Social media channels represent an exciting medium to reach out to the public and potential collaborators. Social media can also play an important role in helping generate positive buzz for organizations seeking to develop a market for their products or services. For example, many of today’s companies gauge the depth of market interest in their products not through traditional advertising or focus groups, but rather through leveraging social media, such as communication platforms (e.g., Twitter, WeChat, Facebook), and content sharing platforms (e.g., YouTube, Vine), and crowd-funding platforms (e.g., Kickstarter, Indiegogo, GoFundMe). Some companies are also using open, collaborative approaches to building software code, using tools such as GitHub and creating their projects as public projects.
However, organizations need to be mindful of potential intellectual property issues that may be triggered by using social media. There are real risks that the validity and enforceability of intellectual property rights can be lost, especially as they relate to trade secrets, industrial designs, and patents.
In very general terms, confidential information and data of an organization may be protected as a trade secret so long as it has commercial value and effort is expended to maintain its confidentiality. There are additional requirements that may vary in specificity, such as whether the information or data is valuable and/or protectable, etc. Careless posting of details, such as experimental results, proprietary information, know-how, source code, and methods on social media or social coding platforms may result in the disclosure of a trade secret.
Patents and Designs
Patents require that the claimed subject matter are new, among other requirements. An inadvertent disclosure could negatively impact the ability of the organization to obtain rights depending on what was disclosed and what was made available to the public. For example, a careless posting that predates a patent application may be used against the patent application and any patent issuing. A defendant in patent litigation may use earlier disclosed details of the invention to invalidate the patent. In some jurisdictions (Canada), there is a grace period of one year from an inventor’s own public disclosure to file a patent application after a public disclosure, but in many other jurisdictions (e.g., Europe and China), there is no such broadly applicable grace period.
Designs have similar considerations. Designs cover visual aspects related to a product’s appearance, such as its shape and/or ornamentation applied to it. A design must be original, and this originality may be adversely affected by a social media posting. The scope of design rights not only includes designs related to physical articles, but also to user interfaces, icons, etc. that may be very relevant in the information age. Similar to patents, designs may be impacted by inadvertently disclosing social media postings (which may render one’s design unoriginal), including, for example, screenshots of interfaces, etc.
A challenge with collaborative coding platforms is a greater risk of accidentally incorporating code that may have associated licenses and copyright provisions. Efforts should be taken to avoid co-mingling proprietary code and open source code, as co-mingling may result in a loss of proprietary rights or, in some circumstances, a violation of the terms of a license and/or a copyright held by a third party.
From a practical perspective, organizations should be mindful and vigilant that content being posted does not accidentally cause the loss of rights and/or triggering of grace periods. Organizations should proactively monitor and track postings. Although it is likely impractical to track every posting, companies can educate employees, contractors, partners, and/or affiliates as part of an important strategy in effectively managing the risk of inadvertent disclosure.
As described above, not all is lost in the event of an inadvertent disclosure. In some jurisdictions, the clock for the grace periods begins, and organizations have an opportunity to file for IP protection within the grace period. If a disclosure is discovered on the same day of the disclosure, it may be possible to submit a rush filing on the same day to obviate the effect of the disclosure.
If a disclosure must be made on social media (e.g., in the wake of interest in the market learning more about a particular feature or design), and the disclosure is something the organization wishes to protect by way of patent or design (as opposed to trade secret), the organization should proactively prepare and file patent applications and/or design applications. With respect to patent applications, an important tool is a United States provisional application, which is an informal application which may be quickly prepared and filed for later formalization as a regular application within a year of the filing date. (There are dangers to relying on a provisional application, including your priority claim may be limited by the disclosure of the informal application.)
Any and all potential disclosure dates should be recorded, along with the contents of the disclosure. There may be a possibility that while some subject matter was disclosed, not all of the ‘secret sauce’ was actually disclosed.
While social media channels and social platforms (e.g., social coding) represent an opportunity for collaboration and marketing in a new paradigm of communication, one must be mindful of the potential legal issues that may arise. As long as a forward looking, proactive, and coordinated strategy is taken in regards to potential disclosures, an organization may be able to market to the public via social media while avoiding inadvertently triggering grace periods and/or losses to intellectual property rights.