A brand in need

Social media challenges are evolving, as are fan uses for trademarks, heard attendees of the 2016 INTA Annual Meeting in Orlando, Florida

Thousands of attendees descended on the home of Disney World, Orlando, Florida, to heed the latest trademark insight and developments from leading counsel and big brands at the 2016 International Trademark Association (INTA) Annual Meeting.

Warner Brothers has had to be extra mindful when asserting its intellectual property rights for the Harry Potter franchise, especially when there are such dedicated fans, heard attendees during the opening keynote speech.

Warner Brothers executive Diane Nelson, who has worked on the Harry Potter brand since her company acquired the majority of the rights to it in 1998, has had to balance the needs of readers, whose sense of ownership has driven its success, with those of Warner Brothers, which has seen Harry Potter become a global phenomenon.

From fan fiction to unendorsed games of Quidditch, Warner Brothers has had to take a step back and reevaluate what it considers to be infringement, particularly in the age of the internet, according to Nelson.

Nelson went on to discuss another fan favourite, DC Comics. Warner Brothers is embarking on a billion-dollar programme with the Justice League movies, attempting to replicate the popularity of the Marvel cinematic universe. “[A kind of] fanaticism exists within DC Comics, in the great competition with Marvel: we constantly have to reinforce that Superman is ours, not theirs,” she said.

“Ubiquity in DC is our goal: we know fans feel an ownership of characters and we have to find a balance to respect that.”

Disparaging marks and social media remained key issues for panellists at the annual meeting, who discussed at length precisely how trademark counsel and rights owners should handle these issues in 2016.

A more sensitive general public is driving brand decisions around avoiding disparagement. Moderator Rachel Rudensky of the law firm Akerman raised the example of the Aunt Jemima breakfast brand, whose logo includes an illustration of a woman of Afro-Caribbean heritage. It was changed in 1989 due to racial connotations.

Rudensky said that brands must be prepared to stay relevant and popular with the general public, who are increasingly being critical of any form of disparagement, however slight.

Elisabeth Ohm of the Norwegian Board of Appeal for Industrial Property Rights discussed a similar case in Norway, in which a brand owner let its trademark expire due to consumer complaints about the particular mark, despite the brand in question being around for years.

The panel concluded that brand owners are accepting that markets are driving changes within their brands rather than, say, litigation.

They need to pay attention to market trends and societal shifts to nip potential disparagement in the bud before it becomes a problem.

Moving from the issue of trademarks to the digital world we live in, a panel explained how brands should pay more attention to apps.

Apps and mobile platforms have to be given due attention in a brand’s protection strategy, a Facebook counsel said during a session at the annual meeting.

Kat Johnston, director and associate general counsel at Facebook, said a successful protection and enforcement programme has to focus on apps and mobile platforms given the increasingly social world consumers inhibit.

She explained: “If an app infringer is using a company’s brand, everything that the company has built rests in the hands of an unknown stranger.”

Facebook has to be constantly vigilant about infringing apps in app stores, she said, because users can be easily confused by copycats, exposing them to potentially dangerous content, such as malware.

There are numerous pirate app developers that profit from the goodwill of established brands and dupe customers into thinking they are legitimately associated, Johnston said.

Facebook goes as far as to investigate the app developer to understand its enforcement options.

For example, Facebook takes note of an app’s reviews. If the feedback is generally negative, her team might be more inclined to take action.

Johnston said: “We typically look at business impact. Sometimes app developers are not necessarily infringing the Facebook brand in a bad way.”

“In such cases we do not use a heavy hand, but try and understand that they might simply love Facebook, but are not expressing it in a suitable way for us, so we try and work with them so that the app can live on.”

Keeping in line with the online world we live in, a panel shared how social influencers and paid promoters must inform platform users of the nature of sponsored posts or risk falling foul of US authorities.

A panel of experts cited the example of Kim Kardashian West, who was paid to promote a pharmaceutical brand via Instagram.
The post breached Food and Drug Administration rules on making users aware of the implications of the advertised drug, including its adverse effects.

Kardashian West’s Instagram post was later changed, but the liability does not lie with social influencers, according to the panel, but the advertiser.

Consumers have the right to know that a product or service has been endorsed.

But the onus is on the advertiser to make sure that the influencer makes the appropriate disclosures, according to the panel.

Endorsements can get somewhat complicated when pharmaceutical brands are concerned.

The panel advised that due to the complexities of medicine and drug products, social influencers should refrain from writing a post via a platform such as Twitter due to character limits, or via Instagram where the length of the post would distract from the endorsement.

In another panel, attendees heard that social media hashtags can be protected as trademarks, but the bar remains high for their registration. Filing a trademark application for a specific hashtag is not as simple as filing a standard application.

Courts have just begun to wrestle with hashtags as trademarks, Twitter counsel Nasser Baseer told attendees. The micro blogging site started hyperlinking words, allowing users to find tweets via hashtag searching, in 2009.

Lorraine Fleck of Toronto-based law firm Fleck & Chumak said brands face a number of challenges when trying to protect hashtags as trademarks.

In Canada, under current legislation, there is no specific provision for hashtags as trademarks.

The addition of the hash symbol does not deem an otherwise generic term eligible.

But under current and pending legislation in Canada, hashtags are registrable as trademarks if they are not descriptive or otherwise capable of functioning as a source identifier.

“Social media use of a hashtag would qualify as trademark use,” Fleck added.

Baseer commented: “Just be aware that when using a hashtag anyone is a target. It’s a fast and furious pace and brand intent is irrelevant.”
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