Do We Need #consent?

In today's digital age where consumers rely heavily on social media for news and entertainment, it has become increasingly common for companies to join the conversation on popular platforms such as Twitter, Facebook and Instagram. Whether through live tweeting to followers during a nationally televised sporting event or awards show, hosting a “Twitter Party” led by bloggers and influencers, or simply maintaining a brand presence as an advertising channel, marketers have found that authentic and meaningful engagement with consumers on Twitter can have a lasting impact.

While numerous companies now maintain an active presence on Twitter, the extent to which brands can lawfully interact with other Twitter users for advertising and similar commercial purposes is still not yet clearly defined and, consequently, the legal risk associated with each tweet is not always properly weighed before a promotional social media campaign is launched. It is tempting to assume that, because a tweet is so fleeting, it is unnecessary to jump through the typical legal hoops to clear the content before it is posted on Twitter. But what appears to be a harmless, transitory post may later give rise to a legal headache. Thus, it is imperative that in-house counsel properly educate and closely work with their brand marketing teams on developing a Twitter content clearance risk minimization strategy in order to reduce the risk of a costly lawsuit as well as the negative publicity that can result from a social media strategy gone awry.

Background

Similar to other social media platforms, Twitter's microblogging and social networking service was designed to provide a forum for human interaction and conversations. Through 140-character-max messages (i.e., tweets), users can post content for others to read and can “follow” other users in order to subscribe to their tweets. Hashtags ' descriptive tags that users commonly include in their tweets ' add color to the conversations taking place, and provide a way for users to index topics and see what is trending on the platform. Users can also “retweet” others' tweets, which allows the original tweet to be shared with the followers of the user who does the retweeting. In addition, users can also “favorite” others' tweets, which makes them easier to go back to and find in the future.

Twitter actively encourages re- tweeting and the broad sharing of third-party content through its platform. These rules of engagement applicable to users on Twitter must be closely examined to determine the full range of risks a company faces when utilizing the platform for promotional purposes.

'Commercial' Speech

Tweets can include references to television shows and products, and they can name and depict photographs of celebrities and include copyrighted content such as artwork and excerpts from literature. In most cases, such content shared by individual users on Twitter would likely be considered “expressive” conduct because it is not sent with any underlying commercial purpose. However, when coming from an advertiser, such content shared on Twitter would likely be considered “commercial” speech because it is inherently commercial in nature, and as a result, it could give rise to a claim for copyright and/or trademark infringement and a right of publicity or privacy claim.

While they have not yet opined on the scope of commercial speech in the context of Twitter, courts have historically characterized it as truthful, nonmisleading speech that proposes a commercial transaction. See, e.g., Bolger v. Young Drug Products Corp., 463 U.S. 60 (1983). Commercial speech receives less protection under the First Amendment as compared with other forms of speech, and generally allows plaintiffs to pursue false association/ false endorsement and right of publicity claims over a First Amendment objection.

In the commercial speech context, a seemingly harmless tweet originally posted by an individual that includes references to a favorite television show, a sports team, photographs or a news article, the name of a celebrity, or a hashtag that incorporates a third party's trademark could all result in a number of legal claims if retweeted by an advertiser, including trademark infringement, copyright infringement, false endorsement, and violations of rights of publicity and privacy. By the same token, an original tweet posted by an advertiser from its official Twitter account that incorporates any of these elements, without permission, could also create a similar risk of legal claims. Original or retweeted content that contains claims about a product or comparative claims to a competitor's product could also give rise to false advertising/unfair competition, if such claims are not substantiated.

Further, other ordinary actions taken by individual users on Twitter, such as replying to users, following users, or favoriting other users' tweets, carry legal risk when a company is involved. For example, while the “scope of right” of publicity rights varies in each state, every state that recognizes an individual's right of publicity protects individuals from the unauthorized commercial use of their name or likeness. Thus, an advertiser's use of an individual's name in a reply message to that individual or a retweet of the user's tweet, or an advertiser “favoriting” the user's tweet, could qualify as a promotional use, which could potentially violate a state's right of publicity law. In each case, the tweet or the fact that the tweet was favorited by the advertiser would remain on the advertiser's timeline and Twitter profile page and could arguably be deemed an advertisement.

