Social media sites are transforming not only the daily lives of consumers, but also how companies interact with consumers. Here at Morrison Foerster, across all of our practice groups, we are seeing complex, cutting-edge legal issues arising out of social media. As with the Internet boom during the mid-to-late 1990s, social media is generating new legal questions at a far faster pace than the law’s ability to provide answers to such questions. In an effort to stay on top of these emerging issues, and to keep our clients and friends informed of new developments, Morrison Foerster publishes this blog devoted to the law and business of social media.<h2>ABOUT MORRISON FOERSTER</h2>Morrison Foerster is a leading global law firm that transforms complexity into advantage for its clients. Our clients include some of the largest financial institutions, banks, consulting and accounting firms, and Fortune 100, technology, and life sciences companies. Highlighting the firm’s commitment to client service, leadership in market-changing deals and impact litigation, and values-based culture, Morrison Foerster has been repeatedly recognized as one of the top 10 firms on The American Lawyer’s A-List. Year after year, the firm receives significant recognition from Chambers and The Legal 500 across their various guides, including Global, USA, Asia‑Pacific, Europe, UK, Latin America, and FinTech Legal. Our lawyers passionately care about delivering legal excellence while living our values. Morrison Foerster has a long-standing commitment to creating a culture that respects and celebrates differences, while providing an inclusive environment. The firm has achieved Mansfield Certification Plus since 2018 as a result of successfully reaching at least 30 percent women, communities of color, and LGBTQ+ lawyer representation in a notable number of current leadership roles and committees. The firm also has a long history of commitment to the community and society through providing pro bono legal services, including litigating for civil rights and civil liberties, improving public education and fostering the wellbeing of children, advocating for veterans, promoting international human rights, enforcing the right to asylum, and safeguarding the environment.

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Aaron is the chair of the firm’s Technology Transactions Group and co-chair of the Interactive + Digital Media Group. He advises clients on a wide range of complex transactions involving intellectual property and technology, including structuring and negotiating strategic licensing, development, collaboration, procurement, and distribution deals.Aaron’s practice focuses on advising both established and emerging companies in a variety of data- and technology-intensive sectors, including software, SaaS, cloud-based technology, digital media (social media, AR/VR, gaming, streaming media, AdTech), AI, healthcare, consumer electronics, e-commerce, other online business models, and mobile applications. He also maintains an active practice counseling companies on branding and marketing, trademark licensing, and content-related transactions, as well as the intellectual property aspects of mergers, acquisitions, asset spin-offs, and private equity investments.He has represented clients such as Autodesk, Meta, OpenAI, Splunk, Konami, Kaiser Permanente, SoftBank, Visa, and Yahoo, among others.Aaron has been recognized by numerous publications for his work on market-defining technology transactions. He is currently ranked by Chambers USA for “Technology Transactions.”Aaron also serves as co-editor of Socially Aware, the firm’s award-winning newsletter and blog devoted to the law and business of social media, and regularly publishes on various IP and technology-related topics. Aaron is also a sought-after speaker on new and emerging areas of law, and is a frequent presenter and panelist at conferences and legal services programs. In addition to his active practice, Aaron regularly provides pro bono assistance to various nonprofit and charitable organizations such as Common Sense Media and the Starlight Children’s Foundation. He is a member of the board of directors of California Lawyers for the Arts.While in law school at the University of California, Berkeley, Boalt Hall School of Law, Aaron served as executive editor of the California Law Review and was elected to the Order of the Coif. Following law school, Aaron served as law clerk to the Honorable William H. Orrick and the Honorable Martin J. Jenkins, both United States District Judges for the Northern District of California.

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Aaron is the chair of our Technology Transactions Group. He advises clients on a wide range of complex transactions involving intellectual property and technology, including structuring and negotiating strategic licensing, development, collaboration, procurement, and distribution deals. Aaron’s practice focuses on advising both established and emerging companies in a variety of data– and technology–intensive sectors, including software, SaaS, cloud computing, AR/VR, AI, gaming, healthcare, consumer electronics, social media, e–commerce, other online business models, and mobile applications. He also maintains an active practice counseling companies on the intellectual property aspects of mergers, acquisitions, asset spin–offs, and private equity investments.

