Time to Legislate Against Trademark Infringement on Social Media?

Time to Legislate Against Trademark Infringement on Social Media?

LinkedIn was founded in 2002, Facebook was founded in 2004, YouTube was founded in 2005, Twitter was founded in 2006, Instagram and Pinterest were founded in 2010 and Snapchat was founded in 2011.  Social networking websites have changed the landscape of not only how we interact with one another but also how companies reach consumers.  Companies evangelize their brands through social media sites as much as through their websites today.  In fact, some companies may argue that the following on a particular social media platform is more valuable than a stagnant website that does not draw constant attention from consumers.  However, what is one to do when they face a trademark issue related to a social media handle?

The Anti-Cybersquatting Consumer Protection Act (ACPA) was enacted in 1999 in order to create a cause of action against one who registered, used or trafficked in a domain name with a bad faith intent to profit off of the goodwill associated with the trademark of another.  It was an extension of the Lanham Act, namely 15 USC 1125.  It coincided with the explosion of the Internet.  It was aimed at protecting trademark owners from being harmed by cybersquatters who could hold domain names hostage, among other things.  The ACPA has been a powerful tool for trademark owners, namely companies looking to protect their brand online.  While domain names have become ubiquitous, so too, albeit thereafter, has social media.

Unfortunately for trademark owners who attempt to claim a social media handle on the various social networking websites only to find it already taken, they are left to try to work with the social media site (as limited by their policies) or pursue litigation using causes of action that may not be directly on point.  Trademark owners are also forced to deal with those who imitate the brand, or the individual, with similar handles.  A username, domain name and trademark search will likely reveal problems on social media for most brands, especially newer ones who do not have the resources to be as vigilant in their trademark monitoring, defensive registration or enforcement efforts.  More often than not, use of a trademark search tool will reveal infringement of one’s trademark or brand or identity.  Instead of brands being unable to prevail against the owners of what would otherwise be their social media handles because, for example, there has been no use of the social media handle in commerce, it is time to consider a statute akin to the ACPA, and its goal of cyberpiracy prevention, for social media.

A social media statute could be similar in language to that of the ACPA, as proposed by this author and outlined below in most relevant parts.  Doing so would afford a trademark owner the ability to pursue a civil action involving the social media handle and have a court order the forfeiture or cancellation of the social media handle or the transfer of the social media handle to the owner of the mark.  Such a statute may also ultimately spur an arbitration option similar to that the Uniform Domain Name Dispute Resolution Policy (UDRP).  Regardless, is it time for legislation to catch up with technology, and possibly those that may benefit from trademark owners on social media websites?

 

Social Media Piracy Prevention [Proposed by Brian A. Hall]

(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a social media handle that:

(I) in the case of a mark that is distinctive at the time of registration of the social media handle, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the social media handle, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.

(B) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—

(I) the trademark or other intellectual property rights of the person, if any, in the social media handle;
(II) the extent to which the social media handle consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the social media handle in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the social media handle;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the social media handle that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the social media handle to the mark owner or any third party for financial gain without having used, or having an intent to use, the social media handle in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the social media handle, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple social media handles which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such social media handles, or dilutive of famous marks of others that are famous at the time of registration of such social media handles, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s social media handle is or is not distinctive and famous.

 

Note this post represents the views of its author, Brian A. Hall, and it does not necessarily represent the views of Traverse Legal, PLC or its members.