05 Sep Who owns the hashtags?
By Avv. Michele Capecchi, LL.M.
In the March issue of The Florentine, I outlined the key means of protecting your business’s intellectual property (see the article here). Here, I discuss a specific aspect of safeguarding your business’s distinctiveness: using social media to promote your company’s services and image, in particular Twitter and Instagram. Just as you can legally protect your company’s logo, for example, can you protect its hashtags?
All Twitter users know that when they post a message on Twitter or Instagram, they have the option of placing the symbol # before a word or phrase. This symbol, commonly called a hashtag, marks that word or phrase as a topic that others can use in their message if they want to talk about the same matter. The technology of these social media vehicles is such that, as marked, the word or phrase becomes, in effect, an index that guides others to information. #TheFlorentine, #whattodoinFlorence, #Bestgelatointown and #MicheleCapecchi will lead people to ‘what to do in Florence,’ ‘where to find the best gelato in town,’ or the latest news in the online edition of The Florentine.
Companies large and small use hashtags to advertise themselves and to promote new products, events and campaigns among their followers—and, of course, in hopes of gaining new followers. The more followers a company has, the more its tags will be viewed and shared. For this reason, the more original and creative the hashtag, the more the followers will directly associate that tag with products the company is promoting.
This promotional use of hashtags leads to this month’s legal question:
If I create a hashtag that becomes popular and is retweeted by my followers, can I protect it so that it can be used to promote my business alone?
In other words, can you trademark that hashtag as a sign that represents only your company and thus prevent others from using that tag for different topics or products?
The legal advisers of Coca-Cola must have answered ‘yes’ to these questions, as they recently trademarked two hashtags #cokecanpics and #smilewithacoke. And here’s why.
From a legal standpoint, a hashtag, like all other graphic symbols and designs, is eligible for legal protection as a trademark if the expression preceded by the # symbol has a distinctive quality, is capable of identifying the source of a particular good, has never been used before, does not create confusion with a similar trademark that has already been registered, and functions as an identifier of the source of the applicant’s goods or services. This also means that simply adding a hashtag to a trademark otherwise ineligible for registration because someone else owns it typically cannot render it eligible.
However, the pervasive use of social media, from political campaigns to the promotion of new services and products, presents new issues in protecting intellectual property. At present, the legal ownership of hashtags is a grey area, and it is difficult to draw clear boundaries determining whether and when a particular hashtag can be used for business purposes.
Coca Cola is not the first brand to decide to create a trademark—which now belongs to that company alone—based on the use of a hashtag, as Twitter is currently such a great resource for publicity. Being able to block competitors from using that combination of words can be a great advantage, especially when you share a significant consumer base and thus potential followers. However, creating a slogan that not only links a new product to the image of the company but is also eligible to be trademarked is definitely a tough job that requires not only a lot of creativity but an enormous investment of time and resources.
Yet, while it is hard to know in advance if a hashtag, like any other graphic design, will become popular on social media, sometimes it might be a good idea to be proactive—as Coca Cola and others have been—to avoid the risk that the slogan you launched on Twitter will be used by others for alternative purposes and thus lose its distinctiveness in promoting your brand or product. For, as I explained in my previous column, at that point it becomes much harder to obtain legal protection.
At present, however, the only thing that we know for sure is that hashtags are available to all Twitter users, including individuals who use Twitter for their daily comments, who for now, may re-tweet tags as long as the use does not violate the Twitter trademark policy, and as long as they don’t use it for their own businesses. So, if you want to promote your own brand or suggest an affiliation, be sure you carefully read the Twitter trademark policy—and #AskforIPlegaladvice.
Disclaimer: The information provided in this article does not constitute legal advice and should not substitute for counsel. The information is based on the opinion of an independent expert and does not claim to be complete or definitive.
Originally published by Michele Capecchi on The Florentine (http://www.theflorentine.net/lifestyle/2015/04/who-owns-the-hashtags/).