A short presentation on Intellectual Property issues, particular related to trademark, domain name, and rights of publicity, in the use of brands in social media usernames and profiles

1. Intellectual Property Issues
Intellectual Property Issues
in the Use of Social Media
in the Use of Social Media
Usernames and Profiles
Usernames and Profiles
Presented By
Presented By
Matthew D. Asbell
Matthew D. Asbell
Ladas & Parry LLP
Ladas & Parry LLP
212.708.3463
212.708.3463
masbell@ladas.com
masbell@ladas.com
April 8, 2010
April 8, 2010

2. TRADEMARK INFRINGEMENT

4. 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

5. USURPING USERNAMES

6. What Can Be Done About
Username 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

8. Will the real Tony LaRussa
please tweet?

9. A SHAQ ATTAQ

10. KEYWORDS

11. Sponsored Links Based on
Keywords in Social Media Profiles

12. 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

13. GOOGLE ADWORDS in Europe:
Google France v. Louis Vuitton
ECJ 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

14. 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)

15. Keywords in
Social 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?

16. 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

17. Thank You
• We gratefully acknowledge the assistance of Ari Abramowitz and
Caroline Camp in the preparation of this presentation.
• Any Questions?
Matthew D. Asbell, Associate
Ladas & Parry LLP
212.708.3463
masbell@ladas.com
www.ladas.com
On LinkedIn: http://www.linkedin.com/in/matthewasbell
On Twitter: http://twitter.com/asbellmd