The Disney Hashtag Saga: How did they cause a disturbance in the force? : Part 1

Karthik Subramaniam and Shrudula Murthy


 

Disney has been caught up in a storm again. Star Wars fans across the world have been expressing their frustration against Disney with reference to a particular tweet floated out by them. What exactly was this tweet and why has it created a disturbance in the force?

The 4th of May each year is a day of celebration for all Star Wars fans, using it to commemorate the iconic movie saga that captured the imagination of people of all ages through its wonderfully intricate creation of a fantasy world, in a galaxy far, far away. One of the most iconic lines of the movie series – “May the Force be with you”, which is used to wish one good luck, and goodwill, managed to find itself morphed into a pun “May the 4th be with you”. Through usage in popular culture, this pun led to the creation of 4th May as an unofficial Star Wars day, an eventful day that unites Star Wars fans all across the globe. With this phrase being something very close to the fans, what exactly made the people feel betrayed, as if Disney had turned to the Dark Side?

On 27th April, 2020, Disney put out a tweet asking people to post their favourite memories with the hashtag- “MayThe4th”, which would then be used by Disney to create something ‘special’. Disney followed up with another tweet stating that anyone who would be using #MayThe4th would be agreeing to allow Disney to use their message and their account name in all media, and would also be agreeing to Disney’s terms of use.

Disney was immediately subjected to immense backlash due to this not only on Twitter, but on other social media platforms, and news websites as well. Disney has had an unpleasant history with extreme overreach on its intellectual property; and the public perceived this incident on Twitter to be another of Disney’s attempts to overstretch its boundaries on Intellectual Property. The tweet led to Twitter users trying to understand why Disney would have wanted to do this, and how it would be affecting them.

Disney did put forward a clarificatory tweet almost 5 hours later by stating that only tweets that used the hashtag #MayThe4th and mentioned @DisneyPlus would be subject to the legal conditions put forward. However, this served too little in resolving the concerns that netizens had with Disney’s actions.

These set of events led to the formulation of several questions relating to Intellectual Property Rights and Fair Use, which this article will look at resolving, to understand the situation better. The analysis of the questions in this paper has been largely done from  the perspective of United States Intellectual Property Laws.  The three main, broad questions are as follows:

  1. What is the extent of ownership that Disney must have over a hashtag to impose conditions on others for its usage?
  2. Did the tweet put forward by Disney lead to the creation of a binding contract between them and other twitter users who used the hashtag?
  3. What could have been the possible intentions behind Disney’s tweet?
  1. WHAT ARE THE RIGHTS DISNEY MUST HAVE OVER A HASHTAG TO IMPOSE CONDITIONS ON OTHERS FOR ITS USAGE?

The main question which has put people in a frenzy is whether Disney had the right to impose such terms and conditions on the Twitter users who used the hashtag “MayThe4th”. For a company or an individual to have control over the use and dissemination of particular words or to bind people to their terms and conditions, they usually need to have  certain rights over it , primarily in the form of Intellectual Property rights. This section seeks to analyse what kind of ownership Disney could claim over “MayThe4th”, what the essential requirements or conditions are which need to be fulfilled to obtain these rights and whether Disney could be doing the same in this scenario.

                  A. What kind of ownership could Disney claim? 

A hashtag has come to be understood as a particular word or phrase preceding the symbol ‘#’. The use of the term hashtag has seeped into daily conversations, dictionaries and through contemporary use has managed to gain a meaning greater than a mere symbol. One of the primary purposes of a hashtag is not only to increase the popularity of a product but also to provide information about other related content to users. By using a hashtag, individuals attempt to create a community of similar and related content that can be easily accessed by merely clicking on the hashtag.

Hashtags have been used over the years to generate popularity for products and to conduct marketing campaigns and have thus received protection as intellectual property under trademark laws in the past. They have managed to garner a massive reputation in online marketing and companies have increasingly resorted to using a common hashtag as a mark of their company or product. Companies generally claim ownerships over hashtags under trademark laws.

The Lanham Act of the United States Patent and Trademarks office describes a trademark as something which includes distinctive signs, numbers, words and colours specifically meant to distinguish the good(s) or service(s).[1] In order for Disney to impose the terms and conditions on the users of the Tweet #MayThe4th, they need to have a trademark over the term. To obtain this trademark the term  has to fulfil two essential conditions. This section will analyse whether the hashtag fulfils the criterion in order for it to be trademarked.

