ISSUE XXXIII : Hashtags: An IP overview

Introduction

In an era where social media has become a prominent platform for sharing content, usage of hashtags or “#” has increased significantly from when it was used for the very first time in 2007. Chris Messina, a social technology expert, is believed to have come up with the very first hashtag “#barcamp” on Twitter in August 2007. #barcamp was used in a tweet in connection with multiple conferences that were scheduled to take place. By using “#” before “barcamp”, Messina was simply looking to “tag” the word. 11 years later, such “tagging” has become critical to the digital ecosystem.

The present bulletin analyses all legal questions that emerge from the unique characteristics of a hashtag and whether India’s intellectual property laws have answers to some of the questions that emerge.

1. What is a #?

  • If one had to give hashtag a legal definition, we would perhaps define it as a metadata tag which allows users to identify and find content using specific words or theme. Another key feature is that any and every word can be hashtagged so, to that extent, the metadata tag permits user-generated tagging. In essence, it creates a virtual address for all the hashtagged content which can be accessed anytime. Such tagging is not only effective to compartmentalize content but also comes in handy during emergencies.
  • If one had to give hashtag a legal definition, we would perhaps define it as a metadata tag which allows users to identify and find content using specific words or theme. Another key feature is that any and every word can be hashtagged so, to that extent, the metadata tag permits user-generated tagging. In essence, it creates a virtual address for all the hashtagged content which can be accessed anytime. Such tagging is not only effective to compartmentalize content but also comes in handy during emergencies.
  • If one had to give hashtag a legal definition, we would perhaps define it as a metadata tag which allows users to identify and find content using specific words or theme. Another key feature is that any and every word can be hashtagged so, to that extent, the metadata tag permits user-generated tagging. In essence, it creates a virtual address for all the hashtagged content which can be accessed anytime. Such tagging is not only effective to compartmentalize content but also comes in handy during emergencies.
  • If one had to give hashtag a legal definition, we would perhaps define it as a metadata tag which allows users to identify and find content using specific words or theme. Another key feature is that any and every word can be hashtagged so, to that extent, the metadata tag permits user-generated tagging. In essence, it creates a virtual address for all the hashtagged content which can be accessed anytime. Such tagging is not only effective to compartmentalize content but also comes in handy during emergencies.
  • If one had to give hashtag a legal definition, we would perhaps define it as a metadata tag which allows users to identify and find content using specific words or theme. Another key feature is that any and every word can be hashtagged so, to that extent, the metadata tag permits user-generated tagging. In essence, it creates a virtual address for all the hashtagged content which can be accessed anytime. Such tagging is not only effective to compartmentalize content but also comes in handy during emergencies.

tweet actually has very different impact on your health-tech company. The hashtag is now directing all of Coke’s traffic to your post and allowing you to brand and market PRONERGY to a much larger audience base.

  1. Accordingly, it is important to understand whether hashtags, which, like trademarks, represent brands, could be statutorily protected and whether using a third party’s hashtag or commercial benefit would tantamount to infringement or passing-off under Indian trademark law.

2. Legal framework

2.1 Registration

  • Under Trade Marks Act, 1999 (“TM 1999”), a hashtagged word would be protected just like a trademark. In other words, if a hashtagged word is capable of being represented graphically and is able to distinguish its goods and services from that of others, it can be registered.1 That said, if # prefixes a registered mark, the proprietor will be able to exercise almost the same rights on both the marks. For instance, in the above example, Coca Cola Company would be able to allege infringement for both, “Coke” and “#Coke”. Interestingly, no hashtagged marks have been registered in India so far.
  • The position in the US is slightly different and has evolved since the introduction of hashtags. The United States Patents and Trademarks Office acknowledges the # symbol to be registered as trademark only if it functions as a source identifier of the applicant’s goods or services.2 For instance, #HowDoYouKFC was registered in April 2014 by KFC Corporation, USA as it allowed customers to identify it with the KFC brand. On the other hand, “#sewfun” was denied registration because it was merely used to organize user comments about sewing classes and did not identify its proprietor or the source of the mark.
  • Notwithstanding the above, hashtags have their own peculiar characteristics that impact their probability of registration. Various hashtags have a very short life span and are not used when its purpose is fulfilled. For instance, #americanidol2018 will lose its importance once the winner is elected for 2018. Similarly, #fifacup2018 would not be used once the world cup is over. Section 2(zb)(ii) of TM 1999 also provides that all trademarks should either already be in use or be proposed to be used. Therefore, even the Indian trademark authority is not likely to grant registration to hashtagged marks that are “seasonal” in nature.

