1. Mini Law Lesson
How Brands Can Use #Hashtags
Without Getting Sued
Brian Heidelberger
bheidelb@winston.com
Twitter @briheidelberger
Info @ www.winston.com/bheidelberger

2. Can Any Word Be Used as a
Hashtag?
• Hashtags Aren’t Entirely Fair Game
• Extreme example:
 ”#Winston&StrawnIsAnNCAA Sponsor”
 Since we aren’t an NCAA sponsor, its obviously not
legal even if it's "just a hashtag"
• Hashtags can be claims or disparage
 “#bestselling
 #XYZGumispoison
 Adding a # doesn’t change the meaning
2

3. The Law
• To establish trademark infringement,
false association/endorsement, or unfair
competition, owner must prove:
 1) it owns certain trademarks that are
entitled to trademark protection; and
 2) unauthorized use of such trademarks is
likely to cause consumer confusion as to
affiliation/endorsement/origin
3

4. The Defenses
• No Infringement
 No likelihood of confusion
• Nominative Fair Use Defense:
 The product or service cannot be readily
identified without the trademark
 You only use as much of the mark as is
necessary to identify the company or its goods
or services
 You do nothing to suggest that the trademark
owner has given his approval or endorsement.
4

5. Claim Over Use of #webby
• Rapper Chris Webby sent infringement
letter to the Webby Awards for use of
#webby to promote its awards show and
website
• Claimed “copyright infringement,” but
cited two federal trademark
registrations
5

6. Claim Over Use of #tacotuesday
• Taco John’s has federal trademark
registration for “Taco Tuesday”
• Taco John’s sent C&D over Iguana Grill’s
use of #tacotuesday
• Taco John’s tweeted they hold the
“copyright” giving it exclusive rights
• No lawsuit filed
• Fantastic PR for Iguana Grill
6

7. Only One Reported Case
• For purposes of false advertising, a hashtag
can be considered “commercial speech”
• Twitter posts can make claim about
competitor even when competitor wasn’t
specifically mentioned (#Sharepoint
#RedDragon is #MadeinChina”)
• Whether there was trademark
infringement/false association not addressed
(AvePoint Inc. v. Power Tools Inc.)
7

8. Twitter’s Terms
• Terms don’t deal directly with issue
• Policy prevents use of "a company or business
name, logo, or other trade mark protected
materials in a manner that may mislead or
confuse others with regard to its brand or
business affiliation"
• Probably won’t take action absent fraud or
other egregious circumstances
 likely see the hashtag as communication
8

9. SO CAN WE DO IT OR WHAT?
9

10. IMPORTANT DISCLAIMER
• I am not your attorney.
• This is not legal advice.
10

11. Legal Use of Another’s
Trademark in a Hashtag?
• May be able to use another’s trademark
as a hashtag
 “Join the conversation” rather than causing
confusion among consumers.
 Not suggesting endorsement
 Tweet-dependent and requires a review of
the tweet.
 Transitory and incidental nature of tweets
reduces the risk
11

12. Risk Mitigation Strategies
• Avoid (if you can) registered marks
 Has the trademark owner suggested use of the
#
• Don’t suggest endorsement or affiliation
• Join the conversation - rather than sell/promote
product
• Be part of the crowd of hashtag users, rather than
standing out
 Don’t create your own
• Limit the number of tweets and the time period
over which you use the mark in the tweets
12

13. Risk Mitigation Strategies (Cont.)
• Is your competitor a sponsor?
• Does the topic raise special concerns?
 E.g., is the trademark owner highly litigious?
 Are there PR concerns?
• “Auora is trending, clearly about our Kim K
inspired #Aurora dress ; Shop:
celebboutique.com…
 Consider co-opt issues when using Hashtags for
marketing
• #Quantasluxury
13

14. Follow me on Twitter
@BriHeidelberger
14

15. More Mini Law Lessons
youtube.com/AdAge.com
&
youtube.com/BrianHeidelberger
15