Mini Law Lesson How Brands Can Use #Hashtags Without Getting Sued Brian Heidelberger

Can Any Word Be Used as a Hashtag? Hashtags Aren’t Entirely Fair Game Extreme example:  ”#Winston&StrawnIsAnNCAA Sponsor”  Since we aren’t an NCAA sponsor, its obviously not legal even if it's "just a hashtag" Hashtags can be claims or disparage  “#bestselling  #XYZGumispoison  Adding a # doesn’t change the meaning 2

The Law To establish trademark infringement, false association/endorsement, or unfair competition, owner must prove:  1) it owns certain trademarks that are entitled to trademark protection; and  2) unauthorized use of such trademarks is likely to cause consumer confusion as to affiliation/endorsement/origin 3

The Defenses No Infringement  No likelihood of confusion Nominative Fair Use Defense:  The product or service cannot be readily identified without the trademark  You only use as much of the mark as is necessary to identify the company or its goods or services  You do nothing to suggest that the trademark owner has given his approval or endorsement. 4

Claim Over Use of #webby Rapper Chris Webby sent infringement letter to the Webby Awards for use of #webby to promote its awards show and website Claimed “copyright infringement,” but cited two federal trademark registrations 5

Claim Over Use of #tacotuesday Taco John’s has federal trademark registration for “Taco Tuesday” Taco John’s sent C&D over Iguana Grill’s use of #tacotuesday Taco John’s tweeted they hold the “copyright” giving it exclusive rights No lawsuit filed Fantastic PR for Iguana Grill 6

Only One Reported Case For purposes of false advertising, a hashtag can be considered “commercial speech” Twitter posts can make claim about competitor even when competitor wasn’t specifically mentioned (#Sharepoint #RedDragon is #MadeinChina”) Whether there was trademark infringement/false association not addressed (AvePoint Inc. v. Power Tools Inc.) 7

Twitter’s Terms Terms don’t deal directly with issue Policy prevents use of "a company or business name, logo, or other trade mark protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation" Probably won’t take action absent fraud or other egregious circumstances  likely see the hashtag as communication 8

SO CAN WE DO IT OR WHAT? 9

IMPORTANT DISCLAIMER I am not your attorney. This is not legal advice. 10

Legal Use of Another’s Trademark in a Hashtag? May be able to use another’s trademark as a hashtag  “Join the conversation” rather than causing confusion among consumers.  Not suggesting endorsement  Tweet-dependent and requires a review of the tweet.  Transitory and incidental nature of tweets reduces the risk 11

Risk Mitigation Strategies Avoid (if you can) registered marks  Has the trademark owner suggested use of the # Don’t suggest endorsement or affiliation Join the conversation - rather than sell/promote product Be part of the crowd of hashtag users, rather than standing out  Don’t create your own Limit the number of tweets and the time period over which you use the mark in the tweets 12

Risk Mitigation Strategies (Cont.) Is your competitor a sponsor? Does the topic raise special concerns?  E.g., is the trademark owner highly litigious?  Are there PR concerns? “Auora is trending, clearly about our Kim K inspired #Aurora dress ; Shop: celebboutique.com…  Consider co-opt issues when using Hashtags for marketing #Quantasluxury 13

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