We're running the following item tomorrow to alert BNA Electronic Commerce & Law Report readers of the opportunity Facebook is offering trademark owners to preemptively block misappropriation of their marks when Facebook opens up its service to vanity URL registrations tomorrow night. I don't see any reason not to share it more widely. Thank you to the estimable David Kelly at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, who shared his insights as well as a few relevant cases I was unaware of, and to BNA's Amy Bivins, who dashed this off late today.
The Facebook social networking site is taking steps to combat "name squatting" ahead of its June 13 launch of a new feature that will permit users to create vanity URLs incorporating their names, such as http://www.facebook.com/username.
Trademark holders can sign up now to block the registration of their marks. Facebook has already reserved certain names in an effort to assist third parties in protecting intellectual property and other rights.
David Kelly, who chairs the Trademark Group at Finnegan Henderson Farabow Garrett & Dunner LLP in Washington, D.C., told BNA today that the Facebook development is yet another area where trademark owners will have an opportunity to enforce their intellectual property rights.
"The good news is that Facebook at least has guidelines, encourages parties to use their real personal or business names, and has a mechanism for trademark holders to object to the use of their marks in these personalized URLs, though these safeguards will not prevent all username squatting problems," he said.
One issue raised by Facebook's trademark protection mechanism asks mark owners to provide a registered trademark, which implies that common law trademark rights may not be sufficient.
This creates the possibility of a conflict in situations where businesses with similar names are in different markets or geographic areas use the same mark, or situations where users have the same personal name as a celebrity, Kelly said.
Liability Unlikely for Services, but User Liability Possible.
Most widely used social networking sites prohibit unauthorized name and trademark use in their terms of service, and a growing number are banning username squatting--registering accounts associated with names or companies without authorization--specifically.
Under the reasoning in Tiffany v. eBay Inc., it is possible that social networks themselves could be held liable for username squatting, on a contributory infringement liability theory, if they continue to provide services to users they know or have reason to know are engaging in infringement. Tiffany v. eBay Inc., No. 04-4607 (S.D.N.Y. July 14, 2008)(13 ECLR 942, 7/16/08). Under Tiffany, general knowledge that infringement is occurring on a service is not enough to generate contributory liability.
Kelly told BNA that the username squatting issue, from the registrant perspective, is similar to e-mail addresses and screen names, which courts have addressed. For example, in Highfields Capital Management L.P. v. Doe, 385 F. Supp. 2d 969 (N.D. Cal. 2005), a magistrate judge quashed a subpoena requiring Yahoo! to identify a party that posted sarcastic message board comments about a company's stock performance using the company's name.
Finding the comments were not driven by a competitive purpose, and that it was unlikely readers would think the negative comments were in some way sponsored by the company, the court said the use qualified as a fair use.
But in Freedom Calls Foundation v. Bukstel, 2006 WL 845509 (E.D.N.Y. Mar 3, 2006), the court issued a preliminary injunction against a company's former employee, who had set up an e-mail address and instant messenger account using the company's name, concluding the use was likely infringing.
Facebook Plans Name Squatting Protections.
In instructions on the new vanity username program, Facebook directed users to choose a name as close as possible to their true names, and states that names cannot be changed or transferred after they are created.
Facebook is limiting participation to users who were Facebook members prior to its announcement of the program, a restriction designed to deter parties from signing up to "name squat." However, the restriction is temporary: New users will also be able to sign up for vanity usernames beginning June 28.
Facebook provides a link for "rights holders," through which they can prevent the registration of a trademark as a username. The form requires trademark owners to list the trademark as well as the registration number to be blocked. Rights holders do not have to have Facebook accounts to block registration of their marks.
In an effort to combat name squatting, Facebook will not permit the transfer of vanity URLs. If a user cancels an account, the associated URL will not be available as a new Facebook URL. Users will also not be permitted to register generic terms as usernames. Facebook said that it reserves the right to remove or reclaim a username at any time and for any reason.
Twitter to Test Verified Accounts.
Facebook's announcement comes against the backdrop of a high-profile lawsuit against another social networking site, Twitter, brought by a public figure who was impersonated on the Twitter site.
St. Louis Cardinals manager Tony La Russa filed his complaint in the San Francisco Superior Court, asserting trademark infringement, false designation of origin, dilution, cybersquatting, misappropriation, invasion of privacy, and intentional misrepresentation claims (La Russa v. Twitter Inc., Cal. Super. Ct., No. 02487393, complaint filed 5/6/09). He attached to the complaint a series of updates, or Tweets, which the user posted as "TonyLaRussa."
Twitter removed the action to federal court on June 5. The next day, a Twitter official blogged that the La Russa complaint was an "unnecessary waste of judicial resources," asserting that the company's Terms of Use are fair to rights holders. The blog post further revealed that Twitter plans to test a verified account system this summer, through which public officials, public agencies, famous artists, athletes, and other well-known individuals at risk of impersonation can create accounts verified by a seal.
By Amy E. Bivins
Links:
Facebook's form for trademark owners to block mark registration.
Facebook's IP infringement notification form.
La Russa's complaint against Twitter.
Update: Morrison & Foerster has an alert on the Facebook situation.
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