Injunctions in the age of digital media
What should be the right scope of an interim injunction where a trade mark is infringed on social media? And how careful do you need to be of using third party trade marks in ad campaigns?
Frank Industries is a ladies' sportswear brand based in Australia. It holds UK and EU trade marks consisting of upper-case letters ‘LNDR’. In January 2018, Nike launched its “Nothing beats a Londoner” campaign, in which it used the ‘LDNR' sign alongside its famous Nike Swoosh. Frank Industries issued a claim for trade mark infringement under the Trade Marks Act 1994 and the EU Trade Mark Regulation (2017/1001), as well as a claim for passing off. It also applied for an interim injunction to restrain the alleged infringing acts.
At first instance, the Intellectual Property Enterprise Court granted a prohibitory injunction, as well as a mandatory injunction requiring Nike to, within 14 days, "take all reasonable steps to delete the signs LDNR…from social media accounts within its reasonable control" – including Twitter, Instagram and YouTube. The Court directed an expedited trial, and on this basis the duration of the interim injunction was limited to four months. Nike appealed the injunction.
The Court of Appeal's decision was two-fold.
The prohibitory element of the injunction was upheld. The Court agreed with the analysis that there would be a serious danger of the public associating Frank Industries' goods with Nike's business – potentially causing Frank Industries irreparable harm and loss of goodwill. Conversely, the removal of the 'LDNR' mark would not unreasonably hinder the running of Nike's campaign. The mandatory element of the injunction, on the other hand, was reversed. The Court considered the order to be burdensome, in particular when considering the intricacies and mechanisms of each social media platform:
- YouTube – re-editing the video to remove the marks would entail reposting with a different URL and the loss of millions of comments, links and shares. Nike should instead use YouTube's facility which allows the infringing sign to be blurred and the rest of the video to remain intact;
- Instagram – deleting posts would result in the disappearance of the whole online conversation and comments. Instead, Nike was ordered to archive existing posts (meaning they would remain in existence, invisible to the public but ready to be resurrected in case of a pro-Nike outcome at trial) and refrain from further posting; and
- Twitter – removal of a post would lead to the loss of the post itself, all likes and re-Tweets and would "deprive Nike of the benefit of the continuing conversations between young Londoners". To delete existing Tweets would have irreversible and far-reaching consequences for Nike. Accordingly, Nike was ordered not to use the mark in future Tweets – but historic Tweets featuring the sign could remain on Nike's Twitter feed.
Why is this important?
In this case, the Court of Appeal had to navigate uncharted legal territory – striking the balance between providing the trade mark owner with adequate injunctive protection until the date of trial, but equally avoiding a detrimental effect to the alleged infringer's social media presence. Most brands today would agree that social media is an extremely powerful weapon in the marketers' arsenal – more than simply a tool for communication, and rather a platform for public discussion and interaction between business and consumer. The Court of Appeal seems to have understood the value of social media and deemed it worthy of protection. In particular, it provided practical and savvy alternatives to the High Court's suggested outright deletion of posts.
Any practical tips?
Though there is now a greater appreciation of the power of social media in the courts, it is still a new and evolving technology. Businesses who engage in social media marketing should be warned that the solutions reached in this fact pattern may not be applied consistently, and a fair balance between the interests of the rights owner and of the alleged infringer may be difficult to achieve in the context of the digital sphere.
This decision also serves as a reminder that the Intellectual Property Enterprise Court, despite being seen as a simpler and more accessible forum, can (and will) impose injunctions – with potentially serious consequences.
Finally, remember the dangers of including third party trade marks in your advertising – whether deliberately or not (noting that Nike used a variation of Frank's 'LNDR', with 'LDNR' instead). Perhaps above all, the case reminds advertisers of the dangers of civil action on digital campaigns – namely the potential of disruption of social media activity, including the possible deletion of long-running feeds and conversations on Twitter, Instagram etc.