By John Patzakis
Recent court decisions reflect how social media evidence can play an important role in establishing actual confusion in a trademark infringement lawsuit. With the rise of social media, businesses and individuals have been able to reach wider audiences and create their own brand identities. However, this has also led to an increase in trademark infringement cases, as individuals and companies attempt to profit from the goodwill and reputation of established brands. In these cases, social media evidence is often instrumental in establishing whether there is actual confusion among consumers, which is a crucial element in proving trademark infringement. Social media evidence can help establish actual confusion by demonstrating how consumers interact with the marks in question.
In addition to user interactions such as comments or hashtags, social media evidence can also include analytics data and other metrics. For example, businesses can use social media analytics tools to track how consumers are interacting with their content and whether there are any spikes or changes in user behavior when a competitor begins using a similar mark. This data can help demonstrate actual confusion among consumers.
To establish trademark infringement, a plaintiff must prove that a defendant’s use of a mark is “likely to cause confusion” with the plaintiff’s mark under Title 15 of the U.S. Code, Section 1125(a)(1)(A). Many plaintiffs have recently highlighted social media posts, including hashtags, to establish evidence of actual confusion, which further bolsters their claims.
In Hermes International v. Rothschild, t (S.D.N.Y. Feb. 2, 2023), the luxury brand Hermès filed a trademark infringement action against the defendant who created and sold “MetaBirkin” nonfungible tokens (NFTs). Hermès asserted that Rothschild’s NFTs infringed upon its famous Birkin handbags both in name and appearance. Hermès successfully defeated a summary judgment motion by introducing social media posts into evidence that allegedly reflected actual confusion from consumers, including posts that read:
“Finally an NFT my wife can get on board with! Would LOVE to get her this Birken [sic] for Christmas!”
“I need this Birkin for the wifey! Please whitelist me sir. #WAGMI #MetaBirkins”
“Birkin NFT is the future of fashion.”
Hermès ultimately prevailed on their claims at trial based upon this and other key evidence.
In Great Western Air LLC v. Cirrus Design Corp., (D. Nev. Jan. 6, 2023), a personal airplane manufacturer, Cirrus Aircraft, asserted trademark infringement against a private charter jet company, Cirrus Aviation. Cirrus Aircraft sought at trial to establish actual confusion by pointing to various social media posts that showed images of Cirrus Aircraft planes, but tagged Cirrus Aviation’s social media handle, or that had hashtags such as #cirrusaviation.
But social media evidence reflecting evidence of actual confusion cannot help your case if it is not properly authenticated. In S10 Entertainment & Media LLC v. Samsung Electronics Co. Ltd., (C.D. Cal. Feb. 14, 2023) Samsung successfully objected to the admission of social media evidence that the plaintiff sought to admit into evidence. Specifically, Samsung successfully excluded what the court opinion describes as “21 unauthenticated social media posts and messages from Twitter and Instagram that S10 Entertainment purports indicate actual confusion” including “an unauthenticated YouTube video (and related screenshots).”
The court ruled that if the plaintiff intended to introduce social media posts from third parties to demonstrate that those third parties were confused, it could not authenticate those posts because it “cannot even demonstrate that these comments are real people.” The plaintiff’s use of screen shots and other failures to use best practices to authenticate the social media evidence was very costly, and defendant Samsung prevailed at trial one month after the pre-trial evidentiary hearing.
Litigants in trademark and other intellectual property actions should both understand the treasure trove of key evidence social media feeds provides, while at the same time employing best practices to properly collect and authenticate this critical evidence source.
X1 Social Discovery is the only eDiscovery solution to provide post-level parsing for social media posts, which is essential for both scalable collection and evidentiary authentication. To learn more about this important functionality, please contact us for more information.