Posted By: Jeremiah Chin
Social media began as a way for people to interact across the internet, communicating with friends, family and new people in new ways. Companies have quickly caught on to the heavy use of social media, establishing their brand on Twitter, Facebook and other sites in order to create good will with fans, and ensure that their company is properly represented on the web. For new companies, or those who are simply late to the game, finding a good social media branding can become difficult as usernames may be already taken.
Netflix, for example, is a success model for online streaming subscription services—with large increases in its stock, Emmy nominations for its original content, and becoming nearly synonymous with online streaming—it may be easy to forget when this digital empire took a sharp detour with a name change and a twitter account. In 2011, Netflix announced plans to split its service in two: offering Netflix.com for streaming services, while providing its original by-mail DVD rentals under “Qwikster.” Netflix registered the mark two days later and purchased the domains qwikster.com, qwickster.com and quickster.com, likely to avoid potential cybersquatting or typosquatting. Yet before Netflix made any official changes, blogs quickly discovered that the @Qwikster twitter username was, and continues to be, owned by teenager Jason Castillo who enjoyed tweeting about food, soccer, girls, and drugs—none of which were, at least publicly, in Netflix’s business plan for their DVD subscription service. Castillo did not offer to resign his username, for free or for profit. Netflix decided to scrap its plans for qwikster.
Netflix’s attempt to change its brand raises the question of how cybersquatting laws apply to social media. Typically, cybersquatting cases have involved domain names. PETA, People for the Ethical Treatment of Animals, for example, owned the rights to PETA.com to promote their organization’s animal rights efforts. Michael Doughney disagreed with PETA’s agenda and created peta.org, a website for People Eating Tasty Animals, as a “resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research.” PETA v. Doughney, 263 F.3d 359, 363 (4th Cir., 2001). PETA filed suit and won, because PETA owned the trademark to PETA and Doughney attempted to sell the domain to PETA.
Cybersquatting is covered under U.S. trademark laws through the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125 (d). The ACPA provides civil liability for a person who registers, traffics in or uses a domain name with a bad faith intent to profit from a mark that is identical or confusingly similar to a distinctive or famous mark. 15 U.S.C. § 1125 (d) (1) (A). Although the statute lists multiple factors that courts may consider in determining bad faith, courts emphasize a defendant’s attempts to financially benefit from the similar domain name by selling advertisements (Shields v. Zuccarini, 254 F.3d 476 (3rd Cir., 2001) or by offering to sell the domain to the mark owner (Doughney, 263 F.3d at 368). Other considerations for bad faith include fair use, prior use, the use of a legal name, and the ownership of multiple names which are identical or confusingly similar to registered or famous marks. 15 U.S.C. § 1125 (d) (1) (B). Importantly, the owner of a mark may sue the registrar to terminate or gain possession of the domain name through an in rem action, or an action against the property itself. Id. The statute also contains a safe harbor provision for “domain name registration authorities” to avoid liability if they participate with courts or use reasonable policy provisions to prevent cybersquatting. 15 U.S.C. § 1114 (2) (D).
No court has directly addressed this issue as applied to social media, usually including social media accounts in general trademark claims (see Fancaster, Inc. v. Comcast Corp., 832 F.Supp. 2d 380 (D.N.J., 2011)). Case law regarding domain names clearly establishes an enforcement mechanism to prevent cybersquatting. Unlike a general domain name, social media networks nest personal sites, like Twitter feeds or Facebook pages, using the username under the main site name (for example www.twitter.com/cyberbeartracks). These sites have established their own policies for dealing with trademark violations. Twitter’s language in particular mirrors many elements of the ACPA. Not only is this sound policy for maintaining a social media website that is largely based on user generated content, but it would also ensure that social media networks fall within the ACPA’s safe harbor provisions by establishing policy provisions to combat cybersquatting through trademark dilution or confusion.
The Netflix/Qwikster debacle described earlier raises interesting questions for how this will continue to develop under existing laws and policies. Remember, Jason Castillo created and used the @qwikster username before Netflix announced the Qwikster service and registered the Qwikster name. Netflix could request Castillo transfer the username voluntarily, but should Castillo refuse Netflix’s remedies are nebulous.
Netflix could purchase the name from Castillo, but should Castillo offer to sell the service to Netflix then Netflix could simply use this as an indication of bad faith under an ACPA lawsuit. Under Twitter’s terms of service and trademark policies, usernames are granted on a first-come, first-serve basis—Castillo registered the name before the Qwikster mark was registered or announced by Netflix, thus he has first right to the name. The ACPA has broader coverage, including anyone who registers, traffics in, or uses a domain name. 15 U.S.C. § 1125 (d) (1) (A). However, Netflix would have to show some bad faith on Castillo’s part—Castillo’s tweets from @qwikster detail his personal life, but do not link to advertisements or advertise websites. Unless Castillo controlled multiple twitter usernames for companies, the fact that the account predates the Qwikster trademark and has little to do with a DVD-by-Mail service weighed heavily against Netflix’s chance for an ACPA remedy had the company pursued litigation.
Social media therefore combines private policies between the user and the social media website, and ACPA provisions. The ACPA provides broad coverage, but the bad faith requirement may be more difficult to prove for companies who are not yet established since usernames may predate a trademark. The policies of social media sites provide a simpler avenue for companies attempting to enforce their trademarks, sending notice to the website for processing is much faster and less expensive than litigation, though for cases like Qwikster there may be no simple remedy (other than not pursuing a name change in the first place).