Instagram defends Reels TM against proposed injunction
Instagram and its parent company Facebook have hit back at a trademark suit filed by the owner of a cable television network, Reelz.
The social media platforms filed a memorandum in opposition on Friday, November 20, against media company Hubbard Media Group’s motion for a preliminary injunction at the US District for the District Court of Minnesota.
In the filing, Instagram argued against Hubbard’s allegation, in a suit filed on August 11, that consumers were likely to confuse ‘Instagram Reels’, with its television network, REELZChannel, or “Reelz”.
It further held that Instagram Reels, a feature introduced on August 5, is fundamentally different to Hubbard’s entertainment offering because it allows users to create and edit short videos with various effects, synched to popular music. REELZChannel, on the other hand, is a TV network and its viewers do not create its content, they only consume it, the filing stated.
“The fun, creative, and social-connection oriented focus of the Instagram Reels feature is the antithesis of the dark, celebrity-scandal, and true-crime oriented focus of REELZChannel’s television programming.
“Instagram therefore has no reason to invite confusion between the two services, and indeed, no confusion has occurred,” added the social media platform.
The filing outlined more disparities between the two modes of entertainment, arguing that to use the Instagram Reels feature the consumer must first download the Instagram app and create a free account, whereas if they want to watch REELZChannel, they must sign up for a paid television subscription.
“These differences further distinguish and separate the services from each other. Because these services differ so drastically, and because the motivations to seek out each service vary so widely, the parties’ use of arguably similar names does not confuse consumers—a fact that Instagram’s evidence amply supports,” said the filing.
Instagram also held that the companies in dispute operate in completely different markets; and that the differences in the presentations of their respective marks, including the fonts, design elements, colour schemes, and surrounding context, make the marks easily distinguishable to consumers.
According to Instagram, it carried out two consumer surveys that showed zero confusion among consumers who were shown the two marks. “These results empirically—and emphatically—demonstrate what common sense teaches: people using the Instagram app on their phones who encounter a feature within the app called Reels for creating and editing videos will not think that it is associated with the...television channel,” said Instagram.
The social networking service also held that Hubbard had the means and the time to conduct their own scientific surveys, but had failed to do so, “despite its paramount importance in analysing a trademark infringement claim” and that the media company could only point to only a handful of alleged instances of confusion.
Hubbard had put forward no evidence of irreparable harm and is not entitled to a presumption of harm, Instagram also argued.
Conversely, the filing insisted that the social media platform would suffer substantial injury from a preliminary injunction—which, it argued, would be tantamount to a permanent injunction given that rebranding back to Instagram Reels in the event of a future court victory would be impractical.
The filing also drew attention to Hubbard’s reliance on the US Patent and Trademark Office (USPTO) examiner’s initial, partial rejection of Instagram’s ‘Reels’ trademark application, which it argued was misplaced because the examiner did not refuse Instagram’s application as to its “online social networking services”.
“Accordingly, if the court should take anything away from the USPTO examiner’s decision, it is that even without taking any marketplace context into consideration, and only looking at the standard character marks ‘Reels’ and REELZ....the examiner still found no likelihood of confusion with respect to online social networking services,” the filing said.
Instagram also argued that it was by no means the only—or even first—users of a “Reel” mark for video entertainment services and that before it adopted their mark, there were other such marks already registered.
The filing concluded by requesting that the court dismiss Hubbard’s request for an injunction and that in the unlikely event the court issues an injunction, it should be allowed at least 60 days to comply.
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