Insta-Backlash: A Brand Protection Strategy "Don't"
Instagram recently created waves of animosity among developers who have launched apps using Instagram’s API. Now owned by Facebook, Instagram is a photo- and video-sharing service that connects with users’ social media profiles. It claims over 100 million active users uploading more than 58 new photographs every second. Users also benefit from a number of symbiotic apps that have been developed using Instagram’s API. Such apps include services that print and either mail or email Instagram photos, provide search and analysis functions based on the user’s Instagram account activity and interests, and numerous other apps that function in combination with Instagram’s services. However, Instagram has upset some of these app developers by updating its Instagram Brand Guidelines to state: “Don’t: Use ‘Instagram,’ ‘IG,’ ‘Insta’ or ‘Gram’ in your app name.”
Instagram understandably wants to protect its brand’s good will and prevent consumer confusion or trade mark dilution. However, it should have considered these IP issues earlier in its history. App-owners whose app names violate this new guideline are upset by letters sent by Instagram requesting that they change their brand names after they have built their own good will and consumer recognition. As it was growing its user base and encouraging developers to build complementary apps, Instagram allowed apps to use “Insta” or “Gram” in their app names, presumably to remind users that those apps required, or at least functioned best with, an Instagram account. In those early days, Instagram’s Instagram API Terms of Use stated, “[w]hile you cannot use the word ‘Instagram’ or ‘IG’ in your product’s name, it’s ok to use one (but not both) of the following: ‘Insta’ or ‘Gram.’” Unfortunately for the developers, the Terms of Use also stated, “we reserve the right to reject any use of these terms in connection with the use of the Instagram API,” and indeed, its current API Terms of Use omits the statement regarding the approved use of either “Insta” or “Gram.”
While Instagram did reserve the right to make such a change to its Terms of Use, this reversal of policy does a disservice to its partners, its users and itself by applying it retroactively. When Instagram tried to change its user Terms of Service to allow it to use or sell users’ photographs for advertising purposes , users deactivated their accounts in droves, and Instagram quickly reversed course on the new policy. Similarly, according to this article in TechCrunch, affected developers are considering shutting down their apps entirely rather than changing their brand names. Does Instagram really want to see the demise of apps that drive consumers to Instagram or help keep those consumers loyal to Instagram? Or will developers decide that the short term brand damage associated with a name change will ultimately be outweighed by the long term benefits of being associated with Instagram? Time will tell.
Instagram understandably wants to protect its brand’s good will and prevent consumer confusion or trade mark dilution. However, it should have considered these IP issues earlier in its history. App-owners whose app names violate this new guideline are upset by letters sent by Instagram requesting that they change their brand names after they have built their own good will and consumer recognition. As it was growing its user base and encouraging developers to build complementary apps, Instagram allowed apps to use “Insta” or “Gram” in their app names, presumably to remind users that those apps required, or at least functioned best with, an Instagram account. In those early days, Instagram’s Instagram API Terms of Use stated, “[w]hile you cannot use the word ‘Instagram’ or ‘IG’ in your product’s name, it’s ok to use one (but not both) of the following: ‘Insta’ or ‘Gram.’” Unfortunately for the developers, the Terms of Use also stated, “we reserve the right to reject any use of these terms in connection with the use of the Instagram API,” and indeed, its current API Terms of Use omits the statement regarding the approved use of either “Insta” or “Gram.”
While Instagram did reserve the right to make such a change to its Terms of Use, this reversal of policy does a disservice to its partners, its users and itself by applying it retroactively. When Instagram tried to change its user Terms of Service to allow it to use or sell users’ photographs for advertising purposes , users deactivated their accounts in droves, and Instagram quickly reversed course on the new policy. Similarly, according to this article in TechCrunch, affected developers are considering shutting down their apps entirely rather than changing their brand names. Does Instagram really want to see the demise of apps that drive consumers to Instagram or help keep those consumers loyal to Instagram? Or will developers decide that the short term brand damage associated with a name change will ultimately be outweighed by the long term benefits of being associated with Instagram? Time will tell.
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| Instagram's new policies may create many stray apps |
Regardless, this Kat does think Instagram should take a long hard look at its trade mark strategy. Instagram may have the right to block from Instagram compatibility any apps that refuse to remove “Insta” or “Gram” from their names. However, it may not have a strong ability to otherwise pursue objecting app developers for trade mark infringement. Because Instagram officially permitted developers to use the elements “Insta” and “Gram” in their own brand identities, Instagram seemingly eroded its claim to exclusive use of those portions of the mark other than as used together. That it permitted developers to use “Insta” or “Gram” for nearly three years prior to this new guideline change may make equitable estoppel defenses insurmountable for Instagram in the event of any trade mark infringement litigation. Also, this Kat thinks that a claim of consumer confusion is also in jeopardy because of the ubiquity of the use of “Insta” or “Gram” in the names of previously released apps, including (to name just a few) Instaprint, Instadrop, Instagallery, Stickygram and Statigram. Consumers are quite used to the fact that other apps use "Insta" or "Gram," and are thus less likely to assume that all such apps originate from Instagram. On the other hand, all such app brands are so named specifically to highlight a connectivity to Instagram. If Instagram no longer allows an app to synch with Instagram due to the app's refusal to rebrand, the app name could become deceptive to consumers and falsely suggest an endorsement by Instagram.
Regardless of how Instagram will fare in its trade mark protection efforts, this situation is a good reminder that even startups who want to encourage early adoption, brand loyalty and word-of-mouth recommendations must be wary of how their actions might affect the strength of their intellectual property rights.
What do readers think? How might Instagram fare in another jurisdiction?
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