Copyright 2010, Blake, Cassels & Graydon LLP
Originally published in Blakes Bulletin on Intellectual Property: Social Media Series - Brand Protection, September 2010
There are many potential pitfalls for companies that choose to be active on social networking sites. One such pitfall is social media impersonation.
There are three main types of pages on social networking sites: personal pages; branded pages; and community pages. Personal pages are operated by individuals.
Branded pages are operated by organizations and are used to provide general information about the organization and promote the goods and services offered by a business or the goods or services of another organization, e.g., www.facebook.com/blakes." Businesses use branded pages to gain valuable feedback about goods and services, drive additional sales and open a dialogue that can both strengthen brand loyalty and attract new customers.
A community page is a new type of web page developed by FACEBOOK, dedicated to a topic or experience that is operated collectively by the community connected to it. The content of community pages is derived from WIKIPEDIA and FACEBOOK users' status updates.
In the context of social networking sites, a username refers to that portion of a uniform resource locator (URL) that follows the domain name of the social networking site, e.g., in the URL www.facebook.com/blakes, "blakes" is the username. Usernames allow businesses to easily promote their branded pages. Many companies refer to their social networking usernames on business cards, promotional materials and on their own websites.
Some social networking site operators often have restrictions on who can register a given username, e.g., if the username is a trade-mark, the person attempting to register the username may need to establish ownership of the trade-mark before the operator will allow the username to be registered by the individual or entity.
A business that is able to register the usernames containing its exact brand names, as well as the most intuitive and common permutations and acronyms, on each major social networking site is more likely to control the most logical social media space on the Internet through which to interact with relevant audiences. Control of these usernames also prevents competitors, disgruntled employees and unauthorized persons from registering or gaining access to these names that they could then use to post potentially harmful content.
Username squatting involves registering a username with the intent to mislead others as to the identity behind the username. Users who register trade-marks and trade names or names of famous people as usernames, without holding rights in the mark or name, engage in username squatting.
A trade-mark owner that disputes another person's registration of a domain name can often use the dispute resolution procedure of the relevant domain registry. However, there is no analogous forum for handling disagreements over social network username registrations. In the event of a username dispute, a trade-mark owner must complain to the appropriate social network operator. If the operator refuses to take any action, the only recourse may be litigation.
Moreover, since there is generally no cost associated with registering a username, there is no barrier to entry for username squatters, meaning that organizations are increasingly discovering there is always some individual or entity willing to register another party's trade-mark or trade name as a username. The problem of username squatting is serious. A recent survey concluded that 93 of the top 100 global brands are being usernamesquatted in some way on TWITTER.
A recent and well-documented example of username squatting involved a FORTUNE 100 company. A TWITTER account, «@trademarkGlobalPR», become operational in May 2010. The account appears to be connected with the company, even though it is not. This unauthorized account even displays the company logo. By August 2010, the unauthorized account had over 180,000 followers, compared to the legitimate TWITTER account of the company, «@trademark_America», which had less than 20,000 followers. A Google search of "trademark Twitter" returns the unauthorized account at the top of the search results. Initially, the company chose not to complain to TWITTER as it felt people would realize that the unauthorized account was not connected with it. However, the company subsequently took active steps to inform the public that the account was unauthorized and that it did not endorse or support any of the comments made by the author of the "tweets" on the unauthorized account.
Recourse Against Squatters
Each social network operator has terms of service (TOS) which govern the relationship between the operator and users who interact with the social network site. These TOS typically address, among other things, intellectual property rights, including username squatting. The reporting procedure for username squatting generally involves the completion of an online form by the trademark owner. Upon receiving a complaint, the operator may investigate and determine whether or not there has been a violation of the TOS. If a violation has occurred, the user's account may be suspended. The operator may reclaim the username and/or delegate it to a complainant with rights in the username.
As username squatting increases, operators are beginning to develop new policies and procedures to deal with it. For example, TWITTER is in the process of testing a "Verified Account" feature for individuals and organizations who deal with account impersonation or identity confusion on a regular basis. Accounts that have a "Verified Account" badge in the top-right portion of the user's profile page are verified to be legitimately connected with the individual whose name, or organization whose trade-mark, is or includes the username, so followers know if they are following a legitimate account.
Unlike with domain names, the TOS generally do not permit the purchase or sale of usernames. Therefore, even though it may be easier for a trade-mark owner to deal directly with the username squatter and purchase a username, this may not be permissible under most operators' TOS. For example, TWITTER has an explicit Name Squatting Policy that states "[a]ttempts to sell, buy, or solicit other forms of payment in exchange for usernames are... violations and may result in permanent account suspension." Accordingly, in the event that TWITTER determines that a trade-mark owner has purchased a username from a username squatter, the operator could reclaim the username and not allow anyone to use it.
Community pages also pose risks to trade-mark owners who may not have control over the content and may not be able to remove content from such pages.
Currently, if objectionable or inappropriate content is posted on a trade-mark owner's branded page on a social networking site, the owner can request the site operator to take it down. However, on community pages, the trade-mark owner's only recourse may be to post comments or provide a link to the owner's branded page or official website.
Trade-mark owners are also troubled by the fact that visitors looking for their branded pages may not be able to find them easily and may instead be diverted to a community page that profiles the owner. This would not only have the effect of reducing the traffic to a trademark owner's branded page, but visitors may mistakenly believe that a community page is the owner's branded page.
The social media context provides new and exciting opportunities for companies to raise the profile of their brands. However, organizations face unique and challenging issues in protecting their brands on social networking sites. Organizations that have a presence on social networking sites should register appropriate and intuitive usernames. As there is generally no cost associated with registering usernames, organizations should seek to register as many usernames as is appropriate to adequately protect their brands. Even those organizations that do not wish to have a presence on social networking sites should nonetheless consider defensively registering usernames to prevent username squatting.
If an organization comes across a username squatter, it should immediately report the violation to the social network operator. This may result in the squatter's account being suspended and a transfer of the username to the trade-mark owner. It is important for organizations to be familiar with the TOS of the most important social networking sites as these dictate the primary recourse in the event the organization must deal with a squatter. Most importantly, companies must remain vigilant to protect their brands in social media.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.