’ content.
For a retail business, it’s crucial to provide for wide licences from the influencers in their commercial contracts so that there can be no limitations on re-using their created content, even after the relationship ends. Also think about whether watermarking original content might be a good way of saying to the Insta-community: this is mine; don’t re-share without permission.
Ownership of a brand
It’s not only photos, images and editorial content that benefits from protection online. Brand names – both of businesses and even of popular influencers – remain just as important in the social media space as they are in the real world. Misuse or misapplication of a brand on social media content which is not approved, gives the wrong impression, or is likely to confuse people, can be extremely damaging. However, the legal rights to be relied upon if a brand or trade mark is misused are different to the copyright rights discussed above and may need to be registered in order to be easily enforced.
A retail brand name or trade mark is likely to be the main way in which consumers recognise the business and its products or services. It functions as a badge of origin, with which consumers can associate the business’ ethos and values, the quality of their goods, the usual service levels provided, and many other attributes that a business works hard to become known for. The trade mark is where a business’ goodwill and reputation accrue, providing the mark is used consistently by the business.
As a result, it will no doubt be problematic if that trade mark gets used by a rival business on social media; or if a third party sets up a social media account with a handle incorporating or consisting of that trade mark. Most platforms provide a complaint procedure for such ‘handle squatting’ events, but it’s surprising how difficult it can be to get the usernames transferred, especially without a trade mark registration.
And it’s not only businesses and companies that need to be wary of this. Influencers often also become ‘brands’ in themselves. Even if operating under their own name, soon enough that name effectively becomes a brand: it is an indicator of something bigger in terms of what a consumer can expect or associate with the name, and it would be confusing and potentially damaging of that name were to be used by someone else. An Instagram handle, for example, can quickly become a valuable brand.
The problem is that a name or brand is not automatically protected. There’s nothing to stop someone else copying a name or brand unless or until it is either registered as a trade mark or has been used so significantly in the UK that there is a goodwill and reputation in that name sufficient to give rise to unregistered rights – arising if there would be confusion if someone else used it. Not every brand, especially in its infancy, will be able to establish the latter. Accordingly, a registration is going to be extremely useful.
All retail businesses should consider – at an extremely early stage – what they need to register as trade marks, and in what countries. The house mark or brand might not be enough; product lines or sub-brands might be just as valuable and merit separate protection. For influencers too, it might be advisable to register the name under which they operate: even if that’s their real name, but especially if they’ve adopted a new ‘insta’ name. With trade marks registered, it will be easier to prevent use of a brand or name, or anything confusingly similar, on social media. There will be no need to produce evidence of how well-known and established the name is, or for what. Getting copycat accounts shut down also becomes more straightforward.
Retail businesses should think about including in their influencer contracts appropriate provisions controlling how the influencer can use the brand and associated trade marks. Like any other commercial trade mark licence, it’s important to be specific about the how marks should be used (e.g. correct spelling, the right colourway or logo, in a certain form or size) and how they should not be used (e.g. in any way that might damage or derogate the brand).
Protecting against negativity
Speaking of brand derogation or disparagement, it’s important to remember that not all third party use of a trade mark will be unlawful. Some use of a trade mark or brand is allowed because it’s necessary to compare businesses, discuss or comment on a company or influencer, or to otherwise describe a retail offering, for example. Relying on a trade mark registration will not entitle a retailer to prevent customers from leaving poor reviews that use or refer to the business by their trade mark or brand; nor will it empower a business or influencer to stop trolls posting damaging or derogatory content about them or their brand all over Facebook, Instagram and the like.
In such scenarios, there are other rights that can be relied upon. Depending on the nature of the content, it may be that the content is defamatory. To bring an action for defamation, one needs to establish that the relevant content (e.g. the post) was published in the last 12 months, that what is said is untrue and is likely to lower the target/subject of the content in the minds of right-thinking members of society, and that it has caused or is going to cause serious harm; which, for a business or company, needs to be serious financial harm.
A lot of online content will meet this threshold, but a civil court action for defamation may not always be the way to go. In the fast-paced world of social media, instructing lawyers, identifying and locating the defendant, writing a formal letter and/or commencing and serving proceedings might all prove too slow and difficult. It might also make matters worse, if the recipient of the legal correspondence decides to post that on social media too and the response is seen as ‘over the top’.
It is always important to assess options and work out what the best response in a given context is likely to be. This might include a direct engagement on the relevant platform; a take-down request issued to the platform operator; or just ignoring the post and letting it slowly move down the newsfeed. What is the best reaction will depend a lot on the nature of the content, the identity of the poster, how prolific the poster is or has been, the traction the post is obtaining, and whether there are appropriate PR responses that could neutralise or even profit from the situation. There are many illustrations of businesses capitalising on what could have been a PR disaster by engaging directly with their customers on social media. Equally, there will be scenarios where legal action was entirely appropriate and proved successful.
If social media reactions or comments turn abusive, or start to become distressing, it may even be that things cross the line into harassment. In that context, it is even more likely that civil (or even criminal) action should be considered to bring an end to the trolling, by obtaining an injunction. The Courts have become more and more used to allowing such actions against persons unknown, and granting permission to serve defendants via social media if it proves difficult to identify the real person behind the vitriol.
The matters discussed in this blog are by no means an exhaustive list of the potential issues faced or offences committed on social media. Other rights to consider might be rights in passing off, confidential information, privacy rights as part of the Human Rights Act, or a claim for malicious falsehood. There are also significant advertising regulations which cannot be ignored and apply just as much to social media advertising as they do to traditional print promotions. More on the latter in part two of this Retail and Social Media series.
Kemp Little has advised a number of clients on social media issues, both in terms of putting them in the best possible position to guard against social media risks, and also reacting effectively and promptly to issues if or when they arise. If you have any questions, please do not hesitate to contact
 A recent study cited on www.brandwatch.com/blog/amazing-social-media-statistics-and-facts suggests that 3.2 billion images are shared online each day
 See examples at https://thenextweb.com/socialmedia/2012/04/26/instagrab-vogue-spain-caught-red-handed-on-instagram-with-more-stolen-photos/ and https://petapixel.com/2017/07/13/no-cant-use-photos-brands-instagram-free/