Communications of the ACM
Law and Technology
Getting a Handle on Handles
Credit: Bashigo
"What's your handle?" It is a question Internet users ask each other frequently (even in real life—IRL), whether they are talking about Twitter, Instagram, Telegram, Discord, Reddit, or almost any other social platform on which your username is your identity.
On the consumer-facing Web, your handle is the doorway to your personal brand.
And if you operate a platform with social networking capabilities and let users set their own handles, you will need to consider the trademark issues that might arise. Whether a user's handle impersonates a celebrity, squats on a trademark, creates a likelihood of confusion with a brand, or constitutes protected speech, legal conflicts will inevitably arise.
Trademark Basics
These issues are trademark issues. A trademark is any term or phrase that functions as a source indicator and lets consumers know that goods or services come from one specific producer. For example, DASANI is a trademark for bottled water; when consumers see it on a bottle or can, they know it comes from one particular company and that other companies are not allowed to sell water labeled "dasani." If they encounter @dasani as a social media handle, they will likely expect that the account is controlled by the brand. A celebrity's name can also be a trademark: KIM KARDASHIAN is federally registered as a trademark for everything from cosmetics and home goods to entertainment and endorsement services.
While major brands typically choose to register their marks, it is important to note trademark rights in the U.S. arise from use in commerce, not registration; a company may use THE ICE CREAM SMUGGLER as a mark for ice cream across New England without ever registering it, and they will still be able to assert common law rights against a competitor for use that creates a likelihood of confusion with their mark. International trademark rights will also be relevant on a site that's open to users outside of the U.S. In most countries, rights arise from registration.
For many websites and platforms, first-come first-served may seem like an appealing default rule. But what happens when an early adopter chooses @hermes or @serenawilliams as their handle? Celebrities or brand representatives will likely complain when they try to create an account and find the most obvious choice—their trademark—is already taken.
And it is not just the trademark owner who may have a problem with someone else using their mark as a handle. Users may also complain if, for example, the owner of the @starbucks handle disseminates false information about pumpkin spice lattes or purports to respond to customer complaints on the company's behalf when the complaints are not actually reaching the company. Unlike the world of commerce, where a company deceptively labeling their bottles "Dasani" does not preclude the real Dasani from labeling goods with their trademark while they work to halt the infringing use, handles usually cannot be shared: if Tesla arrives at a new social media site and discovers the @tesla handle is already taken by a fan, critic, or competitor, it has to settle for a different handle unless and until it can gain control of that account. (Mastodon, currently seeing a large influx of users in the wake of Musk's Twitter takeover, creates a different set of challenges because different users can select the same handle on different instances.)
When Is Use Infringing?
Not all uses of or references to a trademark constitute trademark infringement, and not all handles that are the same as trademarks necessarily belong to the owner of that trademark. Infringement requires use in commerce and a likelihood of consumer confusion—a likelihood that ordinary consumers will be misled or deceived as to who produces or stands behind goods or services they are purchasing.
In assessing likelihood of confusion, most courts consider factors such as the similarity of the marks used, the relatedness of the goods or services, the channels through which the products are sold or advertised, the sophistication of relevant consumers, and whether the alleged infringer was actually trying to mislead the public.
While major brands typically choose to register their marks, it is important to note trademark rights in the U.S. arise from use in commerce, not registration.
If you are operating a marketplace site like Etsy or eBay, consumers might actually be deceived at the point of sale—they might buy from a seller that uses the handle @vuitton thinking it is an account that belongs to Louis Vuitton, for example—making an infringement claim fairly straightforward. But if your site is mainly designed to foster noncommercial speech and interaction rather than sales, the infringement analysis becomes muddier.
It's also possible for the handle to be just one element in a broader infringement claim—an imposter may try to match a brand's color scheme on their home page or profile picture, include photos of products from that brand, or post intentionally confusing content under the handle. When St. Louis Cardinals manager Tony La Russa successfully enjoined a user that was impersonating him on Twitter, his claim was bolstered by the fact the user not only claimed the handle @TonyLaRussa, they also used a photograph of La Russa and written statements impersonating him. An infringing handle might also be part of a marketing campaign that extends beyond a single social media site to encompass several different platforms and other advertising material.
Trademark Use May Be Fair Use
One reason not all uses of a trademark constitute trademark infringement or necessitate transfer of a handle is that trademark law has several robust fair use doctrines. Statutory fair use provides that trademarks can be used in their descriptive sense as long as that use does not constitute use as a mark. In the offline world, that means Ocean Spray can describe its cranberry juice as "Sweet. Tart. Sweet-tart!" in an ad without infringing rights in the Swee-Tart mark for candy. When it comes to handles, that might mean a user is free to use a descriptive phrase such as @imlovinit or a noun such as @grey-hound without necessarily infringing trademark rights belonging to McDonald's or Greyhound.
