Printstagram Gets Smacked by Instagram Over Trademark Dispute, Turns Lemons Into Lemonade

2014 has been a big year for me personally. As many of you know, Steph and I were happy to welcome our first child last month, a baby girl named Hannah. We also bought our first house back in June, which is what sparked today’s blog post.

With more wall space to cover than our two previous (and oh so tiny) apartments combined, Steph and I decided to frame a bunch of pictures and hang them up. We found Printstagram, a popular online service that - yup, you guessed it - allows you to upload your Instagram photos and print them on high quality photo paper. We gave it a shot last week and really fell for it.

Our timing was odd because the day after we placed our order, I got this email from Social Print Studio, the company that runs Printstagram.

The competition idea is a really clever way to deal with what must be a devastating legal blow. Starting last year, Instagram (and parent company, Facebook) began cracking down on apps and services that used any combination of “insta” or “gram” in their names in order to give a wide berth to Instagram’s valuable trademark. This is a switch from the company’s original policy which had encouraged derivative apps to use either word (but never both). But now that it’s a multi-billion dollar company, the MO has changed. Money will do that I guess.

Although to be honest, as tough as this must be for the Printstagram people, Instagram kind of has an argument. A central tenet of The Lanham Act (the law that governs trademark protection and infringement issues) is that similar marks that are "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association” may be liable for trademark infringement. That is, if the general public could reasonably assume that Printstagram was actually affiliated with Instagram, that could cause confusion in the marketplace and, potentially, drive revenues away from Instagram. That would be enough to rise to a trademark infringement claim.

I’d be interested to hear the argument Printstagram could’ve mounted in its defense. However, considering the similarity between the names and the nature of Printstagram’s service, they probably would have lost... and they knew it, which is why they’re changing their name.

Anyway, kudos to them for turning lemons into lemonade. They got hit hard but decided to roll with it in a fun way, rather than get bogged down in messy litigation. The email lists several strict but hilarious guidelines for the contest, such as:

• Name must get us into legal trouble, but not for at least 2 years.
• Name must be a future failed band name.
• Name must be more beautiful in Spanish.
• Name must reference a Bill Murray role.
• Name must be something your mother once whispered into your ear.
• Name must be appropriate for the back of a boat.
• Name must have a corresponding gif.

The winning choice will end up with a bunch of free printing, so I might give the contest a shot. I still have some wall space available.

Ask Greg: When And Why To Use Copyright And Trademark Symbols

Q: When am I required to to put a © next to my work? If I don't do that, will I lose my copyright?

A: With one exception, you are never required to use a symbol to indicate your ownership over a copyright or trademark, and the failure to use those symbols will not negatively impact your rights. That's the nice thing about our intellectual property laws... your works of art and trademarks benefit from federal protection automatically and without reservation (minus any intervening contractual or infringement issues).

That doesn't mean it's not a good idea to use those symbols whenever possible, however. The symbols perform a really useful function; they tell the world that you are aware of your rights and will defend your ownership over your copyright or trademark. It seems like a small thing, but that notice can actually make a difference. Would you rather spend your time and money fighting off potential encroachers, or would you rather be building your network and running your business? Eagle-eyed readers may have already noticed the change I made to my logo recently. Do you see it? Hiding there at the end of the word "Artist" like a little blue guardian angel?

That ™ isn't there for aesthetic reasons. It's there to put the world on notice that I recognize the value of my brand and will defend it if necessary.

That's why using these symbols is worth it. So what do they mean and how do they differ?

Copyrights (©)

From the moment your work is created (that is, fixed in a tangible medium of expression), it is granted copyright protection. You don't have to register your work with the U.S. Copyright Office, and you don't have to use a © to demonstrate to the world that the copyright is yours. In fact, you don't have to do anything. And while there are definite benefits to registration, creating the work is all the burden you must bear. It's protected no matter what. Registration and denoting ownership through use of the © symbol are considered optional, and failing to do either will not cause you to lose ownership. That, by the way, wasn't always the case. Prior to 1988, failing to use the © to denote your copyright meant you lost it. Luckily, in a rare display of common sense, Congress changed that.

Trademarks (™ and ®)

Generally speaking, from the moment you use a logo, name, phrase, etc. in commerce, it is granted limited (regional) protection. You don't have to register your mark with the U.S. Patent and Trademark Office to get that protection (although registration will give you nationwide protection), nor are you required to use a symbol to denote that your trademark receives such protection. However, there are two symbols that denote trademark  ownership - the ™ and the ® - and both carry wholly different implications.

The ™ symbol functions an awful lot like the ©; using it is completely optional and registration of your mark is not required to use it. Likewise, failing to use a ™ does not strip you of your trademark ownership.

But with the ®, everything is different. It creates the lone exception I mentioned earlier. While you don't have to register your mark in order to use a ™, you MUST register your mark if you want to use an ®. You're also not allowed to use an ® if you don't have a validly registered mark. Doing so constitutes fraud, which can be punished by fine or even imprisonment (pretty rare, but still). If you do have a validly registered mark and you fail to use the ®, you most likely won't be able to recover money for any financial harm you suffer if someone does infringe your mark.

In my opinion, these symbols are a gift to you from the U.S. government. They're easy to use, they give you a lot of authority, and the burden on you to use them is very small. While they are optional, I can't think of a single reason not to use them.