Intellectual Property Issues in the Use of Social Media Usernames and Profiles

Intellectual Property Issues in the Use of Social Media Usernames and Profiles

Presented By

Matthew D. AsbellLadas & Parry LLP

212.708.3463masbell@ladas.com

April 8, 2010

Presented By

Matthew D. AsbellLadas & Parry LLP

212.708.3463masbell@ladas.com

April 8, 2010

TRADEMARK INFRINGEMENT

What Can Be Done About“Username Squatting”?

• PREVENTIVE STEPS• Preemptively register the mark and potential domain names with

each site

• Monitor, Monitor, Monitor• See Tiffany v eBay, No. 08-3947 (2nd Cir, April 1, 2010)

• REMEDIAL STEPS

• Report alleged infringements to the social networking site• “Notice & Take-Down” modeled on DMCA• Not a binding legal requirement, but generally accepted

• Cease & Desist letter to user• Sometimes difficult to identify or contact that user

• Cease & Desist letter to ISP

• Dispute Resolution• Litigation

USURPING USERNAMES

What Can Be Done AboutUsername Squatting?

• FACEBOOK: • "Report this Person" or "Fake Account" buttons

• TWITTER: • “Clear intent to mislead”• Difficult to contact the adversary • You can't buy the name.

• Options• Almost Automated Customer Service responses to C&Ds• Request suspension for 6 months of inactivity, but does not result in transfer (yet)• Sue: Oneok, Tony LaRussa• Shaq Attaq: register a new username

• YOUTUBE: • Encourages the interested parties to work it out

• “Using someone’s TM in a username, in itself, is not necessarily infringing”

• C&D Letter followed by corresponding with YouTube support• No one said it would be an efficient process

Will the real Tony LaRussaplease tweet?

A SHAQ ATTAQ

KEYWORDS

Sponsored Links Based on Keywords in Social Media Profiles

GOOGLE ADWORDS in the U.S.:Google v. Rescuecom

• 2nd Circuit vacated and remanded a dismissal by S.D.N.Y. of Rescuecom’s claim that suggestion and sale of its trademark as a keyword was a trademark infringement

• It may differ in other circuits, but signals end of defense that keyword sale is not “use in commerce”

• Several subsequent class action suits filed against Google

GOOGLE ADWORDS in Europe:Google France v. Louis VuittonECJ C-236 -238/08 (March 23, 2010)

• Similar to Rescuecom, ECJ held keyword ads are “use”

• But, “use” is by advertisers, not Google

• Advertisers may be liable if use is misleading or vague

• Google may have indirect liability under national laws if not entitled to safe harbors of E-Commerce Directive because maybe not passive role

• Google “general Trademark complaint” policy purports to investigate use of registered marks in ad text and, in some jurisdictions, as keywords• This may permit liability by Google in Europe where owners have

advised ab initio of their registered trademark rights

METATAGS—Hidden Use of

Keywords in Web-Site Programming

• Initial Interest Confusion• “When a customer is lured to a product by the similarity of the mark, even if the

customer realizes the true source of the goods before the sale is consummated”• MOVIEBUFF - Brookfield Communications, Inc. v. West Coast Entertainment

Corporation, 174 F.3d 1036 (9th Cir. 1999)• Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002)• Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th

Cir. 2004)

• Not fair use because bad faith, bait-and-switch• Tdata Inc. v. Aircraft Technical Publishers, 411 F. Supp.2d 901 (S.D. Ohio 2006).• Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 544 n.4 (6th

Cir. 2005)• Initial interest confusion “derives from the unauthorized use of trademarks to

divert internet traffic, thereby capitalizing on a trademark holder’s goodwill.”• Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006)

• North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008)

Keywords inSocial Media Profiles

• Part of “identity creation”• Improves chances of your profile/page being found• What if you use Third-Party Trademarks as your

keywords?

• Search optimization• Similar to Adwords cases?

• Use in Commerce?• Nominative Fair Use?

• Similar to Meta-Tags?• Trademark Use?• Is it deceptive, bad-faith?• Unfair competition/free riding?

A quick sidebar:Risks to Law Firms and Attorneys of Utilizing Social Media for Marketing

• Regulations on Attorneys and Judges• Model/State Rules of Professional Responsibility• Generally, Public, Permanent, Direct Nature of Social

Media communications raises ethical issues• But see Alexander v. Cahill (2nd Cir., Mar. 12, 2010)

• ABA Commission on Ethics 20/20• “Technological advances and globalization have changed our

profession in ways not yet reflected in our ethics codes and regulatory structures”

• Employment Issues• Respondeat Superior• Employee Privacy

Thank You

• We gratefully acknowledge the assistance of Ari Abramowitz and Caroline Camp in the preparation of this presentation.

• Any Questions?

Matthew D. Asbell, AssociateLadas & Parry LLP

212.708.3463masbell@ladas.comwww.ladas.com

On LinkedIn: http://www.linkedin.com/in/matthewasbellOn Twitter: http://twitter.com/asbellmd