The hashtag: the legal approach to an essential element of social networks

blog-970723_640A hashtag is a word or phrase (“tag” in English) preceded by a symbol similar to the hash (“hash”), used to thematically classify content on social networks.

In a notice published in the Official Journal of January 23, 2013 , the General Commission of Terminology and Neology defined “hashtag”, or “mot-dièse” in French, as: “A meaningful sequence of characters without spaces starting with # (hash), which indicates a topic of interest and is inserted in a message by the author to facilitate the identification thereof.”

The hashtag was first used on Twitter in August 2007. Technically, the hashtags allow the author  to contextualize a publication and consolidate the contents consisting of the same keywords. Therefore, in the same manner as the domain name, the hashtag has become a real communication tool and a significant, intangible asset for companies. Faced with the extensive use of the hashtag, it is necessary that limitations on its use are set and it therefore seems legitimate to question its legal status.

The hashtag and fundamental freedoms

Under French law there is no express provision relating to hashtags. However, if some hashtags are considered illegal such as ” #UnBonJuif”, “#AntiNoir” or more recently ” #JeSuisKouachi”, it falls both within the scope of the Law on the Freedom of the Press of July 29, 1881  on racial defamation offences as well as the recent counter-terrorism law of November 13, 2014 .

Use of such hashtags is unfortunately common in  that social networks do not review messages published by users until after they are published and often, only if they are subject to a specific report. This suggests that the derogatory liability, according to which the host of the publication will not be held liable if the latter is not aware of the message before it has been posted (Article 6 I. 2 of the Law of June 21, 2004 regarding Confidence in the Digital Economy  ), applies to social networks and cannot be questioned in cases of disputed hashtags. Thus, there is no doubt that a user who shall commit an offence or tort through the use of a hashtag that is provided for by the law could be prosecuted and convicted by the French courts, alone or along with the social network.

However in most cases, the disputed hashtags originate from, or are taken up by persons using a pseudonym, thus making their identification complicated. One can take the example of the hashtag ” #UnBonJuif”, for which Twitter had been served a notice by  various associations to take prompt action to remove them and to reveal the identity of the authors of the impugned words. Having faced controversy over the res judicata of the decision on account of the international nature of the social network, in July 2013 the associations finally managed to obtain – through mutual agreement with Twitter – the identification details of the authors of the contentious tweets.

As such, the hashtag which is used as a tool for expression and communication, falls under various criminal and civil law provisions on the protection of fundamental freedoms. Any abuse is therefore legally actionable. Despite numerous requests for the removal of tweets, so far, only Twitter has been subject to very few convictions in France, due to the abusive nature of hashtags. France alone accounts for 87% of requests worldwide.

Considering that a hashtag may enjoy legal protection under intellectual property law is a significant advantage for companies as they could avail themselves of civil and criminal law provisions to protect their trademark and image on social networks. However, no legislation has established the legal framework for this symbol yet or provided for penalties in the event of abusive practices.

Is the hashtag a work of the mind and can it be protected by copyright?

Article L. 112-1 of the Intellectual Property Code provides protection for “all works of the mind, “whatever their kind, form of expression, merit or purpose.” The following article  provides a non-exhaustive list of works that can be considered works of the mind. This list allows any new creation to be considered as a work of the mind provided that it fulfills the conditions for copyright which are: originality (the imprint of the author’s personality) and physical layout of the work. It would seem that case law with respect to copyright protection can be transposed to the hashtag. However, the appreciation of originality remains subjective and case law may vary.

The tangent character of the concept of originality contributes to the uncertainty of protecting a title by copyright. A hashtag composed of a single word can hardly be protected by copyright unless it is particularly original.

Moreover, one must dissociate the hashtag symbol from the word or words that follow it. The hashtag symbol does not seem to bring originality in itself inasmuch as it has been trivialized since its first use in 2007. Therefore, the content in its entirety will not necessarily be original only because it has been attached to a word or to a group of words.

Is the hashtag a distinctive symbol or a symbol subject to trademark protection?

As with domain names or usernames, the legal nature of the hashtag is not confirmed. Indeed, the symbol is chosen and  used freely and openly on social networks. In order to prevent misuse of their trademark, increasingly, trademark owners are applying for the registration of their trademark or their slogan accompanied by the symbol, “#”. The law is silent on this issue and case law is inconsistent. If it was admitted a few times that a hashtag can be protected by trademark law, it is not automatic and hashtag will only be protected by trademark law provided that they meet the criteria of a trademark which are: to be available, to have distinctive character and to be lawful.

