Last week beer maker Pabst Blue Ribbon, a/k/a PBR, used its Twitter account @PabstBlueRibbon in a humorous way to forewarn professional wrestler superstar John Cena and his employer World Wrestling Entertainment, Inc. (d/b/a WWE) of PBR’s intellectual property (IP) rights. As shown in PBR’s tweet below, John Cena’s new T-shirt design incorporates elements similar to PBR’s logo. As the tweet makes clear, PBR is requesting both Cena and the WWE to refrain from any further use of the new T-shirt.
PBR has taken a clever and unorthodox approach in conveying its asserted position via social media as opposed to sending the typical cease and desist letter through an attorney or law firm. By using Twitter, PBR has not only made Cena and the WWE aware of its asserted IP rights, but PBR has also gained notoriety from this approach – and maybe some new consumers.
Since PBR tweeted its position, the WWE apparently decided to stop selling any merchandise with the alleged PBR inspired logo. A rep for WWE said last week: “As a content creator, WWE respects trademarks and intellectual property, and therefore will not proceed selling the merchandise, despite it being an original design clearly within fair use.”
Had Cena and the WWE ignored PBR’s request, what would have been the outcome? Had PBR taken legal action, and depending on the jurisdiction, it may have asserted claims of trademark infringement and copyright infringement, as well as a claim of unfair competition.
A claim for trademark infringement may have been made under one or more theories including:
(1) Likelihood of Confusion – Confusion amongst the consuming public as to the source of the T-shirts and related merchandise; and
(2) Dilution – Under the terms of the US Federal Trademark Dilution Act, only “famous” trademarks are protected against dilution. A claim of dilution may be brought regardless of any possible confusion that may exist and be brought if it is believed that a defendant’s use of the trademark causes either:
(A) “Blurring”, by which the connection in consumers’ minds between the plaintiff’s mark and the plaintiff’s goods or services is weakened; or
(B) “Tarnishment”, which means that the defendant’s use is unsavory or unwholesome, or the mark is used in connection with inferior products.
A copyright infringement action may only be brought if PBR owns an actual federal copyright registration for its logo. Assuming PBR had a federal registration, to succeed with a copyright infringement suit, PBR would have to demonstrate that Cena and/or WWE violated one of the exclusive rights listed in 17 USC Section 106. In other words, PBR would have to prove that Cena and/or WWE created or distributed a “copy” of a protected work that is “substantially similar” to PBR’s original version.
Of course, a possible downside of using Twitter may include that PBR necessarily made it public as to a date in time it had actual knowledge of Cena and/or the WWE’s use of the new T-shirt design, i.e., May 27, 2016. So, had the WWE continued to sell the new T-shirt and if PBR waited until a future far off date to bring suit, Cena and/or the WWE may have been able to minimize damages or other recovery via the equitable defenses of “laches” and “acquiescence.” Also, making grievances know on social media (as opposed to sending directly to the offender) also poses the risk of counter-suits for defamation/libel in the event anything was said that is arguably disparaging and not “privileged” speech.
LEGAL BREAKDOWN: In the modern world of social media, IP owners will no doubt continue to utilize such tools as lines of communication to minimize initial legal costs and to approach adversaries. It apparently worked out well in this situation—both in terms of marketing and in getting results. But, it merits considering that if the tone of a message sent out via Twitter, Facebook, Instagram and the like comes off as too threatening, a potential defendant may strike first and seek a declaratory judgment or defamation lawsuit in a jurisdiction of its liking. If social media is used, don’t forget that it is still in print, can be difficult or impossible to retract, and may be ammo for an adversary. Naysaying attorneys may take some of the fun out of tweeting, and we certainly aren’t discouraging use of social media (which we love). But, caution should be used in deciding when to deploy social media as a legal weapon. A little legal oversight, or at least informed caution might save a company some money down the line from haphazard tweets—that turn into expensive legal battles.
Article by Scott Compton, J.D., and John Buche, J.D. Buche & Associates, P.C. is a law firm that handles a range of trademark, copyright and defamation litigation. The firm has offices in Houston, Texas and San Diego, California. www.texasinvent.com. www.buchelaw.com.