Page 3 - Intellectual Property

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Intellectual Property | MONDAY, APRIL 4, 2016 | S3

IT CAN TAKE YEARS TO DEVELOP

A GREAT IDEA, BUT ONLY

MOMENTS TO LOSE ONE.
Trademark owner must pre-approve all advertising

incorporating the mark. Licensor has a period
of 10 or 15 days to approve it. Today, the use
We know how deeply you value your ideas—the care and
concern with which you’ve helped them grow. Which is why we of social media by businesses to advertise their
dedicate ourselves to safeguarding your intellectual property.
goods and services has made a 10-day window

Your job is to have ideas. unworkable.
Ours is to preserve them.

advertising may damage the goodwill and obtaining prior approval of the licensor.

reputation of the trademark owner’s brand. In either of these scenarios, the licensor
If the licensor does not exercise control would reserve the right to delete tweets
over advertising, she may find that a and delete or amend posts at any time.
thoughtless or disgruntled licensee has The reality is that by the time the licen-
published content that is inconsistent with sor becomes aware of an unsuitable use of
the image the trademark owner wishes to her mark, the tweet or post may have been
convey or, worse, tarnishes the brand. A read, forwarded, retweeted or saved by
licensee may also post content that inad- thousands of people. There is no practical
vertently infringes the trademark rights or way to avoid this. One way to deal with the

the rights of publicity of others, thereby problem, however, is to also have a provi-
exposing the trademark owner to litigation sion in the agreement that the licensee will
and potential damages.
be in material breach and liable for dam-
To prevent these problems, most license ages if the licensor has to rectify a licens-
agreements provide that the trademark own- ee’s social media activity more than three
er must pre-approve all advertising incorpo- times in a given time period. Provisions
rating the mark. The licensee must submit like this should provide some incentive for
cozen.com
all proposed advertising to the licensor, who a licensee to be mindful when it uses the
has a period of time to approve it, typically trademark in social media.

10 or 15 days. This system works well for A licensor should regularly review the
print, radio and television advertising
Internet and her licensee’s social media
Today, the use of social media by busi- sites, so that she can shut down a problem
nesses to advertise their goods and servic- as soon as possible. She should enroll her
es has made a 10-day window unworkable. mark in a service like Google Alerts that
Licensees want and need to have the ability will notify her when her mark appears on
to communicate with their customers using the Internet.
the media preferred by those customers. One of the beneits of social media is EXPERIENCE THE NEW LAW.COM

Five years ago, having a website was a that it allows the licensor the opportunity
necessity. Today most licensees want to to conduct due diligence before signing up
promote their business using Facebook, a licensee. The licensor should review the
Twitter and Instagram. The backbone of social media accounts of every potential
those systems is that they operate in the licensee. This will give the licensor the
“now,” not the “10-days-from-now.”
opportunity to evaluate the licensee’s past
This evolution in the way businesses use of social media, and the advisability of
advertise their goods and services has led allowing the licensee to use the licensor’s
to an evolution in the way licensors imple- trademarks without prior approval.

ment quality control over their licensees. It Licensors and licensees can use a com-
is unlikely that most licensors are available bination of the above methods to address
24/7 to instantly approve all requests by a the goals of utilizing social media to maxi-
licensee before the licensee posts or tweets mize sales and allowing the licensor the
something in social media. Licensors are necessary control to maintain the good
struggling to accommodate this new reality. will and value of her trademark. As social
The challenge is to devise a system that media continues to evolve, licensors will
allows licensees to engage in day-to-day need to continue to ind creative solutions
interaction with others via social media, to maintain quality control over the use of

and gives the licensor the ability to control their marks by licensees.
the goodwill and quality of her brand.
One solution is to dramatically shorten PERFECT YOUR PRACTICE
the pre-approval window for social media
advertising. A licensor may require a licens- READER’S SERVICES
ee to submit any potential posts or tweets For subscriptions and to purchase back issues, Law.com introduces national and regional news by practice area,
to the licensor. If no rejection is received by from the ALM sources you trust. With real time news, powerful
the licensor within 24 hours, the licensee call 1-877-256-2472.
For questions regarding reprints and permissions, insights, and expert contributors, it’s the perfect way to explore
may post the content. If licensees ind this call 877-257-3382, e-mail [email protected],
the news that matters to you.
system unworkable, another solution is to or visit almreprints.com.
eliminate the need for pre-approval in cer-
tain situations. The licensor may agree that To track calendar and motion information
the licensee can use Twitter and Facebook for individual cases, call MA 3000 at 212-457-4988.
to advertise the licensed services without
Send decisions of interest to [email protected]