Abusive Internet Social Networking Yields Infringement

But here's the problem: Such abusive behavior constitutes intellectual property infringement.

Background

Among the first publicized evidence of abusive social networking behavior resulting in infringement occurred when an Internet social networking site was sued recently for allowing the creation of a Twitter site using a famous person's name without authorization (see, Douglas MacMillan vs. Twitter, No. CGC-09-488101 (Cal. Super. Ct. filed May 6, 2009)). The complaint stated that the unauthorized user created an account with a famous person's name, and posted content using that account, which constituted cybersquatting.

Since 2009, infringement claims based on abusive use of social networking user names have made news regularly. In fact, this year, the abuse of social networking became sufficiently prevalent that the Federal Trade Commission (“FTC”) sued Twitter for facilitating such an infringement. In June, The Washington Post reported that Twitter settled charges brought by the FTC, in which the agency claimed that Twitter “deceived consumers” by allowing hackers to control and send tweets, and which appeared to be from well-known people and organizations (see, http://voices.washingtonpost.com/posttech).

Terms Defined

While cybersquatting and misuse of social network user names are based on infringement, social network user name abuse is not cybersquatting. Cybersquatting is the unauthorized, intentional, bad-faith registration of an Internet domain name associated with trademark owners. Trademark owners who find their marks being improperly used in a domain name can seek protection against the cybersquatter by filing suits based on the Anticybersquatting Consumer Protection Act (“ACPA”), as codified at 15 U.S.C. '1125(d) or, alternatively, by filing a complaint under the internationally used Uniform Domain Name Dispute Resolution Policy (“UDNDRP”) (www.icann.org/en/udrp/udrp.htm).

The ACPA provides for the forfeiture, cancellation or transfer of the domain name if cybersquatting is proven. The UDNDRP provides for an involuntary transfer of the domain name if cybersquatting is proven.

While similarities exist between domain names and registered user names, it is unlikely the plaintiff would have prevailed in a cybersquatting action for abuse of a social network name. It is likely, however, that the plaintiff whose social network name was abused would prevail by arguing traditional trademark infringement and unfair trade practices.

What the Law Says

The common law protects the use of names that have acquired secondary meaning, through usage, to gain trademark protection. Additionally, to acquire trademark protection for a name, the name must be used in commerce (see, 15 U.S.C. '1125(a)(1)). These laws are designed to avoid consumer confusion.

Once a person has established that his or her mark or personal name is distinctive and that the domain name is sufficiently similar to that mark or name, most courts will not allow a cybersquatter to use it, nor would courts allow the unauthorized use of a social network user name. This fact should be of particular interest to social network users who use a registration consisting of a famous person's legal name or a name that is otherwise commonly used to identify that person. Due to the growing use of social networks, courts are more likely to allow people to have rights in registering their legal names as domain names and as social network user names.

Name and Mark Protection Online

The concept of protecting the reputation of a name or a mark on the Internet has been settled, in Nissan Motor Co. v. Nissan Computer Corp., 61 U.S.P.Q.2d 1839 (C.D. 2002). The court ruled that a man named Uzi Nissan, who registered nissan.com before the car manufacturer for the purpose of promoting his computer sales and service business, was not a cybersquatter; however, the court issued a preliminary injunction, enjoining the defendant from displaying automotive-related advertising and links on the Web sites in question. The court also directed the defendant to place a prominent disclaimer on the site, informing visitors that it is not affiliated with the plaintiff, and providing users with plaintiff's Web site address.

Injuries and Remedies

So, in the manner that codification would put it: Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar to that of a living person, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person (15 U.S.C. '8131). But while '8131 provides cyberpiracy protections for individuals with respect to domain names, it does not apply to social network user name registrations.

Those who have been harmed by abusive social network name registration may rely on the common law and trademark statutory law for resolution of their legal difficulties. Common law and trademark law impose significant legal restrictions on those seeking to use the personal name of another without authorization in the commercial context. Generally, such unauthorized use will be condoned only if the personal name is not registered as a trademark and has acquired secondary meaning.

Also, those who have been harmed by abusive social network name registration may take legal action based on the right of publicity. The right of publicity has been defined as the inherent right of every person to control the commercial use of his or her identity (see, Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d Cir. 1953)). The right of publicity is a common-law intellectual property right codified by many states. It is a distinct legal category separate from, but not unlike, trademark law, in which the infringement is a tort of unfair competition.

To prevail in a claim of infringement of the right of publicity, a plaintiff must prove that:

• He or she owns an enforceable right in the identity or persona of a human being;
• The defendant, without permission, used some aspect of the plaintiff's persona “in such a way that plaintiff is identifiable from defendant's use”; and
• The “defendant's use of plaintiff's persona is likely to cause damage to the commercial value of that persona.”

In short, the right of publicity protects unauthorized use of a person's name when that name is used on a social network or elsewhere.

Contract Law, Too

Besides using public law to curb abusive social network name uses, contract law is being used. In particular, social networking Web sites have attempted to curb user name-squatting by making it a terms-of-service violation.

For example, Twitter's “Name Squatting” policy forbids “traditional” squatting as detailed in traditional domain-name disputes. Twitter's terms-of-use agreement also has an “Impersonation Policy” that forbids non-parody impersonation. Facebook also took steps to limit username-squatting. And, like Twitter, Facebook has a policy that forbids impersonation.

As with domain names, social networking user names are often an extension of a person's or an organization's identity.

Businesses, for example, use social networking identities to promote themselves as a source of goods and services.

