Transcript IWSA Health and Safety Seminar Charleston, SC April 19, 2005

What Are Your Products Doing
Online?
Presented by
Sarah E. Bruno
Arent Fox LLP
Washington, DC | New York, NY | Los Angeles, CA
August 19, 2008
Overview
 What Rights Are Implicated?
 Copyrights and Protection Strategy
 Trademarks and Part Number Protection Strategy
 Infringement of These Rights
 Enforcement Strategy
 Practical Strategies for Taking Action
 Consider Your Marketing Strategies
Part I:
What Rights Are At Risk?
Your Rights
 Copyright Rights
 Web Site Designs
 Advertisements
 Product Packaging
 Catalogs and Pricing Sheets
Web Designs
Advertisements
Copyright in Your Product’s “Dress”
 Original
 Non-Functional
 Creative
Protection Strategy
 Think Outside of the Box:
 What is “Standard” may not be
protectable, because its Standard!
Examples….
Catalogs
 Must ensure that the Catalog contains
original elements that are arranged in a
distinct manner.
 Consider:
 Photograph arrangement
 Original descriptions
 Use of logos
 Use of design elements
Consider…
vs
Pricing Sheets
 Protectable?
Pricing Sheets
 Protectable?
Your Rights
 Trademark Rights
 Logos and product names
 Part Numbers
 Shape and design of your product
Part Numbers
 It must be an original part number that is
only used to identify parts from your
company
 You should avoid developing part
numbers that incorporate aspects that
are commonly used in the industry
 Webb Wheel Examples:
Trade Dress
Trade Dress Rights Extend to the Look and
Feel of Your Product or the Package Design
Part II:
Infringement of These Rights
Infringement of these Rights?
Infringement of these Rights?
Counterfeit Goods
These Rights Are At Risk on the Web
Counterfeit goods may be sold via
auctions on eBay
Counterfeit?
Deceptive Marketing?
Part III:
Protection Strategies
Enforcement Strategy
 Infringement of Trademarks Via the
Internet
 Prioritize your concerns
 Determine who is using your mark and contact the
owner of the site with a Cease and Desist letter
 If ignored, consider contacting the host to have them
disable the web site
 Filing a lawsuit if egregious enough
 Co-Existence or license agreement as an option
 Monitor the site for more egregious use
Enforcement Strategy
 Protecting Your Copyright Works
 Make sure you have a “Terms of Use” on your site
 Register your copyrights
 Password Protection
 Determine who is using your content and contact the
owner of the site with a Cease and Desist letter
 If ignored, consider contacting the host to have them
disable the web site.
 Filing a lawsuit if egregious enough
Enforcement Strategy
 Counterfeit Goods
 Monitor auction sites and develop a strategy that allows for
shutting down auctions on a weekly or bi-weekly basis (eBay
Vero Program)
 Make a purchase of the product to determine where the
seller is located (establish jurisdiction for lawsuit)
 Register your marks with Customs
 Federal agency assistance
 Factory raid
 Bring suit and make a name in the industry
 Attempt to settle with smaller infringers and gain publicity
Enforcement Strategy
 Deceptive Marketing
 You must demonstrate that the action was deceptive,
false or misleading
– Expert Opinions
– Consumer Surveys
– Actual Evidence of Confusion
 Send a Cease and Desist Letter
 Consider contacting the host of the web site if you can
assemble a claim based on copyright.
 Filing a Law Suit
Other Options
 Licensing Strategy
 Why Do It?
 Quality Control
 Revenue Stream
 Obtaining rights in a foreign market
 Ensure the License Protects Your Rights
 Never allow licensee to register mark
 Make licensee acknowledge your rights
 Make licensee assist in protecting the mark
Part IV:
The Risk of Viral Marketing
Marketing Campaigns
 User Generated Content Campaigns
 Creates brand loyalty and a community environment
 Inexpensive way to create advertisements and viral
marketing
 Potential liability for allowing users to post third party
content.
 Better practice to supply elements used
 Chevy Tahoe example
 Subway v. Quiznos
Promotions and Marketing Campaigns
 Chevy Tahoe video
 Subway v. Quiznos
Enforcement Strategy
 Create a Terms of Use on your site that
allows you to remove content that is
infringing, disparaging or otherwise
objectionable
 Prohibit the use of third party logos,
trademarks or other comparisons
 Take down content asap after receiving
notice.
Questions?