Crossing the Line

In cases where an advertiser retweets or “favorites” a celebrity tweet that mentions the advertiser's products or services, or follows a celebrity with whom it has no formal relationship outside of Twitter, the stakes are higher because of the commercial value of a celebrity's name/likeness. Such activity can potentially lead to false endorsement and right of publicity claims brought by the celebrity. This scenario formed the basis for Katherine Heigl's recent Lanham Act (false endorsement) and state right of publicity/unfair competition lawsuit against retailer Duane Reade in connection with its posting of a photo depicting Heigl exiting a Duane Reade store with two shopping bags, along with a caption that read: “Love a quick #DuaneReade run? Even @KatieHeigl can't resist shopping #NYC's favorite drugstore.” See Heigl v. Duane Reade, Inc., 14 CV 2502 (S.D.N.Y. complaint filed Apr. 9, 2014). The parties settled the lawsuit in August 2014 for an undisclosed sum, with Duane Reade making a financial contribution to benefit the Jason Debus Heigl Foundation.

Even if no celebrity rights are involved and only ordinary consumers' rights of publicity are violated, we can envision a scenario where the amount of infringing content shared by one company could be so voluminous that it could justify a class action lawsuit brought on behalf of each individual who had his or her right of publicity violated in a similar manner.

Terms of Service

What complicates matters further is that there is currently scant authority to provide guidance on the repercussions of a company's use or reuse of content on Twitter, and whether any different standard would apply given the nature of the platform. A search for any waiver or license grant directly to advertisers for various commercial uses of content on Twitter, through Twitter's Terms of Service (TOS), is futile. The TOS provide a baseline for determining how content will be used and detail the grant of rights from each user to Twitter, but advertisers do not clearly fit into the equation. The TOS provide that each user is responsible for its use of the Twitter service, for any content posted to the service, and for any consequences that result. See Twitter Terms of Service, https://twitter.com/tos (last visited Oct. 1, 2014).

Under the TOS, all posted content is the sole responsibility of the person who originated such content and, by posting or displaying content on Twitter, users grant Twitter “a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such [c]ontent in any and all media or distribution methods (now known or later developed).” Id. The TOS clarifies through a highlighted “Tip” that the license authorizes Twitter to “make your Tweets available to the rest of the world and to let others do the same.” Id. Users agree that the license includes the right for Twitter to make content “available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such content on other media and services, subject to [Twitter's] terms and conditions for such [c]ontent use,” and that any such use by Twitter or its partners may be made without any compensation to the user. Id.

Users are also required to comply with Twitter's Rules, which generally prohibit impersonation, copyright and trademark infringement, privacy violations, spam, pornography, and other unlawful activity through tweets. Id. Further guidance for developers can be found in Twitter's API License (see https://dev.twitter.com/terms/api-terms), which states that users' permission must be obtained before “using content in a manner that is inconsistent with the Display Requirements and would require the user's permission under applicable law, including, without limitation, uses of Twitter Content that features the name, likeness, or identifying persona of a person.”

Taken as a whole, Twitter's TOS provide that users are responsible for the content of their tweets, they retain ownership of any intellectual property rights included therein, and they grant a broad license and sublicense to Twitter and its “partners” to reuse such messages without any compensation to the original author. The API License further clarifies that developers must expressly obtain consent from the user for use of his/her name, likeness, or identifying persona.

This means that advertisers are ultimately responsible for the content of their tweets, retweets or favorites, as Twitter has not obtained any express rights for advertisers to use content on Twitter unless those advertisers are Twitter partners. Further, even if an advertiser were to become a Twitter partner and obtain a sublicensed right to Twitter content directly from Twitter, Twitter expressly does not purport to grant partners publicity rights through its API License and an advertiser would still be responsible for obtaining these rights on its own directly from the original poster.

In the only instance of a court's review of Twitter's TOS to determine whether the TOS grant any rights to third parties, the recent decision in Agence France Presse v. Morel, 934 F. Supp. 2d 547 (S.D.N.Y. 2013), found that Twitter's TOS grant content usage rights only to Twitter and its partners. In Agence France Presse, a photographer received $1.2 million in statutory damages as a result of the Agence France Presse and Getty removing the photographer's images of the Haitian earthquake from a third-party Twitter user's TwitPic account, falsely attributing the photos to the third party and then commercially licensing the photos to users of its service without the photographer's permission.