And the flip side of that coin is that abusive use of social networking user names allows a third party to benefit from the goodwill by-product endorsement.

But here's the problem: Such abusive behavior constitutes intellectual property infringement.

Background

Among the first publicized evidence of abusive social networking behavior resulting in infringement occurred when an Internet social networking site was sued recently for allowing the creation of a Twitter site using a famous person's name without authorization (see, Douglas MacMillan vs. Twitter, No. CGC-09-488101 (Cal. Super. Ct. filed May 6, 2009)). The complaint stated that the unauthorized user created an account with a famous person's name, and posted content using that account, which constituted cybersquatting.

Since 2009, infringement claims based on abusive use of social networking user names have made news regularly. In fact, this year, the abuse of social networking became sufficiently prevalent that the Federal Trade Commission (“FTC”) sued Twitter for facilitating such an infringement. In June, The Washington Post reported that Twitter settled charges brought by the FTC, in which the agency claimed that Twitter “deceived consumers” by allowing hackers to control and send tweets, and which appeared to be from well-known people and organizations (see, http://voices.washingtonpost.com/posttech).

Terms Defined

While cybersquatting and misuse of social network user names are based on infringement, social network user name abuse is not cybersquatting. Cybersquatting is the unauthorized, intentional, bad-faith registration of an Internet domain name associated with trademark owners. Trademark owners who find their marks being improperly used in a domain name can seek protection against the cybersquatter by filing suits based on the Anticybersquatting Consumer Protection Act (“ACPA”), as codified at 15 U.S.C. '1125(d) or, alternatively, by filing a complaint under the internationally used Uniform Domain Name Dispute Resolution Policy (“UDNDRP”) (www.icann.org/en/udrp/udrp.htm).

The ACPA provides for the forfeiture, cancellation or transfer of the domain name if cybersquatting is proven. The UDNDRP provides for an involuntary transfer of the domain name if cybersquatting is proven.

While similarities exist between domain names and registered user names, it is unlikely the plaintiff would have prevailed in a cybersquatting action for abuse of a social network name. It is likely, however, that the plaintiff whose social network name was abused would prevail by arguing traditional trademark infringement and unfair trade practices.

What the Law Says

The common law protects the use of names that have acquired secondary meaning, through usage, to gain trademark protection. Additionally, to acquire trademark protection for a name, the name must be used in commerce (see, 15 U.S.C. '1125(a)(1)). These laws are designed to avoid consumer confusion.

Once a person has established that his or her mark or personal name is distinctive and that the domain name is sufficiently similar to that mark or name, most courts will not allow a cybersquatter to use it, nor would courts allow the unauthorized use of a social network user name. This fact should be of particular interest to social network users who use a registration consisting of a famous person's legal name or a name that is otherwise commonly used to identify that person. Due to the growing use of social networks, courts are more likely to allow people to have rights in registering their legal names as domain names and as social network user names.

Name and Mark Protection Online

The concept of protecting the reputation of a name or a mark on the Internet has been settled, in Nissan Motor Co. v. Nissan Computer Corp. , 61 U.S.P.Q.2d 1839 (C.D. 2002). The court ruled that a man named Uzi Nissan, who registered nissan.com before the car manufacturer for the purpose of promoting his computer sales and service business, was not a cybersquatter; however, the court issued a preliminary injunction, enjoining the defendant from displaying automotive-related advertising and links on the Web sites in question. The court also directed the defendant to place a prominent disclaimer on the site, informing visitors that it is not affiliated with the plaintiff, and providing users with plaintiff's Web site address.

Injuries and Remedies

So, in the manner that codification would put it: Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar to that of a living person, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person (15 U.S.C. '8131). But while '8131 provides cyberpiracy protections for individuals with respect to domain names, it does not apply to social network user name registrations.

Those who have been harmed by abusive social network name registration may rely on the common law and trademark statutory law for resolution of their legal difficulties. Common law and trademark law impose significant legal restrictions on those seeking to use the personal name of another without authorization in the commercial context. Generally, such unauthorized use will be condoned only if the personal name is not registered as a trademark and has acquired secondary meaning.

Also, those who have been harmed by abusive social network name registration may take legal action based on the right of publicity. The right of publicity has been defined as the inherent right of every person to control the commercial use of his or her identity ( see , Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. , 202 F.2d 866, 868 (2d Cir. 1953)). The right of publicity is a common-law intellectual property right codified by many states. It is a distinct legal category separate from, but not unlike, trademark law, in which the infringement is a tort of unfair competition.

To prevail in a claim of infringement of the right of publicity, a plaintiff must prove that:

• He or she owns an enforceable right in the identity or persona of a human being;
• The defendant, without permission, used some aspect of the plaintiff's persona “in such a way that plaintiff is identifiable from defendant's use”; and
• The “defendant's use of plaintiff's persona is likely to cause damage to the commercial value of that persona.”

In short, the right of publicity protects unauthorized use of a person's name when that name is used on a social network or elsewhere.

Contract Law, Too

Besides using public law to curb abusive social network name uses, contract law is being used. In particular, social networking Web sites have attempted to curb user name-squatting by making it a terms-of-service violation.

For example, Twitter's “Name Squatting” policy forbids “traditional” squatting as detailed in traditional domain-name disputes. Twitter's terms-of-use agreement also has an “Impersonation Policy” that forbids non-parody impersonation. Facebook also took steps to limit username-squatting. And, like Twitter, Facebook has a policy that forbids impersonation.