Intellectual Property, Internet & E-Commerce Articles

How to Protect Against Trademark Infringement on Facebook
by Cyrus Wadia

June 09, 2010

One year ago today, facebook began allowing users to create personalized usernames or "vanity URLs" (www.facebook.com/username) that permitted individuals and companies to “brand” their personal or corporate identity.  That opportunity for trademark and brand owners also created an enormous opportunity for squatters to reserve those owners’ trademarks and brand names without any actual right to the names.  Facebook is the world’s largest social network, with over 500 million users.  Facebook brand theft is the new domain name squatting.  This article discusses how trademark and brand owners can protect themselves against trademark infringement on facebook. 

For a short period before the facebook username landrush in June 2009, facebook permitted trademark and brand owners to reserve their trademark and brand usernames.  See our previous article on that topic. After that date, users were permitted to reserve their facebook URLs on a first-come first-served basis. 

Protecting trademarks on social media sites such as facebook is an important part of a vigilant online brand monitoring strategy, whereby the trademark or brand owner reviews such sites for infringing use of their name or variations thereof on a scheduled basis.  Given the ever-changing nature of such social media services, once is not enough and the list of such websites may change over time as well.  Trademark or brand owners can create a list of the most likely (or most popular) websites upon which such infringement may occur, and then notify each of the websites when an infringement occurs.

Facebook's Statement of Rights and Responsibilities, last revised April 22, 2010, provides that "If you select a username for your account we reserve the right to remove or reclaim it if we believe appropriate (such as when a trademark owner complains about a username that does not closely relate to a user's actual name).  Facebook thus retains the ultimate ability to determine whether use of a trademark or brand in a username is an infringing use, with one of the factors being how closely the username relates to the user's actual name.  Facebook has a streamlined process for notifying it about potential intellectual property infringement, with an easy-to-fill-out "Notice of Intellectual Property Infringement (non-Copyright Claim) form available here.

Note that facebook indicates that it routinely provides the complaining party’s name to the allegedly-infringing user. Second, facebook requests information regarding how the content infringes on the complaining party’s rights.
 
Other actions may be taken as well, such as contacting the allegedly-infringing party directly (if the trademark or brand owner is able to determine the identity of the person with the allegedly infringing username), and if possible, traditional trademark litigation.

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