Thou shalt not covet thy competitor’s username
Nathalie Dreyfus puts forward the theoretical possibility that social media usernames could acquire distinctiveness
Social media platforms have become goldmines for brands with strong trademarks and goods and services to promote. What’s more, the social media username has become a unique identifier by which the brand is known in these online circles.
In essence, the username is a sign allowing the customisation of URLs corresponding to a page on a social media platform. In other words, the username is an identifier, unique to a social media platform, allowing users to access a page or an account.
Some social media platforms have set up customised URLs called Vanity URLs, which are a clever way for brands to improve their visibility and the referencing of trademarks’ profiles. In fact, the standard URLs generated during registration originally consist of several insignificant elements that are of little help in identifying trademarks.
Many naming possibilities exist on these social media platforms, and their allocation can either be automatic or upon express request. Allocated on a first-come, first-served basis, there is no control over the allocation of identifiers, with the only condition being that the username is not already in use. Some platforms have established certain conditions for entitlement to customised URLs, in order to protect trademarks from possible infringements.
Today, the importance of usernames is such that they have acquired market value. This in turn, has led to the abusive practice known as username squatting.
As with domain names and the economic and strategic values they represent, username squatting tends to have the same outcome as cybersquatting, in that registering a username may infringe a trademark belonging to a third party.
Even though these practices are similar, to the extent where they amount to an unfair use of the trademark, the domain name, contrary to the username, benefits from its own legal framework and status. In fact, domain names are subject to procedures for registration, renewal and sale, as well as for settling disputes, which allow for the establishment of a clear environment for brands and for ensuring legal certainty.
In consideration of the fact that today, usernames have both a legal and economic value, as is the case with domain names, differential treatment is hardly admissible.
The question arises as to whether it is appropriate to apply domain name practice to usernames. Moreover, it must also be ensured that the username can be considered a distinctive sign, in order to benefit from a certain level of protection.
Social media platforms have not yet made a stance on this issue and case law has yet to deal with it. Although this solution cannot be discarded, it also cannot be forcibly asserted. However, there is no reason to set aside this username qualification if it is new and distinctive.
Attention will have to be paid to the private origin of the username, as well as to its identification function, in order to evaluate, in light of the protection given to some prior rights, whether the username is entitled to such protection.
bAllocation of usernames by platforms:
a private origin
The differential treatment between domain names and usernames can be explained by the fact that domain names are allocated in a more institutionalised way and controlled by the Internet Corporation for Assigned Names and Numbers (ICANN).
On the contrary, usernames are allocated directly by social media platforms, and no procedure currently exists for the settlement of disputes by an independent centre, which is the case with domain names. All disputes are settled directly by the platform.
Finally, the process of reserving a username is anonymous. There is no Whois-type ID file, as is the case with domain names. This makes it more difficult to identify infringers and settle disputes.
Is the username, like the domain name, a distinctive sign?
The username, by its very nature, technically remains a URL address, which takes up the domain name allocated to the social media platform. As a result, this customised URL address exists, subject to the control of the holder of the corresponding domain name, namely, the social media platform.
The holder, therefore, will only grant a usage right to the user. Every platform has its own rules regarding the allocation of usernames.
If the username, just like the domain name, makes it technically easier to remember and identify a recipient, its distinctive nature thereafter becomes essential. The protection afforded to domain names is desirable, if not necessary, in order to prevent infringements of trademarks. The qualification of usernames as distinctive signs is necessary in order to enable holders of trademarks that use social media platforms to limit abuse. However there is no case law on this issue.
To begin with, it should be remembered that it is the distinctive sign that allows the trademark, domain name, or even the company name, to distinguish the goods and services of the holder from those of its competitors. While the trademark’s legal purpose is to identify goods and services, this is not necessarily the case with the domain name, the company name, the trade name or the brand, whose purpose is the identification of a legal person, a business, the location of a business or a website. Yet those four signs can amount to prior rights enforceable against the trademark, according to Article L.711-4 of the French Intellectual Property Code.