2.2 Infringement

  • While a hashtagged word can result in infringement (or passing-off) like any other mark, its ability to tag content allows brands to commercially benefit from the goodwill and followers of others’ marks. In the example above, by using “#Coke” in its tweet, PRONERGY can divert Coke’s followers to its post and market itself at the cost of Coke. In fact, even if the two brands are unrelated, metadata tagging can allow one to benefit from the goodwill of another. For instance, if Amazon has no nexus with the FIFA world-cup, any posts put up by Amazon by using FIFA’s hashtags would allow it to capitalize on FIFA’s traffic. FIFA would be well within its rights to take legal recourse against Amazon.
  • In March 2015, in the case of Fraternity Collection LLC v. Elise Fargnoli,3 the United States District Court for the Southern District of Mississippi Northern Division, considered hashtag as a trademark, whereby, the defendant used the hashtag “#fratcollection” and “#fraternitycollection” on her Instagram account to promote a series of pocket shirts which it had earlier designed for plaintiff’s competitor. Since the users who had a liking for frat collection designs were directed to the page consisting of same designs of another brand, fraternity collections traffic was channelized to the products manufactured by its competitors. Even though the matter was eventually settled, the court held that there was trademark infringement and false advertising.
  • As per section 29 of TM 1999, a trademark is infringed when a person other than the registered proprietor of the mark, uses a mark which is identical or deceptively similar to that of others in order to pass it off as its own. The test used for determining infringement is whether a mark: (i) causes confusion amongst public; and (ii) has association with the registered trademark. While use of a third party’s hashtag to divert online traffic seems unlawful, it’ll be interesting to see whether Indian courts consider it a breach of section 29 of the TM 1999 especially since it is unlikely to cause confusion amongst public.

2.3 Fair use

Fair use is an exception to the principle of infringement. As per section 30 of TM 1999, if a trademark is used honestly and does not take unfair advantage or cause detriment to the distinctive character of someone’s mark, it would not tantamount to infringement under section

29. For instance, if a person uses a third party’s coined hashtagged word in a personal post which is not likely to result in any commercial advantage or benefit on account of the hashtag, such post would fall within the “fair use” domain. Similarly, if the person posting content ensures that the hashtagged word continues to be associated with the original brand/proprietor, such post is not likely to infringe under section 29 of the TM 1999. For instance, if I, as an individual, post about #CocaCola on my personal Facebook wall, it would not tantamount to infringement. Similarly, if a person “shares” or “regrams” Coca Cola’s Instagram post which uses #Coke in its description, there would be no infringement since viewers would be able to see the original post as well.

Conclusion

While the present bulletin does not evaluate legal principles pertaining to unfair trade practice and misleading advertisements, it allows us to think of when and how using certain hashtags could result in third-party infringement. There have been actual instances in India where the International Cricket Council or ICC sent legal notices to companies that were promoting their own tweets with ICC’s proprietary hashtags during the ICC Cricket World Cup 2015. Accordingly, it is clear that as more and more companies and brands strengthen their digital presence, disputes surrounding usage of hashtags will only increase and get more complicated with time. It’ll be interesting to see how Indian courts would look at infringement involving hashtags in view of their peculiar metadata tagging feature.

Author
Varun Munjal

1 Section 2(zb) of TM 1999 includes such factors in the definition of trademark

2 Trademark Manual of Examining Procedure, 2017, 5th edition, Chapter 1202.18

3 3:13-CV-664-CWR-FKB

Archives

 

DISCLAIMER

The Bar Council of India restricts advocates from maintaining a website as a source of advertising. This site contains general information for informative purposes only. The reader should not consider / construe information on this site to be an invitation for any attorney-client relationship.