Canada: Getting Your Handle On Twitter, Channelling YouTube, And What About Facebook?

Last Updated: January 15 2013
Article by Catherine Lovrics and R. Scott MacKendrick

With over 1 billion Facebook users, half a billion Twitter users and hundreds of millions of YouTube users, the popularity of social media has created opportunities for businesses – but also room for mischief when it comes to usernames. So what can a trademark owner do when it discovers that someone has used its trademark as a username? Twitter, YouTube and Facebook each have policies that address usernames. Their policies have changed over time and may still change. Although the sites do not mediate disputes, they are prepared to take action and may reclaim or release usernames in certain circumstances. If their policies do not help, a trademark owner can attempt to negotiate; if this is unsuccessful, the courts may provide recourse. However, consideration must first be given to whether the use of the username relates to a clear case of trademark infringement or impersonation, whether the content is fan or criticism content, whether the account is inactive, what response might be received and whether there is a risk that the complaint may go 'viral'.

Trademark infringement

If a username is being used on a social media feed, channel, page or profile in a way that is likely to confuse visitors into believing that the trademark owner created, is affiliated with, has endorsed or has sponsored it, a trademark owner can complain to the site to try to get the username cancelled and possibly transferred.

YouTube and Facebook encourage trademark owners first to reach out to the user (eg, by using YouTube's private messaging feature) to try to resolve the dispute directly. If resolution is not possible, or if it is impractical to contact the user directly, the trademark owner can send a claim through a complaint form. Both sites have forms specific to username abuse. A trademark owner should identify its trademark and describe how the username infringes its rights.

Facebook also has a form that can be used to complain about infringement by app developers. Again, Facebook encourages trademark owners first to try to resolve disputes directly with the developer (eg, through the "contact developer" link in the gear menu on the app's Facebook page).

Twitter requires a registered trademark owner to submit a trademark complaint. Owners of unregistered marks can still submit complaints for brand impersonation, for example, if a Twitter user is using the company or brand name, photo, image, contact information or other content as its own. Trademark owners can request that a username and account be removed, or that the username be transferred to an existing company account. Twitter suspends accounts and notifies account holders if there is a clear intent to mislead. If Twitter determines that the account may unintentionally confuse users, it may give the account holder an opportunity to clear up potential confusion or release the username for the trademark owner's active use. Twitter has a separate policy for promoted products (ie, tweets, trends and account profiles). A trademark owner complaining to Twitter should detail the nature of the confusion (eg, passing off) and include specific descriptions of the objectionable content or behaviour.

In social media, fan and criticism content is common, and the line between infringement and fair use is not always clear. What constitutes fair use may be up for debate, but generally, social media sites are unlikely to mediate disputes between a trademark owner and a user that is a fan or critic. For example, Twitter permits newsfeeds, commentary or fan accounts.

However, an account's profile information should make clear that the account is not actually owned by the company or business entity that is the subject of the newsfeed/ commentary/fan account; Twitter suggests that users distinguish the account with a qualifier such as 'not', 'fake' or 'fan'. The username should not be the trademarked name of the subject of the newsfeed, commentary or fan account.

When dealing with fans and critics, trademark owners should consider the possibility of consumer backlash against taking an aggressive approach. There are several examples of users 'rebelling' against an overly aggressive IP owner, and of media picking up on the 'rebellions', thereby amplifying the problem from the trademark owner's perspective by drawing attention to the troublesome username. Sometimes it is wise simply to leave a troublesome username alone. It is prudent for legal and marketing departments to collaborate in order to devise a balanced approach to address the concern.

Inactive accounts

Trademark owners often have concerns about usernames that have been registered by a third party and are objectionable and/ or desired, but are not being actively used – in other words, 'squatted' usernames. It can be challenging to determine how to proceed in such cases, in part out of fear of 'waking' a potential infringer and providing opportunity to feign fair use.