In the same way, those signs can infringe trademark rights and a trademark may be counterfeit by those signs. This necessarily implies that those signs have a specific purpose and refer to goods and services.
In fact, when they operate in the context of customer relationships, those four signs will indirectly distinguish the goods and services that constitute the object of the activity of the business, the location of the business or the website. However, when they have no commercial purpose, there can be no distinctive sign.
If we consider that the username may qualify as a distinctive sign, it can be legitimately argued that the username needs to have the status of a prior right enforceable in the same manner as the domain name, the company name or the trade name.
As a result, a username constituting a distinctive ID on a social media platform, under which customers can communicate, should be protected from any infringement that it may be subjected to. The distinctive nature of the sign should create a certain status of protection in its own right, even in the absence of prior reservation of the same sign in another protected form such as a trademark or a company name.
Can the username enjoy the protection of prior rights granted by case law?
Distinctive signs do not benefit, unlike exclusive rights conferred by trademark law, from an action despite their indirect function for identifying goods and services. The way to preserve those signs is through the law of tort and its specific applications, which are actions in unfair competition and parasitism (Article 1382 of the French Civil Code).
It therefore becomes a protection that is subject to certain conditions. Those conditions, developed by case law, are the lawfulness of the sign, its availability, its distinctive character, its anteriority, and the risk of confusion.
Court rulings have often confirmed the fact that anteriority of a domain name could allow the cancellation of a trademark due to unavailability of the sign.
A judgement from the Paris Court of Appeal confirmed this, but also stated that in order to benefit from this protection, the rights on the designation claimed, the anteriority of its usage, as well as the risk of confusion between the latter and the sign being challenged by the public, need to be established.
Even if the sign does not originally need to be distinctive, in order to establish the tort of the competitor in an action under the law of tort, the domain name needs to be lawful, available and distinctive. Indeed, the granting of this protection without these characteristics is not viable.
However, this does not constitute conditions of validity in the same way as those governing trademark law, as it remains entirely reasonable to register a domain name that is purely descriptive. As such, the circumstances need to be examined as if they were conditions granting access to the protection of a prior right, for example, a trade name, trademark, domain name or even a company name, subject to these being available, distinctive and not contrary to public order.
In principle, nothing can deny that a username fulfills the conditions laid out by case law, meaning that it can benefit from this protection.
Finally, with regard to demonstrating the anteriority of the prior right of the disputed distinctive sign, a 2002 decision from the Paris Court of Appeal stated that this results from an effective utilisation of the website to which the domain name is referring. This decision was confirmed by the Paris Court of First Instance, in a judgement delivered on 17 January 2014, which stated that a domain name constituts a hurdle to a trademark application, provided that the domain name is indeed in use. This condition of utilisation applies to all signs that can be considered distinctive, including the company or trade name.
The requirement of utilisation is subject to the same motivations as the specialty principle, which applies when one appreciates the existence of a risk of confusion in trademark law. Motivations, therefore, enable the identification of goods and services that are identical or similar to those of third parties using the sign or a similar one.
While acknowledging that the username can benefit from the status of a distinctive sign, it still needs to be legal, available and distinctive in relation to the goods and services at which it aims at indirectly identifying.
The anteriority of the username and its effective utilisation also need to be demonstrated in order to fulfill the requirements outlined by the conditions granting access to the protection of distinctive signs.
The holder of the username will have to demonstrate both the anteriority of its rights over the sign and the potential risk of confusion in the mind of internet users.
A hypothetical protection of the username in view of its affiliation to a social media platform
The transposition of the distinctive signs regime to the username is still hypothetical and it remains to be seen whether forthcoming case law will uphold, even if a major hurdle to this transposition exists.
Indeed, it is important to recall that a username, contrary to a domain name, company name, trade name or brand, does not belong to its user but to the social media platform that attributed it.
Moreover, the platform reserves the right to delete the username at any time on its own initiative. It is therefore difficult to acknowledge such a transposition.
It would be beneficial to clarify the question of the username’s legal status, because the strategic role it now plays with regard to the awareness and recognition of a brand on the web has rendered it an object of covetousness.