Overview
With over 2.55 billion people using websites such as Facebook, Twitter, and Instagram, social media websites have become popular venues for many online marketing campaigns. Companies, both small and large, are using their social media pages to advertise their brands with knowledge that this type of marketing is both effective and cheap. Additionally, many companies have focused their marketing efforts on "memes" to establish better brand recognition in a larger demographic. A meme is "a pattern of information that spreads from person to person - and often from generation to generation - in a culture."1 Some examples of memes include humorous pictures with quirky captions and videos of a business's own take on a popular song. These memes are then transformed from humorous cultural references to powerful marketing tools. What has been deemed as "memetic marketing" usually entails a company using a reference, such as a popular movie or song, to advertise its brand. However, by creating these memes and publishing them on social media websites, companies are not only violating social media policies, but they are also likely violating trademark and copyright laws.
A good example of such an issue is the law suit arising from internet memes Nyan Cat and Keyboard Cat.2 In April 2013, the creators of these two internet sensations sued 5th Cell and Warner Bros. for copyright and trademark infringement over the appearance of these characters in a series of video games. Although this law suit did not involve social media, it is a good example of what not to do. Indeed, the use of internet sensations - not just movie productions or songs - can subject even some of the largest companies to trademark and copyright liability.
United States Trademark Laws
Trademark enforcement of memetic marketing falls within the purview of the Lanham Act under 15 U.S.C. § 1125(a)(1) and 15 U.S.C. § 1114, and this potential liability should be considered when deciding whether to use memetic marketing. Section 1125(a)(1) imposes civil liability on any person in "connection with any goods or services" who uses "in commerce any word, term, name, symbol or device" that "is likely to cause confusion." A cause of action for trademark infringement under Section 1114 requires the same standard, but only applies to marks registered with the United States Patent and Trademark Office (PTO). Accordingly, to establish a viable trademark claim under either Section 1114 or Section 1125(a)(1), a plaintiff needs to show that: (1) the mark is in commerce; (2) the plaintiff has the right to the allegedly infringed mark; (3) the plaintiff's rights were established prior to any rights of the defendant; and (4) the relevant audience is likely to be confused by the defendant's use of the mark.
In the context of social media advertising, a plaintiff will likely need to show that there was a false endorsement to establish the fourth element of a trademark claim. This will require a showing that the advertisement is "likely to confuse consumers as to the plaintiff's sponsorship or approval of the product."3 Factors that a court will consider when determining whether the likelihood of confusion standard has been satisfied include: (1) the level of the plaintiff's (or the plaintiff's products) recognition among the product's market demographic; (2) the relatedness of the plaintiff's fame or success to the defendant's product; (3) evidence of actual confusion; and (4) the defendant's intent.4
This type of liability can arise in memetic marketing campaigns on social media where a business accompanies a picture of its product with a popular slogan, or the name or picture of a celebrity. Let's say, for example, your marketing team uses the name and picture of a well-known singer, such as Taylor Swift, to create a funny advertisement next to your product without her permission. Your company has very quickly exposed itself to liability under Sections 1114 and 1125(a)(1). Although the Lanham Act only protects against profit-seeking depictions, a company advertising through false endorsements falls under the umbrella of these protections. Moreover, potential damages increase if your company knowingly violates the Lanham Act. The owner of the mark may then also have a claim for willful infringement under 15 U.S.C. § 1117(a)-(b), which entitles the owner to reasonable attorneys' fees as well as damages that are three times the amount of the actual damages.
United States Copyright Laws
Another important legal obstacle that companies need to consider before marketing on social media is copyright law. Again, let's say your company decides to create a video using a popular song to attract a younger group of consumers. In this video, which your company posts to Facebook, some of your employees are dancing or singing to the song. Without a licensing agreement, you may be in violation of copyright law. Such a situation occurred in 2013 after Monster decided to include a Beastie Boys' song in an advertisement without the band's permission. The result: $1.7 million in damages. Similarly, a party can also violate copyright law through "snap-shot" advertising. An example of this could occur when a company tries to market using "the most interesting man in the world" meme. The company decides to make a joke in its advertisement and provides the following statement accompanying the photo: "I don't always eat cookies... but when I do, I always have Brand X." Just like that, that company has arguably run afoul of copyright law.
By marketing through memes, a company could violate the Copyright Act of 1976 [17 U.S.C.A. § 101 et seq.]. To establish a prima facie case for direct copyright infringement under the Act, the plaintiff must prove that: (1) the work is an original work within the scope copyright law; (2) the author of the work complied with the Copyright Act's requirements of fixation, registration, deposit, and notice with respect to the work; (3) the plaintiff is the legal owner of all or part of the copyright; and (4) the defendant has wrongfully copied the work without the plaintiff's consent or authorization. If the copyrighted material has the name of the owner on the material, the infringement may also prompt a violation of the Digital Millennium Copyright Act (DMCA). Section 1202(a) of the DMCA prohibits knowingly providing or distributing false copyright management information with the intent to enable, facilitate, or conceal copyright infringement.
