Originally published in Law360 on August 8, 2017
During his July 28, 2017, performance at Panorama Music Festival in New York City, Frank Ocean wore a t-shirt that read “WHY BE RACIST, SEXIST, HOMOPHOBIC OR TRANSPHOBIC WHEN YOU COULD JUST BE QUIET?” The shirt was produced and sold by 18-year-old Kayla Robinson on her Green Box Shop online store, but the words were reportedly copied without permission from a 2015 tweet posted by another teenager, Brandon Male, via his Twitter handle @avogaydro. Sales of the shirt soared after Ocean’s performance, raising questions about attribution and copyright infringement on social media: Who owns the copyright (if any) in the underlying phrase? Would Male be entitled to damages for copyright infringement based on Robinson’s use of his tweet without permission? If the contents of the tweet are not copyrightable, could they be protected as a trademark?
The U.S. Copyright Act protects “original works of authorship fixed in any tangible medium of expression,” including the following categories of works: 1) literary works; 2) musical works; 3) dramatic works; 4) pantomimes and choreographic works; 5) pictorial, graphic, and sculptural works; 6) motion pictures or other audiovisual works; 7) sound recordings; and 8) architectural works. In order to qualify for copyright protection, a work must be independently created and must possess at least some minimal amount of creativity that is original to the author.
As a general matter, content that is posted on social media may be copyrightable, and intellectual property owners do not forfeit their rights by sharing copyrightable subject matter (e.g., a photograph) on Twitter. The determination of copyrightability is made on a case-by-case basis, and whether the “WHY BE RACIST, SEXIST, HOMOPHOBIC OR TRANSPHOBIC WHEN YOU COULD JUST BE QUIET?” shirt constituted unlawful copying of Male’s tweet would likely turn on whether the tweet contained sufficient creativity or only a de minimis amount.
The concept of de minimis authorship derives from the principle “de minimis non curat lex,” which means “the law does not take notice of very small or trifling matters.” The copyright regulations indicate that short phrases such as slogans are not subject to copyright, and the Compendium of U.S. Copyright Office Practices provides catchphrases, mottoes, slogans and other short expressions as examples of works that are not copyrightable because they contain a de minimis amount of authorship.
Although the requisite level of creativity for copyright protection is extremely low, Male’s 2015 tweet, like much of the content posted within Twitter’s 140-character limit, likely does not satisfy the Copyright Act’s creativity requirement owing to its brevity. There is no bright-line rule for determining whether a work contains a sufficient amount of authorship to be copyrightable, but the copyright regulations and the Compendium provide helpful guidance, and Male’s tweet, however resonant, would likely be characterized by the Copyright Office and courts as a short phrase that contains a de minimis amount of authorship, and therefore cannot be protected by copyright.
Trademark Use or Merely Informational Matter?
Setting aside whether the tweet constitutes copyrightable expression, the question remains whether it could be protected as a trademark. In the United States and most common law jurisdictions, trademark rights can be acquired by using a word, name, symbol and/or device to identify the source of one’s goods and services and distinguish them from others. The primary purposes of trademark law are to prevent consumer confusion, to help consumers distinguish between products/services and to protect brand owners’ reputations and investments.
In determining whether Male could maintain an action for trademark infringement against Robinson, the threshold issue is whether Male owns trademark rights in the phrase “WHY BE RACIST, SEXIST, HOMOPHOBIC OR TRANSPHOBIC WHEN YOU COULD JUST BE QUIET?” In order to qualify for trademark protection, matter must function as a trademark (i.e., convey the source of goods or services). The critical inquiry is how it would be perceived by the relevant public, and social and political messages may be so widely used by different sources that consumers primarily perceive the wording as conveying an informational message, rather than as a trademark that distinguishes a particular provider of goods and services.
In addition to the shirts containing “WHY BE RACIST, SEXIST, HOMOPHOBIC OR TRANSPHOBIC WHEN YOU COULD JUST BE QUIET,” it bears mentioning that Green Box Shop also sells apparel containing messages such as “POSITIVE VIBES ONLY,” “JUSTICE FOR MUSLIMS,” “TRANS PEOPLE ARE NOT A DISRUPTION” and “FUCK DONALD TRUMP.” While brand owners can use various strategies to develop trademark rights in slogans, taglines and phrases, it would be difficult for Male to establish that he owned enforceable rights in the phrase he tweeted because he did not use it in connection with the offering of goods and services, and critically, the tweet would not have been perceived by consumers as identifying Male as the source of any goods and services.
While the above analysis suggests that Robinson and Green Box Shop may have had some reasonable defensive arguments if Male brought claims for copyright and/or trademark infringement, in general, the best practice for brand owners is to conduct clearance searches for conflicting trademarks owned by third parties before adopting new slogans for use in trade or in advertising and marketing campaigns. In certain circumstances, in order to avoid the cost of dealing with claims, it may be advisable to approach the author of a work that may be subject to copyright for permission before using the work in a commercial context.