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Lawyers Warn Mark Owners of Personal Facebook URLs

Issued: June 01 2009
If you have a relationship with a big-time law firm – or even a small one – there’s little excuse for you not to know about the new personalised URLs now available on Facebook. Asia IP received dozens of e-mails from law firms around Asia and the Pacific warning us that we needed to protect our trademarks from unscrupulous Facebook users who might want to register themselves as www.facebook.com/AsiaIP.

Facebook’s announcement came just days before it allowed users to create their new URLs, giving trademark owners little time to proactively protect their marks by registering them first. The system is designed to make it easier to find a user’s Facebook page; users who do not personalise their URL continue to be identified by a random number rather than a name.

“Personalised usernames are available on a first-come, first-served basis,” Richmond, Virginia-based McGuire Woods partner Janet P Peyton wrote in an e-mail to clients. “While Facebook’s Statement of Rights and Responsibilities requires Facebook users not to infringe the intellectual property rights of others, the only mechanism by which a trademark owner can prevent others from registering its marks as personalised usernames is to use Facebook’s online username prevention form.”

That online prevention process has ended, with the form being replaced by a three-question FAQ, one of which contains a link leading to Facebook’s “Notice of Intellectual Property Infringement” form.

That online prevention process has ended, with the form being replaced by a three-question FAQ, one of which contains a link leading to Facebook’s “Notice of Intellectual Property Infringement” form.

“Trademark owners were given only three days to contact Facebook if they wanted to reserve or protect their trade marks from being claimed as usernames,” said Matthew Hall, a partner at Australia’s Swaab. “Naturally, this raises concerns from a brand protection strategy perspective as Facebook users have the capability to register trademarks as their usernames.”

Hall says Facebook has taken steps to address this potential problem.

“Firstly, although the system went live on June 13, only users who had created a Facebook account before the new username URLs were announced on June 9 can register a personalised URL,” Hall wrote on the Sydney-based firm’s website. “This prevents a flux of new user registrations as registered trade mark owners battle to claim their personalised URL.”

New users, who rushed to sign up to Facebook after the announcement was made, were not allowed to registered register a personalised URL until June 28 to register a personalised URL, and users are only allowed to register one, non-transferable username, reducing the risk of name-squatting.

“The good news is that if you have a trade mark you want to protect, and you didn’t alert Facebook last week, all is not lost,” says Hall. “If you discover a Facebook user has registered your trademark in their username, it is possible to lodge a Notice of Intellectual Property Infringement claim with Facebook. While this process is reactionary rather than preventive, it will give some comfort to trademark owners seeking to protect their brand identity.”

Andy Leck, a principal at Baker & McKenzie.Wong & Leow in Singapore, gave similar advice to the firm’s clients. “Facebook has reserved the right to remove and/or reclaim any username at any time on any ground,” wrote Leck. “It remains to be seen whether the IP infringement notice system will be sufficient to prevent trademark squatting.”
Tag:  McGuire Woods  Swaab  Baker & McKenzie.Wong & Leow

 

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