Celebrity endorsements can be a powerful tool to strengthen a brand’s reputation and recognition with consumers. However, trying to steal or borrow a celebrity’s limelight without permission can be a costly mistake, as an aged-care company that used Ita Buttrose’s image recently discovered.
The media doyenne and former Australian of the Year last year sued The Senior’s Choice and its director Andrew Philpot, arguing that they illegally used her image and content from an ABC interview on their website and SEEK page to promote their business. Ms Buttrose, the National President of Alzheimer’s Australia, claimed that she suffered loss “to her very substantial and reputable” public standing after The Senior’s Choice failed to pay her $75,000 endorsement fee.
In the Federal Circuit Court, Judge Jones found that Senior’s Choice had no prospect of defending their claim and that the conduct constituted misleading and deceptive conduct under s.18(1) and s.29(1) of the Australian Consumer Law, as well as copyright infringement and passing off. Senior’s Choice was required to pay Ms Buttrose’s legal fees, which were rather extensive (Buttrose & Anor v The Senior’s Choice (Australia) Pty Ltd & Anor  FCCA 2050).
Philpot said that The Senior’s Choice had been “steamrolled” by the decision, and suffered a significant financial loss from a mistake they claim was unintentional. The decision stands as a strong warning about the risks of linking brands to celebrities without their permission.
Other celebrity cases:
There are many examples of brands or companies getting into trouble for claiming that they have an affiliation with a particular celebrity or using images of celebrities without permission.
Famous legal examples include Hogan v Koala Dundee Pty Ltd (1988) 83 ALR 187, which involved a company registered as ‘Koala Dundee Pty Ltd,’ deriving their name from the hugely popular film ‘Crocodile Dundee’. The company used the name ‘Dundee’ and an image of a koala wearing a bush hat and sleeveless vest, and holding a knife similar to Paul Hogan’s character in the famous films. The judge held the range of merchandise was “strongly reminiscent of Hogan’s role in the film” and that Koala Dundee passed it off as being in connection with Crocodile Dundee when no such association existed. The company was ordered to cease using the name immediately.
Another well-known example involved the prominent rugby player Andrew Ettinghausen, who brought a defamation action against Australian Consolidated Press (ACP) for publishing explicit nude photos of him without permission. ACP-owned magazine GQ obtained images of Ettinghausen showering the dressing rooms, taken by a cameraman with backstage access, which showed Ettinghausen’s genitalia. Without his knowledge or approval, GQ published the photos, alongside text which implied that the publisher had obtained permission to take the photographs of his genitalia for the purpose of widespread distribution. A jury found ACP guilty of defamation and Mr Ettinghausen was awarded $250,000 in damages. (Ettingshausen v Australian Consolidated Press Limited  NSWSC 176 (28 December 1995).
Earlier this year actress Katherine Heigl sued a New York pharmacy chain who retweeted a photo of her carrying shopping bags with the pharmacy’s logo on them. Duane Reade’s tweet read: “Love a quick #DuaneReade run? Even @KatieHeigl can’t resist shopping #NYC’s favourite drugstore” with the paparazzi’s image attached. Ms Heigl sought $6 million in compensatory and punitive damages for the use of her image in an advertisement without her permission. In August the two parties came to a mutual, confidential agreement which reportedly required Duane Reade to donate to a charity founded by Ms Heigl.
Lessons for advertisers
Star power can put your brand firmly in the spotlight, but as the above examples (and many others!) demonstrate, brands that use celebrities or their images without permission expose themselves to a wide variety of legal risks.
In particular, brands should be aware of the risk of misleading and deceptive conduct and the tort of passing off. While for the majority of people the simple use of their image in connection with a brand or product is unlikely to be misleading or deceptive, where the person is a celebrity or a well-known endorser of products, falsely suggesting that they have endorsed a brand or product or that there is a connection that does not actually exist has the potential to land advertisers in hot water.
Brands should also be aware of the copyright issues that may arise if an image of a celebrity is used without the permission of the copyright owner, while actions for defamation may be available to celebrities if a brand’s use of their image or likeness exposes them to hatred, contempt or ridicule, causes them to be shunned or lowers the public’s opinion of them.
Using celebrities in advertising can be a legal minefield, so if in doubt make sure you get the proper legal advice so you can keep the spotlight on your brand for the right reasons.
From Cadbury’s purple to Tiffany & Co’s robin egg blue, distinctive colours have become synonymous with the brands they represent. Branding – in particular colour – is a powerful form of consumer recognition and brand distinction. Thus, the legal protection of colours has on a number of occasions become a hot-headed issue as companies aggressively try to protect their brand identity from competitors. The issue of whether you can trademark a colour arose again recently when British Petroleum (BP) tried to trademark a shade of green.
When can you trade mark a colour?
Trademarking of colours has traditionally been a shady area, with resistance from authorities to recognise them as the legal property of a brand. To use a colour as a trade mark, the colour must be specifically identifiable with a company’s goods or services and distinguishable from others. Just as authorities won’t grant a monopoly on words or expressions which are likely to be needed to describe goods and services, they are unwilling to do the same for colours. IP Australia, the body who regulate trademarks, has stated that a single colour “will generally be regarded as being devoid of inherent adaption to distinguish.” Thus, it requires continual use (as a trademark), colour recognition by consumers, and distinct parameters of use for colour trademarks to be granted. We’ve outlined some examples of where the trademark of colours has been successful, and where it has failed.
BP Green with Envy:
IP Australia rejected BP’s application in July this year to trademark a shade of green known as Pantone shade 348C. BP faced resistance from Woolworths who hold a trademark for a similar colour for their well-known apple-shaped logo. IP Australia said that if the colour was used alone it would fail to be distinguishable and was not indelibly linked in the average petrol consumer’s mind to BP. Just think, would you recognise BP’s shade of green if it wasn’t accompanied by their brand name or logo? The finding concludes 12 years since BP original filed for the colour trademark in Australia. However, BP has successfully obtained colour trademarks for the same shade of green in the United Kingdom and Europe.
Other Trademarked colours:
In Australia and abroad, there have been companies which have successfully trademarked their colours. Here are a few examples:
Fada bananas, the supplier of ecologically-grown bananas, successfully trademarked their distinctive red wax tip. The ecologically grown bananas were held to be recognisable to consumers and easily distinguished from traditional bananas. Whilst this isn’t an example of colour per se, it reflects how the distinct use of colour can be trademarked.
Louboutin successfully trademarked their famous red soled high heels in the USA after a long uphill battle with reluctant courts. The exception to the trademark is for other shoes which are monochromatically red and wish to include a red sole.
Cadbury successfully trademarked their distinct purple shade, Pantone 2685C, in the UK in 2012. The British colour trademark emerged as Cadbury were embroiled in an Australian litigation against competitor Darrell Lea. The five year litigation ended in 2008 when the Federal Court held that Darrell Lea had not breached the Trade Practices Act or engaged in misleading or deceptive conduct by using purple. The Court noted that a “cause to wonder” is not adequate to amount to misleading or deceptive conduct, and the name Darrell Lea on a purple chocolate wrapper could not confuse a consumer to thinking it was a Cadbury product. The colour purple was never used in isolation without some branding or script, allowing other competitors, such as Darrell Lea and Nestlé for Violet Crumble bars, to use other shades of purple. In Australia, Cadbury was not able to trademark the colour purple in general, however it was able to protect the specific shade it has used on its packaging since 1914.
Telstra was unable to trademark the word “YELLOW” for their online telephone directories, as competitors or other traders would use the word honestly and commonly for similar phone directory products. The Federal Court of Australia emphasised that they would not grant monopolies lightly, and in the circumstances of Telstra it was not appropriate.
Caterpillar Inc, known for their tractors and other agricultural equipment, were able to trademark “Caterpillar yellow.” The difference here was the distinct colour not closely associated with the agricultural machine industry, and the bright yellow shade was accompanied with the brand name Caterpillar. Of course, the trademark only limits other machinery companies from using the same or a similar shade, not an overall ban on the use of yellow.