Users of social media sites are expected to be active; however, not all activities are publicly visible, so it is possible that an account that appears to be inactive is not. While there is no uniform bright line test to deem accounts inactive, various social media sites have established their own tests. YouTube considers an account to be inactive if the user has not logged in for six months has never uploaded any video content and has not actively partaken in watching or commenting on videos or channels. YouTube may reclaim an account that it considers to be inactive.

Twitter considers inactivity to be based on a combination of tweeting, logging in and the date on which an account was created. Generally, a Twitter account may be considered inactive if there has been no activity for six months. YouTube and Twitter may release squatted usernames in case of a valid trademark complaint.

To the extent possible, a complaint should be framed accordingly. For example, Twitter will consider various factors, such as the number of accounts created, intent to prevent others from using the username, attempts to sell accounts and using feeds of third-party content to update and maintain accounts under the names of those third parties. A Twitter account that has no updates or profile image, with no intent to mislead, will not usually be considered username squatting. Additional evidence (eg, evidence that the user has offered to sell the username) may assist in supporting a trademark complaint. Twitter will release a username for a trademark holder's active use only if the trademark is registered. Twitter is working on a policy to release all inactive usernames in bulk, if the trademark is unregistered, but it has not yet set a timeframe. In the meantime, Twitter suggests using an available variation.

Other considerations

Unlike domain names, usernames are not sold on the open market, so negotiating settlement can be difficult, since paying for transfer of the username may not be straightforward given valuation problems. There is also no industry or legal standard to valuing social media assets (see the US case PhoneDog v Kravitz, ND Cal, January 30 2012), which discussed, but did not decide, valuation issues for a Twitter account. The plaintiff contended that the industry standard was to value each Twitter follower at US$2.50, whereas the defendant claimed that multiple factors should be considered, including the number of followers, the number of tweets, the content of the tweets, the person publishing the tweets and the person placing the value of the account). Moreover, Twitter prohibits the buying and selling of usernames.

Options are available to help identify a trademark owner's 'official' social media page, feed or channel. For example, Twitter 'verifies' accounts. Twitter does not accept requests for 'verified accounts' from the general public. However, Twitter may reach out to the public to verify the account of a trademark owner that Twitter regards as having a certain profile. Trademark owners can also use links from their website to direct traffic to the right account (eg, a'Follow us on Twitter' button).

Dealing with usernames and accounts

Usernames and accounts may be separated. For example, it is possible to change the username for a Twitter account while still maintaining the account. Trademark owners that have secured their username and account should ensure that the agreement with the party charged with populating content separately covers who 'owns' the username, the account and the content. These elements should also be dealt with when acquiring a new business. Likewise, when settling trademark disputes involving social media, consideration should be given to each of these elements separately. For example, if a username infringed a trademark owner's rights, the trademark owner may want the account to be closed in addition to the username being changed (so that the benefit gained from the username is not retained by the user).

If it is not possible to resolve the dispute using a social media site's own policy or through a negotiated settlement, a trademark owner can consider litigation. The facts of the case may support a claim for trademark infringement, depreciation of goodwill, tarnishment or passing off. There also may be more novel claims that could be advanced. While Canadian courts have not yet squarely accepted and adopted the doctrine of initial interest confusion – a concept which is of particular interest in the context of usernamedriven confusion – the Supreme Court of Canada recently opened the door to the doctrine (or a variation of it) being accepted in Canada. In Masterpiece Inc v Alavida Lifestyles Inc (2011 SCC 27), the Supreme Court stated that "before source confusion is remedied, it may lead a consumer to seek out, consider or purchase the wares or services from a source they previously had no awareness of or interest in. Such diversion diminishes the value of the goodwill associated with the trademark and business the consumer initially thought he or she was encountering in seeing the trademark. Leading consumers astray in this way is one of the evils that trademark law seeks to remedy".

Ultimately, protecting trademarks in social media can be a daunting task. When responding to username issues in the social media sphere, it is important to remember the nature of the social media beauty and beast, and the potential fallout that a trademark owner can suffer if its approach is not adequately tempered.

This article first appeared in World Trademark Review magazine issue 41, published by The IP Media Group.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Catherine Lovrics
R. Scott MacKendrick
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions