Transcript Slide 1

Opportunities & Challenges in the Expanding
Digital World
Trademark and Copyright Issues
on the Web
May 22, 2012
Jeanne Hamburg
[email protected]
Overview
• Copyright and Trademark Issues Arising from Social
Networking
• Copyright and Trademark Issues Not Unique to Social
Networking
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Getting Permissions to Use Copyrighted Content
Web Publishing
Web Site Development
Phishing, pop-up ads online key word purchases, hyperlinking,
• Contentious/Enforcement Issues
– Domain name recovery (cybersquatting)
– Litigation of online copyright infringement and licensing cases
Social Networking
• Why do it?
– Explosive growth. FB founded seven years
ago and only 5 years since opened to public
– Has 800 MILLION users
• US population is 310 million
• If FB were a country it would be the third largest
country in the world
• Adding 100 million new users every nine months
Social Networking
• Twitter
– Reported in March, 2012 140 million tweets per day
– On average in one week there are 1 billion tweets
• YouTube
– 60 hours of video are uploaded every minute, or one hour of
video is uploaded to YouTube every second.
– Over 4 billion videos are viewed a day
– Over 800 million unique users visit YouTube each month
– More video is uploaded to YouTube in one month than the 3
major US networks created in 60 years
Social Networking Pros
• Ability to create and leverage a powerful
marketing and PR tool
• It’s free
• Increased exposure, traffic, popularity
• Way to gain insight into the public’s and
your customers’ perception of your
products and services
Social Networking Cons
• Potential for issuing hair-raising public
statements that are difficult or impossible to
retract/expunge
• “Official” statements may not represent
company’s position
• Real-time complaints and disputes may cause
PR headaches
• Legal liability for actions of employees and third
party users interacting with your social media
presence
Facebook Page Basics
• Among other things, FB enables companies to
create corporate “pages”
• FB members who “like” a corporate page can
post to the page’s “Wall” and other tabs
– FB gives Page administrators the ability to moderate
posts, including removing, reporting or blocking
offending users
– But FB does NOT give administrators the ability to
PRE-SCREEN posts
– A FB Page administrator can disable user posts
entirely
Twitter Basics
• Twitter allows users to post brief messages, up to 140
characters, to a network of followers
• These are called “tweets”
• Must have an account to send tweets
• You can reach many more people at one time than via
email
• You can use Twitter as a micro-blog
• You may block specific followers
• You can “retweet” someone else’s tweet.
• You can curate sets of favorite feeds through “lists” even
if you are not following a specific user
• Direct messaging allows one-on-one private
communication through Twitter
Legal issues/exposure
• Online contracting with the social media
network
– Who’s in control
• Terms and conditions set by social media network
• If a company creates a presence on the social
network (e.g. a page on FB), it will most likely give
up control over end users’ interaction with that
presence
• How do you exert control and avoid liability for
illegal actions of your Page’s users and/or the
actions of your own employees?
Selected examples of FB
Terms and Conditions
• Did you know when you create a FB page you
– Grant to FB a sublicensable, transferable, royalty fee
worldwide license to your company’s IP?
– Permit FB to monetize your company’s intellectual
property (brands, copyrighted creative work) by
running ads against it without compensation to you?
– Allow the contract terms to be changed at any time by
FB?
– Indemnify FB from all claims including those of third
parties with no limitation on your company’s liability
Pinterest Controversy
• Pinterest
– Social networking site permits posting of images, art,
photography, designs that inspire the user
– Blog post by photographer and lawyer Kirsten Kowalski who said
that she removed some of her pinboards because she was
concerned about what may happen in the event that someone
sues for copyright infringement
– Pinterest’s TOU disavow any responsibility for copyright
infringement by user; user is liable NOT Pinterest
– But Pinterest’s entire model is based on sharing third party
images and content
– Pinterest responded by clarifying that you must get permission
from copyright owner before posting any third party content
How do you get control over your
business presence
on a social network?
• Two issues: users interacting with your social media
presence; employees purporting to act on behalf of your
company.
• Prevent third party interaction altogether with your Page
but may deprive you of ability to learn consumer response
• Exert control over your employee’s actions.
– Draft social networking policy and TOU that all employees
must follow
– Require only certain employees to use the page
– Require pre-screening of employee posts
– Put in place and enforce clear copyright/trademark usage
guidelines
How do you get control?
• Include your company’s customized TOU
or link to them from your company’s FB
page, Twitter profile or social media
platform. Enforce the TOU by taking down
offensive postings
• Carefully review the social network’s
Terms of Use (e.g. if no pre-screening
allowed consider disabling user postings)
Taking Charge
• Get permission to post user-generated content
• If users post content on your Page that infringes
copyright, have a mechanism for the copyright owner to
notify you so it can be taken down immediately
• Prohibit “unofficial” company blogs
• Identify who, what and how your employees can post
• Carefully consider whether to include a blog on your
social networking page
– If you cannot pre-screen or clear rights, could expose your
company to claim of copyright infringement/defamation
DMCA: Service Provider Liability
• Effective weapon for copyright owners whose rights are
infringed on the web
• Provides protection to those companies or social
network sites that unwittingly serve as a host for
copyright infringement
• Makes the host of content, who receives notice of the
infringement from the copyright owner or its counsel,
liable if it does not take down the content
• For copyright owner, fantastic remedy when infringer’s
identity is not known or infringer is uncooperative
• For corporation or social network site, acts as shield
from liability so long as the company/site owner has a
procedure in place to receive and act upon copyright
infringement complaints
How does DMCA work?
