A few weeks ago, I joined a Facebook group to help me find guests for my Instagram themed podcast, called “The Instagram Stories”. I posted my request for guests who were versed on building a following, then checked back later to see this response from a random person:
“Daniel, I’ve had a few friends recently get cease-and-desist letters from this exact same type of podcast. What sort of permissions do you have?”
How does one answer that question? I don’t need permission, according to my (very limited) knowledge of the law. So I scribbled on a napkin “Daniel, do whatever you want,” and signed it “Zucks”, took a picture, and posted it as a response to the comment.
I was partially joking, but I have read up extensively on this subject, and there’s a little thing called “Fair Use” that’s very important. Yes, the word “Instagram” is trademarked, but “Fair Use” means that I can use the term if it’s describing something — which it is — the word “Instagram” describes what my podcast is about.
If you were to review peanut butter, for instance, and you were comparing Skippy and Jif — even though those are both trademarked names — you could do it. This is what the concept of “Fair Use” allows for.
To refresh my memory, I did some reading up on the law. It’s not a simple subject, and even though there were a lot of scenarios that didn’t apply to me, I found a great blog post that cited a legal case about a company that sold Lexus cars. A certain car dealer owned the domain names buy-a-lexus.com and buyorleaselexus.com. Toyota (maker of Lexus and owner of the trademark) sued them, claiming this was trademark infringement. Ultimately, Toyota lost the lawsuit, because without the word “Lexus” in the title, how else would the dealer describe the cars they sold? This was a great victory for Fair Use.
Here’s a quote from the blog post:
Nominative Fair Use Defense
A defendant may succeed with a nominative fair use defense if: (1) the product is not readily identifiable without using the trademark, (2) the defendant used no more of the mark than was necessary, and (3) the use did not falsely suggest the defendant was sponsored or endorsed by the trademark owner.
As just explained on the first factor, the [defendant] could not let customers know the type of vehicles that they broker without using the Lexus mark.
The part of the blog post that seemed to apply in my case is here:
Responding to a Cease and Desist Letter
If you are using a mark to refer to the genuine product carrying the mark, then you might be able to assert the nominative fair use defense.
You will have a better chance of succeeding with a nominative fair use defense if you (1) do not use the trademark holder’s logo, distinctive style, or font when using the trademark, and (2) do not use any words such as “authorized,” “official,” or similar words that could indicate a sponsorship or endorsement by the trademark owner.
The downside of this is that although I felt the law was on my side, going up against Facebook’s lawyers would probably be a challenging task that I wouldn’t be able to afford. It often happens that the legal victories go to the ones with the best lawyers, and I’m certainly not a lawyer.
Around this time, I decided I wanted to launch an Amazon Alexa Flash Briefing Skill, strictly focused on Instagram. Amazon Flash Briefings are very short podcasts (less than 10 minutes) where people can subscribe, then say “Alexa, tell me the news”, and potentially listen to your voice. I joined the Amazon Developer Console, and began adding the necessary information for the Amazon Product Listing.
When I submitted the Amazon Flash Briefing Skill for approval, it was rejected due to trademark. Now, I knew the trademarked word was “Instagram”, but since that described what the Flash Briefing was about, how could I rename it while still describing what it was about?
This problem also exists because I wanted anyone who searched Amazon’s Skill Store for the word “Instagram” to find my Flash Briefing. With over 1 billion monthly active users on the platform, I’m willing to bet it’s something that a lot of people search for information on. My goal was to have those people searching for information find me.
Amazon responded, telling me that my skill was rejected, with a lot of long, legal verbiage that I couldn’t even comprehend.
To save you time, Amazon rejected it simply because I used the word “Instagram”. Since I was familiar with the concept of “Fair Use”, I tried to move this discussion to a phone call, but was unsuccessful. I tried different tactics, including pointing out that Apple and Google permitted my podcast “The Instagram Stories” to be listed in their respective stores without any issue. I tried renaming my skill to “The Stories on Instagram”, which I was told was “better”, but still denied.
I began asking friends and colleagues who work in marketing if they had any suggestions about the name. Some said to think of a different name entirely. And then… I talked to my friend Jen Lehner.
