Since Facebook launched its Facebook Usernames
initiative in mid-June, over 6 million unique individuals have registered
usernames for their personal profiles, and over 15,000 usernames have been
registered for Facebook Pages as well, which are commonly used by businesses
and other organizations. In many ways, the program looks like a proprietary
domain name registration system. However, when we read that Facebook is claiming ownership over every username, an assertion attributed to a company
spokesman, we realized that Facebook is not acting like a domain name
registrar. We also wondered about the legal basis of such a claim. The program
enables individuals and companies to register a Facebook URL with an address
format of www.facebook.com/[username]. Applicant for usernames are generally
allowed to choose them freely, without need to prove any connection or
ownership to the name itself. This wide-open nature raises potential concerns
for intellectual property rights holders, particularly trademark owners, worried
about unauthorized use of their trademarks in connection with the service.
Facebook has sought to maintain as much of control over the usernames as
possible, including the right to remove or reclaim a username at any time for
any reason. This strong proactive stance is probably partially motivated by a
desire to preempt and prevent widespread buying or selling of usernames, and
the cyber-squatting practices that follow. (Such concerns are not unfounded;
Facebook usernames are already up for sale on Assetize, an online website
specializing in the buying and selling of online accounts.) But back to the
ownership issue–Can Facebook actually "own" a username that contains
a registered and widely used trademark owned by someone else? And if Facebook
"owns" the username, what happens when a trademark owner seeks to
register the username containing its mark? Is "ownership" (i.e.,
title) to the username conveyed? Or does Facebook license the username? Take
for example the username "facebook.com/burgerking". As of the date of
this posting, Burger King has not yet registered the username, but if it does
choose to register it, is it accurate to say that Facebook is transferring
ownership over the username to Burger King? Or is it licensing it? Either way,
how can Facebook transfer to Burger King something Burger King already owns?
Also, Facebook claims that when a Facebook account is cancelled, that account's
username will not become available to anyone else. If Burger King registers for
the user name, and then cancels it, can Facebook prevent Burger King from
re-registering the user name if it later changes its mind? In the end it is not
clear or likely that Facebook can legitimately assert power over trademark
holders when it comes to the use of their trademarks in the Usernames program.
Facebook's terms of service do not help to clarify the matter. They make no
mention of the Usernames program. On the other hand, Facebook's "Help Center" does have a section devoted to answering common questions about the
program. When the program was launched, the Help Center materials contained a
few scant paragraphs of information. Since that time, it has become much more developed, but that initial lack of clarity exemplifies the legal ambiguity
with which the initiative got off the ground. The uncertainties surrounding the
Usernames program may be of particular concern for businesses in light of their
increasing reliance on Facebook as an avenue through which to connect with
customers (and concerns about businesses' dependence on Facebook are not new).
We will eventually see if Facebook's experience with the Usernames program
proves a cautionary tale as to the pitfalls of rolling out new programs without
fully anticipating the potential legal issues. As the Username feature develops
and more companies become aware of it, Facebook may see both disputes and angry
markholders multiply. This may turn into yet another cyber-battleground over
trademarks. Numerous trademark infringement claims have been brought against
Google in connection with its search ad business. The claims are based on
Google's sale of trademarked keywords through its AdWords program. In large
part, the plaintiffs have asserted that such sales constitute trademark
infringement because consumers could be confused by links to competitors' ads
that pop up alongside a search for the plaintiff's marks. While Google suffered
a litigation setback in April when the Second Circuit reversed a dismissal of asuit brought by Rescuecom Corp., two separate actions against Google, one byDaniel Jurin and the other by Ascentive LLC, were both recently dismissed. We
will continue to monitor these matters and keep an eye out for developments. In
the meantime, our group would be happy to discuss any specific questions you
might have about the impact of Facebook's Usernames program on your trademark
portfolio and help you develop strategies to protect your intellectual property
rights. * We would like to thank Yoshinori Sasao, an associate at the
Firm, who assisted in preparing this article.
