The IOC is Playing Trademark Bully—because They Can

By Zosha Millman | LXBN | July 26, 2016

The Olympic Games are almost here and—right on schedule—companies are already brushing up against the bristles of the intellectual property of the International Olympic Committee (IOC). 

Every four years attorneys have to remind companies of what can happen if you run afoul of the IOC’s trademarks. Not only are this year’s Rio de Janeiro Games no exception, but they are actually raising the bar a bit: This year the IOC is aiming to limit not just use of traditional trademarks, but hashtags and even reporting. And their whole approach seems wildly off-base—at least, initially. 

After all, trademarks are supposed to help users follow a Twitter (or, now, general social media) conversation along, and keep track of all the communication across the platform. It’s a shorthand that serves as both a tag and a topic statement.

But the IOC, sees it as something different: A way to create a gate around sponsors and non-sponsors, as The Guardian reports:

One of these letters, written by USOC chief marketing officer Lisa Baird and obtained by ESPN, states: “Commercial entities may not post about the Trials or Games on their corporate social media accounts. This restriction includes the use of USOC’s trademarks in hashtags such as #Rio2016 or #TeamUSA.”

The mean-spirited approach is designed to protect the cash-cow sponsors – such as Coca Cola, McDonald’s, GE, P&G, Visa and Samsung – who fork out for marketing presence at the event.

…The USOC could have a trademark case if a company was pretending to be a headline sponsor when it fact it wasn’t, but most uses of these hashtags appear to be companies wishing athletes luck on Twitter.

The same letter sent by the USOC reminds companies (except for those involved in news media) that they can’t reference any Olympic results or share or repost anything from the official Olympic account.

Hashtags themselves can be trademarked, as an increasing number of companies and brands are doing. And they can—per the Trademark Manual of Examining Procedure’s guidance—so long as it follows the same rules as any other trademarked phrase. The “#” of a hashtag doesn’t serve any source-identifying function, which means that it won’t affect the trademarkability of a phrase. But as Wes Anderson on DuetsBlog reported back in May when the USPTO released explicit guidance about trademarked hashtags, protecting a hashtagged mark isn’t as easy as it is other places, because of the distinct social nature of hashtags:

Consider how the appearance changes when a brand name is used as a hashtag. Applebee’s® gives all the information straight away, thanks in part to use of the registration symbol – it tells others that this is a brand name. But #applebees doesn’t readily convey as much information (and in fact here omits the apostrophe, because for some time hashtags were often “broken” by punctuation or numbering).

Among the social media savvy, the hashtag symbol itself is weighted with its own meaning – a hashtag is a self-contained invitation to be used by third parties on social media, much like an invitation to search for a term on a search engine. It invites users to see what’s already been posted containing that hashtag, and to contribute their own content. Consider the more natural functions of hashtags, such as charity events like today’s #RedNoseDay, which is trending this morning on Twitter. The very idea is to encourage unsolicited and unpoliced third party usage.

This is anathema to many trademark owners, who of course wish to (and are required to) establish control over use of their brand names. And there certainly can be exceptions for hashtags that zealously function as trademarks, and that consumers recognize as brand names unto themselves. Even then, brand owners must be prepared for rampant third-party use of a hashtag mark, and understand that nominative fair use is far more likely to apply in the hashtag context.

Which would normally be the case with the usage of #TeamUSA and #Rio2016, which aren’t used to maliciously misrepresent companies’ sponsorship status but instead to follow along with the conversation. According to The Guardian, most of the tweets and posts that have used the offending hashmarks are simply wishing the athletes well, not misrepresenting themselves as a sponsor of “Team USA.”

“Trademark infringement occurs when another party uses a trademark and confuses the public as to the source of a product or service that’s being used in commerce,” IP lawyer Mark Terry told The Guardian. “That’s not what happens when you use a hashtag. I’m not selling a product or service, I’m just making statements on an open forum. How else do you indicate you are talking about the Rio 2016 Olympics without saying #Rio2016?”

Except that the IOC and its ilk (like the United State Olympic Committee, or USOC) enjoy a privileged status around their trademarks. Very privileged.

“The USOC can easily sue you, and win,” wrote Po Yi and Jessica Borowick of Venable on the firm’s All About Advertising Law. “The USOC can bring a civil action against anyone who uses an Olympic trademark in a way that tends to cause confusion or falsely suggests an association between any Olympic or Paralympic activity and that user without proper consent. This is a lower burden than trademark law generally imposes on regular rights-holders, and does not include a requirement that the USOC show any likelihood of consumer confusion.”

Which means that brands that tweet out things about #TeamUSA—even a simple congratulations or well-wishing—could be easily found as suggesting an association between their company and the Olympic activities. It’s an exact, and harsh kind of law, and it has always been meant to be. The games may be here for a month, but brands may want to be careful about talking around them; there’s nothing worse than tripping over yourself as you try to go for the gold.

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