[Detroit, MI] In this episode of Tech Law Radio, an Online Brand Protection Attorney talks about strategies that influencers – and everyone – can use to help establish their name as a brand through the use of trademark registrations and online enforcement.
Do you use your name to promote products online or gain commercial traction? If so, this episode will provide valuable insight into how protecting your name as an intellectual property upfront can help you with return on investment (“ROI”) over time and save you costs associated with taking down infringers.
Enrico Schaefer: Welcome to Tech Law Radio. My name is tech attorney Enrico Schaefer. And on the show today, we have again returning guest who is a trademark and IP attorney with Traverse Legal, and she specializes in online brand enforcement, amongst other things. And she will be talking to us today about something that’s kind of near and dear to our hearts here at Traverse Legal, protecting your name online.
If you’re a celebrity or a social media influencer, how do you create branding rights around your name or the name you’re using for your Instagram account, your Twitter handle, or your Facebook page? What we see out there is just a lot of anarchy where you’ve got all these influencers and celebrities or celebrity/influencers who have different handles that may or may not match their name, that may or may not match their trademark, that may or may not match their other handles across other platforms.
We see all these impersonators out there on the celebrity side where you’ve got fans and infringers, people who have bad faith, intend to profit from your name, and are doing all kinds of bad things online under the celebrity name or under a very similar account name or moniker that’s being used by the influencer/celebrity as part of their social media branding. So with that, welcome to the show.
Guest: Thanks for having me again, Enrico. It’s a pleasure to be back for another episode.
Enrico Schaefer: So you and I do a lot of online work, and part of that really involves helping companies build their intangible assets. What does that mean? Their trademarks, their copyright, their name, and their likeness. All these things, these intangible things, have asset value. We always say 50 percent of Apple’s total market cap, the company’s valuation, is its trademark rights. It’s not revenue; it’s not any of these other things. It’s the value of its brand.
So what I think a lot of regular companies and a lot of tech companies forget is that their trademark has real value. So if they ever go to exit or if they ever go to monetize or if they ever go to sell their company or what have you, those brands are either going to bring a lot of asset value to the table at close or they’re not. And we help companies grow their asset value and protect themselves and their intangible assets online.
So with that, let’s talk a bit about the social media influencer space and the celebrity space and how those different interests can protect themselves online in terms of their name, brand, account name, and these types of issues. So with that, I’m going to turn it over to you, and I want you to talk a little bit about kind of like the general problem out there of personal names and trademarks when it comes to influencing celebrity.
Guest: Absolutely. So many celebrities and influencers bolster the strength of their name by acquiring a trademark for that name. And in a perfect world, that would be what everyone would do first. But it’s not. And so you mentioned you often get that these influencers don’t have handles that match up with their actual name, or it’s different across different platforms. So ideally, you want all of your social media handles to match. You want them to line up with your trademarks or your personal name.
One of the best things they could do is have that trademark to their personal name. For instance, our President, Donald Trump, has his own name trademarked. Taylor Swift, Rihanna, Victoria Beckham, Justin Bieber, Bruce Springsteen, Katy Perry, Kylie Jenner [KYLIE JENNER is registered under IC 35 for “Advertising services, namely promoting the brands, goods, and services of others; endorsement services, namely promoting the goods and services of others] — the list goes on. The hitch with trademarking your name, though, is that it does have to be identified with a particular source of goods.
So, for instance, Kylie Jenner has [among other goods] cosmetics that she attaches her name to as an identifier for cosmetic goods. Also, you want to ensure that your name, if you trademark it, doesn’t create confusion issues. Kylie Jenner ran into many problems trademarking her name [for cosmetic goods] because other Kylie marks were already making a similar use in the cosmetic space.
So if that is an option for someone who is influencing — say, they’re completely foreclosed from trademarking, there’s too much confusion, it’s just not going to happen — then they can oftentimes have rights to their name itself. As we discussed in our previous podcasts how the right of publicity could be a real ally for people that are well-known and get commercial profits from their name because that can be a way to bolster your rights and potentially get rid of someone who is using your social media handle as their name on social media account.
So there’re a couple of different ways you can go at it, but you want everything to really line up and ideally have it all be the same, so people really know who you are. And as you said, it creates value if you’re ever going to sell your company or really franchise out your brand, whatever you want to do with your company.
Enrico Schaefer: Yeah, you’re creating brand value, right? So the fact that Kylie Jenner and Katy Perry obviously, do different things. But let’s take Katy Perry. She’s a musician, and she sings at concerts and on albums. That isn’t necessarily a trademark. But when Katy Perry goes to launch a cosmetics line under the brand Katy Perry, assuming she created the brand called Katy Perry, then all of a sudden, it could be trademarked. It becomes an identifier for goods and services.
