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I am delighted to welcome my friend and fellow IP litigator, Brian Wassom, as my first guest poster on the blog. Brian is a partner in the firm Honigman Miller Schwartz  and Cohn LLP, located in and around Detroit, Michigan. Although Brian is not from Tennessee (which we will will gladly overlook), his observations on the use of social media in litigation cut across all geographic lines. Be sure and check out Brian’s excellent website on social and emerging media found at Wassom.com. Without further ado, here’s Brian’s post:

I never cease to be amazed at what people will write in social media–or at how useful some of those posts can be in court.  Even if the substance of your case has nothing to do with social media, every IP litigator owes it to themselves and to their clients to keep an eye on what opponents and their customers are saying online.

Here are just a few examples of how social media has proven useful in trademark infringement cases that I’ve recently handled:

Proof of Service and Willful Infringement
Just a few days ago, I was drafting a motion for default judgment against a local retail business that uses a very close imitation of our client’s trademarks.  These defendants had spent months ignoring our cease and desist letters, then failed to answer our complaint when we eventually sued.  We had proofs of service, but in these situations, I sometimes wonder what other evidence I could point to if the defendants ever disputed that they’d been properly served. It had been awhile since I’d seen the defendants’ Facebook page, so I looked it up. As it turned out, although the defendants had chosen not to fight the lawsuit in court, that hadn’t stopped them from venting on Facebook about us and the lawsuit to their customers.  This began even before their time to answer the complaint had run out! And if their posts were helpful in proving that they had gotten timely notice of the lawsuit, their responses to customers’ comments were even better.  Not only did the defendants say things like “yes, we have just been sued,” but as an illustration of just how serious the matter was, they even described how thick the summons and complaint were! To top it off, they went on to admit that they had been intentionally “putting [us] off” during those months when they were receiving our cease and desist letters.  That should go a long way in showing this to be an “exceptional case” of willful infringement worthy of an award of costs and fees under the Lanham Act.

Evidence of Actual Confusion
Last year, I was drafting a trademark infringement complaint against an establishment that used knock-offs of our client’s well-known trademarks.  Let’s call my client “Plaintiff,” and the infringer “Defendant.” Of course, it was my job to allege facts showing that Defendant’s actions were causing a likelihood of confusion among potential customers as to whether its goods and services were somehow sponsored by or affiliated with Plaintiff.  And one of the most powerful ways to do that is by demonstrating “actual confusion”–proof that a real customer actually did reach that mistaken conclusion. Normally, such evidence is a bear to come by, and requires expensive customer surveys to gather. But now there are entire social media businesses dedicated to encouraging customers to share their thoughts about each and every establishment they visit.  So, on a lark, I looked up Defendant’s establishment on Yelp! Wow.  Not only were there a string of one-star reviews condemning the quality of the place’s goods and services–all of which would be useful in proving other parts of my case, like damages–but I found one review that evidenced exactly the type of “actual confusion” I was looking for.  Specifically, this customer ended her post by saying, “[Plaintiff] should be more careful who it franchises its biz to!!”  The court took note of that and similar evidence when it ruled in our favor.

Proof of a License Breach
Sometimes, social media is where the actual infringement happens.  Another case involved a defendant who was licensed to sell only our client’s products.  But we suspected that they had begun to also sell a competing product side-by-side with ours–which would have been a clear violation of their license. One of the first things I did was find the licensee online–in this case, its Twitter account.  The licensee’s self-description in its Twitter profile still identified our client’s product.  But scrolling through its stream of posts, I found a few tweets from a few months earlier that–sure enough–announced that the licensee had started advertising a competing product as well.  With this evidence in hand, we confronted and quickly resolved things with the licensee.

In each of these examples, social media offered me insights into my opponent’s thought processes and behavior that would have been difficult or impossible to get any other way.  And they came in the form of written statements that were easy to cut and paste right into a brief, pleading, or letter.  I now make it a habit to look up my opponents online in every case, just in case.

Paige’s two cents: This post also raises a good point in prepping your own client for litigation. I always tell my clients not to discuss their case with anyone if I am not present. I now also make it a point to specifically mention the social networking sites discussed here and remind them to keep the matter off Twitter, Facebook, and the like. I also recommend that our business clients keep a close eye on what their employees are putting on the Internet. Have strong and clear social networking policies in place at your business to prevent the disclosure of information that should not be shared. Assign an employee to routinely check your business’ internet presence to avoid just the type of thing Brian was able to exploit in the cases he discussed above.