Lewis Roca Blog

Twitter has been referred to as "the Wild West of the internet—a lawless, godless place designed for sinners and sure to corrupt the pure of heart."¹ While Twitter may not corrupt everyone, it does open new avenues to commit trademark infringement.

What Are Hashtags and Hashflags?

A hashtag is a type of metadata tag used on social media symbolized with a "#" symbol. Users create a hashtag by placing the "#" sign in front of other text or characters, such as #love or #I_Hate_Mondays. This creates a searchable term on Twitter, Instagram, etc., and users can click on that hashtag to search for other social media posts using that same hashtag.²

A hashflag is a customized emoji (image) that is automatically inserted by Twitter in a tweet if a specific hashtag is used. Twitter launched hashflags for the 2010 World Cup.³ Twitter soon monetized this service, and started charging companies millions of dollars for a temporary hashflag.⁴ Coca-Cola was reportedly the first company to pay for a hashflag in 2015.⁵ For a period of time, anytime the hashtag #ShareaCoke was used, a custom emoji of two Coca-Cola bottles would automatically appear in the tweet:

Others joined in the fun. Taylor Swift had a custom emoji created for the release of the music video for "Bad Blood."⁶ Use of #BadBloodMusicVideo automatically inserted the below custom emoji into the tweet: 

A Twitter emoji for #GameOfThrones was introduced in 2016:

Twitter introduced a number of custom emojis for the 2016 NBA All-Star game, including emojis for current All-Stars such as LeBron James, Steph Curry, and former players such as Charles Barkley.⁷

#CharlesBarkley  #LeBronJames  #StephenCurry 

Trademark Clearance and Enforcement of Hashflags

The advent of custom Twitter emojis requires trademark and brand owners to consider whether to perform additional trademark clearance and enforcement efforts.

If your company or client is interested in securing a custom Twitter emoji, it is prudent to perform a thorough trademark clearance on both the hashtag and hashflag. If not, you can run into problems–just ask the Chicago Bears. For the start of the 2017 NFL season, Twitter unveiled customized emojis for each NFL team. For the Chicago Bears, use of the hashtag #GoBears would automatically insert the Chicago Bears logo  into the tweet. Had the Chicago Bears (or Twitter) performed a trademark clearance for the mark GO BEARS, they would have discovered that the Regents of the University of California owns a trademark registration for GO BEARS for use in connection with computer software for enhancing the fan experience (among other relevant goods and services).⁸ The mascot of the University of California, Berkeley is the Golden Bears.⁹ Cal fans took notice, and were not too happy with the automatic insertion of the Chicago Bears logo into their tweets referring to the Golden Bears of the University of California. The official Cal Athletics Twitter account posted the following:

In fact, for a time, the official Twitter account for the University of California football team featured a logo of the Chicago Bears.¹⁰

A few days later, Twitter, the NFL, and the Chicago Bears had moved on to a new Twitter hashtag/hashflag linked to #DaBears, the University of California reclaimed #GoBears, and the issue appears to be resolved for now.

But this episode raises the broader question—what trademark clearance, if any, does Twitter actually perform before linking an emoji image with a hashtag? Twitter's official trademark policy is that "Using another's trademark in a manner that may mislead or confuse others about your brand affiliation may be a violation of our trademark policy."¹¹ There is a lot of room for interpretation here.

So, yes, hashtag and hashflag infringement can be a "thing." Going forward, it is prudent for trademark and brand owners to monitor the use of Twitter custom emojis or hashflags for any infringement. A list of all current hashtag/hashflag custom emojis can be found at http://hashfla.gs/ and archived ones can be found at http://hashfla.gs/archive/. If you are counsel for an entity considering using this feature on Twitter, it would be prudent to perform a thorough trademark clearance prior to rolling out any custom emoji to avoid trademark infringement claims, and to avoid negative publicity. After the Chicago Bears were forced to give up #GoBears, at least one publication noted that the Chicago Bears were now 0-2 against the Pac-12 Conference—losing the #GoBears fight with the University of California, and apparently losing a prior trademark dispute with the University of Arizona over the mark Bear Down.¹²

Footnotes

[1] Wild, Andrew "#GoBears reclaimed by Cal football" The Daily Californian (Sept. 21, 2017) http://www.dailycal.org/2017/09/21/gobears-reclaimed-cal-football/ (accessed on September 25, 2017).

[2]See https://en.wikipedia.org/wiki/Hashtag (accessed on September 25, 2017).

[3] Garrity, Justin, "How Custom Emojis Crowned Twitter the Hashtag Registar" Business 2 Community (Feb. 13, 2016) http://www.business2community.com/twitter/custom-emojis-crowned-twitter-hashtag-registrar-01451565#IPMioJXx8DMKzzoL.97 (accessed on September 25, 2017).

[4] Johnson, Lauren "Twitter's Branded Emojis Come With a Million-Dollar Commitment" Adweek (Feb. 2, 2016) http://www.adweek.com/digital/twitters-branded-emojis-come-million-dollar-commitment-169327/ (accessed Sept. 25, 2017).

[5] Johnson, Lauren "These 4 Brands Are Embracing the Twitter Emoji Craze" Adweek (Nov. 5, 2015) http://www.adweek.com/digital/these-4-brands-are-embracing-twitter-emoji-craze-167979/ (accessed on September 25, 2017).

[6] Wright, Mic, "Taylor Swift nabs Twitter's first celebrity custom emoji #BadBloodMusicVideo" TNW (May 17, 2015) https://thenextweb.com/twitter/2015/05/17/haters-gonna-hastag-hashtag-hashtag/#.tnw_UnrcJiTz (accessed on September 25, 2017).

[7] See http://hashfla.gs/nbaallstarto/ (accessed on September 25, 2017).

[8] U.S. Trademark Reg. No. 4750476.

[9] Full disclosure, I am a graduate of the UC Berkeley School of Law, Class of 2000.

[10] See Wong, Leland, "Chicago Bears co-opt #GoBears. Cal fans take it well." SB Nation California Golden Blogs https://www.californiagoldenblogs.com/2017/9/7/16272106/chicago-bears-california-golden-bears-go-bears-twitter-emoji-mike-ditka-hashtag (accessed on September 25, 2017).

[11] https://support.twitter.com/articles/18367 (accessed on September 25, 2017).

[12] Al-Khateeb, Zac, "Cal beats Chicago Bears, reclaims 'Go Bears' trademark" Sporting News (Sept. 12, 2017 http://www.sportingnews.com/ncaa-football/news/cal-golden-bears-chicago-trademark-go-bears-pac-12/1k4mv73l0ionq1bxj0cdi5m1bi (accessed September 25, 2017).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.