Other trademarked colours include Barbie pink, UPS brown and Tiffany blue. The trademarking of colours limits the protection to competitors in the same industry and therefore the companies discussed do not hold the boundless exclusive rights to the use of the colour. An application to legally trademark a colour will be an uphill battle for any brand with high evidentiary burdens and an overall reluctance to monopolise the use of colours. It’s important to remember that each case will turn on its own facts and factors such as the combination of distinct colours will more likely be successful. Therefore it is always favourable to take a vigilant approach when branding or rebranding as competitors will seek to protect their brand identity. Choose colours which are not closely associated with competitors or with the product itself, or use a distinct combination of colours. The failure to think about competitors and trademarks may result in expensive and time-consuming litigation, regardless of whom the Court holds as the winner.
For any questions you may have in relation to brands and trade marks, please feel free to give our team a call: 02 8221 0933.
Firm principal Stephen von Muenster recently attended Mumbrella’s CommsCon on 20 March 2014. He presented a question and answer session on ‘Managing Risk: How to keep your brand on the right side of the law.’
During this session, Stephen was asked questions relating to a number of legal areas. Below are some key take outs from the session.
I run a small PR agency. When I help a client get great publicity in the newspapers, I sometimes scan in the clippings and put them on our website, and also send them a copy. I’ve heard I could get into trouble for this. What should I do?
• Copyright protection automatic and applies to editorial works if there is a reproduction of a substantial or important part of an original work
• No copyright in linking to the article; no copyright in simply the headline of the article
• For reproduction in full, including on the Internet, get a licence from Copyright Agency Limited (CAL) for the use as this is a collecting society that manages a number of publishers’ interests
We look after a client’s Facebook page. Sometimes the public say some pretty offensive things in the comment thread about the brand, or other people. If it’s libellous are we liable?
• Under Defamation Acts (2006) defamation can occur where one person publishes content [words, sound, video, images] that damages reputation of another identifiable person
• Liability for defamatory publication can extend to a brand where the brand is able to exercise control over a publication, there is knowledge of the publication and there is a failure to prevent or remove the publication by a third party, eg on a brands blog or Facebook page etc
• Have clearly stated community guidelines and netiquette outlawing personal attacks, vilification and defamation. Such comments would also be a breach of Facebook’s Rights & Responsibilities
• Actively moderate or review blog postings / comments and remove those that breach community guidelines or rules of social media site – do not rely on users to tell you
• Remember the case of Federal Court decision in Seafolly Pty Ltd v Madden highlights social media legal media risks in the areas discussed above, including:
o Misleading & deceptive conduct
o Injurious falsehood
o Copyright infringement
I help run the social media community for several of our clients. Are there any implications of the changes to the privacy laws in how I share any information we gather?
• You need a compliant collection statement at the point you collect personal information
• All direct marketing via ANY channel (including banners and social) that uses personal information needs to comply with APP 7 (direct marketing)
• Direct marketing can be via any channel including:
o Email – eg using personal information provided by customer in the course of signing up for a loyalty program
o Online advertising – including targeted advertising when browsing
o Social advertising – eg facbook user ID’s, displaying an ad on social media to an individual using personal information (including data collected by cookies dropped as a result of the individuals site visits)
I’m about to change agencies. I’ve got a great relationship with a couple of clients, and I think I can persuade them to come across. I also happen to know that the contract is up soon. Are there any risks in getting involved in bringing them in?
• Comes down to your contract
• Usually we see non-competes and non-solicits
• Non compete means you cannot work for a competitive business but these are difficult to enforce against employees who need to earn a living in their chosen profession – unreasonable restraining
• More enforceable if can be proven are the non-solicits of clients of the former agency or employees of the former agency
• Also need to consider confidential information and IP issues that arise in employment contracts
I’m tired of training up staff, then just as they are becoming useful they get poached for more money and move to a rival. Is there anything I can do to stop them from working somewhere else?
• Pay them more money
• Bonus incentives tied to loyalty and staged payments
• Enforce non-solicits if applicable
I’ve had a great business idea. But I did some of the work on it during my lunchbreaks. If I go out on my own can my employer claim they own the idea?
• Need to check your employment contract to see if there is anything said as to what is “during the course of employment”. It may cover lunchbreaks particularly if you are using company assets eg computers, resources etc to develop your idea.
