Are companies allowed to tweet about #Rio2016?

With the Olympics currently ongoing in Rio many questions have emerged, ranging from "Why are pools turning green?" to "Who can and who cannot use the hashtag #Rio2016?"

Katfriend Oliver Löffel (Löffel Abrar) answers the latter.

Here's what Oliver writes:

"Again, there is a lot of discussion and uncertainty as to whether companies are allowed to mention the Olympic Games, respectively Olympic signs and protected trade marks like RIO 2016, in the course of their social media activity.

There is a lot of questionable information regarding the legal aspects of tweets using the hashtag #Rio2016, spread by the Olympic Committees. For example, the US Olympic Committee (USOC) sent letters to non-Olympic sponsor companies, warning them about “stealing” intellectual property:

"Commercial entities may not post about the Trials or Games on their corporate social media accounts," reads the letter written by USOC chief marketing officer Lisa Baird. "This restriction includes the use of USOC's trademarks in hashtags such as #Rio2016 or #TeamUSA."

Oiselle, a US women’s apparel company, received a cease and desist letter after having posted “She’s going to Rio!” and #RoadtoRio in an Instagram post when one of Oiselle’s sponsored athletes qualified for the 800 metre event, as reported in an IPWatchdog.com post. 

The USOC has supported the position “that Oiselle’s social media accounts are not allowed to make reference to the Games, but that only its founder, Sally Bergeson, is free to add #RoadtoRio to her posts on her personal social media accounts.” (IPWatchdog.com).

Eric Goldman, a Professor of Law at Santa Clara University, complains that the USOC approach is overly aggressive (or, rather, ridiculous) and explained to the BBC:

"I think that trying to tell companies that they can't use the hashtag #Rio2016 or #TeamUSA in their tweets, most of the time they're going far afield of what the law permits and when companies use the ambiguities of trademark law to try and squelch socially beneficial conversation, I call that bullying."

Another credible threat

Just recently, a US company has sued USOC over social media ban, the lawsuit was filed at a US District Court in Minneapolis (the company already won in a certain way as the “battle of the week” attracted a great deal of attention in the media). It will be interesting to see how the case will be decided.

Disputes about the extensive measures taken by the Olympic Committees are however far from being limited to the US.

In Europe, inter alia the Team GB published Guidelines and the German Olympic Sports Confederation (DOSB) published Guidelines including “Guidelines for Non-Olympic Partners“ (“REGEL 40 Leitfaden der Deutschen Olympiamannschaft für die Olympischen Spiele  Rio 2016”). The DOSB claims at page 12 of the Guidelines in question that Non-Olympic Sponsors are “in no case” [“keinesfalls”] allowed to use Rio2016 as a hashtag.

From a European legal perspective the DOSB’s apodictic and undifferentiated allegations are misleading. Based on EU trade mark law “Non-Olympic Sponsors“ cannot be totally banned from using eg the hashtag #Rio2016 in social media.

“RIO 2016” is registered as a European Union Trade mark for the International Olympic Committee (IOC). Therefore, the key question is whether the use of hashtag #Rio2016 affects, or is liable to affect, the relevant function of this trade mark. By application of Article 9 (2) (a) of Regulation No 2015/2424, the proprietor of a trade mark is entitled to prohibit a third party from using, without the proprietor’s consent, a sign identical with that trade mark when that use is in the course of trade, is in relation to goods or services which are identical with, or similar to, those for which that trade mark is registered, and affects, or is liable to affect, the functions of the trade mark (see CJEU, Cases C-236/08 to C-238/08, Google France, paragraph 49).

Having said that, one may argue that (depending on the specific Tweet), that the use of the hashtag #Rio2016 could be comparable to the keyword advertising cases where a sign identical with a trade mark is selected as a keyword by a competitor of the proprietor of the mark with the aim of offering internet users an alternative to the goods or services of that proprietor (see, to that effect, Google France, paragraph 69). That would mean there could be a trade mark infringement, depending on the specific circumstanced of the case, in particular the content of the tweet. 

#TeamKat

In contrast, if one adopts the view of a US court in the Eksouzian v Albanese case (2015 WL 4720478 (CD Cal Aug. 7, 2015) that “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves”, a trade mark infringement might be most unlikely or even excluded (here is a worth reading article of Prof. Roberts, a trademark expert at the University of New Hampshire School of Law).

Anyway, in cases where #Rio2016 is not used in relation to goods or services (and/or not in the course of trade), there is no trade mark infringement of IOC´s EU trade mark. Such a non-infringing use, in my opinion, would be eg a tweet from a German company addressed to consumers in Germany “Come on Germany. Go for Gold in #Rio2016. There are a lot of medals to win”. That is no use of #Rio2016 in relation to the goods or services and consumers will not understand such a tweet as indicating that there is any commercial link between the company and the IOC.

It is telling that e.g. the DOSB’s debatable information is likely to mislead the readers of the Guidelines as the hashtag #Rio2016 can be used in social media in a descriptive way (or in due cause or justified due to other reasons) and could therefore be very well lawful. Such attempts to avoid also the permitted use of a hashtag are more than questionable under different legal aspects. In a nutshell:

“The argument that a commercial entity’s comment on a truly newsworthy event is per se disallowed or infringing is likely an overly broad attempt at protecting its lucrative sponsorship deals.”

You may also debate that several countries have specific legislation to protect Olympic signs. In Germany, the Olympia Protection Act 2004 [Gesetz zum Schutz des olympischen Emblems und der olympischen Bezeichnungen] applies to the use of Olympic symbols and signs in the course of trade. At least the Federal Court of Justice (Bundesgerichtshof) in Olympia-Rabatt stated that the relevant provisions of the German Olympia Protection Act 2004 must be interpreted restrictively. Therefore, in my opinion, for example the hashtag #Rio2016 is not a sign protected by the German Olympia Protection Act 2004 (as always, the safest way insofar is to do nothing and to “to steer clear of any social media posts or advertising using protected signs such Rio 2016”, as a lawyer from Australia just wrote). 

In a possible litigation case in Germany or other European countries, companies not affiliated with the Olympic games should consider and if possible raise the question whether such a specific legislation, namely a National Olympia Protection Act, is in compliance with the new Trade Mark Directive (Directive 2015/2436)."

Thanks so much Oliver for this comprehensive and thought-provoking analysis!