The same thing is true for influencers. If Katy Perry is doing social media influencing or being a brand ambassador for someone, there is a description of the services. An international class under trademark law [IC 035] allows her to potentially attach her name to social media influencing or marketing service. And now, she again can potentially trademark her personal name as an influencer, as doing influencing under that name or her handle if it’s different from her name.
So what we find is that a lot of people in the space, whether they’re a celebrity that’s doing influencing, a non-celebrity who’s got enough followers and fans that they’re doing influencing, or a celebrity that’s doing both the celebrity thing and the influencing thing, is that they don’t understand trademark law well enough to understand what they are missing out on in terms of asset value, increasing their asset and brand value, and in terms of increasing their leverage to stop other people from imitating them online or siphoning off their goodwill for their own purposes.
So this concept of being a source identifier. Let’s talk a little bit about that. How does that work? What is a source identifier?
Guest: In trademark law, a name or a mark needs to be the identifier of a source of goods. So we’ve talked about cosmetics a lot today, but it could be Nike. Nike is a source identifier for athletic apparel. Pepsi is a source identifier for cola. So you want to be able to attach whatever your mark is, and here we’re talking names. But you want to be able to attach that to a tangible good.
To acquire registration with the USPTO, you need to show that you are actually using that mark in commerce in association with the particular international class good that you are looking to have it identify. And that’s how you’re going to gain that protection. You did mention that there is an international class now for social media influencing. And that could open up more possibilities for people who don’t have their name as their social media handle to trademark their social media handle.
And I’ve seen some pending registration actually include the [@] sign. Especially if your handle is gaining traction and it becomes something that you want to put on a shirt, or you will use to crank out social media influencing. That’s an option you can explore now. And so it really is something anybody using social media commercially should consider doing.
Enrico Schaefer: If I’m an influencer and legitimately do influencing under my Instagram handle or my Twitter account name, it doesn’t matter if I’ve got a thousand or a million followers. As long as I’m doing business and identifying myself under that name, which is my brand, I can register that potentially with the United States Patent and Trademark Office. Isn’t that true?
Guest: Yes. It could be you or me. If we’re commercially using our name, we could potentially register that.
Enrico Schaefer: And that is good news, right? Because the reality is that when you go ahead and register that name as a trademark, you improve your position in so many different ways. You create asset value. You establish yourself even more as a brand. You can claim the trademark by using the TM designation. Or once you’re registered, you can change the TM designation to the coveted circle ® and put it by your name. And then you’re telling the world, I am a brand. This moniker, this name, this — whatever my account name is for a particular social media platform, is my trademark. And it’s like a “Don’t Tread on Me”? Don’t use anything similar to what I’m using in a way that could confuse customers to think that you are me because that’s what trademark law does, is it protects consumers from being confused about whom they’re dealing with. So you get all that, and then, of course, you can shut other people down when they do step over the line and get much more defined rights, much better legal leverage under trademark law to protect yourself online. So all good news.
But yet you and I don’t see a lot of social media influencers engaging in strategy discussions around their brand, their name, and how to protect it, whether or not they should be changing certain identifiers with their social media accounts or whether or not, at the first instance, they should be using their personal name or their account name as a trademark. Strategically, you should have those discussions and then transition into the stronger position, into a place where you’re going to be able to get asset value where you otherwise couldn’t.
All right. So let’s talk a little bit more about celebrity names as trademarks because they’re a little different, right? But that’s different from, say, Katy Perry, right?
Enrico Schaefer: And so if you’re a celebrity, you fall into this new category of being notorious at least at some significant level where people understand when they hear that name, they associate it with you. And those people get a little bit higher deference and some special rights that you might not otherwise get if you were not well-known. Tell us about that.
Guest: If you are a celebrity or justifiably well-known, social media platforms have developed a verification process now. I’m sure everyone is familiar with the little blue checkmark that comes next to any official celebrity account that Twitter, Instagram, and Facebook will all place next to their handle or their name to indicate to the consumer or the viewer that this is the official account for this individual.
And this was something that was developed over the last few years in response to impersonation that was really rampant on social media platforms, where people would make imposter accounts and hold themselves out to be that celebrity or that influencer. It would create genuine confusion on social media, especially when they started saying things that weren’t in line with that particular celebrity’s lifestyle, beliefs, or the brands they support.