In 2015, there were 1,398 application requests worldwide for the registration of trademarks including a hashtag, among which 159 were in France. Companies register hashtags as trademarks when developing an advertising or marketing campaign and when they want to enjoy legal protection. In the US, the operator T-Mobile USA registered in January 2015 the trademark “# 7NIGHTSTAND CHALLENGE.” At community level, one will note the application for registration of the trademark “#LOVE” by Sony Pictures. In France, the trademark “#CLIENT ADDICT” was applied by Future Telecom on June 6, 2014 and the registration was accepted by the National Institute of Industrial Property.

When registering its trademark, a company protects that trademark against any illegal reproduction or imitation and thus has legal means to fight against competitors who could, using an identical hashtag for their own trademark, generate commercial gains and thus resort to practices of economic parasitism.

In the US, in Fraternity Collection, LLC v Fargnoli, a decision dated March 31, 2015, a designer, after terminating business relations with its manufacturer, used hashtags adopting the manufacturer’s trademark (“#fratcollection” and ” #fraternitycollection”) on Instagram to sell his own creations. The Southern District of Mississippi considered that the use of a competitor’s name or of any of its products on social networks as a hashtag can in some circumstances lead to the consumers being misled.

In addition, companies have the opportunity to buy “sponsored tweets” on Twitter thus allowing them to gain better visibility on the social network. These tweets will indeed be emphasised and will normally be seen by Internet users who use that hashtag. A parallel can be drawn between hashtags used in these tweets and Google AdWords. The CJEU case law tends to consider that the use of a trademark as AdWords can amount to infringement if its use causes prejudice to the functions of the trademark, that is the specific image that the company wants the customers to have in mind.

The hashtag “#Rio2016” widespread on the Internet during the summer Olympic Games of 2016 has notably been subject to conflicts in Europe. Indeed, the German Olympic Committee banned the use of the hashtag to non-Olympic sponsor companies, citing an appeal to counterfeiting and an infringement of their intellectual property rights. However, with reference to the CJEU case law, use of this hashtag can only be prohibited if it causes prejudice to the functions of the trademark. A company is entitled to use this hashtag if it simply wants to support its country in the context of the competition, and no commercial link is established between the Olympic Games and the company (i.e. if the hashtag is not used in connection with the company’s goods and services). The hashtag “#Rio2016” was also subject to discussion in the US to the extent that the Olympic Committee has prohibited the use of the hashtag by non-Olympic companies. Some companies however, responded by confronting the Committee on the grounds of an excessively strict prohibition on social networks and therefore reminding the CJEU of its code of conduct.

If some companies have managed to protect trademarks containing the hashtag symbol, a decision of the Court of Appeal of Paris has nevertheless asserted its secondary character. The French Institut National de la Propriété Industrielle (INPI) also considered that due to its frequent use, the symbol “#” is secondary (CA Paris, December 5, 2014, No. 14/14773). The assessment of a trademark containing a hashtag is therefore made without this symbol, as a traditional trademark.

The United States does not agree with this since the trademark “#” has indeed been registered on November 25, 2014 at the USPTO. The USPTO stated that a trademark which consists wholly or partly of the character “#” or “hashtag” can be registered as a trademark if it indicates the origin of the goods or services of the applicant and provided they meet the traditional criteria of validity of a trademark. However, the California Central District Court ruled against this view in the case of Eksouzian against Albanese on August 7, 2015. The dispute concerned two competitors between whom there was an agreement prohibiting them from using the association of certain words as  a trademark to promote products. The judge found that the hashtag was descriptive and as such, could not be considered as a trademark. The registration of a trademark including a hashtag is thus not automatic.

Therefore, if previously the registration of trademarks could result from a preventive exercise on the part of the holder in order to prevent a third party in bad faith from registering a hashtag infringing the trademark, the assessment of the validity of a trademark with a hashtag is now exclusively on the word or expression following the “#”. The best way to protect a hashtag will depend on its intrinsic characteristics. Whether by copyright or trademark law, the mechanisms are however not absolute and the case law remains inconsistent.

Following “@” and “.com” what is the future of “#” ?