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  • November 16, 2016

    Social Media: What Lawyers Should Know About #Hashtags

    Brands (including law firms) can use hashtags to launch campaigns, engage directly with consumers, build loyalty, and gather real-time data for market research. This article explains some of the legal issues that can arise when using hashtags on social media.

    Heather A. Antoine

    twitter hashtag

    Nov. 16, 2016 – Social media has become a powerful avenue for brands to market their products and services. Research on trustworthiness on online media and correlated purchasing effect indicate that user-generated content has incredible influence.

    One study found that peers influence roughly 75 percent of decisions.1 Forecasted to have record-breaking purchasing power, millennials trust information from peer-created content 40 percent mor e than information from traditional media sources, including TV, print, and radio.2 Moreover, they spend 30 percent of their media consumption time on user-generated content and are found to prioritize social networking sites above other media types.3 In light of these findings, it should come as no surprise that companies (and law firms) have embraced social media marketing and advertising.

    One type of social media marketing is use of the hashtag (#). A hashtag is a metadata tag used on social networking sites to facilitate a search for a specified topic of interest.4 Hashtags originally were used to categorize posts on Twitter, also known as tweets, so members could follow conversations about the same topic.5

    Hashtags grew in popularity as consumers began using them to share their feelings and opinions as well.6 Companies recognized the hashtag’s widespread reach and they were soon adopted by advertisers.7 There are substantial benefits to using hashtags and social media to advertise. Brands can use hashtags to launch campaigns, engage directly with consumers, and build loyalty.8 They also can gather real-time data for market research and track what is being said online about the brand.9

    But, advertising through social media – especially hashtags – is not as easy as it sounds. Despite the appeal of using hashtags as advertising devices, companies should proceed with caution. Brands may face damaging consumer criticism and litigation if options are not carefully reviewed.10 Marketing departments should work with legal counsel to avoid potential issues before they arise and better protect the brand.

    Can Hashtags be Trademarked?

    Whether hashtags can be registered as trademarks is not without controversy. Hashtags can facilitate categorization and searching on social media.11 Because hashtags often are seen as organizational tags rather than source indicators, some have argued that hashtags should never be allowed registration.

    Heather A. AntoineHeather A. Antoine is founder of Antoine Law Group, APC. Her practice centers on litigation for Internet and tech companies, focusing primarily on Internet and IP crossover issues. She is a frequent writer and speaker and a member of the California State Bar’s IP Section Executive Committee.

    A California district court has held that hashtags are “merely descriptive devices, not trademarks, unitary or otherwise.”12 Nevertheless, the U.S. Patent and Trademark Office (USPTO) is accepting applications for hashtags as trademarks, and companies are now regularly filing for trademark protection.

    Trademark law requires a mark to be specific enough to indicate the source of a particular good, and to distinguish it among similar alternative goods.13 Therefore, a hashtag can only be registered if it functions as a source identifier for the applicant.

    Trademark applications are refused if a hashtag is descriptive or generic (i.e., #skater, for skateboarding equipment).14 However, if the mark’s wording is registerable on its own without the hash symbol, then the potential mark will be accepted if the hash symbol is disclaimed (i.e., #ingenuity, for business consulting services).15

    If the mark with the hash symbol is unitary with wording that is arbitrary or suggestive, then no disclaimer is required (i.e., #sluggertime, for clothing, or #dadchat, for counseling services);16 the mark will then be accepted if it functions as a source indicator.17 If the proposed mark is used solely to reference keywords to facilitate a topic search, then the hashtag is not seen as identifying the source, and the proposed mark will be rejected.18

    Social Media Trademark Policies

    Most large social media companies have trademark policies. For example, Twitter’s trademark policy states that it is a violation to use a business’s protected materials in a misleading way or for financial gain.19 Twitter will suspend accounts that are clearly intended to mislead, even if there is no explicit trademark infringement.20

    However, using another’s trademark in a way that is distinct from the mark’s product or service is not a violation of Twitter’s trademark policy.21 Even if keywords are reported as registered, Twitter will not disable selecting those keywords if the keywords are search and interest targeting.22 Thus, social media users may be protected when using registered hashtags in their posts.

