As the Super Bowl approaches, the NFL’s historically aggressive enforcement of its trademark on the term “Super Bowl” comes into focus as we start to hear broadcast ads from non-sponsoring entities use terms like “the big game” and “superb owl.” For this reason, around this time of year, brands tend to grow particularly sheepish about how they can or can’t use trademarked terms. Because brand social media accounts on Twitter and pages on Facebook are about both conversation and commerce, but are also free, unpaid platforms, it’s difficult to get your head around which rules might apply there. It’s of course always easier to say “our lawyers say we can’t” without necessarily having had the conversation specifically about the use and platforms in question and the related case law.
I am not a lawyer (though I have watched an episode of Franklin and Bash), but the salient question in the law would be whether or not a usage of a trademarked term qualifies as “nominative fair use.” In a piece on the Broadcast Law Blog about use of the term “Super Bowl,” David Silverman explains:
When it comes to use of the trademarked term SUPER BOWL, the NFL will take action against third party attempts to use that term in a commercial sense, in other words, to sell goods and services using the term SUPER BOWL in advertising. This is because commercial sponsors pay the NFL to be the official car or soft drink or whatever of the SUPER BOWL. Any unauthorized use of that term in advertising could imply a false sponsorship or affiliation with the NFL. So, what is permitted? It is fine to use the term SUPER BOWL in news stories about the game and in conversations about the game. There is a trademark concept called “nominative fair use” that allows others to use a trademarked term when there is simply no better way to refer to it. But that concept does not extend to commercial use of the term.”
Sounds pretty clear, but it seems to be mostly talking about “advertising” – i.e. paid media. What about forms of speech that are free and unpaid, like a Tweet or a Facebook status update? Do they qualify as “…in conversations about the game…” or are they still commercial in nature if hosted by the brand?
One of the key tests for nominative fair use involves whether or not the statement creates confusion about whether or not the brand has a sponsorship or other type of paid relationship to the trademark holder. Using the term to initiate conversation on Twitter or Facebook – “Brand X: Which team do you think is going to win the Super Bowl?” – would not seem to suggest any relationship to the “big game” or create any confusion about that and would seem to meet that standard. Similarly, a brand congratulating a musician for winning a Grammy does not in itself suggest that the brand is an advertiser on the Grammy’s. It’s a part of conversation and the name of a publicly bestowed award. On the other hand, a Super Bowl contest or giveaway done in social media might create confusion about sponsorship, so that’s generally a case where the trademark is not used.
The origins of nominative fair use came from the New Kids On The Block vs. News America Publishing case in 1992, wherein USA Today and The Star ran a poll asking readers to call a 900 number – for a fee – to vote on which member of New Kids On The Block was their favorite (obviously, that would be Jordan.) Interestingly enough, the ruling notes that “The USA Today poll generated less than $300 in revenues, all of which the newspaper donated to the Berklee College of Music. The Star’s poll generated about $1600.” So these were in some sense commercial uses.
The court ruled that that was nominative fair use and that it did not in itself imply that NKOTB sponsored the poll or that the newspaper had a relationship with NKOTB. If you think that sounds like the kind of conversation that might take place on a brand Facebook page about a band, sporting event, movie, or pop culture topic with which they have no direct relationship, then you think like I do. It would seem that it’s OK to refer to trademarked terms in the course of public conversation, even in a paid communication vehicle (like a newspaper), provided it’s nominative fair use. The same should apply to Twitter and Facebook.
In practice, the burden often falls on the mark owner to demonstrate confusion, but courts have applied slightly different standards and tests. Michele Schwartz and Prisca LeCroy from Andrews Kurth LLP suggest that no matter what the exact test is, the questions are the same – did the user imply endorsement or sponsorship by the mark holder, and did the user overuse the mark beyond just identifying the mark holder’s product:
“Different courts have applied different factors for finding nominative fair use and have differed over whether it is an affirmative defense or merely an alternate means for determining whether the public is likely to be confused. But the analysis basically comes down to two questions: Has the user employed the mark more than is necessary to identify the mark holder’s product and has the user done anything, other than use the mark itself, to imply sponsorship or endorsement by the mark holder? If the answer to these questions is “no,” the use is probably not infringing.”
Obviously, promos and paid placements on Twitter and Facebook, like promoted Tweets/trends and FB ads or merchandise giveaways/contests, would be a different story, but based on the above it appears that brands are free to use trademarked terms in the course of updates provided they don’t make excessive reference to the holder, are necessary to practically refer to the thing in question, and aren’t likely to create confusion about whether the holder of the mark endorses the user.