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Uncontainable


Trademark law not the best fit for protecting Internet ephemera gone viral
By John Simpson
May 08 2015 issue

jstan2 / iStockphoto.com

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Social media are a wellspring of popular Internet catchphrases and images — aka “Internet memes” — and are extremely effective at disseminating them rapidly, far and wide. Unlike catchphrases of 20 (or even 10) years ago — for example, Donald Trump’s “You’re Fired!” — an Internet meme that’s born today can be known around the world within minutes. Think of Katy Perry’s “Left Shark” from her Super Bowl halftime show. Or the “Ice Bucket Challenge.” Or Seattle Seahawks running back Marshawn Lynch’s “I’m just here so I won’t get fined.”

This power of social media can create tremendous commercial value in Internet memes, and it can do so almost instantaneously. It accounts for recent efforts by celebrities like Perry and Taylor Swift to secure trademark protection for catchphrases and song lyrics (“This Sick Beat,” “Party Like it’s 1989”) that are associated with them.

It also raises interesting issues around who, if anyone, can exploit property rights in Internet memes. “You’re Fired” only became a popular catchphrase a decade ago because Trump and the producers of The Apprentice created it and spent a lot of money creating goodwill in the phrase. Obviously, it belonged to them. But Perry didn’t create the “Left Shark” meme herself. And she didn’t do anything in particular to fuel its value. Social media did. So how can she say it belongs to her?

The initial efforts of Perry’s legal team to claim ownership in “Left Shark” were clumsy. Shortly after her Super Bowl halftime show, the “left shark” dancer in her performance had its own Twitter account and was the subject of numerous Internet memes. A small 3-D printing company soon started selling replicas of “Left Shark.” Perry’s legal team responded with a copyright infringement claim before realizing, probably, that there was no chain of title connecting Perry to the creator of the costume.

Team Perry followed with applications to register “Left Shark” (the phrase and the actual image) as trademarks for “live musical and dance performances” and various merchandise on an “intent to use” basis. Ultimately, this too seems misguided if the goal is to harness the immediate commercial value in the meme. In fact the application to register the image has recently been rejected on the basis that consumers would not associate the image solely with Perry. With respect to the phrase, “Left Shark,' even assuming it can still function as a trademark (i.e. point to a single commercial source of origin), it would only secure an exclusive right to use the phrase as brand name for a defined set of goods and services. It wouldn’t necessarily prevent others from dressing up as the “Left Shark,” or using the phrase for other purposes.

Perhaps more importantly, applying to register an Internet meme as a trademark is like riding the bus to a flash mob: by the time you’re there, it will all be over. Unless you invest in the meme and create something new with it, few will recognize the meme or remember what it meant by the time the Trademarks Office reviews and approves the application. For as rapidly as the commercial value of an Internet meme can be fueled by the fire of social media, it can vanish as the meme is forgotten and others fill its place.

In Canada, section 9(1)(k) of the Trade-marks Act could offer more immediate protection for an Internet meme that is closely connected with an individual, such as Perry’s “Left Shark” or Swift’s “Party Like it’s 1989.” This provision says that “No person may adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for…any matter that may falsely suggest a connection with any living individual.”

A celebrity could rely on this provision to exclude others from commercially exploiting an Internet meme that is closely linked to them. He or she could do so even if he or she didn’t create the meme himself or herself or otherwise contribute to its value, so long as the average person would mistakenly believe that the celebrity is using the meme or else approves the use. The protection would be immediate (there would be no need to apply for or wait for a trademark registration) and it would cover any and all goods and services, unlike with a trademark registration.

But it’s unclear how effective section 9(1)(k) would be in these circumstances. Can Internet memes created via social media ever “falsely suggest a connection” with anything? Or are they, by their very nature, too disembodied and amorphous for Joe Public to meaningfully connect them with any one source? If that’s the case, then they will be hard to protect through trademark law.

Ultimately, to harness the value in an Internet meme for oneself, one must create something new with it and protect the value in that. That is because, generally speaking, intellectual property law is not about rewarding opportunists. It is about rewarding innovation, creativity and investment.

John Simpson is the principal of Shift Law, an intellectual property and new media law boutique.

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