Brian A. Hall
Partner, Traverse Legal, PLC
Attorney, Traverse Legal, PLC
Within the last two decades – and especially in 2020 – our lives have shifted to a largely online, virtual world. The advent of social media has undoubtedly aided this shift, serving to increase connectivity, accessibility and visibility, which are all positives for brand owners. Between social media platforms such as Facebook, Twitter, Instagram and LinkedIn, brand owners can now reach potential consumers in all corners of the internet. However, social media also poses unique new challenges for brand protection, primarily in the form of what is referred to as “Social Media Squatting.”
Social Media Squatting – aka “Username Squatting” – occurs when a third-party creates a social media username that is identical to or confusingly similar to a brand owner’s trademark or service mark and subsequently uses that social media account with a bad faith intent. It may also occur where the personal name, particularly of a well-known or famous individual, is used. Such bad faith intent may range from complete impersonation of the brand, or masquerading as the individual, to passive holding of an account with hopes to obtain money from the brand owner. Social Media Squatting can create a slew of problems for brand owners, including consumer confusion, reduced quality control of goods and services, inconsistent online messaging and reputational tarnishment, to name a few.
Brand owners’ options for combating Social Media Squatting are limited. While there are state and federal laws, including trademark, unfair competition and publicity right laws, that are typically relied upon to address Social Media Squatting, there is no statutory or procedural equivalent directed specifically at the issue. The most closely related enforcement options pertain to cybersquatting – the act of registering, using or trafficking a confusingly similar domain name to that of a trademark. The Anticybersquatting Consumer Protection Act (“ACPA”) (15 U.S.C. Section 1125) created a statutory cause of action to address, and perhaps curb, third party registration of a domain name that incorporates the trademark of another with a bad faith intent to profit. The Uniform Domain Name Resolution Policy (“UDRP”) created procedural mechanisms, specifically the use of online arbitration, to remedy cybersquatting. Similarly, the Uniform Rapid Suspension System (“URS”) was developed to create an even more expedited process to combat cybersquatting. The URS offers a lower-cost, faster path to relief for trademark owners experiencing the most clear-cut cases of infringement, but it has a higher burden of proof than the UDRP and is limited to newer generic top-level domains (gTLDs). However, neither the ACPA, nor UDRP, nor URS encompass Social Media Squatting. There has yet to be a comparable law or process enacted to protect against infringing social media handles, leaving brand owners with minimal and misaligned enforcement options to stop Social Media Squatting – which often leads to mixed results.
As of right now, brand owners can send a demand letter to Social Media Squatters. In doing so, as noted above, any enforcement effort oftentimes relies upon trademark infringement, unfair competition and, where applicable, right of publicity allegations. However, these legal theories are not always directly applicable to Social Media Squatting, leaving a demand letter without teeth and little options for escalation to dispute resolution or litigation. Further, identifying a squatter’s contact information and having them acknowledge or comply with a demand letter can be difficult, especially considering recent enactment of more robust privacy laws (see BPP, September, 2018, Brand Protection in a Post-GDRP World: New Hurdles to Assessing Domain Registration Data for Online Enforcement). Brand owners are also able to seek recourse directly through the social media platform upon which the squatting is occurring, though each platform has their own set of policies and procedures. For example:
Just as the ACPA, UDRP and URS were all enacted in response to an explosion of cybersquatting, so too should another statute or policy to address systemic Social Media Squatting. As with ACPA, why not an extension to the Lanham Act that specifically addresses Social Media Squatting and the recourse available to brand owners under the law? Having a federal statute on the books would empower brand owners, protect online consumers and streamline enforcement against Social Media Squatting. There is no reason why legislation cannot be enacted to expand the scope of the Lanham Act, as it was in 1999 with the enactment of the ACPA; in 2006 with the Trademark Dilution Revision Act that clarified causes of action and remedies for both dilution by blurring and dilution by tarnishment; or in 2008 with the Prioritizing Resources and Organization for Intellectual Property Act that increased damages and penalties for trademark counterfeiting. These are only some examples of amendments that have been made to the Lanham Act in recent years, suggesting that expansion of the statute to incorporate a cause of action for Social Media Squatting is plausible.
Alternatively, a UDRP-like arbitration, or even better a faster process such as the URS, could reduce the platforms having to serve as arbiters and potentially reduce the deluge of requests from brand owners. Such a solution would be ideal for social media platforms looking to adopt more efficient methods of resolving trademark related disputes involving Social Media Squatting. Currently, most social media companies have different policies and typically take a very hands-off approach to facilitating resolution of disputes between users. A process akin to that of the UDRP or URS, but geared toward infringement on social media platforms, could be a more structured approach to dealing with Social Media Squatting when compared to the current procedures that are in place.
Our online existence and social media reliance is only going to keep evolving and expanding. Likewise, Social Media Squatting will continue to proliferate, burdening brand owners and harming consumers who are all trying to navigate this increasingly virtual world. While recognition of the Social Media Squatting is certainly growing, it is time for legal recognition of the same. This is especially true since, while the law is historically slow to follow technology, usernames have been around since dial-up internet of the ‘90s.
THE BRAND PROTECTION PROFESSIONAL |MARCH 2021 | VOLUME 6 NUMBER 1
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