Perfect curveballs

In controlling and protecting their reputations, the internet and social media have made online information critical in determining how individuals and companies are perceived. The old phrase ‘bad news travels fast’ resonates in the modern age. Simultaneously, as the law tries to keep pace with technology through developments in defamation, privacy and data protection, reputation management has become embedded in corporate strategy.

‘Reputation management is now all about your digital footprint,’ says Tim Maltin, chief executive of Maltin PR. ‘Gone are the days when articles were fish-and-chip paper the next day – now your online reputation can live forever. But there are new tools available such as the Right to be Forgotten.’

No-one knows this better than Claire Gill, partner at Carter-Ruck. Last year, she acted in the High Court in the first Right to be Forgotten case in the UK against Google. In the case of NT2 v Google [2018], the court ruled that links to reports about spent convictions be removed from Google’s search results. ‘This was an important case about the Right to Be Forgotten and how that right can be used to manage material that appears in internet search results,’ she says. ‘Now known as the Right to Erasure under the EU General Data Protection Regulation (GDPR), it is one of a number of data protection rights that can be used to help individuals control the way in which personal information is disseminated and to control its accessibility online.’

Gill believes that there will be an increase in cases related to the Right to Erasure and probably not just against Google. Data protection rights are becoming a key part of an individual’s armoury in tackling the publication of inaccurate or historic information online. ‘We regularly advise individuals in the corporate sector about these rights, as information about senior executives comes up in routine due diligence. We act collaboratively either to prevent publication of false, inaccurate, intrusive or confidential material, or else to take action after the event.’

Dan Tench, dispute resolution partner at CMS, says: ‘Dealing with individuals who use the ostensible cloak of anonymity on the internet to make unfounded allegations can be particularly challenging, but we have developed a range of techniques, including the so-called “Spartacus order” – where an unknown assailant can be required (on penance of contempt of court) to come forward and identify themselves.’ He suggests that media lawyers have had to cast their nets wider to have an effective legal engagement in reputation cases. ‘So we see data protection and confidence claims and regulatory complaints. I even took a judicial review case to the Supreme Court a few years ago on what was essentially a reputation management matter.’

At Schillings, partner Jenny Afia adds that reputation protection can be harder as there are so many more ways that information can leak. ‘People can then draw the wrong inferences from data disseminated by individuals with axes to grind. But on the plus side clients don’t need to be so concerned about antagonising one publication as generally they yield less influence now. There are more stakeholders than ever before when it comes to protecting reputation which can be a good and bad thing.’

Historically best-known for its defamation work, Carter-Ruck’s managing partner Nigel Tait explains how the firm’s practice has shifted in line with the law. ‘We’re now mostly privacy and data protection lawyers,’ he says. ‘Over half our recent media cases have been privacy and data protection, so while defamation remains strong following a blip after the introduction of the Defamation Act 2013, there are multiple issues with private information and privacy claims. Twitter may now take down tweets if we write to them, whereas they used not to. Facebook and Google are the same.’

He adds: ‘We specialise in reputation management and we’ve probably got more specialist lawyers in this space under one roof and more claimant litigation than any other firm in this sector, alongside a strong pipeline of defendant work. We offer a range of funding options, including no-win-no-fee work, which will continue, while our immediate competitors don’t do that.’

How then is an effective reputation management strategy developed? Gill says they are typically instructed by in-house counsel and work with them, plus their communications and PR teams. ‘The sooner you can join the dots and have a co-ordinated strategy, the better. Early planning is essential to scope risk and anticipate problems rather than being reactive.’ Maltin adds that sometimes pure PR advice can be at odds with continual legal advice, but this is only a problem when the two teams do not trust each other one hundred per cent. ‘The key is to build understanding so that the legal and PR teams understand the strategic, communications and legal objectives equally well.’

Twitter may now take down tweets if we write to them, whereas they used not to. Facebook and Google are the same.
Nigel Tait, Carter-Ruck

Tench suggests that there are two key tasks before settling on a strategy at the outset, the first being to establish the facts. ‘There is nothing worse than a reputation management matter where the client’s public position is constantly sliding as the true position emerges, with today’s blank denial becoming tomorrow’s admission. Finding out what really happened can be difficult, often this has to be undertaken at short notice in a business under stress. But it is crucial.’ The second task is to identify the achievable goal. ‘Where does the client want to get to from the situation it is in? And then put a strategy in place – which very commonly can be a mixture between legal and communications – to get there.’

Afia argues that a good reputation protection strategy will be very mindful of prevailing winds. Picking up on zeitgeists quickly is key so that individuals and brands don’t get caught out by something that was acceptable previously but is now the subject of much more scrutiny. ‘Tax avoidance is a good example of how public attitudes and awareness can quickly change: a decade ago, an accountant would be remiss not to mention ways of avoiding tax; nowadays it would be wrong not to mention the potential privacy and reputation risks.’

