In today’s world, most businesses use hashtags to boost their brand awareness and promote their products and services on social media platforms such as Twitter, Facebook, Instagram and LinkedIn. As the saying goes, “a picture is worth a thousand words”—posting a great photo of a product with the right #hashtag, and the attention received can go from “scant” to “deluged” in moments. Such posts can promote higher customer engagement, attract more likes and new followers, and in short provide fantastic and efficient publicity for businesses.
It’s Monday, and you’re at the local coffee stand with your work buddies sipping pour-overs made from freshly roasted fair trade beans. Brad from accounting is telling everyone about the new show he just binged on Netflix. It’s a coming of age story set in the ’90s and the throwback details are on point: the cool kids sport Starter jackets and Stüssy shirts; the geeks debate whether the Nintendo 64 is better than the Sony PlayStation; and the protagonist questions whether she should drink the bottle of Zima that her friend just handed to her. You interject: “Zima?! Someone should bring that back!” “Maybe we should,” says Tim from sales. “Nostalgia. It’s delicate, but potent,” adds Dan from marketing, because Dan always quotes Don Draper whenever he can, as he shows everyone a “Bring Back Zima” Facebook group. Soon you find yourself brainstorming ideas on how to get rich by bringing back dead, but not forgotten, brands. But then Matt from compliance asks, “Are we going to get sued?”
Of course, the answer is, “It depends.”
“Baby it’s okay, you can Google my name.” This line from T-Pain’s hit, “Bottlez,” became a focus in a recent Ninth Circuit trademark case on my favorite intellectual property issue: genericide. Among other evidence, the court considered if T-Pain’s use of “Google” showed that the Google trademark had become genericide’s latest victim. Genericide occurs when the public appropriates a trademark and begins using it generically for a type of goods or services, as opposed to a source of goods or services.
We recently wrote about a musician who got into some trouble with a court by using social media to flaunt images of hundred dollar bills after he had filed for bankruptcy. Now, an Atlanta-based rapper known as Rolls Royce Rizzy has been found to offend trademark laws through his use of social media. In January 2015, Rolls-Royce Motor Cars Limited and Rolls-Royce Motor Cars NA LLC (collectively, “Rolls-Royce”) filed a suit against Robert Davis (aka “Rolls Royce Rizzy”) for various claims, including trademark dilution, trademark infringement and unfair competition/false designation of origin under the Lanham Act.
We have previously discussed how the use of the hashtag in trademarks is continuously evolving. As it turns out, the latest evolutionary wrinkle might have started to form this past March, thanks to one of pop culture’s more prominent mothers.
In a recent federal district court case in the Northern District of California (Case No. 13-cv-04608-HSG), Pintrips Inc., a website-based travel planning service, effectively pinned to the mat the trademark claims brought against it by Pinterest Inc., the operator of the popular image-sharing website. Following a bench trial, the Court rejected Pinterest’s claims of trademark infringement and dilution, as well as other related state and federal causes of action, which were based on Pinterest’s rights to its “Pinterest,” “Pin” and “Pin It” word marks. The case is of interest to industry observers and participants alike for a number of reasons. In the course of providing practical insight into the judicial thought processes at play in a point-by-point application of the eight “Sleekcraft” factors (from the 9th Circuit’s 1979 decision in AMF Inc. vs Sleekcraft Boats) that can be considered when determining if a mark has been infringed, the case also yielded some insight on the impact of timing in regard to a defendant’s knowledge of the plaintiff’s mark; the potential of making a consumer jump through some hoops; and on the very nature of a “social media service.”
Oh, the once humble hashtag (or pound sign, number sign, octothorpe, etc.). For so long a symbol both ubiquitous and free from controversy, its new life as a go-to signifier of discussions and trending topics on Twitter has made it relevant in ways no one could have predicted a decade ago. For proof, one only need look to the courts, where a recent spat between two competitors highlights the interplay between social media symbology, such as the hashtag, and intellectual property laws (especially trademark law).
As social media and the numerous platforms continue their exponential growth in popularity and constant evolvement, legal issues surrounding their use also will inevitably emerge. A recent case filed in the Western District of Michigan is a prime example. In Beer Exchange, LLC v. Bexio, LLC, the plaintiff claims that use of a certain Twitter handle and tags on Instagram by the defendant is causing a likelihood of confusion that amounts to trademark infringement under both federal and state law.
A recent spate of cases has generally upheld, on First Amendment grounds, a developer’s right to include unlicensed trademarks in video games. However, until the body of case law becomes so prevalent that trademark owners recognize that they cannot possibly succeed in an action involving use in a video game, it may be wise for developers to be circumspect in what they include. In many cases, the costs of licensing a trademark may be much less than demonstrating rights under the First Amendment.
For more information, please read our Client Alert.
Judge Alsup out of the Northern District of California recently issued a decision relating to HP’s App Catalogue’s (its online store) sale of an app called “Chubby Checker,” an app that estimates the size of a male’s anatomy (yes, it is a “vulgar pun,” as the court noted). The artist known as Chubby Checker was not amused, and sued HP and Palm (not the app maker) for federal and state trademark infringement and right of publicity violations under various state laws. HP and Palm moved to dismiss the complaint for failure to state a claim of contributory liability and because the Communications Decency Act (CDA) barred the plaintiff’s state law claims.
HP and Palm successfully argued that the state law claims, including the right of publicity claims, were barred by the CDA, which states that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider,” and expressly preempts any state law to the contrary. 47 U.S.C. 230(c)(1), (e)(3). Section 230(f)(3) defines a content provider as “any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service.” The complaint didn’t (and couldn’t) allege that HP or Palm created the app. The court concluded that the HP App Catalogue was not a “content provider,” but instead, for the purposes of the distribution of the Chubby Checker app, it was an internet service provider that hosts third-party content (apps). The ruling is one of the first to extend the CDA’s protections to an online store that sells apps.
HP and Palm were less successful in their attempt to dismiss the complaint’s allegations that they were liable for “contributory infringement” for selling the infringing app on the HP App Catalogue. Looking at the four corners of the complaint and taking “all of the factual allegations in the complaint as true,” the court found that the complaint plead that “Chubby Checker” was well-known and a registered trademark, that HP “advertised” the app on its HP App Catalogue, “maintained primary control over the use of the name” on the app on the app store, and that Palm had a “detailed application and approval process for the app.” The complaint alleged that after HP received a C&D letter, it continued to sell the app (specifically, it said that at the time of suit, and four months after it sent a C&D letter, “infringement continues”). Somewhat surprisingly, the court’s analysis did not refer to the allegedly continuing sale of the app (after receipt of the C&D letter) in concluding that the complaint satisfied the pleading requirements of Iqbal and Twombly. Thus, it is unclear whether the court took that into account when determining that Palm and HP had “actual knowledge of the infringement,” which is necessary to sustain a contributory infringement claim.