Socially Unacceptable?

I’d like to take a brief departure this week from our usual discussion of domain name disputes and talk about the important issue of social media. As many of you know, trademark infringement in the online arena is not limited to domain names, and many brand owners have been faced with misleading, fraudulent, and other confusing uses of their trademarks in social media usernames (account names used to identify a page on a social media site).

While the use of trademarks or brand names on social media may sometimes fall into the category of ”fair use“ – such as fan, commentary, or criticism pages – quite often these usernames host infringing content. In some cases, these usernames point to pages where counterfeit or competing products are offered or user information is sought for identity theft, or in other cases, to pages that are inactive and might leave viewers to believe the brand owner is neglecting its social presence.

The subject of intellectual property infringement in social media is a lively discussion topic in the trademark community. What actions can a company take if it finds a username that contains its brand or trademark? At present, each social media website has its own intellectual property policy and process for handling disputes. Most of these policies are rather vague and place complete discretion in the hands of the website. They also provide very limited opportunity for brand owners or username account holders to submit evidence and arguments in favor of their position.

The patchwork of policies that arises from each site establishing its own procedures can be frustrating to trademark owners tasked with enforcing their marks. Moreover, the time it takes to resolve these complaints is often unpredictable, sometimes taking as little as 24 hours to as much as six weeks.

Although many complain of unsuccessful attempts at taking down or transferring account names, in my own experience, social media sites are often accommodating and agree to grant clients’ requests. As with any form of trademark infringement, a large part of the process involves target selection and brand owners are bound to be disappointed if they try to pursue a defensible name which hosts fair use content. However, the fact remains that as more platforms emerge in the social media sphere, the work of enforcing intellectual property and trademark rights becomes increasingly fragmented and complex.

To help combat this complexity, Kristine Dorrain of the National Arbitration Forum and I presented a proposal for a more streamlined dispute resolution mechanism at the 2011 intellectual property forum hosted by the Pennsylvania Bar Institute in Philadelphia. We argued that it is time for an SUDRP or “Social Uniform Dispute Resolution Policy” that would bring consistency and accountability to the social media brand enforcement process and relieve social media sites of the potential liability they currently face when handling these disputes on their own. Much like the UDRP, an SUDRP could include objective standards for confusion, legitimate interest, and bad faith and would also assure timely and reliable implementation of decisions.

For now, brand owners must contend with the current state of affairs.

However, I expect this area will only gain importance as social media platforms continue to grow, and in that case, it would be very helpful to have an SUDRP in place.