-Martha Engel, Attorney

Instagram recently released a new feature called Instagram Stories, which allows users to curate a collection of photos or videos of moments to share with friends for them to view, but then it disappears after a day.  The thing is Snapchat, a competing photo sharing app, already had a feature called Stories, which allows users to curate a collection of photos or videos of moments from the past day to share with friends for them to view.  Mashable has a nice post comparing the two features and identifying some of their differences.

So, can Instagram have Instagram Stories and call it that when Snapchat Stories already exists?

The answer, as it often is in the law, is “it depends.”

On the trademark side, neither Snapchat nor Instagram seems to have filed a trademark application for their respective Stories marks, with or without their house brand.  Notwithstanding that though, Snapchat has been using Stories since at least 2013 and would have prior trademark rights to STORIES over Instagram, which was just released this year.  However, they would only have those rights if STORIES actually functions as a trademark, rather than being a generic term.  A trademark can be generic if it becomes the common word or term used to identify a particular product or service regardless of source.  Examples of this include aspirin or elevator.   Trademark owners risk their trademarks becoming generic by their own improper use of the mark, like by using the mark as a noun rather than an adjective next to a generic term for a product (e.g. KLEENEX® tissues).  They can also become generic by failure to properly police the use of the mark by consumers or the media.

There could also be some issues for Instagram on the patent side.  Snapchat owns at least U.S. Patent No. 9,026,943, which has the following claim:

1. A computer implemented method, comprising:

allowing a user to access a user-controlled social network profile page with posts in a specified order;
permitting a user to traverse an interface element across the posts in the specified order to establish a set position for the interface element;
providing access to posts on a first side of the set position for the interface element to define a viewable profile; and
blocking access to posts on a second side of the set position for the interface element to define a non-viewable profile, wherein blocking access to posts includes blocking access to posts observed by social network members associated with the user, while the user has access to posts on the first side of the set position and the second side of the set position.
If Instagram’s Instagram Stories feature practices each and every element of this claim, it would infringe Snapchat’s patent, assuming of course that the patent is not somehow invalid – a defense that would certainly be brought by any alleged infringer.  It’s also possible that Instagram designed its Instagram Stories feature around claims of Snapchat’s portfolio, which may explain why the order of displaying friends’ posts to a user is different and other differences between the apps.
Instagram is owned by Facebook, which has a history of mimicking features of Snapchat in its applications as this article from 2014 discusses (see this 2016 update as well).  We’ll have to wait and see if this is the final chapter of this ongoing saga between social media app giants.