[Detroit, MI] In this episode of Tech Law Radio, Online Brand Protection Attorney Mallory King 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.
Are you using your personal name to promote products online or gain commercial traction? If so, this episode will provide you will valuable insight on how protecting your name as intellectual property up front 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, Mallory King. Mallory is a trademark and IP attorney with Traverse Legal, and she specializes in online brand enforcement, amongst other things. And she’s going to be talking to us today about something that’s kind of near and dear to our hearts here at Traverse Legal which is protecting your name online.
If you’re a celebrity or if you’re a social media influencer, how do you create branding rights around your name or the name that you’re using for your Instagram account or 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, 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, Mallory King, welcome to the show.
Mallory King: 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 likeness. All these things, these intangible things have asset value. So for instance, we always say 50 percent of Apple’s total market cap, the valuation of the company, is simply 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 really help companies grow the asset value and protect themselves and protect their intangible assets online.
So with that, Mallory, let’s talk a little 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, their brand, their account name, 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 and celebrity.
Mallory King: Absolutely. So a lot of celebrities and influencers actually 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 get a lot of times that these influencers don’t have handles that necessarily 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 make sure that your name, if you do trademark it, doesn’t create the likelihood of confusion issues. Kylie Jenner ran into a lot of problems trademarking her name [for cosmetic goods] because there were already other Kylie marks out there that were 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 about how the right of publicity can 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 like you said, it creates value in the event that 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 or Katy Perry, obviously, they do different things. But let’s just 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 creates the brand called Katy Perry, then all of a sudden it can be trademarked. It becomes an identifier for goods and services.
The same thing is true for influencers. If Katy Perry is simply doing social media influencing or being a brand ambassador for someone, then there is a description of services. There’s an international class under trademark law [IC 035] that allows her to potentially attach her name to the service of social media influencing or marketing. And now she again can potentially trademark her personal name as an influencer, as doing influencing under that name or under 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 syphoning off their good will for their own purposes.
So this concept of being a source identifier. Let’s talk a little bit about that, Mallory. How does that work? What is a source identifier?
Mallory King: In trademark law, in order to trademark a name or a mark, it needs to be the identifier of a source of goods. So we’ve talked about cosmetics a lot today already, 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, though, 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 actually trademark their social media handle.
And I’ve seen some pending registration actually include the [@] sign. Especially if your handle is really gaining traction and it becomes something that you want to then to put on a shirt, or you are going to just use it to crank out social media influencing. That’s an option you can explore now. And so it really is something that anybody using social media commercially should consider doing.
Enrico Schaefer: If I’m an influencer and I’m legitimately doing influencing under my Instagram handle or my Twitter account name, it doesn’t matter if I’ve got a thousand followers or a million followers. As long as I’m doing business and identifying myself under that name, which is effectively my brand, I can go ahead and register that potentially with the United States Patent and Trademark Office. Isn’t that true?
Mallory King: Yes. It could be you or me. If we’re using our name in a commercial manner, we could have that potential to 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 just 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, hey, I am a brand. This moniker, this name, this — whatever my account name is for a particular social media platform, that is my trademark. And it’s kind of 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 get the ability to kind of 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, we 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? So if I’m Mallory King, I know how famous you are and how so many people follow you and love you online, 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.
Mallory King: If you are a celebrity or justifiably well-known, the social media platforms have developed a verification process now. I’m sure everyone will be familiar with the little blue checkmark that comes next to any sort of official celebrity account that Twitter, Instagram, and Facebook will all place next to their handle or their name to indicate to the consumer or to 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 the 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 or their beliefs or the brands that 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 really tell people this is a legit account, and you can trust that this is the person who they are saying they are.
Enrico Schaefer: Yeah, it’s really interesting. And for celebrities, they do get a little bit of actual deference. But sometimes you will get celebrities whom 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 a lot of 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 create brands and knows how to navigate the digital space, who’s going to help you figure out what is the best way to go about protecting 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, then 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 in order 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’re having this podcast today is because, 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 just don’t know what they don’t know. So what do you want to talk about next, Mallory? What’s the next thing that people should be thinking about?