But use of dictionary terms as handles can still lead to conflict. An Australian artist had used @metaverse as her Instagram account name for almost a decade before Facebook (which also owns Instagram) announced to the world that it was becoming Meta. Shortly after the announcement, Instagram suspended the artist's account without explanation. It eventually restored it, but only after the New York Times covered the story.
Another trademark fair use doctrine, nominative fair use, protects users who reference trademarks in the course of describing their own goods or services in non-misleading ways: "this headset is compatible with iPhones," for example, or "we lease Lexus cars." Members of the public are also free to reference trademarks in speech and in expressive works like songs, movies, and novels; that principle can translate to protecting content about brands and even references to them in handles. @IhateWalmart and @starbucksunionizenow constitute non-confusing, non-commercial speech that mark owners should not be able to enjoin; the same is likely true of handles like @BudLite-Bro or @YrSbuxBarista.
Parody uses typically also fall under this First Amendment umbrella. The broader context of the use will often be relevant in evaluating whether it will be perceived as a parody or other protected form of speech and whether it is likely to mislead the public. When Arizona State University brought a trademark infringement suit over the Instagram account "asu_covid.parties," the court pointed out the coarse language and references to alcohol use in the account's posts and followers' comments meant "a reasonably prudent consumer would not have construed this as an invitation from ASU to come to an ASU-sponsored party."a
Trademark and user name policies are important to keep things running smoothly and provide straightforward reporting options, but platforms are not usually liable for trademark infringement, especially if they do not have specific knowledge or reason to suspect that it's taking place. A case called Tiffany v. eBay set a high bar, holding that "a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods."b In the wake of that case, courts have held that the burden of policing violations falls not on e-commerce platform operators but on trademark owners. And some companies will need to resolve disputes independently, as when German Merck and U.S. Merck litigated the ownership of the @Merck handle and page on Facebook. But platforms usually must respond to complaints when trademark owners bring infringement to their attention to comply with their own terms of service. And some critics complain that the status quo is ambiguous, with legal precedent leaving online service providers uncertain about what type of monitoring it requires and what constitutes sufficient knowledge of infringement to generate platform liability.
It is not just the trademark owner who may have a problem with someone else using their mark as a handle.
These doctrines can be confusing for lay people. Platform operators therefore ought to address trademark questions in their terms of service, including guidance for appropriate handle selection and processes for resolving disputes. Disputes over handles are not uncommon, and platforms must be prepared for them.
Suggestions for Handle Policies
The most thorough terms of service ask users to affirm they will not impersonate any person or entity and provide avenues to address what users or brand owners perceive to be trademark infringement that includes infringing handles, such as forms or instructions for reporting violations. Some also provide examples of acceptable and unacceptable uses of others' marks. Platforms may want to reserve the right to take down infringing content, temporarily or permanently suspend a user's account in response to repeated violations, or unilaterally change a user's handle in response to a complaint. Instagram's Terms of Service state the platform may change someone's username if it infringes someone else's intellectual property. TikTok goes so far as to reserve the right to bar a user whose account has been used for improper activities from opening a new account.
Many platforms create terms of service that users can seek out when questions arise. A more proactive strategy would be to require new users to scroll through or click to acknowledge at least some of the key terms of those agreements when they first create their account and notify them of changes and updates to policies after the fact. Such "click-wrap" and "scrollwrap" agreements are more likely to be read (or at least skimmed) and therefore more likely to be legally enforceable.
Telegram's Terms of Service provide that if someone's desired username is already taken, the platform will "help you acquire it for your account or channel, provided that you have that same username on at least two of these services: Facebook, Twitter, Instagram." But there are risks to such an approach: two users may have independently chosen the same handle on different social media platforms and each built a following, so commandeering the name from the one who controls it on less popular or different platforms may not be justified in the absence of trademark rights.
Even though platforms typically evade liability, robust policies on handling username disputes and potential cases of trademark infringement that set forth a consistent approach to addressing them are crucial.
Footnotes
a. Arizona Bd. of Regents v. Doe, 555 F. Supp. 3d 805, 817 (D. Ariz. 2021), aff'd sub nom. Arizona Bd. of Regents for and on behalf of Arizona State Univ. v. Doe, No. 21-16525, 2022 WL 1514649 (9th Cir. May 13, 2022) ("no university would drop the f-bomb in an official party invitation.").
b. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), cert. denied, 562 U.S. 1082 (2010).
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