• Need to consider if the ‘idea’ is IP – if it is something protected by copyright and it is in the course of employment then agency will own the IP
• If it is an idea only it may be protected by employment contract and the common law obligations of confidence that an employee has to his or her employee
• Best to come up with your ideas at home out of work duty hours and only tell your employer of your idea if you agree with them up front that you own it at this stage
A relationship with a client ended badly. They haven’t paid their bills for the last three months, claiming they got no results. They had unrealistic expectations. They owe us about $20k. Should I sue?
• Depends on the circumstances of course. There may be legitimate dispute here.
• If they never raised any concerns prior and now conveniently, after the relationship ends and you have issued final bills, they say they did not get what they paid for, they may find it hard to defend.
• Statutory demand is a possibility
• Always get legal advice
We are always happy to answer your questions. Please contact us on (02) 8221 0933 or via email@example.com if you have any further queries.
Both the fashionably and legally inclined watched on last week as Australia’s most fashionable case unfolded in the Victorian Supreme Court.
Retail giant Myer originally toted Sydney-based designer Kym Ellery to court in January over a breach of contract, after the 29 year old entered a deal with its rival, David Jones, in November last year. Myer sought to enforce a three year exclusivity clause, which was allegedly breached 18 months into the contract. In response, Ms Ellery’s legal team argued that the contract was a restraint of trade.
The clause in dispute prevented Ms Ellery from supplying her clothing to any other Australian retailer with 15 or more stores. However, the contract allegedly did not oblige Myer to buy Ms. Ellery’s designs, leaving the designer in a potentially sticky financial situation. Whilst it seemed like a big corporate retailer bullying a little designer, it was actually another round of the Myer / David Jones war in disguise.
Like a fly in a fashionable web, Ms Ellery was confronted with a tough decision after signing with David Jones. According to a number of sources, Myer revised its original $187,000 agreement with the designer, offering her $1.5M to remain exclusive. However Ms Ellery’s legal team revealed that the offer was fashionably late and it would have cost the designer more to breach her new contract with David Jones than to breach the original agreement with Myer or even accept its revised offer.
Myer had previously sought injunctions to prohibit Ms Ellery’s designs from appearing at the David Jones launch earlier this year, but later dropped its application. The store had also dumped the designer from judging its Fashion on the Fields competition around the time the David Jones contract was signed.
The fashion show court proceedings ended last Tuesday in an anticlimax for spectators, with the parties reaching an out of court settlement. It’s apparently a win-win situation: Ms Ellery is to pay Myer’s legal costs and will continue stocking both department stores. This case serves as a chic reminder that sometimes disputes are best settled off the runway out of court, as the legal uncertainties can often result in unanticipated financial and reputational consequences.
Stephen von Muenster, Principal at von Muenster Solicitors & Attorneys, will present at the Communications Council Social Media Legal Seminar & Launch of Social Media Code of Conduct.
The presentation will discuss the potential issues, opportunities and pitfalls agencies and brands might face in the developing communications landscape. Stephen will also discuss the need to manage your risk and be aware of your legal and ethical accountability, along with providing tips on legal compliance in the social media space.
This seminar is particularly pertinent given the recent ruling from the Advertising Standards Bureau on the use of Facebook as an ‘advertising medium’. You can find out more about this issue and recent changes in the regulatory landscape here.
The sold out event is being held at the Surry Hills Library on Monday, September 10. A second seminar will be held on September 27 at the same venue from 5:00pm click here to book a ticket.
The industry has been abuzz with the ruling from the Advertising Standards Bureau (ASB) that content on a brand’s Facebook page is considered to be advertising and/or marketing communications. Many of our clients have been calling to enquire about the consequences for the industry and how the ruling may impact their or their clients’ Facebook pages.
The decision by the ASB is in line with a decision of the Federal Court in 2011. In Australian Competition and Consumer Commission v Allergy Pathway Pty Ltd (No 2)  FCA 74 the Federal Court held that health company, Allergy Pathway, was liable for postings of third parties in social media because it had control over its social media pages, knew that misleading testimonials had been posted on Facebook and Twitter, and took no steps to remove them.
The recent determination of ASB regarding Diageo’s Smirnoff Facebook page has extended the reach of the Federal Court decision by stating that provisions of the Advertiser Code of Ethics (the Code) apply to an advertiser’s Facebook page and to content generated by advertisers, as well as material or comments posted by users or friends. The ASB found that a Facebook page falls within the definition of advertising and marketing communications under the Code and is not merely a networking tool used by existing customers.
