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Challenge to define property rights on social media

Originally published in AdvocateDaily.com

As intellectual property (IP) laws have been around for decades, they are not always well-suited to resolving online IP disputes — and specifically, it is often difficult to assign and define property rights on social media, Toronto intellectual property lawyer John Simpson writes in The Lawyers Weekly.

As Simpson, principal of Shift Law, explains, a number of interesting cases involving IP in social media have been litigated in recent years, mainly in the United States. Issues, he says, have included whether a domain name is property, whether LinkedIn contacts are property and if so, to whom do they belong, and whether trademark rights exist in a Twitter handle.

Disputes over social media-related IP also often arise in an employment context, adds Simpson.

He cites the example of a small business that hires an employee to set up and manage social media accounts for marketing purposes. The employee opens an account in her name and uses her personal network for existing social media accounts to populate the account. Although the employee uses the account primarily to market the employer’s business, she mixes in personal content and the account gathers many thousands of followers who post user-generated content. The employee later moves on to another employer, taking the account with her.

“Does the first employer have a case that it owns the account and the many thousands of followers?” asks Simpson.

“In a case like this, you could expect the court to consider the terms of the employment contract (assuming one exists); the social media platform’s terms of use’ and existing IP law, including trademark law, copyright law and the law of confidential information,” he explains.

Issues, writes Simpson, would include whether the employer’s branding was used in the account, who owns copyright in the content and who owns the user-generated content.

“What can make a case like this so vexing is that these issues were not likely contemplated when the relevant law, the employment contract and even the terms of use came to be,” he says.

Elsewhere, Simpson says Canada’s Competition Bureau has recently adopted guidelines to target the commercial use of “digital influencers” — those who hold sway over large social media audiences.

“Businesses are increasingly keen to leverage that influence by paying these individuals to post favourable content about the businesses’ products and services. As a result, it is becoming increasingly difficult for followers of these influencers to distinguish between paid endorsements and unbiased enthusiasm,” writes Simpson.

He explains that the use of digital influencers to promote products through social media is also bound to lead to IP disputes.

“What if the digital influencer coins a brilliant new slogan or trademark for the product they’re being paid to promote? Who owns it and who gets to register it as a trademark? What if it’s coined by a follower of the digital influencer?” asks Simpson.

Contracts, wills, legislation and administrative guidelines are more likely now to address these kinds of situations, he writes.

However, Simpson adds, “some situations will always require resorting to long-established IP law derived from cases and statutes written long before such situations were even thinkable. For IP litigators, that’s where the fun lies.”

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