The creation of username registration programs by Facebook and Twitter presents potential concerns for rights holders who wish to prevent third parties from adopting their trademarks as user names. Different types of brands may realize different levels of value from these types of "social networking" services and should adapt their brand strategies accordingly.
Why Facebook & Twitter Usernames Might Be Important to Trademark Owners
On June 9, 2009, Facebook announced that it would allow pre-existing members to register usernames. That program has now been opened to anyone that registers a page on Facebook. A username enables a member to have a URL in the format www.facebook.com/username as a readily identifiable reference or link to one's Facebook page. While offering customized usernames is not new, Facebook's 200 million members represent a significantly larger user base than most other social-networking services. Furthermore, Facebook's growing advertising infrastructure may result in significant commercial use of marks as usernames. As a result, the username program presents a concern to trademark owners who either wish to host their own pages on the site or who wish to prevent unauthorized use of their marks. While Twitter's six million registered users presents a much smaller user base, its personality-based focus and habit-forming relationship with its "followers" may increase the brand equity risk posed by impersonators.
Facebook presents the risk of third parties claiming usernames that include trademarks of others, resulting in web addresses such as www.facebook.com/xerox. Facebook initially offered an automated form that enabled trademark owners to pre-emptively notify Facebook that certain terms were registered trademarks and, as such, that third parties should not be permitted to adopt those terms as usernames. However, hours before the first selection of usernames, access to this preventive form was removed and is no longer available.
Twitter does not have such a protective measure. However, in the wake of a recent impersonation case involving St. Louis Cardinals manager, Tony La Russa, Twitter announced the upcoming launch of a "verified account" service to protect well-known figures.
Resgistering a Username as Prevention
In the absence of preventive notice forms, regardless of the social networking service, trademark owners may usually protect their marks pro-actively by simply registering their own usernames with the service. Twitter usernames have long been available (see https://twitter.com/signup). Facebook usernames are now open to anyone and can be selected immediately for any Facebook page. Facebook pages may be created at any time for, inter alia, brands, products, organizations, local businesses, and various types of public figures (see http://www.facebook.com/pages/create.php). Since each page may have only one corresponding username, owners of multiple marks must establish a separate page or profile for each username they wish to register. Since this process could be time-consuming and costly to owners of large portfolios of marks, such owners may wish to prioritize those marks best positioned to take advantage of social networking services, including Facebook and Twitter.
Countering Potential Infringements
In the event that a third party on Facebook adopts a potentially infringing username before the legitimate owner does so, the legitimate owner may submit an Intellectual Property Infringement Claims form (available at http://www.facebook.com/copyright.php?noncopyright_notice=1). This somewhat open-ended claim requires notice of the allegedly infringing username(s), the rights infringed, and a description of the nature of the infringement. The target of the claim may thereafter appeal an adverse decision by Facebook to delete or transfer its username. While the burden on the mark owner is clearly higher under the Infringement Claim than under the previously available preventive form, it remains to be seen how much support Facebook will actually require before taking action.
Twitter does not yet have a formal, trademark infringement claim form, although it does provide Copyright infringement claim guidelines similar to Facebook's Infringement Claim. Considering Twitter's Tony La Russa case and last year's eBay v. Tiffany case, rights holders can reasonably expect "notice-and-takedown"-type compliance by social networking services, in a manner analogous to the Digital Millennium Copyright Act's notice-and-takedown provision. However, as with the earlier cases, rights holders will continue to bear the burden of policing their marks.
Despite Facebook's and Twitter's official intellectual property protection policies, it remains unclear what standard will be used to settle disputes. For example, under Facebook's Infringement claim, there is no explicit requirement for an owner to state the relationship between the goods or services in a registration and the content shown on a third party's Facebook page. Similarly, there is no express requirement that trademark owners demonstrate a commercial "trademark use" on the allegedly infringing page associated with the username. How responses to the open-ended queries on the claim form will be addressed and which party, if either, will be entitled to a presumption of ownership remains unclear. In any event, both Facebook and Twitter reserve the right to remove and/or reclaim any username or account at any time for any reason.
Are Social Networking Services for You?
Facebook and Twitter are only the latest social networking services in a long line of such services and they will not likely be the last. Before investing the time and resources to register a site and username, filling the site with content, or managing communications with visitors or Twitter followers, brand owners should examine the value they hope to realize from having a presence on these social networking services. Owners of different types of brands may realize different value from different social-networking services. Having a presence on a social networking service is valuable largely to the extent that the brand owner can leverage that presence for marketing purposes, such as building brand awareness and loyalty or engaging in customer dialogue. Pop-culture and consumer-oriented brands are likely to realize high value in establishing a social networking presence. Brands that jealously guard their marks may also realize value, if only by pre-empting unauthorized users. For other types of brands, it may not be worth the investment to build a social networking presence or to police unauthorized uses within these services, given that most brands already have their own domains where would-be customers may find them. If incremental marketing value can be gained by joining Facebook or Twitter, registration may make sense. If not, the drive to register a username and sign-up with every new social networking service may not be justified.
The author gratefully acknowledges the assistance of Mr. Ari Abramowitz in preparing this article.
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.