In a decision of the ASB on the same day as the Smirnoff decision, the ASB found that the VB Facebook page had breached various provisions of the Code. Again the ASB found that the Facebook page was a marketing communication tool and that the provisions of the Code applied to content created by VB as well as content posted by users or friends. Importantly, the ASB noted that the VB Facebook page user comments, identified in the complaint, were posted in reply to questions posted by VB.
The above decisions closed a perceived loophole, which allowed brands to benefit from social media without accepting responsibility for content posted by advertisers or customers on Facebook, which would have otherwise been inconsistent with the Code or a breach of the Competition and Consumer Act 2010 (Cth) (the Act). In particular, s18 of the Australian Consumer Law in Schedule 2 of the Act, prohibits misleading or deceptive conduct.
In an article published by the Canberra Times, the Australian Competition and Consumer Commission (ACCC) backed the determination of the ASB. The competition watchdog sent a warning to large companies with a wealth of resources at their fingertips – if comments are not removed within 24-hours then the company will face potential court action.
If the ACCC’s past modus operandi is anything to go by, an ACCC prosecution of a large company who has not obeyed the ACCC stated view will usually follow.
While the ASB has so far refused to issue specific guidelines on social media policy, here at von Muenster we expect that the ACCC will release industry guidelines in the near future.
What does all this mean for agencies and their clients?
Community managers will now have to be vigilant in monitoring their social networking pages to ensure that all content posted by any person is not in breach of the Code or in contravention of the Act. It will on a case by case basis be necessary to moderate, respond to or even remove content posted by a brand’s Facebook page users. Community managers should also undertake training on the requirements of the Code and the Act to ensure they are able to identify posts by third parties which may be problematic. This training should not just be linked to infringements under the Code or Act but also other applicable laws, including defamation, copyright, trademarks, causing offence and racial discrimination.
It is difficult to provide a precise formula or guide as to what content or posts should be left, moderated or removed. Different rules apply under the self-regulatory Code and applicable laws, such as the Australian Consumer Law which forms part of the Act. Each situation turns on its own facts and circumstances, and often one will have to consider numerous factors, including the nature of the Facebook page and the advertiser; the nature of the products; the audience that is engaging with the Facebook page; the effect of other related marketing communications; and the overall context. It will be important to seek legal advice on a case by case basis if unsure.
At the end of the day, a commonsense approach will need to be taken. If a post or content is suspicious, offends, is blatantly wrong or could cause a is representation to other Facebook page users, then you need to ask the question: ‘do I moderate, remove or leave the post’? The Code and other applicable industry codes (for example the ABAC alcohol code) are quite straightforward and should readily be able to be applied to what is being posted on Facebook pages.
Section 18 of the Australian Consumer Law is a little more complicated. As stated above this section prevents misleading or deceptive advertising claims and is designed to protect consumers. It applies to Facebook and other social media sites, including posts by users (see Australian Competition and Consumer Commission v Allergy Pathway Pty Ltd discussed above). Not all posts that are incorrect or inflated will be misleading. The posts need to be considered against the Facebook page as a whole – the other posts, posts by the advertiser and the context. The audience of the Facebook page needs to be considered and then the message that is being conveyed to that audience needs to be ascertained – if the message is misleading or constitutes a misrepresentation to a reasonable member of the audience of the Facebook page, then it is possible there will be a breach of Section 18.
Personal opinions, puffery – ‘hey this is the best drink in the whole world’ – and other forms of social banter are unlikely to lead others into an erroneous assumption about the brands products. It is where the brand puts out a misleading message or allows a misleading message to develop, and the responding posts reinforce or amplify this message, where we see possible breaches occurring. The possible spectrum of situations are endless and again, each Facebook page and situation will need to be assessed on its own merits.
If an organisation is active in social media and is engaging on a frequent basis, then for larger organisations with greater resources, it is likely that the response time to moderate or remove offending content may be as little as 24-hours, however this is by no means law at this time and awaits a judicial pronouncement.
Please get in touch if we can be of any further assistance in helping you and your clients navigate the implications of these decisions.
In May, we warned about the dangers of associating a brand with London 2012 without consent: http://www.vmsolicitors.com.au/2012/05/18/sweating-over-the-legal-side-effects-of-olympics-fever/
It seems we foreshadowed the current climate, with the London Organising Committee of the Olympic Games and Paralympic Games Limited (LOCOG) now cracking down on ambush marketing. As LOCOG has recently announced, they take incidents of ambush marketing seriously, emphasising the exclusive rights of official sponsors and the significant investment of these companies in order to obtain these rights.
Under the (Advertising and Trading) (England) Regulations 2011, one of the aims of which is specifically to prevent ambush marketing, 25 ‘Event Zones’ around London have been established within several hundred metres of competition venues. Within these areas, engaging in unauthorised advertising or trading activity in open public places during specified periods around the Games is prohibited and only businesses which have successfully applied to trade or advertise are permitted to do so. ‘Advertising’ is deliberately defined extremely broadly by the Regulations to cover both commercial and non-commercial advertising, and includes:
‘any word, letter, image, mark, sound, light, model, sign, placard, board, notice, screen, awning, blind, flag, device, costume or representation, whether illuminated or not, in the nature of, and employed wholly or partly for the purpose of, promotion, advertisement, announcement or direction’
The Olympic Delivery Authority, established by the London Olympic Games and Paralympic Games Act 2006, has engaged enforcement officers with expertise in trading and advertising to enforce these Regulations and protect their advertising sponsors. These officers, unofficially dubbed the ‘brand army’ and decked out in purple, are able to enforce severe penalties against anyone contravening the Regulations, including fines of up to £20,000.
Concerted attempts to prevent ambush marketing around the Olympics have also manifested closer to home. A TVC for Australian Mining featuring Olympic cyclist Anna Meares has been pulled this month after the Australian Olympic Committee claimed it was in breach of advertising guidelines aimed at protecting official sponsors. The TVC showed Meares in cycling gear sporting sponsor BHP Billiton’s logo (a rival to official Australian team sponsor Rio Tinto) while she spoke about her Olympic hopes in London. Protection against ambush marketing has reached new heights these Games, so advertisers be careful to steer clear of the brand army’s war path!
Does your Pinterest board pin someone else’s photographs?
If so, you are probably interested to know the potential dangers and liabilities of using the site.
The person who takes a photograph usually becomes the owner and has copyright over that photo. A person who publishes or reproduces the work and communicates it to the public without permission infringes the copyright. So arguably (there have been no cases on this issue so far) if you’re taking someone else’s images and putting them up on your board, you’re infringing their copyright!
So what if your company is only posting pictures that belong to them – are you liability free?
Potentially not. On 6 April 2012 Pinterest updated its Terms of Service. These stated that Pinterest may be used for “personal, non-commercial use” and its Acceptable Use Policy includes a list of prohibited activities, including using “the Service for any commercial purpose or the benefit of any third party…” Yet despite this, Pinterest’s Terms of Service allows a person to open an account on behalf of a company and moreover it does not appear to be shutting down branded commercial pages already existing on the site.
So step carefully and keep an eye out for developments that no doubt Pinterest will make on its Terms of Service!
As more and more branded mobile applications come across our desks for legal review, the importance of compliance with privacy legislation (in Australia and worldwide) has turned into a recurring theme.
Where you or your client are collecting personal information about Australian users through an App, you will need to comply with the principles set out in the Privacy Act 1988 which deal with how you may collect, use and disclose such information.
Remember that personal information is information that identifies the user or could identify the user. Common examples are names and addresses, but personal information can also include medical records, bank account details, photos, videos, and even information about what users like, their opinions and where they work – simply put, any information where the user is reasonably identifiable from that information. An obvious example in the App world is where you require users to register to interact with the App, and such registration involves the provision of information like their name and email address.
- What information is collected by the App and how is it used?
- Does the App collect precise real time location information of the device?
- Do third parties see and/or have access to information obtained by the App?
- Is the App supported by advertising, and does the App collect data to help the App serve ads?
- What are the user’s opt-out rights?
- How is personal information stored? How can users access or correct the information held about them?