    Facebook also has a social media trademark policy. When Facebook receives a report that content infringes a registered trademark, Facebook may immediately remove the content without first contacting the poster.23 If content is removed based on U.S. trademark rights, then the poster can contact Facebook directly to fight the removal.24

    Facebook will then review the submission and restore the content if it determines that the content should not have been removed.25 Facebook’s trademark policy seems stricter on its face than Twitter’s policy, but both will evaluate the validity of a reported infringement and remedy any improper removals.

    Hashtag Litigation

    Hashtagging on social media also can lead to litigation. In 2015, Fraternity Collection brought claims for trademark infringement and false advertising against their former designer, Elise Fargnoli, for use of the hashtags #fratcollection and #fraternitycollection on her social media accounts.26 The company and designer had stopped working together in 2013. After their split, the designer began selling her sorority-themed shirts to Fraternity Collection’s competitor despite an agreement between the parties listing Fraternity Collection as the exclusive merchant of the designs.27

    Fraternity Collection alleged that Fargnoli’s use of the hashtags caused consumer confusion, which deprived Fraternity Collection of business and goodwill.28 The court denied Fargnoli’s motion to dismiss, explaining that Fraternity Collection had sufficiently stated a claim for trademark infringement under Mississippi common law.29

    Notably, the court accepted the notion that hashtagging a competitor’s name or product in social media could, in certain circumstances, deceive consumers.30 In this case, Fargnoli could potentially claim descriptive fair use as a bar from liability. To come within this defense, a person must use the other party’s trademark not as a mark, but rather in a descriptive sense, and in good faith.31

    By registering a hashtag, a brand can prevent competition from using the same or similar hashtags, but cannot stop social media users from using it.32 If the user uses a mark merely to accurately identify the product, then the use is considered nominative and is not subject to liability.33 Litigation is still pending in Mississippi, so it is not yet clear how the case will play out.

    #AD

    Litigation is not the only concern for brands when utilizing social media to advertise. The Federal Trade Commission (FTC) has provided guidance on the role of social media “influencers.” Influencers have large followings on social media, which makes them ideal for reaching a maximum amount of potential consumers at once.

    For example, video gamer PewDiePie has more than 8.6 million Twitter followers,34 and fashion blogger Chiara Ferragni has more than 6.5 million Instagram followers.35 In 2012, the FTC released updated guidance known as “.com Disclosures” which focused on online advertising.36 In 2015, the FTC provided “FAQs” to specifically address social media advertising.37

    The FTC took issue with a campaign launched by Cole Haan on Pinterest entitled “Wandering Sole.”38 The contest required Pinterest users to create a board of five Cole Haan shoes along with pictures of the participants' “favorite places to wander.”39

    The contestant who posted the most creative entry would win a $1,000 shopping spree.40 Cole Haan told users to include the hashtag #WanderingSole with their photos, but failed to inform the contestants they had to disclose the contest when posting.41 The FTC decided not to pursue an enforcement action, but reserved the right to take further action against Cole Haan if the company did not take steps to ensure future users complied with obligations to disclose material connections when endorsing products.42

    Most recently, the FTC has started cracking down on brands using influencers to promote their goods and services without the proper disclosure. In May, Lord & Taylor reached a settlement with the FTC after social media posts were generated for influencer campaigns, but were not disclosed as sponsored content.43 Then in June, the FTC settled with Warner Bros. Home Entertainment, Inc. for failing to adequately disclose that it paid online influencers, including PewDiePie, when promoting the release of Middle Earth: Shadow of Mordor.44 The onus is, of course, on the brands to ensure influencers are provided with guidance and instruction on how to properly disclose these relationships.

    Hashtag Backlash

    Problems also may arise in the course of registering a trademark. The ALS Association (ALS) sought to register #IceBucketChallenge, even though ALS was not the originator of the Ice Bucket Challenge.45 ALS drew sharp criticism from users who were unhappy with the organization’s attempt to take ownership of a campaign that it did not create.46

    In a perfect showing of the public’s social media influence, ALS withdrew its application,47 and posted a message on its Facebook page which stated, “We understand the public’s concern and are withdrawing the trademark applications. We appreciate the generosity and enthusiasm of everyone who has taken the challenge and donated to ALS charities.”

    More recently, the killing of Cecil, a lion in Africa who had been the subject of researchers and photographers alike, led to the instantaneous use of the hashtag #CecilTheLion. Almost as quickly, five separate trademark applications were submitted to the USPTO.48

    Whether these applications will be rejected or accepted remains to be seen, but this is clearly an avenue ripe for companies seeking to capitalize on viral fame.

