"Why Jack Daniel's Can't Stop #WestElmCaleb and What Now?" Published

Together with my coauthor and former student Kavita Balchand, I recently published a law review article entitled “Why Jack Daniel’s Can’t Stop #WestElmCaleb and What Now?” in the William & Mary Bill of Rights Journal. It is available for download here, and this is the abstract:

The Supreme Court’s recent decision in Jack Daniel’s Properties v. VIP Products was hailed as a victory by trademark owners worried about infringement and dilution. Its holding weakened the potential protection that trademark parodies would receive via the fair use defense. That said, it remains difficult to use trademark law to stop many uses of marks that harm a brand, in an era in which a single negative viral hashtag campaign could spell disaster. Notably, hashtags including trademarks such as “#WestElmCaleb” and “#TinderSwindler” have spread in recent years and arguably brought disrepute to the named companies by connecting them to alleged predators of various stripes. Even with the Jack Daniel’s holding going their way, trademark owners are unlikely to be able to act against most third parties who use their marks on social media in this manner, mainly because the use is descriptive and not for financial gain. Things are murkier when commercial entities make use of a hashtagged or previously-hashtagged term, as happened with “West Elm Caleb” when other companies began making references to the term in their messaging. West Elm would be going down an uncertain legal road by pursuing those claims, however, and meanwhile any claims against individual social media users would likely not only lose but also hurt the company with consumers. The solution for optimal brand management may largely lie in self-help: companies such as West Elm should prevent harassing and other unsavory behavior on the part of their employees on social media and in other communications in the first place, and companies such as Tinder must overhaul their safety practices to rein in predatory users. This Article proposes advances in employee policies and training to prevent trademark harms arising from employees’ online behavior, and also gives guidance on dating apps’ user problem. While Jack Daniel’s might not be able to stop West Elm Caleb or the Tinder Swindler, the companies involved can take a real “shot” at it.

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