Bros Icing Bros - A Case for Copyright Bullying by Overreacting Smirnoff Lawyers

"Smirnoff Ice" by Fernando Ariotti (Released Under Creative Commons Attribution-Noncommercial-No Derivative Works 2.0 Generic )

On the morning of July 16, my bros on Twitter noticed something totally un-chill: BrosIcingBros.com, the epicenter of the icing phenomenon, had been taken down. Instead of user-submitted photos of young brosephs and bro-ettes, on their knees drinking bottles of Smirnoff Ice, the website displayed an unceremonious, one-sentence farewell: "We had a good run Bros..."

In the fallout of BrosIcingBros going offline, with Broutrage at a fever pitch, some facts are still unclear:

1. Why did the site get taken down? Some suggest that Diageo (the holding company with the right to enforce Smirnoff's copyright and trademark) sent the BrosIcingBros' anonymous owner "Joe" a cease and desist letter alleging copyright and trademark infringement. Some suggest that the site is in the process of being sold. The reality might be a little of both: after receiving a cease and desist letter, Joe decided to sell the site rather than dealing with the hassle of defending himself.

2. Did Diageo have a legal right to take the site down? Although dozens have weighed in on the why shutting the site down might be bad business for Smirnoff**, no-one has really answered the big question: can Smirnoff even take down a site like BrosIcingBros.com on the basis of copyright and trademark infringement?

The sources gloss over this question without really answering it. AdAge quoted "Annette Heller, a 30-year St. Louis trademark and copyright lawyer." Heller says:

"I would say there is a case because of disparagement of the product and using the name in association with this game...[BrosIcingBros.com is] using the trademark in a way that disparages the product and exposing Smirnoff to liability." Heller contined to say, "parody does not count as infringement."

This a generalized soundbyte that it really doesn’t answer the question.

At NewMediaRights, we regularly deal with individuals being bullied by large copyright/trademark owners into taking down their sites, even when those sites don't actually violate copyright and trademark law. To bring this practice to light, we wanted to publicly discuss how strong/weak Smirnoff's legal arguments to take down BrosIcingBros.com really are, and whether Smirnoff had good faith when chose to take the site down.

By the end of our analysis, we’ll conclude that

(A) Smirnoff’s arguments for both copyright and trademark infringement are weak at best;

(B) Even though Smirnoff did have good faith in sending a cease and desist letter to BrosIcingBros for some instances of infringement, it was not within reason for Smirnoff to require that the entire site to get taken down.

(C) If BrosIcingBros was, in fact, taken down because of legal problems with Smirnoff, then this is a classic example of a large brand’s legal department overreaching with cease and desist letters and bullying individuals into compliance without sufficient legal arguments to back their claims up.

First Argument: Copyright Infringement
Was the copyright in Smirnoff’s logo infringed by BrosIcingBros?

BrosIcingBros doesn't use any of Smirnoff's copyrighted work except the Smirnoff logo, and its use of the Smirnoff logo falls squarely within the “Fair Use” doctrine. Generally logos are subject to trademark law as well, but "ornate logo[s] with a great deal of original authorship might qualify for both trademark and copyright protection.”

Is this silver-and-red, ribbony, crown-and-falcony mark original and creative enough to be copyrighted? Probably, yes.

Generally, as soon as a person reproduces or distributes something copyrighted that he does not have permission to reproduce, that person has committed copyright infringement. So yes, BrosIcingBros did display photos that contained the Smirnoff logos, so it did infringe on the logo. The analysis doesn't stop there though.

Even though the logo was used, BrosIcingBros use of the logo is an example of Fair Use.  Though a notoriously grey area of the law, here's an analysis of the use of Smirnoff's logo on BrosIcingBros.

There a few substantial defenses to copyright infringement: "Fair Use" is the most substantial. If a use falls within the fair use defense as interpreted by a judge (the four factors are notoriously malleable), then it is not considered copyright infringement.

To determine whether the website's use of Smirnoff's logo in its photos constituted copyright infringement; lawyers and courts look at four different characteristics:

1. The purpose and character of the use of the logo, (in other words, how much did BrosIcingBros use of the Smirnoff logo transform how the logo is perceived as compared to how Smirnoff uses its own logo?  Was the copying done to create forum for commentary on Smirnoff? Was the use commercial or non-profit educational use?)
 
