Abusive Social Networking Can Yield IP Infringement

New Jersey Law Journal         September 24, 2010

Jonathan Bick is of counsel to Brach Eichler of Roseland and is an adjunct professor of Internet law at Pace Law School and Rutgers Law School-Newark. He is also the author of 101 Things You Need To Know About Internet Law (Random House 2000).

Like domain names, social networking user names are often an extension of an entity's identity. Businesses use social networking identities to promote themselves as a source of goods and services. Abusive use of social networking user names allows a third party to benefit from the goodwill byproduct endorsement and such abusive behavior constitutes intellectual property infringement.

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

Since 2009, infringement claims based upon abusive use of social networking user names have made regular news. This year, the abuse of social networking became so prevalent that the Federal Trade Commission sued Twitter for facilitating such an infringement. In June, the Washington Post reported that Twitter settled charges brought by the Federal Trade Commission that it "deceived consumers" by allowing hackers to control and send tweets -- the 140-character microblogs users sent out, which appeared to be from well-known people and organizations.

Infringement can be found in both an act of cybersquatting and when social network names are misused; however, the misuse of a social network name does not constitute 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 as codified at 15 U.S.C. §1125(d) (15 U.S.C. §1125(d) (2006) or alternatively by filing a complaint under the internationally used Uniform Domain Name Dispute Resolution Policy.

The Anticybersquatting Consumer Protection Act provides for the forfeiture, cancellation or transfer of the domain name if cybersquatting is proven. The Uniform Domain Name Dispute Resolution Policy 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. However, it is likely that the plaintiff whose social network name was abused would prevail by arguing traditional trademark infringement and unfair trade practices.

The common law protects the use of names which acquired secondary meaning, through usage, in order 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 their 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.

The concept of protecting an Internet reputation of a name or a mark 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 defendant from displaying automotive-related advertising and links on the websites in question. The court further directed defendant to place a prominent disclaimer on the site, informing visitors that it is not affiliated with plaintiff, and providing users with plaintiff's website address.

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, 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). 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 due to abusive social network name registration may rely upon the common law and trademark statutory law for resolution of their legal difficulties. Both common law and trademark law impose significant legal restrictions upon those seeking to use the personal name of another without authorization in the commercial context. Generally, such unauthorized use will only be condoned if the personal name is not registered as a trademark and has acquired secondary meaning.

Additionally, those who have been harmed due to abusive social network name registration may take legal action based upon the right of publicity. The right of publicity has been defined as the inherent right of every human being to control the commercial use of his or her identity. 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 but not unlike trademark law, where 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: the plaintiff 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 has protected unauthorized use of a person's name where it is used on a social network or elsewhere.

In addition to using public law to curb abusive social network name uses, contract law is also being used. In particular, social networking websites have attempted to curb user-name-squatting, by making user-name-squatting a violation of their terms of service.

For example, Twitter's "Name Squatting" policy forbids the "traditional" squatting as detailed in traditional domain name disputes. Twitter's terms of use agreement also has an "Impersonation Policy" that forbids nonparody impersonation. Facebook also took steps to limit username-squatting. Like Twitter, Facebook policy forbids impersonation.

Abusive Internet social networking behavior which results in infringement is rampant but some success has been achieved by both governmental and nongovernmental entities. The federal, state and local government departments are enforcing trademark and consumer protection statutes while nongovernmental entities are enforcing terms of service agreements.