Aaron P. Rubin

Lawrence Gallick is of counsel in the firm’s Austin office and a member of the Technology Transactions Group.Lawrence focuses his practice on technology transactions and licensing matters. His diverse experience includes advising on SaaS agreements, cross-licensing agreements, research and collaboration agreements, development agreements, and distribution agreements. He counsels a broad range of companies across the software, hardware, life sciences, biotech and FinTech spaces, as well as other entities including universities.He advises clients in connection with general corporate matters including contract negotiations, and leasing and technology placement agreements.Lawrence also serves as co-editor of <a href="https://www.sociallyawareblog.com/" target="_blank">Socially Aware</a>, the firm’s award-winning newsletter and blog devoted to the law and business of social media, and regularly publishes on various IP and technology-related topics.Prior to joining the firm, Lawrence was counsel at another major law firm. Before earning his law degree, Lawrence was a web consultant, project manager, and web developer in Portland, Oregon, where he managed and consulted on projects using industry methodologies and performed custom development and integration of content management systems.Lawrence was named a Super Lawyers “Rising Star” in 2015 and 2018–2022, and is licensed in both California and New York. Lawrence earned his J.D. from the University at Buffalo School of Law, where he was the electronic systems editor for the Buffalo Law Review and awarded the ABA-BNA Award for Excellence in the Study of Intellectual Property Law.

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Lawrence Gallick

Anthony Ramirez is a partner in the Technology Transactions Group in the New York office of Morrison Foerster.Anthony advises clients on general commercial and transactional matters. He regularly advises companies on the IP aspects of their M&A transactions. His clients include technology, digital media and content for television and music, financial services, and communications companies with diverse intellectual property assets and issues.His practice focuses on the legal aspects of developing, licensing, and commercializing technology and intellectual property, as well as negotiating general commercial contracts, including outsourcing transactions, as well as content and data licenses. He regularly assists clients with legal issues relating to licensing and commercialization of digital media and content, digital content that is distributed over the Internet or streamed, mobile applications and social media, as well as the licensing of recorded music for distribution via digital platforms. Anthony is also experienced with issues relating to open-source software, software development, artificial intelligence and machine learning, cloud-based technology, and protection of proprietary information.Anthony has extensive experience working on matters involving disruptive technologies, such as blockchain. He has helped fintech clients with general intellectual property issues in connection with terms of service for online financial products and services.Anthony is an integral part of the outside pro bono legal team for nonprofit organizations based in New York, including advising clients on legal issues regarding entertainment, social media, privacy rights, and the negotiation of outsourcing and service agreements. Anthony received his J.D. from the University of Michigan Law School in 2009. He received his B.S. from Cornell University in 2004.

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Anthony Ramirez is a partner in the Technology Transactions Group in the New York office of Morrison Foerster. He advises clients on general commercial and transactional matters. His clients include technology, media, and communications companies with considerable intellectual property assets. His practice focuses on the legal aspects of licensing and commercializing technology and intellectual property, as well as negotiating general commercial contracts. He also regularly assists clients with legal issues relating to mobile applications and social media.

Anthony M. Ramirez

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Since our previous article on the emerging issue of trademark rights in hashtags, the use of hashtags in social media marketing has continued to grow. Described

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#Trademarks?: Hashtags as Trademarks Revisited