I was reading up on a few. One celebrity had issues with an impersonator account making false pregnancy announcements when they were not expecting or slandering another celebrity online when they never said that about the other person. And so that is where this verification badge kind of spawned out of as a way to tell people this is a legit account, and you can trust that this is the person they are saying they are.
Enrico Schaefer: Yeah, it’s really interesting. And celebrities do get a little bit of actual deference. But sometimes you will get celebrities we represent, and they’ll say, “Well, but I don’t sell anything, and I’m not an influencer.” And for those folks, we can create a strategy where you do just a little bit of something in order to create trademark rights so that you can better protect your name online. So many people are like, “Oh, I want to register my trademark.” But the real starting point is on trademark strategy. It’s talking to a competent, experienced trademark attorney who knows how to create brands and navigate the digital space, who will help you figure out the best way to protect your name as a celebrity.
What is the best way to build and grow your brand as an influencer in the online space? And then, what are the strategies, of course, to protect yourself online, to identify the most problematic impersonators, copycats, and infringers and shut them down, either through the policy of one of the social media platforms or leveraging trademark law or the rights of publicity to shut someone else down.
So those are all really the types of things that we want influencers and celebrities to start thinking about. And the reason why we have this podcast today is that, honestly, we don’t see a lot of celebrities doing this kind of thing. And it’s just something that a lot of folks don’t understand. So they don’t know what they don’t know. So what do you want to talk about next? What’s the next thing that people should be thinking about?
Guest: Well, the next thing to have on your radar, if you are a celebrity, and you’re worried about impersonators, you’re worried about someone tarnishing your name, your brand, you should search for your name on social media. See what accounts are out there. See what they’re doing. See what they’re saying because, as you said, there are ways to remove that, either through that social media platform’s policies or through trademark or right of publicity laws.
But something to consider, which I found interesting, is that Twitter, for instance, recognizes in their policy the right to have a “fan account.” And so they create these parameters that you could be a Reese Witherspoon fan account, as long as you’re identifying yourself as a parody, a fake, a fan, or a commentary, and you make your non-affiliation stated in a way that can be understood by the intended audience that you’re not that person.
However, despite that policy, you could still have the leverage to challenge that profile if you don’t like it because it’s still using your name. And it could be something you don’t want out there. So those are some other things to be thinking about. In general, trademark law does recognize certain fair use aspects. So I’m always erring on the side of caution. Just be cognizant that there could be defenses that you won’t always have a slam-dunk right to your name time.
But for the most part, you should have at least an argument to support that you don’t want others using your name in ways you’re not authorizing.
Enrico Schaefer: Let’s talk a little bit about the general concept here because I think many celebrities, influencers, and social media stars don’t really appreciate the problem until they’re in the middle of it, right? And so they call us after there’s a problem, and now we’re trying to figure out what rights they may or may not have, right? And you and I are always contemplating what they should have done previously — which would have given us so much better leverage, right? But that they didn’t. So we’re putting out the fire after it’s burning. This is important because it’s always challenging when dealing with money, right? So as lawyers, especially in the trademark space and commercial law, we’re pushing money from one side of the table to the other, right? Our client to the defendant and back like they’re fighting over money.
Well, I’ll tell you, and you know this, and I know this, but sometimes people don’t recognize it until it happens to them, is there’s something more valuable than money, and it’s your reputation. It’s your name. There is nothing more valuable than that. And until it’s been impaired, impinged, or impugned, you tend not to think about it.
And in the Internet space, it’s so easy for anyone to do anything for the good or bad motive that once it happens to you and it’s out there, and you see that your reputation is being dragged through the mud by someone else, or that you’re being associated with something that you don’t want to be associated with, and now you’re trying to do a cease and desist, you’re trying to shut it down, that’s when you really feel it.
And what we’re telling people is this: Understand on the front end that your name, your brand, and your reputation is the most important thing that you own in the online space, and you should be paying attention to it from the get-go. And by the way, when you get into these social media influencer contracts, which I think we just did a show on that not that long ago, what are the essential terms that every social media influencer should have in their agreement, what are their licensing?
In many ways, they’re potentially licensing the copyrighted photograph that they upload, but they’re also licensing their brand. They’re licensing their name. They’re licensing their name and likeness in some instances. That’s a licensing issue. That contract is a licensing contract, right? But to license stuff, you’ve got to own it. And the more you own – your name, likeness, brand, and trademark – the further you build those things up on the front end, the more you can get paid for licensing them on the back end.
And so that’s really the point, building asset value. It’s always more fun to build things than to deal with a problem’s carnage. If someone’s attacking your reputation under your brand name or impugning your brand online, that hurts. That’s not as fun as saying; I’m a social media influencer. I have 50,000 followers on Instagram. I’m starting to get paid money for doing what I’m doing and endorsing products I love and believe in. And now, let’s build this brand up so I can continue to grow and protect myself online.
Guest: Way more fun. It’s always a pleasure working with someone from the ground up and not having to clean up the mess, as you put it, because I would rather be projecting into the future than thinking about what could’ve, should’ve, would’ve been done in the past. So it’s definitely something that I think, moving forward, we want to plan with people that think about this from day one. Are you going to make yourself publicly known? Are you going to influence? Are you going to do X, Y, and Z?
Make it happen. Make some t-shirts. Make some merchandise. I feel like that’s the easiest way. Put your name on a t-shirt. Get a trademark. I mean, it’s that easy, like you said. You don’t need to have a big slew of items, merchandising, or commercial uses for your name. You need something to get you in the door and get those rights because, as you said, it will be way more lucrative for you.
Enrico Schaefer: It is. Now let’s talk a little bit about the right of publicity. I know we touched on it earlier. So we’re talking a lot of trademark rights, so that’s one piece of the puzzle. What is the right of publicity, and how is that different from a trademark?
Guest: Right of publicity exists regardless of a trademark right. So right of publicity is a cause of action that protects an individual’s right to control and profit from the commercial use of their name, likeness, image, and/or persona. And it varied across states, depending on how it was recognized. But a lot of times, it is reserved for people in the limelight, celebrities perhaps, professionals, sports players, anybody that could be publicly known, though a few states do let anyone, like you or me, have that right of publicity.
It’s just another tool in someone’s arsenal if their name or image is being used in a way they do not want. So, if your face is being put on a t-shirt and you’re like, “I don’t want my face on that t-shirt,” right of publicity – granted that you have the level of public recognition to give you that right. But it exists completely outside of trademark law. And so it’s a great fallback for someone without registered trademark rights. And that can be used to really bolster and protect your name and brand.
Enrico Schaefer: Yeah, so I can’t just go and say, “So and so loves the legal services that we provide to social media influencers at Traverse Legal,” and put a picture of you up and make that commercial use unless I have a license or permission from you to do so.
Guest: Yes, ideally, even though I’m not as famous as some other people, but yeah, I would probably take issue. I mean, granted, that’s a positive way to use my image. But if you were doing something a little more nefarious, then I would definitely have an issue and bring it up. And, of course, there are other ways, such as defamation and things like that. But those aren’t as robust. If you can get it taken care of with the right of publicity, trademark, and copyright, do it that way.
Enrico Schaefer: It is good. And so let’s say I’m a social media influencer, and I agreed to do three posts for a brand, and they paid me a thousand dollars per post to do the endorsement, and I believed in the brand, and I did the post, and I put up the photo of me with the brand, and I encouraged my followers to go ahead and buy that item, okay?
Now let’s say that the brand decides they’re going to do a screenshot of that post with your picture and your name and post it on the web or film a commercial and put it in there. What kind of issues might that create?
Guest: I would first want to see what your license and your contract with that brand stated and what uses they were allowed under that contract because that could be as easy as just citing a particular provision and claiming that they’re in breach of contract if they’re doing something beyond the scope of what you agreed for them to do or what you were licensed to do. So that would be my first inclination.
Beyond that, explore your copyright rights and the right of publicity. It may be there isn’t a formal contract. So you’d want to explore alternative remedies. But that would be my thought. I would always go to the contract first.
Enrico Schaefer: What we see here in this space is so informal. Maybe an email went back and forth. There’s so much implied because there isn’t an express agreement. And what we tell our social media and influence clients is, look, there are not a lot of good form contracts out there for social media influencers, from either the social media influencer or the brand point of view. But whenever you’re doing a commercial transaction, the most important thing you have is the contract because the contract will set forth the expectation.
So we deal with these issues when the brand has used the social media post, picture, or name in some way that the influencer didn’t anticipate. And then the first stop is, what does the contract say? And it turns out we don’t have a contract, but here are these emails. Well, good news, bad news. To the extent that a right is implied because there is no express grant to the brand that they can use your face in a commercial, right? Then you’re automatically in a much stronger position from the social media influencer side, right? Because it’s your face.
Enrico Schaefer: And you almost always can, in an implied situation, terminate any permission, right?