Mallory King: 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, like you said, there are ways to get that removed, either through that social media platform’s policies, or through trademark or right of publicity laws as well.
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 leverage to challenge that profile if you don’t like it because it’s still using your name. And it could be something that you just don’t want out there at all. 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’re not always going to have a slam-dunk right to your name all the 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 that you’re not authorizing.
Enrico Schaefer: Let’s talk a little bit about kind of the general concept here, because I think a lot of celebrities and a lot of influencers and a lot of social media stars, they 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 the stuff 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. The reason why this is so important is because it’s always challenging when you’re dealing in money, right? So we as lawyers, especially in the trademark space, and in doing commercial law, like we’re basically 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 or impinged or impugned, you tend to not think about it.
And in the Internet space, it’s so easy for anyone to do anything for good or bad motive that once it happens to you and it’s out there and you’re seeing 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, 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, like what are the essential terms that every social media influencer should have in their agreement, what are they licensing?
In many ways, they’re potentially licensing the copyright 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 in order to license stuff, you’ve got to own it. And the thing that you own – your name, your likeness, your brand, your trademark – the further that 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 try to deal with the carnage of a problem. Someone’s attacking your reputation online 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, for doing endorsements of products that I love and believe in. And now let’s build this brand up so that I can continue to grow and protect myself online. Way more fun, right, Mallory?
Mallory King: 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 like a big slew of items or merchandising or commercial uses for your name. You just need something to get you in the door and get you those rights because, like you said, it will be way more lucrative for you down the road.
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 and so that’s one piece of the puzzle. What is the right of publicity, and how is that different from a trademark?
Mallory King: 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’s recognized. But a lot of times, it is reserved for people who are in the limelight, are celebrities perhaps, professionals, sports players, anybody that could be publicly known, though there are a few states that 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 their image is being used in a way that 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 who doesn’t have 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, “Mallory King 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.
Mallory King: 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 I would 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 right of publicity, with trademark, copyright, do it that way.
Enrico Schaefer: It is good. And so let’s just 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 just say that the brand then decides that 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?
Mallory King: 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 what your copyright rights are, like I said, right of publicity, if it’s your face. 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 that’s 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 is going to set forth the expectation.
So we deal with these issues all the time where the brand has used the social media post or the picture or the 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, oh, 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?
Mallory King: Yeah.
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 rights of publicity lined up, getting 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 law. The law protects the trademark owner, the copyright owner, 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, your IP, your name and likeness before you start entering into these relationships, because it just becomes a bit of a mess.
You don’t want to have to hire an attorney to clean this stuff up. You’d rather just have everyone get it right in the first place.
Mallory King: Exactly. A lot of 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 it’s going to cost you much more to fix it if you don’t do it first. So that’s why I always try to emphasize with potential clients is this is an investment, and it’s going to 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 best ROI you can get. There’re a lot of things that you pay professionals to do where 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 themselves off, and your ability to enforce, your ability to fight back, and your asset value.
Now I know, Mallory, there’re a lot of verification systems that are out there now in social media where you can verify your account and these types of things. And we’re going to come back some day 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?
Mallory King: Absolutely. I will link to where those are located 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’re a lot of defenses that might work on Instagram that don’t work in United States Federal Court on an IP claim.
Mallory King: 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, like 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 right of publicity in a court of law.
Enrico Schaefer: Yeah, these companies, they 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 are they going to have by way of resources to try to unwind the facts on all of these things.
And they don’t have a lot of resources. And the reason why these things are free and cheap on the Internet is 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.
Mallory King: Exactly.
Enrico Schaefer: All right. This is Tech Law Radio. We’ve enjoyed having Mallory King on the show today. 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. Mallory has kindly offered to provide easy reference links to the policies of Facebook, Instagram, and Twitter, and perhaps other platforms as we continue to grow out the blogpost to help people help themselves.
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 the — your online brand and fight off and cease-and-desist letter and notice letter and do 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 this is the Tech Law Podcast.
Social Media Policies and Self-Help Links