By Scott Hervey
Have you ever had the experience of attempting to register a social media account in the name of your business only to find that your preferred name is taken? Often, it’s just the case of another business with the same name having registered that account first. Other times, it’s evidence of what’s come to be known as “Username Jacking”. Big brands and public figures are highly susceptible to incidents of username jacking. If you have not yet had to deal with a fake social media account, it’s likely only a matter of time. Unlike the case with domain names, brand owners or public figures do not have a clear path to a relatively quick resolution. There is no UDRP corollary for social media usernames. So what can a brand or public figure do when it has been username jacked?
If the violation is clear cut – such as in the case where a rogue account is an attempt to impersonate a celebrity or public figure – the platform will promptly shut down the account and likely transfer the user name to the aggrieved party. It gets a bit more complicated where the fake account could be seen as a “gripe” account – an account dedicated to the criticism of certain persons. (BP Oil had to deal with a gripe Twitter account created in response to the damage caused by the 2010 Gulf of Mexico oil spill. This rogue Twitter account featured BP’s logo, soiled with oil dripping down its side and tweeted comments such as “Please write your representatives and tell them you’ve forgotten about the Gulf of Mexico.” )
So what is a brand or public figure to do when facing a jacked username on a platform that doesn’t have clear guidelines for parody or commentary accounts, the account owner has been nonresponsive to your correspondence, and, although it’s not clear that the account is dedicated to criticism, the platform refuses to take action? Unfortunately, the legal options available at this point all involve filing a lawsuit.
Going directly after the social platform is not the best course of action. Section 230 of the Communications Decency Act generally provides immunity to social media platforms from lawsuits that seek to treat them as publishers or speakers of content published by its users. Since going directly after the user can also be challenging if the jacked social media account provides no clues as to the true identity of the user, the first step is usually figuring out the true identity of the rogue account owner. No legitimate social media platform is going to hand over user account information (even in the face of a threatening legal letter). In order to obtain that information, you are going to have to serve the platform with a subpoena.
In order to subpoena user information from a social media platform, one must file a John Doe lawsuit alleging relevant causes or action against a “John Doe”. After the complaint is filed and a case number is assigned, a deposition subpoena would be served on the platform, requesting the username and profile URL, and other identifying information related to the account.
There is always a chance that the social media platform (or the “John Doe” defendant) will file a motion to quash the subpoena and dismiss the case. If the platform or the Doe defendant establishes that the plaintiff does not have a meritorious basis to its complaint, the court will not require compliance with the subpoena and will also dismiss the complaint. Thus, making certain the complaint alleges relatively strong causes of action is important.
One potential judicial claim available to a brand victim of a Username Jacking is a trademark infringement claim. The factors necessary to support a trademark claim of this nature are: (1) was the mark used in a manner likely to confuse consumers, and (2) whether the mark was used “in commerce” (defined as use “in connection with the sale, offering for sale, distribution, or advertising of any goods or services”). In cases where the account username is exactly the same as the brand, establishing the first factor would be relatively simple. However, showing commercial use of the allegedly infringed mark by this account may be challenging. Further, the brand owner could run into a potential issue if the court finds that the account is a “gripe” account. Courts have also held that use of a trademark for criticism is noncommercial, even if the defendant makes money from the use.
Other Username Jacking victims have sought relief under the Federal Anti Cybersquatting Consumer Protection Act (“ACPA”). Various law review articles have pontificated that Username-jacking victims would be unlikely to succeed in a cybersquatting claim because (1) the Anticybersquatting Consumer Protection Act (ACPA) only protects domain names, not usernames, and (2) the social platform account holder does not act with bad faith intent to profit in username-jacking situations.
Assuming one could successfully navigate any argument that the ACPA is inapplicable, cases under the ACPA recognize that the establishment of a “gripe” site does not establish the requisite bad faith. Some federal circuits have different standards for legitimate gripe or parody sites. For example, in the Tenth Circuit it must be immediately apparent to anyone visiting a parodic website that it was not the trademark owner’s website, while in the Fourth Circuit, the domain name at issue must convey two simultaneous, yet contradictory, messages: that it is the original and that it is not the original and is instead a parody.
If the jacked user account includes content whose copyright is owned by the brand or public figure, one should consider including a copyright infringement claim. Obviously, such a claim would have to withstand a fair use challenge or claim that the use is for the purpose of criticism, commentary, news reporting, teaching, scholarship or research.
To many, this situation feels very similar to the early days of cybersquating before the availability of the UDRP. Not having a clear pathway to resolving disputes is not productive for all concerned. While a UDRP type proceeding for usernames could prove to be a suitable dispute resolution tool, guidelines on what is and is not acceptable as a gripe or commentary account would be a great place to start.