Trademarks have been made fragile with the onset and subsequent rise of social media. The main risk is the damage to one’s name and brand reputation. The information spreads at such a speed the consequences are almost irreversible. A trademark owner should remain alert and vigilant on the internet and in particular on social media. With the rise of social media came usernames. A username is an identifier, unique to a social media platform, allowing users to access a page or an account. The danger is that username are based on a ‘first come, first serve’ scheme, meaning any person can register a username using an existing trademark if the owner has not done it yet. It is common to see username infringing on an IP right on social media. Currently, victims of username squatting are left without any specific tool to defend themselves.
- The social media platform policy
One of the main difficulty is that usernames are subject to social media platform policy. Indeed, usernames belong to the social media platform that delivered it to the user. Social media platforms are in fact the username holders. Each platform deals with username squatting as it wishes. For example Twitter states in its policy that username squatting is prohibited. To the contrary, Facebook states in its policy that usernames are subject to the first-come, first-served principle. A harmonized, unified regulation at an international level would be welcome.
- The Communications Decency Act in the US
Another issue is that social media platform are often based in the US. There, the Communications Decency Act, §230 states that providers of a computer-based interactive service cannot be held liable for the content posted by users of such services. Thanks to this ground, social media platform can choose to free a username that would infringe on an IP right, or refuse to do it.
However, if the sole purpose is to escape legal provisions protecting intellectual property rights, the disposition cannot be invoked. Indeed, if the social media platform has received notification of rights and the situation is patently unlawful, there is an obligation to act. Otherwise, the platform will be held liable.
- Recent evolutions in the US
A decision dated January 18, 2017 created the possibility of relying on private property rights for usernames and domain names (Salonclick LLC v. Superego Management LLC et al, No. 1:2016cv02555). In this instance, the plaintiff claimed violation by his former employee of his private property rights. He was promoting his products on the internet and on Facebook. The plaintiff hired the defendant to assist him in promoting his products. However, further to a dispute between the parties, the defendant used her access codes to the social media platforms to promote her own company and redirect internet users to her own accounts.
The Court held a decision in favour of the plaintiff on the grounds of ‘conversion’ and ‘replevin’. The first one implies deprivation of property rights of an owner without his/her consent, or theft of private property. The second one is the right to bring a lawsuit for recovery of goods improperly taken by another. Further to this case, US case law might evolve in this direction.
In conclusion, we advise to monitor social media. Dreyfus uses a dedicated platform called Dreyfus IPweb. It allows us to offer our internet watch services to trademark holders and monitor their trademarks online. After a username has been detected as infringing an IP right, we analyse the use. If the products and/or services associated to the username are identical or similar to the ones of our clients, we can put an alert and define an appropriate strategy.