Consider It Handled: A Case Study on Protecting Your Intellectual Property in the Digital Space

Scenario: You are the owner of the trademark XYZ123 in association with certain goods and services.  You are also the owner of the domain name “XYZ123.com”.  You have generally shied away from a presence on social media, but you are on the cusp of major business expansion and have determined that social media will have to be a necessary part of your marketing and advertising strategy.  You fumble your way through the various available social media platforms.  Having heard about the Instagram® social media platform (“Instagram”), you decide that you want to open an account there and that you want to adopt the handle @XYZ123.  Much to your chagrin, someone else has already taken that handle.  Confronted with such a situation, are you able to do anything?  Or must you resign yourself to adopting an alternative handle like @therealXYZ123imserious4sure?

A similar scenario recently befell one of our clients.   Through our assistance, our client was able to gain access to the Instagram handle that it wanted: one that matched their domain name, their trademark, and their trade name.  The process was quick – a mere 10 days (in our client’s case) from initiating a complaint to gaining access to the desired handle.  Below is a summary of Instagram’s complaint process and background information that you should have going into the complaint process.

Step 1: Own intellectual property that matches the handle that you’re after

You can find Instagram’s Terms of Use here.  Among other things, users cannot use a domain name or URL in their usernames (i.e. handles) without Instagram’s prior written consent.  Having the appropriate domain name in hand will certainly assist you in supporting your argument that you’re entitled to use of the desired handle, even though the desired handle may be currently taken by a third party.  In our client’s case, our client held a top-level domain.

Owning trademark registrations will certainly assist too.  You’ll see why in step 2.

Step 2: Contact Instagram

The complaint process is done online, and is accessible at this link.  For our client, we reported the matter as a trademark violation, alleging that we found content which we believed infringed our client’s trademark.  The online report then guides the individual making the report to fill in certain information, including: (i) evidence of a link to the alleged rights owner’s official online presence (i.e. a website at a domain name); and (ii) information regarding trademark registrations held by the alleged rights owner.

Upon submission, Instagram will provide you, via email, with a complaint number and a copy of the complaint that you made.

We sent a couple of additional communications to Instagram after initiating the complaint process.  Within 10 days of initiating the complaint, voila!, we were informed that the sought handle was transferred to our client.

The complaint process is likely designed with non-lawyers in mind

In our complaint submission, we provided our work email address as the contact email address.  Instagram reached out to us and noted that, in order to help them confirm that we were representatives of our client, we had to reach out to them via an email address associated with our client.  External legal counsel generally don’t have access to email accounts associated with their clients.

Also, the online complaint process was fairly straightforward, and laid out in a clear format (and without legal jargon).

Take-away

While social media has been around for a while, it has increasingly become a necessary part of a company’s growth strategy in this digital age.  Owning “traditional” intellectual property assets will give you a much better argument as to why you should also have access to less “traditional”, but potentially equally important, intellectual property assets such as social media handles.  Below are a few points to consider:

• Apply to register trademarks – this is a low cost investment that is worth it if you’re serious about expanding your business.

• Make the effort to register the domain names that matter to your business – this is not a recommendation that you should squat. This is recommendation that you should proactively take the steps to protect the assets that matter to your business.

• Do not be fazed if someone has taken a social media handle that you desire – having already taken the steps to protect your “traditional” intellectual property assets, the process to gain access to less “traditional” intellectual property assets (like social media handles) can be by-and-large painless, and not costly.

• Self-help and good legal advice pair well – some complaint processes are designed for the non-lawyer. That being said, the complaint process is a contentious matter by nature.  A lawyer can assist in making the presentation of your complaint as clear and concise as possible.

If you have any questions regarding your intellectual property rights or think your rights may have been violated, please reach out to any member of Startups @ McMillan. We are dedicated to helping you realize your business goals and protect your rights.

Please note that this article is intended to be an overview only and neither constitutes legal advice nor a detailed description of the subject matter.

BY: Pablo Tseng and Vanessa Yee (summer articled student)