• The site or company claiming protection is called the Internet
Service Provider or ISP.
• The ISP has a “copyright complaint” procedure in its TOU which
identifies an agent to receive complaints about copyright
infringement from the copyright owner
• The complaint may take the form of an electronic submission on the
site, or be sent to an email address, or faxed
• Once the ISP receives the copyright owner’s complaint, it notifies
the user whose post is the subject of the complaint and takes down
the content
• The user who made the posting may “counter-notify” the
site/company explaining why its posting was permitted under the
copyright laws
• The counternotification is sent to the copyright owner, who has 10
days to sue or else the content will remain online.
ISPs Frequently Contacted
Under DMCA
• Apple (iTunes, App store)
• Facebook, twitter, tumblr
• Google
– Gadgets
– Android
• Amazon, eBay
Protecting Your Brand
in Social Media
• FB has automated forms: “Report an
Infringing Username” and “Notice of NonCopyright IP Infringement”
• Twitter has four separate policies to help
you protect your brand: Trademark Policy,
Impersonation Policy, Parody Policy and
Name Squatting Policy
Protecting Your Brand on Twitter
• Fighting Trademark Infringement on Twitter:
– The use of the trademark MUST be in connection with the goods
or services offered by the trademark owner. BUT if a user is just
saying something critical about the brand may not be recourse.
– When there is a “clear intent to mislead or deceive”, Twitter will
suspend the account
– If the user is not purposefully passing itself off as the
trademarked goods or service, Twitter may give the account
holder the opportunity to clear up any confusion
– Twitter may also release a username to the trademark owner
– To report a trademark violation you must access a form at
support.twitter.com/forms/trademark
Permission for Third Party
Copyrighted Content
• Distinguish whether content is being
licensed or just a trademark
– Trademark is an exclusive identifier of source
– Copyright covers original creative content
• Is the content copyrightable? (May not
require a license). Feist
• What type of use is contemplated? (May
not require permission)
Permissions
• What kind of permission?
– Exclusive or non-exclusive
• What can you do with copyrighted content?
– License of some of the rights under copyright:
reproduce, distribute, display, perform or make
derivative works (revisions)
• What media, languages, territory (even on web)
• Representations and Warranties
• Credit, right of attribution, right of publicity
Permissions: Fair Use
• Fair use” codified at 17 U.S.C. 107
• Allows the user of copyrighted material to do things
otherwise exclusively the right of the copyright owner—
so permission not required
• Must be for “fair use” purposes enumerated by statute:
e.g., criticism, comment, news reporting, teaching,
scholarship, research
• Four factor test for fair use: (1) purpose and character of
use; (2) nature of work; (3) amount and substantiality of
portion used: (4) effect on marketplace value
Permissions: Web Content
• You want to use creative content you found on the web
• Cannot assume creative content (graphic, textual, sound
recordings, etc.) is not protected by copyright simply
because available on web
• Sites claim to make material available that is in “the
public domain” (copyright has expired) but may not be
• Example: software developer, stock images from Getty,
found them elsewhere. Getty = one of largest stock
photo agencies in world.
Permissions: Web Content
• If license content from such a site look for
representations and warranties that site owner has the
rights
• Look for terms of use that may restrict use of the
licensed content. Often a one time “click through”
– E.g. Microsoft Clip Art, may not be used for
promotional purposes (incl commercial web site)
– Example client use in PPT for nutritional programs for
economically disadvantaged
• Right of publicity/privacy issues if person is depicted in
connection with promoting a business
Web Publishing
• Holder of rights in and to
copyrightable work uses third
party site to “publish” (make
available for printing,
download or viewing) content
• Example is lulu.com, which
allows you to purchase a
book that is printed and
shipped to you or to
download a digital copy
Web Publishing
• Form of license, same issues as with
permissions
• Technological safeguards on unauthorized
copying
– Code to prevent (called “anti-circumvention
measures”)
– Digital watermarks
• Does third party site have terms of use
prohibiting unauthorized use of digital
content purchased?
Web Site Development
• Hiring of third party (independent contractor) to
develop site
• Who will own content created and the html code
used to create it?
– Usually site owner
– Must be a grant or developer will own by default
– Is web site developer using third party (nonemployee) to create content? Must be assignment to
site owner or developer.
– Is developer using third party content?
Representations and warranties.
Hyperlinking: Copyright and
Trademark Infringement?
• If a hyperlink provides access to material provided
without copyright owner’s consent, is it a copyright
infringement?