2. The nature of the copyrighted work; (Was the underlying work fact or fiction, was it published or unpublished?  Works of fiction and those that are unpublished usually lean against a finding of fair use)
 
3. How substantial the use of the logo was (for example, are only small parts of the Smirnoff logo used, or is the entire logo used? Was the logo the focus of the posted photographs or was it simply incidental?)
 
4. The effect of the use upon the potential market for or value of the copyrighted work. (Did BrosIcingBros use of the Smirnoff logo somehow make it less likely that people would pay to see the logo or purchase the bottle that the logo was displayed on?)

After analyzing these factors, BrosIcingBros seems well within the guidelines of fair use.

1. BrosIcingBros significantly transformed the use of the Smirnoff logo from an image to used to advertise malt liquor (as Smirnoff uses it) into an image incidental to showing photos of people getting Iced. Here, the logo is only a reminder that the game is being played with Smirnoff Ice. It's a symbolic reminder that the point of the game is that Smirnoff is not a drink for bros. BrosIcingBros (and Icing itself) is a direct comment on the Smirnoff brand. BrosIcingBros makes its thoughts clear: the drink was foul tasting and feminine. Each post was open to comments from the public, and visitors were allowed to comment on the photos that contained the Smirnoff logo. As the most popular Icing site, it became the most likely forum for people to voice their opinions about Icing as well as the Smirnoff brand itself.  Bros Icing Bros did have google ads, and thus was likely commercial use, but the transformative nature should overwhelm this fact.

2. It's not clear if the underlying work, the logo of Smirnoff, was fact or fiction, and it was published, but this factor is not very helpful to the analysis.

3. The images of the Smirnoff logo were totally incidental to the real focus of the photographs (the icings themselves). When the Smirnoff logo did appearin the photographs, often times the whole logo was not displayed. In some photos, the logo was too small to even recognize. For this factor, a judge considers not only how much was taken of the underlying work, but how much of the downstream, resulting work is constituted by original work.

4. Although BrosIcingBros did make money using Google ads, the website provided a service based on showing photos of people getting iced, not based on providing visitors a glimpse of the Smirnoff logo. Said differently, visitors didn't go to the site with the intention of getting their fix of seeing the Smirnoff logo, they went to the site to see photos of icing. This use doesn’t affect Smirnoff’s ability to publish the logo in design books, or any other market for the image.

Overall, Smirnoff’s copyright claim is fairly weak.

Second Argument: Trademark Claims

1. Did Smirnoff have any trademarks that were infringed?

A. The Smirnoff name: Generally, trademark law protects words,  phrases, and symbols when they're attached to products or services and used for commercial purposes. The names “Smirnoff” as well as the names of their brands like “Smirnoff Ice” and their logos are all protected by trademark law

B. The color and shape of the bottle could potentially be covered under trademark law as "trade dress."

So yes, BrosIcingBros contained the term Smirnoff Ice, the Smirnoff logo, and photographs of the Smirnoff bottle.

Despite the fact that the website used the logo, name, and image of the bottle, it's probably not infringement.

A. The uses of the word Smirnoff are non-commercial: Trademark laws only prohibit the use of trademarked terms like Sminoff Ice when used “in commerce.”  A mark is used “in commerce” only when it’s either placed on goods that will be sold or used to advertise someone’s services. See 15 U.S.C. § 1127.

Here, BrosIcingBros isn't being using the term in connection to a product or service being sold.

In the case of Lucasfilm, Ltd. v. High Frontier, Lucasfilm, the owner of the trademark on the term "Star Wars" objected to the press, politicians, and commentators referring to the SDI missile defense project as "Star Wars." When Lucasfilm sued for trademark infringement and asked a court to prohibit people using of Star Wars to refer to missile defense, the court said that this use weren’t infringement at all.

In that case the court said, “When politicians, newspapers and the public generally use the phrase Star Wars for convenience, in parody or descriptively to further a communication of their views on SDI,” Lucasfilm has no right to stop them.  

There's a good case to argue that BrosIcingBros, uses the Smirnoff name for all three (non-commercial) purposes: convenience, parody, and to descriptively communicate how to play the game of "Icing" as well as comment on great Icings in the photos displayed.

