FLS 5 MINUTE PRIMER: 4 LEGAL TIPS FOR BRAND SHOUTOUTS ON SOCIAL MEDIA
It seemed like THE ultimate brand collaboration for Spring 2021. MSCHF, the Brooklyn based conceptual art collective, teamed up with Lil Nas to produce the “Satan Shoes,” an “aftermarket sneaker” that featured a drop of human blood.
There was just 1 very BIG problem. The “Satan Shoes” were originally developed and manufactured by the largest, global athletic performance company in the world (with a reported brand value of $34.8 billion) and its iconic, swoosh trademark was on the shoes. Yet, MSCHF never received permission from Nike for the use of its trademark.
While MSCHF sold all 666 pairs of "Satan Shoes" in 1 minute (yes!), Nike was outraged about the unauthorized use of its intellectual property. It swiftly sued for trademark infringement and other claims, all of which are purportedly settled as of April 8, 2021.
Nike’s lawsuit was expected. The real surprise was MSCHF and Lil Nas selling the “Satan Shoes” in the first place. At best, the actions of the brand team evidenced unbelievable ignorance and at worst, deliberate, intentional trademark infringement that would have entitled Nike to profits and penalties if it won its claims at trial.
This recent fashion drama made us think about the potential for trademark infringement by a frequently used action: a brand shoutout.
CAN A BRAND SHOUTOUT INFRINGE ANOTHER BRAND'S REGISTERED TRADEMARK?
Brand shoutouts are commonly done by millions of people around the world in social media posts everyday. But can a brand shoutout infringe a registered trademark?
Let’s look at this in an example. Hypothetically speaking, say you are a streetwear or wellness brand selling apparel products. You post a picture on your Instagram brand account of your latest, hot pink, bodycon hooded jumpsuit with the following caption: "Props to @nike for inspiring our new, NOT a sport bodysuit."
You’ve purposefully credited Nike, plus made it crystal clear (or so you think) that your brand's product is not for sports. You think that Nike will like the free brand promotion.
But does your brand shoutout infringe the Nike trademark?
THE RULE OF TRADEMARK:
Let’s start with federal trademark basics. A trademark is device in the form of a words or symbol that identifies a brand. Nike’s trademarks, are among the most widely recognized in the world:
·The word, "NIKE";
·The design symbol knows as the "Swoosh";
·The phrase, “JUST DO IT”.
Nike’s use of each trademarked word, design and/or slogan seeks to inform the consumer of the identity or source of the product.
Next, let's consider the "Rule of Trademark." (Note: this is the label we’ve created to teach general trademark law. It makes sense to us, but it is not a rule that the law or attorneys will recognize.)
Simply stated, the Rule of Trademark is this:
If a brand name is approved and registered by the United States Patent and Trademark Office (the USPTO in lawyer lingo) as a federal trademark, then the owner has the legal, exclusive right to stop the unauthorized use of the trademark - name, logos, and/or slogan - by another person or business in the classes of commerce in which the owner of the trademark operates.
What is unauthorized use? Quite simply, it means the trademark owner did NOT give the user permission to use the trademark.
Now, applying the Rule of Trademark to the question of infringement, the answer is crystal clear:
Did Nike give you permission to use its trademark in your post? NO;
Are you promoting a product or brand? YES;
Is the product or brand in the same category as Nike’s trademark of shoes, apparel, and accessories? YES.
In this case, by shouting out (or tagging) Nike, you are, in effect, using Nike’s global brand cache to attract traffic to and drive the sales of your brand. Streetwear, athleisure, activewear, and sports/athletic wear are often distributed in the same commercial channels (e.g. retail stores). Even worse, Nike might claim that your post is intended to tell consumers “My apparel is on par with Nike’s” and “Before you purchase Nike, consider mine.”
Just like the “Satan Shoes,” this is a pretty glaring example of trademark infringement. The shoutout to @nike is being used to promote a competitive brand in the same category of commerce in which Nike operates. If you are so bold to use Nike’s trademarks in this fashion, you should expect a cease and desist letter and even a trademark infringement lawsuit from the corporation. Boldness has its costs.
FLS LEGAL TIPS FOR BRAND SHOUTOUT BEST PRACTICES
Even though folks and brands are freely sharing information on social media, the Rule of Trademark still applies. Strictly speaking, if you use another brand's registered trademark in your brand post to sell your products/services without the permission from the other brand, you set yourself up for an infringement claim.
Rather than posting blindly or following the pack, below are 4 tips to develop social media best practices for your fashion brand to stay in the clear.
TIP 1: Search Before Posting.
Before you use a brand name or slogan, go the USPTO.gov site and conduct a search to determine if the word(s) is a registered trademark. If it is, don’t assume you can use the registered trademark in your brand shoutout (or #hashtag or tag) to market or promote your brand.
TIP 2: Only Promote The Other Brand.
Don't promote your own brand's products in the caption of the brand shoutout. Instead, solely promote the other brand's products or services. Make it very clear that the brand shoutout is a "fan" post. Don't use language that will lead others to think the 2 brands are affiliated. And be forewarned: This is a very murky area. Proceed carefully, especially if your brand's products are in the same or similar categories as the other brand.
TIP 3: Use a Registered Trademark in a Brand ShoutOut Only with Permission.
If the brand you are shouting out is a registered trademark, the best policy is to first obtain the permission from the trademark owner.
This can be as simple as privately messaging the brand on social media and asking if it will agree to let your brand use its brand name (registered trademark) for a shoutout, and perhaps provide a copy of the post. You’d be surprised how many brands appreciate the courtesy of requesting permission, and may even offer to reciprocate. Then, take a screenshot of the consent in the message and keep it forever in brand's digital files.
Just by asking, you’ve started a new relationship that might lead to a larger collaboration.
TIP 4: Consider All The Angles Before Posting.
Finally, always be mindful of how your usage of registered trademarks in brand shoutouts might confuse or mislead consumers:
Will viewers be confused that your brand and the other brand are the same?
Are you deliberately trying to compete by drawing traffic from the other brand's following?
Are the brand products aligned so that your brand shoutout will contribute to the other brand's following or success?
And remember, trademark infringement is just one potential legal pitfall. Taking a few moments to think through all of the angles - your brand, consumers, the brand you are mentioning - carefully can help you avoid a heap of trouble in the long run.