On Tuesday, June 9, the popular social networking website, Facebook, announced that on Saturday, June 13 at 12:01 a.m. U.S. EDT, it will allow its registered users, subject to certain criteria and qualifications, to create personalized URLs for profiles and pages on Facebook (e.g., http://www.Facebook.com/insertyournamehere. Currently, a user’s Facebook URL consists of the Facebook.com URL followed by numbers (e.g., http://www.facebook.com/profiles.Php?349485).
Allowing users to register personalized names on the web raises, among other things, infringement issues under federal and state trademark and related intellectual property laws, particularly for owners of well-known brands. Any registration process creates fears of cyber squatting and other attempts to hijack trademarks and brand names. Sometimes these fears are well founded; other times they are not. You may have already received bulletins from law firms and bloggers eager to alert you to the fact that Facebook has also announced it has created an online submission form that allows owners of registered trademarks to notify them of their IP rights. Ostensibly, Facebook intends to use the information submitted to preclude others from attempting to use registered marks in personalizing their URLs on Facebook.
While we applaud advising clients and friends of this development, we believe the matter is considerably more complicated than previous briefs and hasty reports may indicate. As is so often the case, the devil is in the detail, and the information below will give you a deeper look at the issues before racing to submit notifications of your IP rights to Facebook.
What Brand Owners Need to Know
The online form created by Facebook for submissions by registered trademark owners allows submission of only one trademark registration at a time, and it is not clear whether your notification will protect only the exact registered mark or variations (subtle, phonetic or otherwise). While URLs are not case-sensitive, trademark owners are painfully aware that “case” is not the most frequent problem encountered when protecting one’s brand names and intellectual property rights.
Facebook is limiting the “initial” URL registration period, beginning June 13, (a) to individual users who already had a user profile page prior to the June 9 announcement and (b) to administrators of Facebook Pages (i.e., Facebook pages owned by businesses, public figures, brands and artists) that were live prior to May 31, 2009 and that had at least 1,000 fans at that time. If your Facebook account does not meet these requirements, you have to wait until June 28 to register a personalized URL.
The submission form appears to apply only to registered trademarks, and the owner (or the owner’s authorized representative) is asked to include the registration number on the submission form. While state and foreign registrations are not addressed (either on the form or in the FAQs provided by Facebook), presumably any bona fide registration number in the field could suffice—but that is neither clear nor certain.
Facebook has given trademark owners a very short window of opportunity to provide advance notification to Facebook of their IP rights. If a trademark owner has not done so by end of the day Friday, June 12, presumably any qualified user can register a personalized Facebook URL using a brand owner’s mark. Facebook also has indicated that personalized user/page URLs will not be transferable and can be removed or reclaimed by Facebook at any time—further measures Facebook can take to prevent abuse. These mechanisms, procedures and buzz aside, owners give up no legal rights by not submitting forms to Facebook in advance, and Facebook already has a form to use to report infringements after an alleged violation occurs, even if one hasn’t provided advance notification. FYI, allegations of copyright infringement can be dealt with by submitting another form provided by Facebook that applies to “take down” notices under the Digital Millennium Copyright Act (DMCA).
The $64,000 Question
If you are a trademark owner, should you submit forms and notify Facebook of your rights, or wait to assert claims if and when infringements occur? This is not an easy question to answer.
First, you are under no obligation to do anything, nor does this feature mean that if you do nothing, you are somehow giving up your legal rights. By failing to notify Facebook, a trademark owner does not waive any rights to its intellectual property otherwise provided by law. It simply means that a trademark owner may have to do what intellectual property rights-owners do all the time—enforce its intellectual property rights after an infringement has occurred.
Second, while the notification form doesn’t indicate that the submitter is agreeing to any terms and conditions, nor does it require being a registered user to submit a notification form—either before or after—one might conjure up a legal argument that by voluntarily submitting a form (where one has no legal obligation to do so), one is agreeing to use the procedures and accept the terms and conditions that apply—at least insofar as one’s dealing with Facebook in connection with handling these matters and enforcing one’s rights (e.g., if the owner has an issue with Facebook in dealing with brand name and trademark issues).
Take one example: What if Facebook simply does nothing with your notification? After all, there is no legal obligation imposed on Facebook to police your marks. What if one year from now, Facebook opts to impose a charge for maintaining or registering personalized URLs? Facebook’s terms of use (referred to by Facebook as the “Statement of Rights and Responsibilities”) provide exclusive venue for claims or disputes against Facebook in the courts in Santa Clara County, Calif. Could an argument be made that you may now have consent to that jurisdiction exclusively? If you don’t have to face such an argument, a trademark owner is clearly free to proceed in virtually any competent jurisdiction in the United States, including the trademark owner’s home state. Whether that is an advantage or not is debatable, but it—like many other issues that arise from such voluntary submissions—is an unresolved issue. Bottom line, you have no duty to act, nor does failing to act deprive you of any of your legal rights. But if you do act, some lawyers may be able to claim that your actions have implications and consequences.
On the other hand, if a brand owner or its authorized licensee currently has a Facebook Page, it is already subject to Facebook’s terms and conditions. Under such circumstances, notifying Facebook of your rights using the form may be the easiest way to avoiding a needless intellectual property battle that will most certainly cost more than the time spent completing a form.
The Evolution of Brands into Social Networks and Media
Facebook is adding another dimension to social networking—allowing personalization of pages while seeking to develop mechanisms to deal with brands and brand owners. Facebook users interact with brands as well as people. The personalized URL launch is another example of the convergence of interactive advertising, social networks and intellectual property protection. While Facebook’s latest offering may be the next evolutionary step forward, it may also be a passing fad. Time will tell. But one thing is certain:
If you are a brand owner with trademark registrations, you need to consider all of the issues before blindly jumping on anything that appears simple and easy, but that may have unforeseen consequences (and costs).
If you need to know more or if you have any questions, contact me through my website page, by email, or by following me on Twitter, or contact Keri Bruce at kbruce@rimonlaw.com, Douglas Wood at dwood@rimonlaw.com, Carl Pierce, Adam Snukal, Greg Shatan or Tracy Zurzolo Quinn at tquinn@rimonlaw.com. Of course, if they aren’t among the names above, you can always contact your favorite Rimon attorney who will be more than happy to help you.