    Hashtag Campaigns Gone Wrong

    Aside from legal concerns, social media marketing can have unintended consequences. McDonald's attempted to gain publicity by creating the hashtag #McDStories. They hoped that the hashtag would inspire heart-warming stories about Happy Meals. Instead, it attracted snarky tweets from users who turned it into a “bashtag,” #McDHorrorStories.49 For example, one tweet read, “One time I walked into McDonald's and I could smell Type 2 diabetes floating in the air and I threw up #McDStories.”

    McDonald's quickly realized that the hashtag was not helping their brand, pulling the campaign within two hours.50 Another botched attempt comes from the New York Police Department (NYPD). In 2014, the NYPD asked followers to send photos of themselves posing proudly with officers using the hashtag #myNYPD.51

    However, the campaign quickly took a dark turn. Before midnight on the day the campaign began, more than 70,000 people used the hashtag to post tweets decrying police brutality and recent police shootings.52 It became the top trending hashtag on Twitter.53 The NYPD also received criticism for their approach. Critics commented that law enforcement is not a brand and the NYPD should be using social media for gathering information about unlawful criminal activity, not seeking praise.54

    Despite these brands’ well-meaning attempts to advertise, their reputation was damaged by users turning hashtags against them.

    Hashtag Campaigns Done Right

    Despite all the potential pitfalls, hashtags can have great power when properly applied. Audi’s #WantAnR8 campaign is looked at as one of the most successful Twitter campaigns in history.55 It started in 2011 when a Twitter user tweeted about how much she wanted Audi’s R8 car and used the hashtag #WantAnR8.56

    Audi took notice and created a campaign that gave people the chance to drive the car for a day by tweeting the hashtag.57 The campaign was such a success that they brought it back for a second time a year later.58

    Another successful hashtag campaign is Coca-Cola’s use of the hashtag #MakeItHappy. The campaign seamlessly integrated into a powerfully emotional commercial and the brand’s core message of happiness.59 The hashtag was given a lot of exposure alongside a campaign that promoted action, making it an extremely successful hashtag.60

    Nike found success when it released an online campaign alongside an inspirational commercial featuring female gym-goers.61 Nike encouraged women to share their own exercise accomplishments on social media with the hashtag #BetterForIt.62 The company also launched a 90-day “Better For It” challenge, which integrated into its workout apps, Nike+ Training Club and Nike+ Running.63 The hashtag reached more than 300,000 accounts, and continues to be used today despite the ad’s release more than a year ago.64

    Conclusion

    Hashtags can be a powerful marketing strategy – reach is undeniable. Potential benefits to a brand are huge, but it also can lead to potential lawsuits and/or backlash from the public. It is possible to avoid litigation by consulting with an attorney who specializes in social media and advertising law. This way, companies can have successful online campaigns without the risk.

    Endnotes

    1 Edelman, 2016 Edelman Trust Barometer 20 (2016).

    2 Ipsos MediaCT, Crowdtap, Social Influence: Marketing’s New Frontier 1, 6 (2015).

    3 Id. at 1, 4, 5. Millennials are those born between 1977 and 1995.

    4 Elizabeth A. Falconer, “#CanHashtagsBeTrademarked: Trademark Law and the Development of Hashtags,” 17 N.C. J.L. & Tech. On. 1, 2–3 (2016).

    5 Alexandra J. Roberts, Tagmarks 6, 8 (July 13, 2015) (working paper).

    6 Id. at 7.

    7 Julia Turner, “#InPraiseOfTheHashtag,” N.Y. Times (Nov. 2, 2012).

    8 Roberts, supra n.5, at 7.

    9 Leanne Tan, “10 Useful Hashtag Tools for Social Media Marketing,” Hongkiat, (last visited Apr. 9, 2016).

    10 Roberts, supra n.5, at 9.

    11 Id.; Roberts, supra n.5, at 4.

    12 Eksouzian v. Albanese, No. CV 13-00728-PSG-MAN, 2015 WL 4720478, at *8 (C.D. Cal. Aug. 7, 2015).

    13 Falconer, supra n.4, at 5.

    14 2-7A Anne Gilson LaLonde, Gilson on Trademarks § 7A.04 (Matthew Bender); U.S. Pat. & Trademark Office, TMEP § 1202.18 (Oct. 2015).

