Trademark Problems Specific to Social Media
Social media presents unique problems when it comes to trademark law. Usernames are not covered by federal law that applies to domain names, so if there is a dispute, how does it get resolved?
- The UDRP applies to top level domains with regard to trademarks. This means the portion of a domain name that is in front of the .com, .org., .net, etc.
- Similarly, the ACPA applies to domain names but not usernames, i.e., twitter handles and facebook user names.
- It is unclear to what extent the UDRP and ACPA apply to social media and trademarks used in social media names will increasingly result in trademark infringement lawsuits.
Problems with the ACPA and UDRP and social media
There is a significant problem with the Anti-cybersquatting Consumer Protection Act and UDRP and the extent to which they protect businesses. The problem with the UDRP is that it covers only potentially infringing second level domain names. This means it will only protect domains that appear in the Web address immediately preceding the top level domain, such as .com. This enables Xerox to use the UDRP against a cybersquatter who might register www.xerox.com.
Social media, however, does not provide users with second level domain names. Rather, each user receives a username (such as a Twitter account @toyota) and/or a personalized subdomain, which appears after a slash in the Web address (such as www.facebook.com/toyota. This scenario was simply never contemplated by the UDRP, therefore, it does not apply.
The ACPA may be limited in a similar manner. The statute applies to domain names that are “registered with or assigned by any domain name registrar “… as part of an electronic address on the internet.” This obviously covers second-level domain names, which are granted by registrars. Registrars, however, have nothing to do with the usernames and subdomains created in social media. When Congress enacted this statute, the Senate report on it stated that the ACPA narrowly defined “domain name” in order “to target the specific bad-faith conduct sought to be addressed while excluding such things as screen names, file names and other identifiers not assigned by a domain name registrar or registry.”
Examples of ACPA in a social media context
Nevertheless, one company previously asserted the ACPA in a social media context. Clean Flicks Media, (a small Mormon affiliated company out of Utah which produced edited versions of films to remove content that they considered inappropriate for children or that viewers might otherwise find offensive, and which was shut down by the courts in 2006 following a trademark infringement lawsuit by 11 Hollywood studios) had two federal trademarks in its company name. Clean Flicks sued a competitor for registering www.myspace.com/cleanflicks, however, the court did not rule on this issue prior to Clean Flicks Media being shut down as a consequence of the trademark infringement action. As a result, this issue is still not resolved and the legality and applicability of ACPA with regard to social media is still somewhat unclear.
It was also previously reported that the state of Israel purchased the Twitter username @Israel from a private individual named Israel Meléndez for an undisclosed sum, which by some reports may be as much as six figures. Since Twitter has a policy against name squatting and selling usernames, you have to wonder if the UDRP or the ACPA are of any help to businesses, especially if these are the lengths a nation has to go to in order to obtain a user name.
Whether you have a trademark registration you want filed, you have received a cease and desist or you need to send one, whether you are on either side of a trademark infringement case or you have questions relating to trademarks and social media or domain names, you will want to consult with a trademark attorney who can protect your rights.
Contact an attorney with Veritas Business Law, LLC for a free consultation.