The court analyzed Twitter's TOS when weighing AFP's argument that it derived a license from Twitter's TOS as a third-party beneficiary and that the license provided by users in it allowed AFP/Getty to remove the photos and license them commercially to third parties. The court found that the TOS expressly granted a license to Twitter and its partners to use content posted on Twitter, but that the license would not extend to allow AFP and Getty to remove the photos and commercially license them. In the absence of additional case law and other specific guidance from Twitter, it appears Twitter does not grant a waiver or any form of license to advertisers who are not Twitter partners and that advertisers are technically responsible for securing all rights in the content that they share on Twitter whether through original tweets, retweets or replies to users, in the same way that they secure such rights in any other type of advertising material.

Conclusion

Undoubtedly, the safest course of action is to get consent from Twitter users to either reuse or retweet content where third-party rights may be implicated. However, the time and expense associated with clearing all rights in each and every Twitter post could result in an advertiser missing the mark in a rapidly evolving environment where spontaneity drives engagement and advertisers must be quick to act in order to remain relevant. The nature and scope of each advertiser's use of Twitter and its specific tolerance for risk will ultimately frame the basis for how an advertiser decides to engage on Twitter.

The first step toward a practical approach to risk mitigation on Twitter requires an advertiser's legal and marketing teams to initially set internal guideposts that restrict high-risk behavior and to set forth do's and don'ts for its regular Twitter promotional activities after a determination has been made about how much risk the company feels comfortable assuming when utilizing Twitter as a promotional tool.

Jesse M. Brody is a partner in the Advertising, Marketing & Media practice group at the law firm of Manatt, Phelps & Phillips, LLP, resident in the Los Angeles office. He can be reached at [email protected] or 310-312-4173. Suemyra A. Shah is an associate in Manatt's Advertising, Marketing & Media practice group, resident in the New York office. She can be reached at [email protected] or 212-790-4519.

In today's digital age where consumers rely heavily on social media for news and entertainment, it has become increasingly common for companies to join the conversation on popular platforms such as Twitter, Facebook and Instagram. Whether through live tweeting to followers during a nationally televised sporting event or awards show, hosting a “Twitter Party” led by bloggers and influencers, or simply maintaining a brand presence as an advertising channel, marketers have found that authentic and meaningful engagement with consumers on Twitter can have a lasting impact.

While numerous companies now maintain an active presence on Twitter, the extent to which brands can lawfully interact with other Twitter users for advertising and similar commercial purposes is still not yet clearly defined and, consequently, the legal risk associated with each tweet is not always properly weighed before a promotional social media campaign is launched. It is tempting to assume that, because a tweet is so fleeting, it is unnecessary to jump through the typical legal hoops to clear the content before it is posted on Twitter. But what appears to be a harmless, transitory post may later give rise to a legal headache. Thus, it is imperative that in-house counsel properly educate and closely work with their brand marketing teams on developing a Twitter content clearance risk minimization strategy in order to reduce the risk of a costly lawsuit as well as the negative publicity that can result from a social media strategy gone awry.

Background

Similar to other social media platforms, Twitter's microblogging and social networking service was designed to provide a forum for human interaction and conversations. Through 140-character-max messages (i.e., tweets), users can post content for others to read and can “follow” other users in order to subscribe to their tweets. Hashtags ' descriptive tags that users commonly include in their tweets ' add color to the conversations taking place, and provide a way for users to index topics and see what is trending on the platform. Users can also “retweet” others' tweets, which allows the original tweet to be shared with the followers of the user who does the retweeting. In addition, users can also “favorite” others' tweets, which makes them easier to go back to and find in the future.

Twitter actively encourages re- tweeting and the broad sharing of third-party content through its platform. These rules of engagement applicable to users on Twitter must be closely examined to determine the full range of risks a company faces when utilizing the platform for promotional purposes.

'Commercial' Speech

Tweets can include references to television shows and products, and they can name and depict photographs of celebrities and include copyrighted content such as artwork and excerpts from literature. In most cases, such content shared by individual users on Twitter would likely be considered “expressive” conduct because it is not sent with any underlying commercial purpose. However, when coming from an advertiser, such content shared on Twitter would likely be considered “commercial” speech because it is inherently commercial in nature, and as a result, it could give rise to a claim for copyright and/or trademark infringement and a right of publicity or privacy claim.

While they have not yet opined on the scope of commercial speech in the context of Twitter, courts have historically characterized it as truthful, nonmisleading speech that proposes a commercial transaction. See, e.g., Bolger v. Young Drug Products Corp. , 463 U.S. 60 (1983). Commercial speech receives less protection under the First Amendment as compared with other forms of speech, and generally allows plaintiffs to pursue false association/ false endorsement and right of publicity claims over a First Amendment objection.

In the commercial speech context, a seemingly harmless tweet originally posted by an individual that includes references to a favorite television show, a sports team, photographs or a news article, the name of a celebrity, or a hashtag that incorporates a third party's trademark could all result in a number of legal claims if retweeted by an advertiser, including trademark infringement, copyright infringement, false endorsement, and violations of rights of publicity and privacy. By the same token, an original tweet posted by an advertiser from its official Twitter account that incorporates any of these elements, without permission, could also create a similar risk of legal claims. Original or retweeted content that contains claims about a product or comparative claims to a competitor's product could also give rise to false advertising/unfair competition, if such claims are not substantiated.

Further, other ordinary actions taken by individual users on Twitter, such as replying to users, following users, or favoriting other users' tweets, carry legal risk when a company is involved. For example, while the “scope of right” of publicity rights varies in each state, every state that recognizes an individual's right of publicity protects individuals from the unauthorized commercial use of their name or likeness. Thus, an advertiser's use of an individual's name in a reply message to that individual or a retweet of the user's tweet, or an advertiser “favoriting” the user's tweet, could qualify as a promotional use, which could potentially violate a state's right of publicity law. In each case, the tweet or the fact that the tweet was favorited by the advertiser would remain on the advertiser's timeline and Twitter profile page and could arguably be deemed an advertisement.

Crossing the Line

In cases where an advertiser retweets or “favorites” a celebrity tweet that mentions the advertiser's products or services, or follows a celebrity with whom it has no formal relationship outside of Twitter, the stakes are higher because of the commercial value of a celebrity's name/likeness. Such activity can potentially lead to false endorsement and right of publicity claims brought by the celebrity. This scenario formed the basis for Katherine Heigl's recent Lanham Act (false endorsement) and state right of publicity/unfair competition lawsuit against retailer Duane Reade in connection with its posting of a photo depicting Heigl exiting a Duane Reade store with two shopping bags, along with a caption that read: “Love a quick #DuaneReade run? Even @KatieHeigl can't resist shopping #NYC's favorite drugstore.” See Heigl v. Duane Reade, Inc., 14 CV 2502 (S.D.N.Y. complaint filed Apr. 9, 2014). The parties settled the lawsuit in August 2014 for an undisclosed sum, with Duane Reade making a financial contribution to benefit the Jason Debus Heigl Foundation.

Even if no celebrity rights are involved and only ordinary consumers' rights of publicity are violated, we can envision a scenario where the amount of infringing content shared by one company could be so voluminous that it could justify a class action lawsuit brought on behalf of each individual who had his or her right of publicity violated in a similar manner.

Terms of Service

What complicates matters further is that there is currently scant authority to provide guidance on the repercussions of a company's use or reuse of content on Twitter, and whether any different standard would apply given the nature of the platform. A search for any waiver or license grant directly to advertisers for various commercial uses of content on Twitter, through Twitter's Terms of Service (TOS), is futile. The TOS provide a baseline for determining how content will be used and detail the grant of rights from each user to Twitter, but advertisers do not clearly fit into the equation. The TOS provide that each user is responsible for its use of the Twitter service, for any content posted to the service, and for any consequences that result. See Twitter Terms of Service, https://twitter.com/tos (last visited Oct. 1, 2014).