Jen is a good friend of mine who runs a Facebook group for marketers called “The Front Row”. She has a podcast called “The Front Row Entrepreneur”, dedicated to helping small business owners market themselves, and a Flash Briefing called “The Front Row Entrepreneur” with updates about social media. She’s got a great following, posts tons of valuable content, and does super cool events.
Jen told me that, despite being an entrepreneur in every sense of the word, she was contacted by Entrepreneur Magazine’s parent company, Entrepreneur Media Inc., threatening to take legal action against her because they have trademarked the word “entrepreneur”. Think about how ridiculous is for a moment — a magazine that encourages being an entrepreneur won’t allow anyone else to use the word “entrepreneur”. Despite getting a lawyer and trying to fight this, Jen recognized that ultimately, she would have to change the name. (This is actually quite a common practice by Entrepreneur Media, Inc., and it’s digusting).
I mentioned this whole thing to my father, who only texted me back “why not just go to Instagram and ask them if you can use the name?” I laughed at this suggestion, because I’m not a person with a big following that Instagram would take notice. They don’t respond to support requests from users most of the time, let alone an email from someone asking to use their trademarked name.
So I started searching, and I came across an interesting website I’d never seen before, where brands could submit marketing campaigns to Instagram for approval. If you wanted to do a clothing ad on TV during a certain time period, and include the Instagram logo, you could submit everything to Instagram and get their approval for certain dates. That got me thinking — what if I applied to Instagram using this website and described what I was doing as a marketing campaign? The only problem was that I wasn’t doing a marketing campaign. So I left most of the form blank, and submitted it.
Instagram responded later that day with a boiler-plate response.
I decided to try another tactic. Rather than ask for permission to use the trademark, I would ask what sort of request might get approved — then formulate my request around the answer provided.
Instagram responded, saying:
I took some time to carefully craft my message.
Hi. Thanks for the email back.
I would like to create an Alexa Flash Briefing about Instagram. It would answer basic questions people have about the platform, and provide any news updates about the app, including when features are added and how to use them.
What would be an appropriate way to indicate that the Flash Briefing is about Instagram without any issue?
Once I understand what’s an approved way to title the Flash Briefing, I can make a sample episode and upload.
Instagram responded with:
At this point, I felt like I had a dialogue going, so I took a risk.
Thank you for assisting. I was thinking something like this:
Proposed Alexa Flash Briefing Skill Name: The Instagram Stories
Proposed Alexa Flash Briefing Skill Description: Instagram can be challenging to figure out. What is the Instagram algorithm and how does it work? How do you gain more followers? What are Stories and how can you use them in your strategy? Subscribe to hear Instagram tips, news, and daily Q&A! Note: This Alexa skill is not sponsored or endorsed by Instagram.
To my complete surprise, Instagram responded positively.
I was ecstatic and elated at this point. Cleared by their legal team was something I never thought I’d read! I added the legal language to my Flash Briefing listing in “development” status, and sent it back over to Instagram.
Instagram responded back with the following:
At that point, I felt like I had turned a corner in my professional career. I received approval to use a trademarked term on an app store that was essentially new. Now all I had to do was get it posted.
I submitted everything to Amazon, which took 2 weeks to get approved, despite my checking for updates hourly. Normally it takes 48 hours, but for reasons that I’ll never completely understand, mine took 2 weeks.
And now, I have the only Flash Briefing in the Amazon Skills Store with the word “Instagram” in the title. I’m fairly positive that’s been the main reason I’ve seen such an influx of subscribers. In the 2 weeks since I have launched my Amazon Flash Briefing, I’ve been rapidly adding subscribers – 80, 90, 120, 130 per day over the past few days. This constantly reminds me that it isn’t me that drew the subscribers, but rather the word “Instagram” — and that my bet was right after all.
What have I learned from all of this?
1. My dad, despite being older, still has good suggestions that are worth investigating.
2. My lack of confidence is directly connected to the (lack of) clout I have.
To come full circle, I wanted to ensure I wouldn’t have a problem with my Instagram Stories podcast receiving a cease and desist letter after all this, so I decided to submit a separate request to Instagram using my Flash Briefing as a use case. My request was promptly rejected with the following note:
Want to know more about me? Watch my 37 second video below, then subscribe to my Amazon Alexa Flash Briefing Skill (no Amazon Echo required).