Most businesses, big and small, have a social media presence. In fact, larger companies these days almost all have an employee exclusively devoted to social media marketing. Every business wants to be “part of the conversation” on social media. Often, however, the trending hashtags of the day relate to events or products of other businesses or organizations. Sporting events, from #MarchMadness to the #BostonMarathon to the #Olympics, create tons of social media chatter. Likewise, the latest Apple release, or even the next episode of Game of Thrones, can create an endless stream of hashtags.
So, if you want to join the trending conversation, how do you safely use hashtags that may contain the trademarks of others? While you want your business to be in on the conversation, you certainly do not want to get sued for infringement or unfair competition. Despite its nasty name, ambush marketing is not always illegal or unethical. In fact, social media marketing has made ambush marketing far more commonplace. However, such marketing is far from risk-free and you should make sure you don’t cross the line.
Unlike social media, ambush marketing has been around for decades in various forms. Ambush marketing generally involves an attempt to associate your business or products with a large event that has official sponsors. For example, at the 1996 Summer Olympics, Nike set up a pop-up store near the athlete’s village (Reebok was the official Olympics sponsor that year). Ambush marketing can take various forms, from buying commercial time during a televised event sponsored by your competitor, to running a Super Bowl sale, to hiring a former quarterback from your much-beloved local college football team to be your spokesperson.
Social media sites like Twitter, Facebook and Instagram have provided companies with the opportunity to do “real-time marketing.” Where marketing campaigns used to be carefully planned over weeks, or even months, businesses now routinely engage in offering social media commentary on current events or on any topic that is “trending” on any given day. Toss in a hashtag that relates to a third party’s event (e.g. #LALakers #KobesLastGame), and you have ambush marketing via social media.
Take, for instance, the company that posts the following on derby day: “Our business runs as smoothly as the winner of the #KentuckyDerby, but we don’t run in circles.” That business will have taken advantage of being a part of all the #KentuckyDerby tagged posts, but did they go too far? The posting is purely commercial and not commenting specifically on the race, but is it illegal?
Unfortunately, the line, with respect to the legality of ambush marketing, is not easily drawn. The execution of a legal ambush marketing campaign requires that you do not leave the impression with consumers that you are an official sponsor, or have otherwise been authorized or endorsed by the trademark owner/organization holding the event. In short, your campaign needs to take advantage of the popularity and buzz surrounding the event or product, but let the consumers actually connect the dots between your campaign and that event.
Official sponsors or licensees normally receive the rights to use the trademarks associated with the event. A soda can with the NCAA logo and March Madness trademark on it would clearly convey the impression to the consumer that the NCAA had authorized that product. On the other hand, a soda can with a basketball player on it being sold in March would leave the consumer to connect the dots and make the association.
With respect to hashtags that contain trademarked terms (e.g. #CocaCola, #Xerox, etc.), at least one federal court has held that the use of a hashtag containing a trademark, in and of itself, is not infringement. That court viewed hashtags as functional facilitators of social media conversations. Another federal court, however, has refused to dismiss a case based on allegations of infringement arising out of the use of a hashtag. That court noted that hashtags could be used in a manner that is deceptive and confusing to consumers.
While the courts continue to sort the matter out, the best you can do when joining the conversation on social media, is to review your posts and simply ask whether or not consumers might be deceived into believing that you are an official sponsor of a specific event. Posting “So happy to be part of #TheMasters this year” could easily lead consumers to believe you played some sort of official sponsoring role, while simply posting “Congratulations to Danny Willet on winning #TheMasters” likely would not lead to such impression.
Finally, whenever the use of trademarks of third parties is concerned, use common sense. A one-time, non-disparaging post like, “We’ll be closed this Sunday to watch #SuperBowl, but come visit our showroom on Monday” will likely not cause a cease and desist letter to be dispatched to your door. If your main competitor is an official sponsor of the event, however, or you use your competitor’s mark in a hashtag, the risks of getting that cease and desist letter increase.
By its very nature, social media marketing has pressured companies into talking about more than just their own products and services. After all, if you want to be retweeted or gain followers, you can’t just be rolling out daily, boring ads for your products. So go out and be part of the conversation, just do not do it in a way that leads consumers to believe you somehow are playing a bigger role in the event than you really are.
Barnes & Thornburg LLP is a large full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business.