But in a crisis, there is very little time to make plans: decisions are needed fast. ‘The key is to be responsive,’ says Gill. ‘This is a large part of our work. The scenario where you’ve got two days to respond to a letter from a Sunday broadsheet or a week to respond to a letter from a broadcaster threatening to publish seriously defamatory allegations. We’re very used to dealing with that type of situation. If you haven’t previously been instructed by the client, from the point of view of preparing an effective response, the in-house counsel has an absolutely critical role to play in communicating to us what we need to communicate to a publisher. It’s about effective teamwork and responsive action.’

Tait adds: ‘We are on call all the time. Most weekends we’re stopping stories, advising clients: the Mail on Sunday or the Sunday Times tend to write to clients at about four o’clock on a Friday afternoon. Calls can come from companies or family offices, from PRs and from individuals themselves. It gets interesting when multiple calls come in over the same weekend, but we love it really.’

What’s in a name? Protecting brands through IP

For those involved in managing brands, the internet can be a double-edged sword. On the one hand, brands have become a commonly-used tool for consumers to find companies’ products and services online via a search engine, making them much more valuable assets to businesses. But at the same time almost every in-house counsel has to deal with the difficulty of working online and in an increasing number of marketplaces, social media platforms, and other types of platform.

In short, infringement is ubiquitous online. Lawyers emphasise different elements in their analysis of the problem. ‘Brands are important as a business obviously needs as much certainty as possible over what it can and cannot do, and when it needs to take action, which forum it can do so. The most prevalent types of infringement we are seeing surround the new world battlegrounds of the internet and the prolific forms of social media – this in turn is resulting in more disputes over the correct forum to litigate,’ adds John Linneker, a partner at Fieldfisher.

‘The vast bulk of infringements are online,’ confirms Paul Walsh, partner at Bristows. ‘These range from counterfeits to very close lookalikes’. He says such cases raise particular enforcement issues: identifying a defendant – particularly one outside the jurisdiction – can be very challenging and, even when identified, there are logistical difficulties of enforcement out of the jurisdiction. Often there is a multiplicity of relatively small-scale infringements that cumulatively can cause a brand significant problems. A large number of small-scale infringements can cause as much damage as a single large-scale infringement.

The difficulty is that each case in itself may not be economically viable to litigate. ‘There is also the “whack a mole” issue: you close down one infringement and the infringer pops up again elsewhere online,’ adds Walsh. ‘This can completely alter the economics of enforcement.’

According to John Coldham, partner at Gowling WLG, ‘counterfeits are still a huge problem, and are increasingly being used online to lure customers on established channels such as Amazon and eBay.’ Meanwhile, Peter Brownlow, partner at Bird & Bird, sees an upside in taking legal action, arguing that ‘Using trade mark enforcement to stop others using a brand is likely to increase traffic to brand owners’ websites and therefore sales.’

How companies police their brands online is critical, especially for consumer brands. As internet-monitoring systems become more sophisticated, so in turn more companies are signing up with providers to tackle the proliferation of counterfeits available through online market places and websites. The scale and scope of what needs to be policed has grown exponentially.

‘There are around 600 marketplaces now, not just eBay or Amazon, and several hundred social media platforms,’ says Julius Stobbs, principal of Stobbs IP. ‘The ease with which an infringer can have impact is so much greater than it was five or 10 years ago. That presents a real problem for the in-house counsel we talk to, and how they deal with it. As a brand owner, you want to find the platforms liable and gradually case law has evolved to confirm, generally speaking, that the platforms aren’t liable – most recently with the cases against Facebook on what they are or are not liable for on their platform. It is a massive issue for our clients in brand management.’

In the offline world, Walsh notes that another current issue is the prevalence of lookalikes from the discount supermarkets who have made lookalikes part of their business model. Stobbs says that from a general brand management point of view, there is an increasing difficulty in being able to register certain aspects of packaging. ‘We have got a number of disputes at the moment based around unfair advantage that could be landmark in terms of the impact they have upon trade mark law.’

Stobbs is acting for a major manufacturer against supermarket lookalikes. ‘It’s a key area of development in the law. Lookalike claims tend to be based around confusion, which is very difficult to establish when you are dealing with big supermarkets, where consumers are sophisticated, and know a lookalike is a lookalike. The other issue is that even if there is a good unfair advantage claim, you need a trade mark owner who is prepared to take on the supermarkets because they also tend be their biggest customers.’

Internationally, the biggest brand headache for many businesses is China. Stobbs notes that many counsel ask why so much of their brand management budget is being spent on protecting interests in China. ‘They say: “Why am I spending more in China than in the rest of world put together?” It’s a massive growth market, an area where IP is developing very fast with multiple legal changes in recent years. It’s a crazy volume from a trade mark point of view.’