Tweets in Ads and Trademark Law
The recent A.O. Scott “tweet in ad” affair is the stuff that dreams are made of (a film reference seemed appropriate) … law school professor dreams that is. Like a law school essay exam, the fact pattern is good issue spotting stuff.
For the uninitiated, I suggest starting here, then read The New York Times’ public editor’s take, and finally A.O. Scott’s published response.
Here’s the ad – in all its white space glory:
Media coverage generally focused on issues relating to copyright, fair use and Twitter policy (with a few passing mentions of trademark claims, if at all). Legal analysis was often lacking in large part because the interplay between social media, advertising and intellectual property is an evolving area of law. Ultimately, while it did open public discourse on what (to me anyway) are some very interesting issues … the episode did nothing, and will do nothing, to advance American jurisprudence.
Here’s what we know: Twitter guidelines state that without explicit permission from the content creator tweets may not be used in advertising. A.O. Scott explained that he never granted the advertiser (CBS Films) permission to use his tweet in their ad. He wrote: “The ad was a lie!”
So why did the ad appear in The New York Times? Read this article describing the tensions between the advertising side and editorial side of newspapers. Times are tough in the print advertising business. It was, after all, a $70,000 full-page display ad. It appears A.O. Scott’s hands were tied since The New York Times is his employer. Take that out of the equation and I suspect we have a different outcome here.
What if the ad appeared in The New York Post instead of The New York Times? (there is probably a good explanation for why the ad has not appeared in any other publication and only one time on one page in one edition of The New York Times.)
Lets assume it did and A.O. Scott wanted to stop it. His best shot may be to rely on trademark law not copyright — in particular “false endorsement” under the federal Lanham (or Trademark) Act. A separate state “right of publicity” claim is often alleged along with false endorsement (and perhaps the strongest claim here but not my focus); however, not all states recognize the right and its scope varies from state to state (New York recognizes a non-descendible right of publicity).
Public figures and celebrities have an obvious commercial interest in protecting their names, likeness and personas. Woody Allen, Tom Waits and Vanna White are three celebrities who have successfully used the Lanham Act based on false endorsement claims. A.O. Scott is a public figure. But there is no express requirement that an individual plaintiff be a “public figure” or “celebrity” to bring a false endorsement claim.
Section 43(a)(1)(A) (or 15 U.S.C. § 1125(a)(1)(A)) of the Lanham Act states as follows:
Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person …
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Some judicial explanation:
“False endorsement occurs when a person’s identity is connected with a product or service in such a way that consumers are likely to be misled about that person’s sponsorship or approval of the product or service.” Stayart v. Yahoo! Inc., 651 F. Supp.2d 873, 880-81 (E.D. Wis. 2009) (popularity or celebrity not necessary to bring false endorsement claim).
“Any person” can bring a claim under the Lanham Act but “any person” doesn’t really mean “any person.” The Lanham Act was designed to redress commercial confusion so courts interpret “any person” under §43(a) to refer to a person with a commercial interest in their name.
“all a commercial party needs to bring suit under the Act is a ‘reasonable interest to be protected’ against activities that violate the Act.” … In short, to satisfy the prudential standing requirement for a false endorsement claim under the Lanham Act, a plaintiff must show an intent to commercialize an interest in her identity.
Maremont v. Susan Fredman Design Group, Ltd., Case No. 10 C 7811 (N.D. Ill. Dec. 7, 2011) citing Dovenmuehle, 871 F.2d at 700; Stayart, 651 F.Supp.2d at 881. See also Condit v. Star Editorial, Inc., 259 F.Supp.2d 1046, 1052 (E.D. Cal. 2003) (to meet the prudential standing requirement, a plaintiff must “at least allege an existing intent to commercialize an interest in identity.”)
“under the proper circumstances, any person, celebrity or non-celebrity, has standing to sue under § 43(a) for false or misleading endorsements” … the court rules that the plaintiffs claim for false designation under 15 U.S.C. § 1125(a)(1)(A) does not fail simply because she is not a “celebrity.”
Doe v. Friendfinder Network, Inc., 540 F.Supp.2d 288, 301 (D.N.H. 2008) quoting 1 McCarthy, Rights of Publicity, § 5:22.
This is a messy area of law highly dependent on the facts and circumstances of each case. The various federal circuits employ different tests and elements for false endorsement claims. Even for purposes of establishing standing under §43(a) (in fact, next term the U.S. Supreme Court will decide two cases – 1 & 2 – involving standing to bring a false advertising, not endorsement, claim under §43(a)(1)(B) of the Lanham Act). Add social media to the mix and things are clearly muddled (oxymoron intended).
Which leads one to wonder … what would stop an advertiser from using one of YOUR tweets in an ad without your consent?
The majority of Twitter users are non-celebrities/non-public figures. If you tweet “I love my iPhone” – in any context – can you stop Apple from using your tweet in an ad without your consent?
And what’s Twitter’s role in all this? Is Twitter going to police and enforce its rules and terms on behalf of its users?
The threshold question for most is … does use of a Twitter account by a non-celebrity/non-public figure satisfy the commercial requirement to establish standing for a false endorsement claim under §43(a)?
In Maremont v. Susan Fredman Design Group, 2011 U.S. Dist. LEXIS 26441 (N.D. Ill.; March 15, 2011), a district court determined that use of Twitter and Facebook accounts to create a “following” in a particular professional industry demonstrated that plaintiff had commercialized her name.
… as a professional interior designer – she became well-known in the Chicago design community allowing her to create a popular personal following on Facebook and Twitter … her Tweets and Posts relate to her work in a commercial context, namely, as a professional interior designer … she was engaged in the commercial marketing of her skills when Defendants wrongfully used her name and likeness …
Arguably, any professional who actively uses a Twitter or Facebook account to market their skills and develop a following may satisfy the commercial requirement (at least to survive a motion for summary judgment at the Northern District of Illinois).
That leaves out people who only use social media for personal or non-business purposes. Are these purely non-commercial uses? The second inquiry is whether a non-celebrity/non-public figure can establish a likelihood of consumer confusion. As far as I know, courts have not decided these issues.
At some point they will. Things like this are happening.
And context matters …
The A.O. Scott tweet used in CBS Films’ ad was not lifted from a quote in a film review (which is, by custom, fair game) – it was a personal (and edited) quip about an album not a film. Nor was it literally “false” in what it implied since he included Inside Llewyn Davis at the top of his list of best pictures of the year. While a statement may be factually true it can still be misleading, cause consumer confusion and create a reasonable interest worth protecting. It is a false “endorsement” not a false “statement” that the claim seeks to remedy. As “chief movie critic” for The New York Times, Mr. Scott has an interest in not wanting to be perceived as a sellout or create the appearance of impropriety. His readers and followers may wrongly assume that he granted permission to use his tweet in an Oscar ad campaign, which puts into question his reputation and impartiality as a film reviewer. A.O. Scott noted:
My reasons for wanting you to see the movie are not exactly the same as those of CBS Films, the U.S. distributor, or Scott Rudin, a producer of the movie — my profit on the deal is strictly karmic — but we all agree that you should see it.
Irrespective of whether the statement in the ad is literally false, given the context it is misleading and confusing; all of which makes unauthorized use of the tweet potentially actionable as a false endorsement.
Fare thee well, Mr. Scott, under trademark law.
As for the rest of us “non-celebrity” Twitter users … there is a colorable claim there … but it’s in various shades of gray.