Enrico Schaefer: So you can say, “You never had that permission. You never had that license for that use. But even if you did, as of today, we’re letting you know it’s terminated.” So then, if it’s running, if there’s no way to get it [down anything there], it might be willful infringement, etc., it gives you all the leverage. So we talk about getting your publicity rights lined up, your trademarks and your brands lined up, and all these things.
The point is, if you do those things, your ability to enforce or obtain an appropriate license fee or royalty for any unauthorized use is very well protected under the law. The law protects the trademark owner, the copyright owner, and the name and likeness owner over the user of the name and likeness of the trademark of the copyright. So if you’re on the influencer side, the law is typically on your side.
If you’re on the brand side, why would you want to get involved in a relationship where all this wasn’t clear so that no one came back later and said, “You willfully infringed and now are subjected to $150,000 dollars in statutory damages plus attorney’s fees, in addition to the licensing, in addition to the disgorgement of profits.” I mean, it’s crazy not to get all of this nailed down before you do it. And it’s crazy not to protect your brand, IP, name, and likeness before you enter into these relationships because it becomes a bit of a mess.
You don’t want to hire an attorney to clean up this stuff. You’d rather have everyone get it right in the first place.
Guest: Exactly. Many people are deterred on the front end by the costs of trademarking and doing all that. But it always ends up being worth it in the end because fixing it will cost much more if you don’t do it first. So that’s why I always try to emphasize to potential clients that this is an investment, and it will pay you back in the future if you invest in this protection now.
Enrico Schaefer: Yeah, trademarks and creating branding rights and extending those branding rights is the best ROI you can get. You pay professionals to do many things, but it’s just really unclear what the ROI is. The ROI on trademarks and copyrights and extending your brand and your name really quickly pay off, as well as your ability to enforce, fight back, and asset value.
Now I know there’re many verification systems out there now in social media where you can verify your account and these types of things. And we’re going to come back someday and talk about that.
What I want to talk about right now is will you, for these listeners — and we love our fans and the people who listen to this podcast — but will you post, when this goes live on the website, the social media policies for Facebook and Instagram and Twitter [See Below!] so that people who are in this space who want to engage in self-help, who want to report an imposter account or try to get Facebook, Instagram or Twitter to take down an infringing use from their platform.
All these companies have policies, and all these companies have a way that you can try to deal with these issues. Will you provide that to everyone for free?
Guest: Absolutely. I will link to those where you can see the pertinent language. And all of them have mechanisms for submitting a form or flagging things as violating their terms. And so I will definitely provide that to our listeners.
Enrico Schaefer: And I thank you for that. I think the listeners will be appreciative. And I think the other thing that we should probably make sure everyone understands is just because the policy of Twitter, Instagram, or Facebook, or some other platform doesn’t get you what you’re looking for, doesn’t get the account taken down, that’s not the end of the inquiry.
Just because the policy of one of these private companies doesn’t help you out doesn’t mean that the law won’t help you out. So the law tends to be far more protective than the policies. And so there are many defenses that might work on Instagram that don’t work in the United States Federal Court on an IP claim.
Guest: Exactly. If you hit a roadblock with any of these self-help procedures that these platforms provide, then definitely don’t rule out a legal course of action because, as you said, it could very well be that the fan profile that Twitter finds to be a fan account, legitimately according to their policies, can still be considered trademark infringement or violation of the right of publicity in a court of law.
Enrico Schaefer: Yeah, these companies design their policies so that they don’t have to dig too far into it. And if it’s not completely obvious, then they punt because they, understandably so, how much will they have by way of resources to unwind the facts on all of these things.
And they don’t have a lot of resources. And these things are free and cheap on the Internet because they don’t have to devote money and resources to these types of issues because they’re protected. But for instance, if someone’s infringing a trademark on Instagram using the moniker, then your ability to sue Instagram is extremely limited or nonexistent, right? They get to stand back and let the parties duke it out.
Enrico Schaefer: All right. This is Tech Law Radio. We again want to say thank you and a shout-out to all of our listeners for making this a featured podcast on many of the platforms.
If you find that someone has an account set up under your name or your trademark and you think it needs to come off, then a good place to start is self-help. You don’t have to pay any attorneys any money or any fees. Just see if you can get it taken down. If you can’t, then come to us. If you are a celebrity or Instagram influencer who’s got a lot of problems out there and you want a law firm that is going to manage — your online brand and fights off cease-and-desist letters and notice letters and does take-down notices through the policies of the platforms, we do that for a lot of clients as well. So feel free to reach out. Give us a call.
Until next time, this is Attorney Enrico Schaefer and the Tech Law Podcast.
Social Media Policies and Self-Help Links