#Trademarks?: Hashtags as Trademarks Revisited | Socially Aware

Since our previous article on the emerging issue of <a href="https://www.sociallyawareblog.com/2015/05/13/trademarks-hashtags-as-trademarks/" target="_blank" rel="noopener">trademark rights in hashtags</a>, the use of hashtags in social media marketing has continued to grow. Described as the “ignition keys to a social media keyword search,” hashtags can be powerful tools for creating communities around a brand. Indeed, <a href="http://scholarship.law.unc.edu/cgi/viewcontent.cgi?article=4579&context=nclr" target="_blank" rel="noopener">recent scholarship</a> suggests that modern brand narratives are written in collaboration with consumer communities rather than by brand owners acting alone.A catchy hashtag creates its own social media channel and brand owners naturally want to prevent competitors from hijacking the content stream tied to their cleverly crafted messages.  To safeguard the investment in this narrative, companies are increasingly seeking trademark protection for their hashtags. Applications for hashtag trademarks continue to soar, with over <a href="http://www.wsj.com/articles/companies-increasingly-trademark-hashtags-1459333936" target="_blank" rel="noopener">1,042 hashtag trademark applications in 2015</a> in the United States alone. However, despite the United States Patent and Trademark Office’s (or USPTO’s) <a href="http://www.wsj.com/articles/companies-increasingly-trademark-hashtags-1459333936" target="_blank" rel="noopener">guidance regarding hashtag trademarks</a> in its Trademark Manual of Examining Procedure (or TMEP), hashtags continue to pose challenges for both USPTO examiners and the courts.At the USPTO, examination and registration of hashtag marks remain somewhat inconsistent. As we noted in our previous article, the USPTO has addressed the issue of hashtags’ ability to function as trademarks in the “<a href="https://mpep.uspto.gov/RDMS/TMEP/current#/current/ch1200_d1ff5e_1b5ad_3bc.html" target="_blank" rel="noopener">Hashtag Marks</a>” section of the Trademark Manual of Examination Procedure. In essence, the TMEP states that the hashtag symbol should be ignored by the examiner and the hashtag mark should be examined in the same manner that any other tag line or phrase would be. In other words, according to the USPTO, a hashtag is no more—but also no less—capable of functioning as a trademark than the non-hashtag form of the relevant tag line or phrase would be. But does this approach ignore some unique features of hashtag marks?First, while descriptiveness is an issue for both hashtag and non-hashtag marks, the fact that hashtag marks also function as online search terms would seem to increase the need for a hashtag to have a close and obvious connection to a particular brand if it is to be recognized as a trademark—i.e., an identifier of the source of goods and services—and not merely a search term. For example, the word “Tasty” may be merely descriptive when used on a package of bread, but #Tasty is arguably even less distinctive when used only in a social media campaign, considering that the hashtag does not actually appear on the product and, considered as a search term, could be relevant to any number of topics.The TMEP notes this problem and instructs that #Skater for skateboarding equipment would not be registrable as merely descriptive. However, in practice, the USPTO has not always been entirely consistent in assessing the descriptiveness of hashtag trademarks. For example, the USPTO has allowed <a href="http://tsdr.uspto.gov/#caseNumber=85942398&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#LetsBowl</a> for bowling balls and <a href="http://tsdr.uspto.gov/#caseNumber=4,551,737&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#Smart</a> for clothing without raising a descriptiveness objection. The USPTO also allowed Abercrombie & Fitch to register <a href="http://tsdr.uspto.gov/#caseNumber=86242575&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#SoCalStylist</a> for retail store services featuring clothing and accessories, and a non-profit to register <a href="http://tsdr.uspto.gov/#caseNumber=86604240&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#KickHunger</a> for promoting public awareness of hunger and hunger relief. But the USPTO found <a href="http://tsdr.uspto.gov/#caseNumber=4,630,209&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#WeatherWednesday</a> for an online newsletter about the weather and <a href="http://tsdr.uspto.gov/#caseNumber=4,718,322&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#MusicVideoMonday</a> for advertising services and mobile marketing to be merely descriptive, allowing only registration on the supplemental register.Second, the fact that a hashtag often appears only on social media rather than on the goods themselves or in advertising raises questions regarding what constitutes an <a href="http://www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal" target="_blank" rel="noopener">acceptable specimen</a> for a hashtag mark. The USPTO has not formulated a clear policy on this issue. The TMEP notes that if #SewFun was the subject of a trademark application for “instruction in the field of sewing” with a specimen consisting of a screenshot of a social networking site used to organize user comments about sewing classes that the applicant offers, the mark would be refused registration for failure to function as a service