Snapchat and ephemeral media: trademark law implications?

This morning I learned that Vladimir Putin gifted Egypt a Kalashnikov rifle on a state visit through Washington Post on Snapchat. Interesting to me was the fact that I paid full attention to this short tidbit of information due to the simple fact that I had to hold my finger down to my phone’s screen in order to watch the 10 second video, under the threat that release of my finger would cut my video off and would need to be restarted again.

Snapchat is a messaging/media sharing app which I call an ephemeral content provider (“ECP”) because it requires users to press and hold their mobile screen in order to view and continue viewing content such as pictures and short videos, which then self-destruct like a tape from Mission Impossible. Limited time is another characteristic of Snapchat: media either self-deletes 10 seconds after content is opened or is available for unlimited viewing for a 24 hour window, set by the content creator. But self-destruction always occurs.

Think about what this means at a basic level for content: fuller attention is being paid to the content. I have to actively do something to access information, and if I don’t pay attention it will disappear. Snapchat has assured content providers that when people take in content its platform, they are likely paying active attention to the content. They’ve done this by introducing scarcity to the content through Snapchat’s touch/hold/watch/disappear process for users to view content. Did I mention that in four years Snapchat has attracted 100 million monthly active users (MAUs)? For a reference point, Facebook reported 350 million MAUs in 2014.

No, I haven’t become a spokesperson for Snapchat, but the magnitude of Snapchat and other contending ECPs must be explained because I’m assuming that some readers of this blog may not know what Snapchat is despite the large user base, and for good reason: it’s unknown to “older” people. The chief demographic of Snapchat users is 13-25, and even one 32-year-old professional  technology writer has admitted that trying to use Snapchat makes him feel old. To sum it up: “If Facebook is where your parents live, and Instagram and Twitter where millennials hang, Snapchat is where kids of Generation Z have gone to seek refuge.”

All this hoopla aside, there are some interesting movements within the expansion ECPs which tug at some of the underpinnings to IP law, namely trademark law. One side effect of a consumer base accustomed to digesting self-deleting media is that advertising and brand infringement carry on as usual, maybe even more intensely, but the latter gains an advantage as a consequence disappearing tracks. Put in other words, the user base of an app like Snapchat is even more influenced by content, including infringing content, but the owners of infringed brands have less time to detect and react to infringement, and evidence gathering will also be more difficult. Imagine all increasing amount of subpoenas to access Snapchat data before data is deleted from their servers, a feature which is an express selling point of the Snapchat model.

There is support for the notion that people are paying attention to media distribution on Snapchat; some are even calling it a replacement of cable television. The “Discover” platform on Snapchat released January 27, 2015 as a designated portal for media content (in addition to the Snapchat “Stories” option). Discover launched with 11 publishers including CNN, The Daily Mail, and National Geographic, and the content operates similarly to the messaging app itself: stories are ephemeral. Content is published once a day and appear for one day only (in case you didn’t know, Snapchat messages are set to automatically delete after 3-10 seconds after viewed). Within Discover stories, more adspace is sold: BMW will advertise on CNN’s channel and T-mobile on The Daily Mail to name a few.  This is already in addition to Snapchat’s 24-hour ad campaigns which sell for an unwavering $750,000 (McDonald’s and Samsung are in).

As a trademark lawyer, I think there are many implications which ephemeral media will have with IP law. DMCA is rendered useless because ephemeral content providers take down content at regular, short intervals; discovering potential infringement requires more, real-time monitoring; and evidence gathering will be hampered because the time between detection and action will be abbreviated. These issues will arise as more ECPs develop. I’d love to hear what you think and/or why you disagree below.

SCOTUS and infographic on the Hana Bank case on “tacking”

I just skimmed the transcript of the Hana Bank case on “tacking” before the Supreme Court and provided comments and some of the interesting dialogue below. The oral hearings for the case took place about two weeks ago on December 3, 2014. The graphic below is my attempt at using visual design tools to help make cases easier to understand (comments/criticisms welcome). This case is about “tacking”, which often occurs in trademark infringement cases where a earlier user has a trademark and then later alters/updates the trademark to stay current. For example, think of the Pepsi logo and all of it’s evolutions. In between the original and updated trademark, a second user begins using a trademark and then sues the earlier user when it begins using the updated trademark. “Tacking” can be used by the defendant who is the earlier user as a defense, essentially claiming that the rights of the updated trademark began at the time of the original trademark. Thus, the trademark protection of the original mark is “tacked on” to the protection of the updated mark.

However, tacking is only allowed where the updated mark is not too different from the original mark, or in legal terms, the marks must have “the same commercial impression”. To best explain the facts of the Hana Bank case, I’ve made a graphic which I think will make sense of the matter. I would be really interested in hearing your comments about the clarity and even the design of the graphic.

As you see there, the main question in the case is whether the determination of the commercial impression between the original and updated marks should be for a judge or a jury.  At the trial level, the determination was made by a jury, and the Petitioner in the Supreme Court was arguing that the question should be one for the judge, and not the jury. The Justices got right into the meat of the matter early on in the hearing:

Justice Ginsburg: “to determine whether there is [a, in] the magic words, ‘same continuing commercial impression to consumers,’ then the one’s that’s better equipped to make that determination are people who are consumers, not jurists…Even the Federal Circuit case that [supports the Petitioner says that the is whether the old and new mark convey the same continued commercial impression to consumers.”

The Petitioner’s lawyer tries to answer, unsuccessfully: “the Federal Circuit adds an additional factor [to the analysis], which is the aural and visual appearance, do the two marks have the same aural and visual appearance? And what I think that shows is if the courts are not looking at this as a factual comparison…”

Justice Ginsberg finishes his sentence: “aural and visual to whom? To the people likely to buy these products, not to the judge.”

Lastly, I thought the Petitioner interestingly brought a case to the discussion which I thought did not support his case at all. The Petitioner was using a case where the original mark was SERVICEMASTER and was later updated to SERVICEMASTER CLEAN. In between, the second user began using MASTER CLEAN. In that case, tacking was allowed for the earlier user, which I thought was not good for illustrating Petitioner’s point that judges can make good calls in determining “same commercial impression”. SERVICEMASTER and SERVICEMASTER CLEAN are far too different to be considered as having the same commercial impression, where the standard is usually quite tight and doesn’t allow for widely varying marks to benefit from tacking.

Due to the high volume of questioning by the Justices of the Petitioner, I’d wager that this case will be in favor of the Respondents, making tacking a question of fact for juries. We’ll know in a few months. I’d be interesting in hearing from others who’ve been following this case, especially if you saw the oral hearing differently.