As in the case of potential trademark infringement, companies open themselves up to greater liability for copyright law violation if a court finds willful infringement. To prove that a copyright infringement was willful under 17 U.S.C § 504(c), the plaintiff must show that: (1) the defendant knew its conduct was infringing, or (2) the defendant's actions were the result of reckless disregard or willful blindness to the prospect that its conduct was infringing copyright law. In the case of willful infringement, maximum damages will increase to $150,000 - five times the maximum penalty for non-willful infringement. This can have grave implications when multiple copyrighted items are at issue. In a recent verdict in favor of a copyright owner, a photographer was awarded $1.2 million in damages after two media companies took the photographer's photos that the photographer had posted on his Twitter account, and marketed them as the companies' own.5
Social Media Policies
Although legal liability will generally have the biggest impact on a company's decision to use memetic marketing, knowing that these marketing efforts could potentially be removed, even absent a law suit, may also deter a company from choosing to advertise through memes. For example, it is against Facebook policy to allow any copyright or trademark infringement.6 The current process to report an alleged infringement is relatively easy, and the likely result is that Facebook will remove or disable access to the content in question. The report can only be filed by the copyright or trademark owner, or by someone authorized to act on the owner's behalf. The owner or representative must declare: (1) that the affiant has a good faith belief that the trademark or copyright is not authorized by the owner; (2) how the content infringes on the holder's copyright or trademark; and (3) that the person marking the declaration is the owner or authorized to act on behalf of the owner of the copyright or trademark. The alleged infringer will have the opportunity to appeal its removal, but a party whose content actually infringes on another's intellectual property will fail in doing so. Such a grievance process is common amongst social media websites; Instagram and Twitter provide similar mechanisms for online reporting of copyright and trademark infringement.
Best Practices
As suggested above, a company can easily (and often unknowingly) infringe on another's intellectual property through memetic marking. Fortunately, a company can take various steps to mitigate potential liability through proper internal policies. If a company chooses to market through memes,7 a best practices approach to memetic marketing would start with amending (or implementing) company-wide intellectual property policies to include a section on "Social Media Marketing and Intellectual Property." Within this section, companies should discuss whether they permit marketing through social media, the consequences of infringing on another's intellectual property, and the available routes that employees may take to avoid liability.
If a company decides to allow memetic marketing, employees should first determine who owns the meme before beginning any advertising campaigns. Some of the most popular memes are registered with the PTO, and companies must tread carefully before choosing a particular cultural reference. Companies should always request a license from the owner of a registered mark or copyright. If the property is not registered with the PTO, companies should request permission from the owner of the meme to use it.
Educating employees on the policy is equally important to its success. Companies should clearly set forth the policy in its employee handbook and highlight the importance of that policy in other appropriate settings. In addition, educating employees, especially those in the marketing department, about the policy and the company's expectations regarding the policy will help reduce the chance of liability. Companies should also accompany this policy with an enforcement policy. An effective enforcement, which may include warnings, demotions, and termination, can facilitate voluntary compliance by employees and reduce liability.
Conclusion
It is essential to understand the ramifications of choosing to advertise on social media. Companies can avoid liability by obtaining a license, securing permission from the owner of the mark or copyright, or avoiding memetic marketing altogether. Adhering to the best practices approach above can also help companies mitigate liability when advertising. Whatever the practice, General Counsel's office should inform marketing teams about the potential risks that accompany memetic marketing.
Additional Resources
- Michael A. Cooper, Note, Publicity Rights, False Endorsements, and the Effective Protection of Private Property, 33 HARV. J.L. & PUB. POL'Y 841 (2010)
- Timothy Denny Greene & Debbie Rosenbaum, The Potential Perils of Posting Pictures (on Social Media), SOCIALLYAWARE (Aug. 15, 2012)
- Shontavia Jackson Johnson, Memetic Theory, Trademarks & The Viral Meme Mark, 13 J. MARSHALL REV. INTELL. PROP. L. 96 (2013)
- Barbara A. Solomon, Can the Lanham Act Protect Tiger Woods? An Analysis of Whether the Lanham Act is a Proper Substitute for a Federal Right of Publicity, 94 TRADEMARK REP. 1202 (2004)
- Melissa Landau Steinman & Mikhia Hawkins, When Marketing Through Social Media, Legal Risks Can Go Viral, VENABLE WHITE PAPER (May 2010)
- Deborah Sweeney, The Copyright Conundrum of Memes in Social Advertising, SOCIALMEDIA TODAY (Oct. 28, 2013)
1 Nick V. Flor, Web Business Engineering: Memetic Marketing, INFORMIT (Dec. 11, 2000), http://www.informit.com/articles/article.aspx?p=19996.
2 Katie Van Syckle, Keyboard Cat and Nyan Cat Come Out Ahead in Lawsuit Against Warner Bros., N.Y. MAG. (Sept. 26, 2013 10:18 AM), available at http://nymag.com/daily/intelligencer/2013/09/keyboard-cat-nyan-cat-win-….
3 Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992).
4 Kournikova v. General Media Comm. Inc., 278 F. Supp. 2d 1111, 1120-21 (C.D. Cal. 2003).
5 Joseph Ax, Photographer Wins $1.2 Million From Companies that Took Pictures off Twitter, REUTERS (Nov. 22, 2013 5:38 PM), http://www.reuters.com/article/2013/11/22/us-media-copyright-twitter-id….
6 Facebook and many other social media platforms periodically change their intellectual property policies, and companies should consult with the social media websites for the most current versions.
7 Some marketing experts have suggested that memes don't work well in marketing. See Steven Shattuck, 3 Reasons Meme Parodies Make For Bad Content, SOCIALMEDIA TODAY (Feb. 18, 2013), http://socialmediatoday.com/sashattuck/1246551/3-reasons-why-meme-parod….