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: Indemnification Clauses and You

Q: I am an industrial designer and I'm being asked to sign a contract with an indemnification clause. A lot of my peers suggest that it's inappropriate. What should I do?

A: I'm not familiar with any ban on indemnification clauses specific to the industrial design community, but I can say that they're fairly common in contracts across a wide variety of design and non-design industries. In fact, they're so common, so rote, that I'm hard pressed to remember a contract in recent years where I haven't seen one.

An indemnification or indemnity clause, for those who don't know, is a provision in a contract where one party (you) promises another party (your client) to cover them for losses if they're sued by a third-party for an issue arising out of your work. In other words, you act as an insurance company for the party being sued.  In most indemnification clauses, you're asked merely to pay or reimburse the client for the cost of defending that lawsuit (i.e. attorney and court fees). But in some cases, you may be asked to reimburse a party for actual losses they suffered. You may even be asked to mount the actual defense - i.e. hire a lawyer and defend the client yourself. The language of the clause should lay out clearly what your obligations are when it comes to indemnifying your client (vague indemnity clauses can be a real scourge). Typical indemnification clauses make their presence known through buzzwords like "indemnify," "hold harmless," and "defend."

Here's a real world example: Let's say you design a newfangled lamp with all kinds of amazing new design features and functions. A client sees your lamp on your Behance page and orders 100 to stock in her store with the option for more orders if the lamp is a success. You sign a contract with an indemnification clause and start stocking her store with your lamp. A customer buys your lamp in your client's store and soon after sustains second-degree burns. The customer sues your client for selling a defective product. Because you signed an indemnification clause, you now have to pay your client's attorney/legal fees and quite possibly defend her in court.

Whether or not you should agree to a specific indemnification clause is highly dependent on your situation and the language of the clause, and without seeing the whole contract I can't tell you whether to sign it. That said, you shouldn't sign any agreement where you feel the benefit to the client far exceeds the benefit to you. You also shouldn't sign any contract where you have to accept liability for someone else's negligence... that's why mutual indemnification is such a popular option (mutual indemnification is where both parties to the contract promise to defend each other from lawsuits arising only from their own actions or negligence).

This topic is a bit of a sticky wicket, so if you have any questions about it, don't hesitate to contact me or your own attorney. The last thing you want to do is sign an indemnification clause that puts you on the hook for something you shouldn't be responsible for.