B. There's no infringement because the use of the Smirnoff name and logo is nominative.

Like the fair use concept in copyright, “nominative use” gives people a fairly wide defense to trademark infringement claims.

Someone can refer to another's trademark without permission if the following three circumstances are in place:

1. The service in question must be one not readily identifiable without use of the trademark (i.e. if there's no other way to identify what is occurring in the photograph other than referring to Smirnoff)

This seems like a slam dunk in favor of the BrosIcingBros.com website and against the Smirnoff legal team. BrosIcingBros uses the term Smirnoff to describe the game of Icing itself as well as comment on what's going on in the photos on the site. Since some of the photographs clearly contain bottles of Smirnoff Ice, and the game is based on the fact that Smirnoff Ice bottles are being traded back and forth, it would be nearly impossible to talk about the game and describe what’s happening in the photos without using the name Smirnoff at some point in the discussion.

2. The user uses only so much of the mark or marks as is reasonably necessary to identify the product or service (in other words, the Smirnoff trademarks are only used as much as necessary to tell the story)

Smirnoff is only referred to when needed to describe the game, comment on the photos, or comment on the Smirnoff drinks themselves. The site doesn't use the mark egregiously. They're not attempting to the steal Google searches of visitors looking to find more information about Smirnoff or purchase Smirnoff.

Yes, there are certain parts of the site that use the Smirnoff logo unnecessarily:  particularly in the “rules section” where the site uses Smirnoff bottle bullet points. Overall though, those transgressions should, at best for Smirnoff, warrant takedown requests specific to those offensives and not a wholesale takedown of the website (such cease and desist requests would still be suspect).

3. The user must do nothing that would, in conjunction with the mark, to suggest sponsorship or endorsement by the trademark holder.

Yes, consumers may be confused into believing that Smirnoff is somehow associated with creating the site. Since the beginning of the Icing phenomenon, some have assumed Smirnoff has been behind it as a viral marketing campaign.

Regardless, this test specifically looks at whether the person who used the trademark did anything to suggest sponsorship and endorsement, and it's clear that the site did not. The site didn't make any representations as to being sponsored by Smirnoff. The way the site belittled the drink only adds to the fact that people won’t think Smirnoff officially sponsored the site.

In conclusion, the owners of BrosIcingBros were probably unfairly intimidated into being taking their site down

Having not seen the actual cease and desist letter sent to the website, it's difficult to determine how strong Smirnoff's case for taking down the website really is. However, as seen above, Smirnoff's most likely arguments against the BrosIcingBros website are weak at best. While Smirnoff's lawyers might have had good faith in opposing some parts of the BrosIcingBros website, it's unlikely that the whole site should have been taken down.

This is just one law student's take on the subject, and reasonable legal minds may disagree (that's the reason lawyers have jobs). So in the end, things are still about as unclear as a bro's vision after several back-to-back icings.

What is troublesome, however, is that anonymous "Joe"-Bro, along with everyone who used and enjoyed the site has had their rights to free speech reined in because of questionable allegations of copyright/trademark infringement. When lawyers attempt to limit speech, commentators shouldn't stand idly by and take it at face-value when anyone uses the legal process to stifle the 1st Amendment.

Behind the facade of fratty binge drinking, Icing is this ultra-creative, social phenomenon that's adding a welcome piece of the absurd into the real world. Take it out of the frats and dress it up with some pretension and Icing could be considered performance art.

If you're an individual or group, and you feel like you've been bullied into taking down your content, you can contact NewMediaRights for assistance at art@newmediarights.org or by phone at 619-591-8870

* Photo credit: "Smirnoff Ice" by Flickr user Fernando Ariotti (Released Under Creative Commons Attribution-Noncommercial-No Derivative Works 2.0 Generic )

** Twitter users like @bearsurprise demanded a boycott of Smirnoff products until Diageo allows the site back up.

*** Photo credit: "fuzzy copyright" by Flickr user PugnoM (Attribution-Noncommercial 2.0 Generic )

*****Photo credit: "Commercial VehicKle" by Flickr user HeyThereSpaceman. (Attribution-Noncommercial-Share Alike 2.0 Generic )

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