Under the TOS, all posted content is the sole responsibility of the person who originated such content and, by posting or displaying content on Twitter, users grant Twitter “a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such [c]ontent in any and all media or distribution methods (now known or later developed).” Id. The TOS clarifies through a highlighted “Tip” that the license authorizes Twitter to “make your Tweets available to the rest of the world and to let others do the same.” Id. Users agree that the license includes the right for Twitter to make content “available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such content on other media and services, subject to [Twitter's] terms and conditions for such [c]ontent use,” and that any such use by Twitter or its partners may be made without any compensation to the user. Id.

Users are also required to comply with Twitter's Rules, which generally prohibit impersonation, copyright and trademark infringement, privacy violations, spam, pornography, and other unlawful activity through tweets. Id. Further guidance for developers can be found in Twitter's API License (see https://dev.twitter.com/terms/api-terms), which states that users' permission must be obtained before “using content in a manner that is inconsistent with the Display Requirements and would require the user's permission under applicable law, including, without limitation, uses of Twitter Content that features the name, likeness, or identifying persona of a person.”

Taken as a whole, Twitter's TOS provide that users are responsible for the content of their tweets, they retain ownership of any intellectual property rights included therein, and they grant a broad license and sublicense to Twitter and its “partners” to reuse such messages without any compensation to the original author. The API License further clarifies that developers must expressly obtain consent from the user for use of his/her name, likeness, or identifying persona.

This means that advertisers are ultimately responsible for the content of their tweets, retweets or favorites, as Twitter has not obtained any express rights for advertisers to use content on Twitter unless those advertisers are Twitter partners. Further, even if an advertiser were to become a Twitter partner and obtain a sublicensed right to Twitter content directly from Twitter, Twitter expressly does not purport to grant partners publicity rights through its API License and an advertiser would still be responsible for obtaining these rights on its own directly from the original poster.

In the only instance of a court's review of Twitter's TOS to determine whether the TOS grant any rights to third parties, the recent decision in Agence France Presse v. Morel , 934 F. Supp. 2d 547 (S.D.N.Y. 2013), found that Twitter's TOS grant content usage rights only to Twitter and its partners. In Agence France Presse, a photographer received $1.2 million in statutory damages as a result of the Agence France Presse and Getty removing the photographer's images of the Haitian earthquake from a third-party Twitter user's TwitPic account, falsely attributing the photos to the third party and then commercially licensing the photos to users of its service without the photographer's permission.

The court analyzed Twitter's TOS when weighing AFP's argument that it derived a license from Twitter's TOS as a third-party beneficiary and that the license provided by users in it allowed AFP/Getty to remove the photos and license them commercially to third parties. The court found that the TOS expressly granted a license to Twitter and its partners to use content posted on Twitter, but that the license would not extend to allow AFP and Getty to remove the photos and commercially license them. In the absence of additional case law and other specific guidance from Twitter, it appears Twitter does not grant a waiver or any form of license to advertisers who are not Twitter partners and that advertisers are technically responsible for securing all rights in the content that they share on Twitter whether through original tweets, retweets or replies to users, in the same way that they secure such rights in any other type of advertising material.

Conclusion

Undoubtedly, the safest course of action is to get consent from Twitter users to either reuse or retweet content where third-party rights may be implicated. However, the time and expense associated with clearing all rights in each and every Twitter post could result in an advertiser missing the mark in a rapidly evolving environment where spontaneity drives engagement and advertisers must be quick to act in order to remain relevant. The nature and scope of each advertiser's use of Twitter and its specific tolerance for risk will ultimately frame the basis for how an advertiser decides to engage on Twitter.

The first step toward a practical approach to risk mitigation on Twitter requires an advertiser's legal and marketing teams to initially set internal guideposts that restrict high-risk behavior and to set forth do's and don'ts for its regular Twitter promotional activities after a determination has been made about how much risk the company feels comfortable assuming when utilizing Twitter as a promotional tool.

Jesse M. Brody is a partner in the Advertising, Marketing & Media practice group at the law firm of Manatt, Phelps & Phillips, LLP, resident in the Los Angeles office. He can be reached at [email protected] or 310-312-4173. Suemyra A. Shah is an associate in Manatt's Advertising, Marketing & Media practice group, resident in the New York office. She can be reached at [email protected] or 212-790-4519.