June 2009
Protecting Your Trademark from Unauthorised Use on Facebook URLs
Starting from 13 June 2009 at 12.01 am U.S. EDT (13 June at 14.01 pm Victorian time), Facebook permits its users to personalize their Facebook URLs (web address) by incorporating a unique username so that their URLs may be displayed as something like http://www.facebook.com/username. Claims for personalized usernames are currently available to users who created Facebook account before Facebook announced username availability on 9 June 2009. Usernames will be available to new Facebook users from 28 June 2009.
Because of the trend for Facebook to be used not only for individual socializing but also for business networking, the possibility to create personalized URLs may give rise to a risk of name squatting. That is to say, well known brand names or trademarks may be susceptible to malicious use by Facebook users in order to gain a financial benefit or damage the interests of the legitimate brand owners.
Facebook has adopted a strict no transferability policy which forbids the transfer of a personalized URL once it is created. If a user cancels a Facebook account, the associated URL will not be available as a new Facebook URL. For further information on Facebook username policy please visit Facebook FAQ at http://www.facebook.com/help.php?page=897 .
Further, trademark owners can contact Facebook if they want to protect/reserve certain names. Also, the Facebook website has an online form for reporting of intellectual property infringement (non-copyright claim) which is available at http://www.facebook.com/copyright.php?noncopyright_notice=1 . As part of its policy, Facebook reserves the right to remove and/or reclaim any username at any time for any reason.
Implications
At this stage, the Facebook policy does not seem to have addressed the situation where there are competing claims for URLs with usernames which are conflicting marks (similar or identical trademarks owned by different persons). As URL usernames are currently available on a first come first served basis, trademark owners may need to act quickly if they wish to create a Facebook URL incorporating their trademark or brand name, either for business or social networking purposes, or to prevent unauthorised use of their trademark/brand name as usernames in URLs. To do so, the trademark owners must first create a Facebook account if they do not already have one. Alternatively, trademark owners will need to go through the intellectual infringement notification process with Facebook to have any infringing marks removed or take legal action.
For further information, please contact:
Stephens Lawyers & Consultants Level 3, 530 Lonsdale Street Melbourne VIC 3000 Phone: (03) 8636 9100 Fax: (03) 8636 9199 Email: stephens@stephens.com.au Website: www.stephens.com.au All Correspondence to: PO Box 13286 Melbourne Law Courts Melbourne VIC 8010To register for newsletter updates and to send your comments and feedback, please email stephens@stephens.com.au
Disclaimer: This newsletter is not intended to be a substitute for obtaining legal advice.
© Stephens Lawyers & Consultants, June 2009. Researched and written by Linda Huan and edited by Katarina Klaric.