Trademark Protection and Facebook User Names

Trademark protection just got a slightly more complicated, but in a good way. Starting now, there’s a new step that trademark holders or their attorneys should take to protect their trademarks or service marks.

You probably already know that registering domain names corresponding to your marks gives you important practical protection. Now Facebook has entered the equation. Starting this Friday, June 12, users will be able to register a Facebook user name on a first-come, first-served basis at http://www.facebook.com/username/. It’s about time—the old format for accessing someone’s profile included a string of random digits. My old Facebook URL looks like this: http://www.facebook.com/profile.php?id=551052414. My new one will be nicer.

Competing social networking sites, such as LinkedIn and MySpace, have had plain-language user names for a while now. But the new Facebook scheme has something built in that the other sites apparently don’t: a mechanism for trademark protection. That’s welcome news for rights-holders. Here’s how it works.

At http://www.facebook.com/help/contact.php?show_form=username_rights, there’s a “Preventing the Registration of a Username” form for entering your company name, title, email, trademark, and registration number. (Oddly, there’s no place to enter your own name.) As that last data item suggests, only registered marks are eligible, although I’d recommend that holders of trademark applications in process simply enter the application number instead. Filling in the form will prevent someone else from using your trademark as a user name.

What happens if an infringer registers your trademark before you fill out the form? In that case, fill out Facebook’s “Notice of Intellectual Property Infringement (Non-Copyright Claim)” at http://www.facebook.com/copyright.php?noncopyright_notice=1 and hopefully the matter will be taken care of. Facebook doesn’t describe the procedure it follows for these forms.

Finally, what if someone maliciously fills out the “Preventing the Registration of a Username” form and blocks you from using your own mark as a user name? Facebook’s FAQ (at http://www.facebook.com/help.php?page=899) doesn’t address that, but I’d suggest filling out the Notice of Intellectual Property Infringement (Non-Copyright Claim) form and providing as many details as known.

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Expensive Book?

Facebook may be in play, reports Variety, and at a $10 billion valuation. (School yearbooks always cost too much.) Microsoft is dropping hints about spending $500 million for 5% of the company, and Google may try to outbid them. No other potential bidders are mentioned as likely. Over at News Corp, Rupert Murdoch must be happy that MySpace only cost him $580 million.

Facebook Faceoff

The dispute over who owns the Facebook IP turns out to be a three-way affair, perhaps like some of the hook-ups on the site itself.

In 2004, the founders of of a site called ConnectU sued Facebook, alleging copyright infringement and theft of trade secrets. The ConnectU founders - Harvard students at the time - claim that they conceived the idea of a collegiate social networking site, and asked another student, Mark Zuckerberg, to write the source code.

Zuckerberg, the suit alleges, began to write code, but then jumped ship and used the code - and the idea - to start what is now Facebook. ConnectU foundered, while Facebook prospered.

Today, the NY Times reports, another Harvard student - Aaron Greenberg - has appeared, with emails between himself and Zuckerberg that allegedly prove he created an on-line facebook before Zuckerberg/Facebook or ConnectU. Greenberg says Zuckerberg lifted his ideas. He's bitter, but he's not suing. (At least, not yet.)

Who's on top in this three-way tussle? Allegedly, there was no contract between ConnectU and Zuckerberg, and Zuckerberg was not a formal employee of ConnectU. If true, ConnectU may find its suit disconnected, because without a contract or an employment relationship, trade secrets are generally not protectible and the programmer owns the copyright.

Likewise, Greenberg apparently has no legal claim, because his ideas weren't secret - his system was public - and because he doesn't claim anyone stole his code.

The lesson for ConnectU: get it in writing. Without a Non-Disclosure and Invention Assignment Agreement, the other guy gets the girl (or guy) while you stay home alone playing video games. The lesson for Greenberg: first doesn't always win. And the lesson for the rest of us? See a lawyer before you start bringing in partners and collaborators. Class dismissed.