    15 U.S. Pat. & Trademark Office, TMEP § 1202.18 (Oct. 2015).

    16 Id.

    17 Id.

    18 Id.

    19 Trademark Policy, Twitter,(last updated Oct. 3, 2012).

    20 Id.

    21 Id.

    22 Trademark policy for Twitter Ads, Twitter, (last updated Nov. 13, 2013).

    23 About Trademark, Facebook, (last visited Apr. 9, 2016).

    24 Id.

    25 Id.

    26 Id. at 4.

    27 Fraternity Collection, LLC v. Fargnoli, (S.D. Miss. Mar. 31, 2015). No. 3:13-CV-664-CWR-FKB, 2015 U.S. Dist. LEXIS 42120.

    28 Id. at 5.

    29 Id. at 11; See Fraternity Collection, LLC v. Fargnoli, JUSTIA, (last visited Apr. 9, 2016).

    30 Fraternity Collection, 2015 U.S. Dist. LEXIS 42120, at *10.

    31 See 15 U.S.C. § 1115(b)(4); Carolyn S. Toto and Kimberly Buffington, “Hashtags, Trademarks and One #ProudMama,” Lexology (Dec. 29, 2015).

    32 Toto and Buffington, supra n.31.

    33 Natalie S. Lederman, “#Hashingitout: is it worth registering a hashtag?,” Lexology (Jan. 9, 2015).

    34 https://twitter.com/pewdiepie.

    35https://www.instagram.com/chiaraferragni.

    36 FTC Staff Revises Online Advertising Disclosure Guidelines.

    37 The FTC’s Endorsement Guides: What People Are Asking.

    38 Melissa Landau Steinman and Maura Marcheski, “FTC Gives Cole Haan’s Contest the #Boot,” All About Advertising Law (Apr. 7, 2014).

    39 Letter from Mary K. Engle, Associate Director for Advertising Practices, FTC., to Christie Grymes Thompson, Esq., Kelley Drye & Warren LLP, Cole Haan (Mar. 20, 2014).

    40 Id.

    41 Id.

    42 Id.

    43 In the Matter of LORD & TAYLOR, LLC, May 23, 2016.

    44 In the Matter of WARNER BROS. HOME ENTERTAINMENT INC.

    45 U.S. Trademark Application Serial No. 86375292 (filed Aug. 22, 2014); U.S. Trademark Application Serial No. 86375305 (filed Aug. 22, 2014).

    46 Id.

    47 ALS Association, Facebook (Aug. 29, 2014).

    48 Brian Focarino, “Social Media and the Rise of Opportunistic #Trademark Filings,” April 14, 2016.

    49 Id.

    50 Id. See #mcdstories, Twitter for recent uses of the hashtag.

    51 Inae Oh, “This NYPD Idea Backfired Horribly on Twitter,” Huffington Post (Apr. 22, 2014, 4:54 PM).

    52 Thomas Tracy, Timothy O’Connor, and Dareh Gregorian, “#myNYPD Twitter campaign backfires, promotes photos of police brutality instead of positive encounters with public,” New York Daily News (Apr. 23, 2014, 4:48 PM).

    53 Id.

    54 Maria Vultaggio, “Not My NYPD: What Happened With The Failed Twitter Campaign That Unsuspectingly Encouraged Police Brutality Photos,” IB Times (Apr. 23, 2014, 8:53 PM).

    55 Michael Patterson, “7 Examples of Successful Hashtag Campaigns,” Tint Up (Aug. 10, 2015).

    56 Zach Bowman, “Audi’s #WantAnR8 Twitter ad campaign returns,” Auto Blog (Mar. 21, 2012, 3:00 PM).

    57 Id.

    58 Id.

    59 Denise Lee Yohn, “Use Hashtags to Generate Greater Brand Engagement,” Forbes (Feb. 18, 2015, 5:10 AM).

    60 Id.

    61 Jeanette Settembre, “Nike launches motivational ‘Better For it’ campaign,” New York Daily News (Apr. 24, 2015, 6:20 PM).

    62 Id.

    63 Lara O’Reilly, “Nike is making its biggest ever women’s push,” Business Insider (Apr. 13, 2015, 4:11 AM).

    64 TweetReach Snapshot for #betterforit, TweetReach, (last visited Apr. 9, 2016).

    ​​​​​​

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