Our current privacy laws are under consideration for reform this year with one of the take-outs being the importance of privacy policies and clear and accurate disclosures as to how personal information is being used.
A common question asked of our team members is: ‘if a defamatory comment is posted on our social media page, would we be liable?’ To answer this question, we have provided a brief overview of the law as it currently stands.
The nature of social networking sites lends itself to the inherent risk of a consumer posting a defamatory comment on the site, being a comment that could:
- injure the reputation of a person by exposing them to hatred, contempt or ridicule;
- cause others to shun or avoid a person; or
- lower a person in the estimation of others.
Liability attaches at time of publication (and re-publication) of a defamatory comment, including on a brand’s own site, Facebook or Twitter page. But who is liable for the defamatory publication?
The author, being the consumer who posted the defamatory comment, will usually be liable. But the defamed person will often not pursue the author, due to the difficulty that online anonymity/pseudonymity may pose in identifying the author or the simple fact that the author’s pockets are typically not as deep as those of the brand.
It is unlikely that a social networking host or provider, which provides the platform itself (i.e. Facebook, Twitter etc.), will be regarded as publishing, or even as authorising the publication, of the defamatory material, given its role as platform host/provider is a passive one. In the recent English decision of Payam Tamiz v Google Inc, Google UK Limited  EWHC 449 (QB), Justice Eady agreed with Google’s argument that it merely provided access to the communications system Blogger.com and did not create, select, solicit, vet or approve the content on the system – this is all controlled by the blog owner. Justice Eady summarised:
“… it may perhaps be said that the position is, according to Google Inc, rather as though it owned a wall on which various people had chosen to inscribe graffiti. It does not regard itself as being more responsible for the content of these graffiti than would the owner of such a wall.”
Even if the social network host or provider is deemed to be a publisher, it may be afforded protection in Australia as an ‘internet content host’ (ICH) or ‘internet service provider’ (ISP) under section 91 of Schedule 5 of the Broadcasting Services Act 1992 (Cth), although this has not yet been determined with respect to defamation in Australia (see our blog ‘Twitter sued for Defamation’ on this point). Section 91(1) of this Act states that any law of a State or Territory, or rule of common law or equity, has no effect to the extent to which it subjects an ICH/ISP to liability for hosting or carrying particular internet content of which it was not aware or requires an ICH/ISP to monitor, make inquiries about, or keep records or, internet content that it hosts or carries.
The question however remains whether a brand operating a social networking site will be deemed to be the publisher of defamatory comments of users of their site and accordingly liable. The law in Australia is largely untested. Liability will likely depend upon the extent of control exercisable by the brand over what is published on their site as well as the brand’s knowledge of the defamatory material on their site.
In terms of control, Facebook, for instance, affords significant control to the page owner, including control over who can post, control over who can view the posts, and the power to delete posts. However, just because a brand may have the technical capability to take down defamatory comments on their site does not automatically deem them to be a publisher.
The brand’s knowledge of the defamatory material must also be considered. Does the brand authorise the publication of the defamatory matter or merely facilitate it? If the brand is found to be a publisher, the answer to this question will determine whether the brand may avail themselves to the defence of innocent dissemination, which applies “to those who participate in the communication of defamatory matter but do not authorise that communication” (Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 per Gaudron J).
But when may a brand be found to ‘authorise’ the defamatory matter – at time of posting, when the brand becomes aware of the defamatory comment, or never? This issue has been considered for the purpose of contempt, where it was held that the publisher “accepted responsibility for the publications when it knew of the publications and decided not to remove them” (ACCC v Allergy Pathway Pty Ltd and Anor (No 2)  FCA 74 per Finkelstein J).
Therefore, if your brand exercises sufficient control to be able to take down defamatory material from its social networking site, and fails to do so within a reasonable time of notification of the existence of the defamatory material, it may be held responsible for the continued publication of the defamatory material. It is however uncertain whether your brand can merely rely upon users of its site to notify them of the defamatory material, or whether it must actively monitor content on its site. As a risk management strategy, we recommend moderating content on your brand’s site on a frequent basis and taking down any defamatory content as soon as reasonably practicable, so that your brand is not the one that ends up resolving this question before the courts.