                        B. Can ‘MayThe4th’ be trademarked by Disney?

There are certain conditions that need to be met in order for a phrase to get protection under trademark laws. Even though hashtags are a relatively new and emerging concept there have been numerous debates surrounding this area. Cases such as Eksouzian v. Albanese, under the central district of California  brought to picture why hashtags could not be trademarked The court in this case,highlighted how the characteristics of a hashtag were not in consonance with those of a trademark. A trademark serves two primary purposes. First off it aims at identifying the source of the product or service and secondly it seeks to protect consumers from duplicate or spurious products. The court held that a hashtag does not fulfil these criterions. It explained how a hashtag in most cases, cannot redirect a user towards a single source of a good or service and that hashtags on an online portal under usual circumstance do not create confusion among consumers over the product of a particular brand.  However, the United States Patent and Trademark Office (“USPTO”) began granting trademarks for hashtags that very year but the rationale put forward in the Eksouzian case becomes extremely important in understanding under what scenarios a hashtag could be trademarked.

Hashtags have been granted trademarks in the past if they complied with certain criterions of the trademark law. While there are clear precedents of hashtags having been trademarked in the past, the hashtag #MayThe4th cannot be trademarked. There are two primary conditions which a Trademark needs to fulfil in order to be granted protection under the Lanham Act. They are:

a. The trademark should be used commercially or with the intention of being used commercially in the future

b. It should be distinctive in nature.

Explained below are the reasons why the term #MayThe4th does not comply with the conditions mentioned above and cannot be granted a Trademark.

                           i. Commercial usage of #Maythe4th

While not much can be commented on this criterion, it has to be observed that the hashtag or the term MayThe4th has been used commonly to wish someone good luck and has come to become a phrase of encouragement. Disney does not link any product or commercial venture exclusively to the term MayThe4th. To this extent Disney would not be granted a trademark for the hashtag.

However, this is not set in stone and the possibility of Disney trademarking the date- MayThe4th is not impossible. If it can link the date to a specific service or if it could be traced back to massive sales on a prime day, Disney could be granted a   trademark on “#MayThe4th”. However, with the phrase having been largely promoted and created by the fans of the franchise, such an act would be looked upon as an unfavourable practice.

                         ii. Distinctive nature of the term #MayThe4th

The USPTO put forward certain criterions to be complied with for companies claiming a trademark for their hashtags. In October 2013, the USPTO revised its Trademark Manual of Examining Procedure and inserted Section 1202.18 which dealt exclusively with hashtags. One of the first conditions put forward in the manual was that the word which followed the hashtag should fulfil the basic criterion of trademark laws. To this end, the primary question which needs to be answered is whether the date ‘MayThe4th’ could be trademarked. It needs to be analysed whether the term “Maythe4th” is distinctive in nature and if it has been used exclusively in relation to Star War products?

According to the USPTO a hashtag would be entitled to a trademark as long as it complies with the criterions all trademarks have to fulfil in order to be distinctive. It has been established that for a date ) in particular to be trademarked there has to be a direct association or linkage to the goods or service being provided. The famous chain of  departmental stores – ‘seven eleven’ has a trademark over its store name despite it being a name strictly associated with numbers. The name was adapted to indicate the extended hours and days of the functioning of the store. The name, ‘seven-eleven’ in this case directed the users to the departmental stores and the goods and services so provided by them and was thus able to get a trademark over its name. In the given scenario the phrase ‘MayThe4th’ does not direct the customers to an exclusive product or service and would thus not be able to get the right of Trademark over it.

Lucasfilm Ltd. LLC which was bought by Disney in 2012, does own the Trademark over the entire phrase “May the 4th be with you”. As this phrase complied with the requirements of the Trademark laws, there is a possibility that Disney could trademark the hashtag. Previously, Disney had attempted to trademark the name of ‘Dies di los muerto’ or the day of the dead festival, a festival celebrated in Mexico, for their movie Coco. There was an outrage over Disney’s actions of claiming ownership over a festival and several termed it as a form of cultural appropriation. The term ‘Dies di los muerto’ is only descriptive of a certain event and further has been used as a popular term since ages. Similarly, MayThe4th does not fulfil the basic criterion required for it to be granted protection under trademark laws and consequently even the hashtag MayThe4th would not be granted any.

Assuming a scenario where Disney does own the trademark over #MayThe4th, or manages to attain one in the future, would the terms and conditions put forward by Disney on Twitter be binding on its users? In the next part of this series we seek to answer questions related to the nature and enforceability of the contract or the terms and conditions put forward by Disney.


[1] U.S. Patents and Trademarks office, Lanham Act, 15 U.S.C § 1065 (2013).

 

Part 2 of the blog.

 

This is part 1 of a 3-part blog written by Karthik Subramaniam and Shrudula Murthy, Second Year Undergraduate Students of Law at NALSAR University of Law, Hyderabad. They can be contacted at their respective email id at [email protected] and [email protected]

The views expressed are personal and do not express views of the organisation.

Picture Courtesy: Lucasfilm LTD. – https://www.starwars.com/star-wars-day

(Image in Public Domain)