mark. Accordingly, the USPTO rejected the initial specimen for <a href="http://tsdr.uspto.gov/#caseNumber=86269433&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#LeadershipFlow</a> in connection with business education services that consisted of the applicant’s website with posts about business topics. However, the USPTO allowed Procter & Gamble to register <a href="http://tsdr.uspto.gov/#caseNumber=86517834&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch" target="_blank" rel="noopener">#LikeAGirl</a> for “providing information in the field of female empowerment, anti-gender discrimination via social media” with a screenshot of its Twitter page as a specimen.Only a handful of court decisions have dealt with the subject of trademark rights in hashtags to date, with similarly inconsistent outcomes. As <a href="https://www.sociallyawareblog.com/2015/05/13/trademarks-hashtags-as-trademarks/" target="_blank" rel="noopener">we previously wrote</a>, a district court in Mississippi held that use of the tags #FratCollection and #FraternityCollection by a competitor of the clothing maker Fraternity Collection was sufficient to state a claim for false advertising under the Lanham Act and for trademark infringement under state law. However, in a recent California case, <a href="http://scholar.google.com/scholar_case?case=1219686278969605830" target="_blank" rel="noopener">Eksouzian v. Albanese</a>, the court concluded that a competitor’s use of a hashtag did not violate a settlement agreement on trademark usage between the parties because the hashtag was “merely a functional tool.”The parties in Eksouzian had jointly developed a compact vaporizer pen, but later separated and entered into a settlement agreement pursuant to which the plaintiffs were permitted to use the terms “Cloud” or “Cloud Vapes” as trademarks, but not in such close association with the words “pen” or “penz”—common descriptors for compact vaporizers—as to form a unitary trademark. Plaintiffs then used the hashtags #cloudpen and #cloudpenz in connection with promotional contests on social media. The court found that plaintiffs did not breach the settlement agreement because “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves” and use of the hashtag “is merely a functional tool to direct the location of Plaintiffs’ promotion so that it is viewed by a group of consumers, not an actual trademark.” This conclusion seems to be at odds with the USPTO’s willingness to register hashtags as trademarks.In another recent case, Public Impact, LLC v. Boston Consulting Group, Inc., a Massachusetts court came to the opposite conclusion. In that case, Public Impact, LLC, an education policy and management consulting firm that owns a federal registration for the mark PUBLIC IMPACT, sought a preliminary injunction to prevent the defendant, Boston Consulting Group (or BCG), from using the hashtag #PublicImpact and the username @4PublicImpact on social media. After determining that BCG had not submitted sufficient evidence to show that “public impact” is generic for consulting services in light of the fact that Public Impact’s federal registration had attained incontestable status, the court concluded that BCG’s use of the username and hashtag was likely to constitute trademark infringement, particularly given the similarity of the services provided by the two organizations. Accordingly, the court enjoined BCG from using the phrase “public impact” with two or fewer letters, numbers, or characters appended in any form on social media or in other commercial activities.In sum, the application of trademark law to hashtags and the rapidly evolving social media landscape is still in its very early stages. With regard to federal registration, one scholar has argued that the USPTO should treat hashtag marks as “<a href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2630195" target="_blank" rel="noopener">primarily merely a hashtag</a>” until the applicant can establish that the mark actually functions as a source indicator, an approach that could avoid some of the inconsistencies seen in the registration process today. The bigger questions regarding the scope of protection afforded to hashtag marks and the analysis of trademark infringement involving use of hashtag marks on social media, however, have yet to be resolved.*          *        *Check out the first article in this series: <a href="https://www.sociallyawareblog.com/2015/05/13/trademarks-hashtags-as-trademarks/" target="_blank" rel="noopener">#Trademarks?: Hashtags as Trademarks</a>For other Socially Aware posts on intellectual property issues, please see the following: <a href="https://www.sociallyawareblog.com/2016/06/24/show-me-the-money-supreme-court-guidance-on-attorneys-fees-awards-in-copyright-cases/" target="_blank" rel="noopener">The Kirtsaeng Opinion: Supreme Court Guidance on Attorneys’ Fees Awards in Copyright Cases</a>; <a href="https://www.sociallyawareblog.com/2016/05/03/do-not-go-gentle-into-that-jurisdiction-no-situs-of-injury-merely-because-copyrighted-material-is-accessible/" target="_blank" rel="noopener">Do Not Go Gentle Into That Jurisdiction: No “Situs of Injury” Merely Because Copyrighted Material Is Accessible</a>; and <a href="https://www.sociallyawareblog.com/2015/03/03/twenty-years-down-the-road-a-qa-with-paul-goldstein-author-of-copyrights-highway/" target="_blank" rel="noopener">Twenty Years Down the Road: A Q&A With Paul Goldstein, Author of Copyright’s Highway</a>.