The Fine Brothers, YouTube sensations, famous for series including "Kids React", Teens React" and "YouTubers React," have been forced to cancel registrations and withdraw applications for their trade marks throughout the world. This comes after an online backlash against the brothers' plan to license their "React" mark to other users, despite many YouTubers already producing similar "React" style videos.
For those who have never heard of the "React" videos, they consist of groups of people reacting to a particular phenomenon. For example, teenagers reacting to physical encyclopaedias or the elderly reacting to Eminem lyrics.
Recently Joel McDonald wrote a blog article here about the importance of protecting intellectual property for online platforms, and the consequences of not doing so. From an IP perspective therefore, The Fine Brothers took the correct approach in protecting their straplines. "Teens React", "Elders React" and Kids React" are all registered trade marks in the USA, and "Kids React" is also a registered UK trade mark. Further, the brothers have applied to register the mark "React" in the EU as a Community trade mark which is a pending application.
However, one cannot ignore the commercial context of the brothers' attempt to police the "React" market particularly on YouTube which is widely renowned as an open video-sharing platform. The key question was whether it was worth protecting "React" as a trade mark to enable the brothers to license the word "React", when YouTube enables users the freedom to upload similar content (without the mark) anyway. The overwhelming response was that it was not worth protecting as a trade mark. According to a BBC news article dated 2 February 2016, subscriber numbers have fallen by up to 10,000 per hour since the brothers broke the news about their licensing plans. They now face the ignominy of having to cancel their registrations and withdraw their trade mark applications.
The question remains as to what IP protection they have left for what is arguably a novel idea. Copyright protects the expression of ideas, not the ideas themselves. Therefore, the brothers are unlikely to have copyright protection for the format of the "React" videos. Parallels can be drawn with TV show formats which UK courts have historically not protected.
Could the brothers potentially have a claim in passing off for their unregistered rights? The Fine Brothers produced their first "Kids React" video in October 2010 which could help them demonstrate that they have sufficient goodwill amongst the relevant members of the public. If a third party producing videos then misrepresented itself as being linked to The Fine Brothers by using a similar title to "React" (e.g. "Lawyers React"), would that be likely to lead to damage which would support a passing off claim?
In summary, this news story highlights the importance of not ignoring the commercial consequences of protecting IP and the need to think outside purely the legal box.
Many thanks to Alex Hooley for his help in preparing this post.