When an adult film star announced a contest via Twitter offering sexual gratification for anyone who built her the best LEGO creation, it was perhaps no surprise that the competition received many submissions from fans wishing to meet Christy Mack. Equally unsurprising is that LEGO’s trademark team quickly swung into action. The dispute shows the benefit of taking a bespoke approach to social media brand protection.

Mack’s competition did not last long after LEGO’s lawyers contacted her and objected to her usage of the LEGO brand name – Mack promptly tweeted that the competition had been cancelled. Speaking to WTR, MAQS Law Firm senior attorney Frank Jørgensen notes that the dispute is an example of freedom of expression clashing with IP rights: “She is a porn star and could be regarded as an artist invoking freedom of expression, an argument which has been known to overturn IP rights. However, her activities may also be regarded as a marketing stunt from her perspective as she is benefitting from the public’s interest in her competition and arguably taking unfair advantage of the trademark of LEGO.”

In this specific matter the latter argument was likely to have been persuasive when LEGO contacted Mack. Although the competition was announced by an individual, Jørgensen notes that she is also a brand, and that there are commercial aspects to the competition, which involved “an exchange of services”. Furthermore, Mack had expressly used the LEGO name, rather than making a reference to generic building blocks. “She could have done so quite neutrally,” says Jørgensen. “However, using a world-famous and leading toy brand name sparks more attention. This should be seen as taking unfair advantage of the distinctive character or the repute of the LEGO mark, seeking by that use to ride on the coat-tails of the mark in order to benefit from its power of attraction, reputation and prestige – and to exploit, without paying any financial compensation, the marketing effort expended by LEGO in order to create and maintain the mark’s image.”

While the dispute did not make it to the courts, from a Scandinavian perspective there have been similar cases. NOMA, nominated several times as the world’s best restaurant, won a case before the Danish Supreme Court in December 2013, after a chocolate club held a competition where subscribers could win a dinner at the establishment. The Supreme Court found that the chocolate club and the advertising agency had taken unfair advantage of the reputed trademark of NOMA, which constituted trademark infringement. Jørgensen believes that the same principles as in NOMA could well have been applied against Christy Mack.

If faced with situations like this, Jørgensen suggests that counsel should take advantage of the protection mechanisms built into social media. “With regards to Twitter, there is also a notice and takedown procedure, which undoubtedly has been used, and in general the competition could be argued to be contrary to public policy/morality, or in any event be offensive, violating the guidelines of Twitter and thus providing another reason for takedown.”

Mette Andersen, corporate trademark counsel at LEGO Systems, was unable to comment on the Mack case, but she told WTR that misuse on social media is a key focus for the company: “That is why we have a specialist team within the company handling social media issues. We have 24/7 monitoring of the LEGO trademark and sub-brands and company name being mentioned in social media in a broad sense. If anything critical pops up, we look into it.”

However, she is also wary of the impact online enforcement can have on brands, suggesting that a tailored approach is best. “Our general attitude to social media is that we don’t interfere in it as users should be able to discuss freely. We have a very loyal fan base and, if issues arise in social media, the fans will react and correct mistakes, misunderstandings and the like. We feel this is the best way to handle issues. We don’t want to be seen as bullies or as controlling the discussion.” That being said LEGO, like any well-known brand, has to react to what may be deemed as inappropriate content. “We will do that in a way that is adapted to the specific issue,” she observes.

Despite Mack’s glib tweets that “the competition is off due to lawyers not liking my twitter content. I think it’s because they didn’t win the competition,” (and it must be noted that the competition has certainly generated exposure for the Christy Mack brand), in this instance LEGO has avoided being labelled a bully. It was able to identify and locate a threat to their brand and stop it quickly and with little fuss. This is clearly a success story for LEGO and one that counsel at other brands will hope to replicate.

This blog was first published in World Trademark Review on 5 February 2014

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