– Even if the site owner provided permission, it may
itself not have authority to use the content
• Is a hyperlink using a third party trademark likely to
confuse others or imply their endorsement, particularly if
text surrounding the link says it does
• Some courts: violates the law if it points to illegal
material with the purpose of disseminating that illegal
material
Hyperlinking Best Practices
• In an email, do not provide a “live”
hyperlink
• Beneath a hyperlink in a site, include a
disclaimer that the site owner is not
affiliated with, does not endorse or
sponsor the trademark owner’s services
Pop Up Ads
Pop Up Ads
• Are a site owner’s copyrights or trademarks
infringed when a competitor’s pop up ad is
displayed when a consumer access the site?
• Most courts hold no when:
– No “use in commerce” of the site owner’s trademark
in the ad itself
– Not an infringement of site owner’s right of display as
the ad does not take any of the site owner’s content
or to prepare derivative work as the ad does not
constitute a preparation of a new work based on the
original (site) even though it may block some of the
site content when it appears
Key Word Purchases
• Search engines such as Google sell third
party trademarks as “key words” which will
display the purchaser’s web site on a
search by the user for the key
word/trademark
Key Word Purchases
Key Word Purchases
• US courts split on whether this is unlawful
– Is there likelihood of confusion, trading off on
goodwill earned by the trademark owner or is
this just like a virtual marketplace where
different branded goods are displayed on
virtual “store shelves” next to each other?
• Issue may be treated differently abroad
and in US
Pay Per View/Pay Per Click Advertising
• Provider of PPV/PPC ad gets paid every time there
is a view or click as a result of the ad and may also
be paid a commission on any resulting sale
• PPV or PPC ads may appear when a user does a
browser search using a trademark. Is the PPV or
PPC ad of a third party (not the trademark owner) an
infringement if it does not use the trademark in the
ad? Courts have not decided the issue
• In 2006 Yahoo prohibited PPV or PPC advertisers
from bidding on third party trademarks thus causing
the display of the ads when those marks were
searched
Pay Per View/Pay Per Click Advertising
• However, Google's AdSense program still permits
this in the form of "Sponsored Links" that are
generated on searches through the Google browser
of third party marks. Some estimate that 95 percent
of Google's revenue comes from AdSense.
• "Fraudulent clicks": a competitor can deplete the
advertiser's budget by clicking so many times on the
advertiser's sponsored ad that they exhaust their
budget to pay the provider of the PPC ad.
Phishing
• Criminally fraudulent process of attempting to acquire
sensitive information such as usernames, passwords
and credit card details by masquerading as a trustworthy
entity in an electronic communication.
• Communications purporting to be from popular social
web sites, auction sites, online payment processors or IT
administrators are commonly used to lure the
unsuspecting public.
• Typically carried out by email or IM, and it often directs
users to enter details at a fake website whose look and
feel are almost identical to the legitimate one. Even
when using it may require tremendous skill to detect that
the website is fake.
• MasterCard/UDRP recovery and investigation
Legislation on Phishing
• No legislation directly prohibits, but there may be copyright
and trademark remedies available since site content and
trademarks are copied
• Credit Card Fraud Act
• The Identity Theft and Assumption Deterrence Act
• Fair and Accurate Credit Transaction Act
• California's Anti-Phishing Law
California in 2005 became the first state to enact legislation
designed specifically to deter phishing. Some victims of phishing,
including those who provide Internet access service to the public,
own a Web page, or own a trademark, may recover up to $500,000
for each proven violation of the statute. Other victims may recover
up to $5000 for each violation of the statute. The statute also allows
the state's attorney general or a district attorney in the state to bring
an action to enjoin further violations.
Contentious Issues
• Cybersquatting
• Litigation of online copyright/licensing
cases
Cybersquatting
• Trademark, or confusingly similar mark,
is used in a web site address (e.g.
maztercard.com, tetrisforfree.com)
• Prohibited by federal law:
anticybersquatting protection act
(ACPA), part of the federal
trademark statute (Lanham Act)
• Vehicles for domain name recovery:
– Federal court litigation
– Uniform Domain Name Dispute Resolution
Proceeding
Cybersquatting/UDRP case
• Legitimate use or interest in domain name
• Noncommercial or fair use
• Attempt to divert traffic
• Attempt to transfer the domain name for money
• Bad Faith—e.g. Pattern of cybersquatting:
– history of selling other domain names; use of false contact
information; registration of multiple domains that the person
knows are identical or confusingly similar to distinctive or famous
marks.
UDRP Proceedings
• Arbitration proceeding
• Not necessary to own registered mark. Must show the
domain name is identical or confusingly similar to a mark
in which the complainant has rights, the respondent has
no legitimate right to the domain name and the
respondent registered the domain name in bad faith.
– e.g. Tetrisforfree.com, maztercard.com
• ICANN (Internet Corporation for Assigned Names and
Numbers) sets rules and policy as adopted by the
arbitral forum authorized by ICANN
• Most popular forums are WIPO in Switzerland and NAF
in Minneapolis
• Complaint, Reply, and Surreply, then a single member or
three member panel will decide. All filed electronically.
Federal Court Action for
Cybersquatting
• Rarely done unless there is also
another act of trademark
infringement, e.g. the URL links to
site content selling goods or
services under the infringing mark
• Expensive
• Advantage is that you do not have
to prove the domain name was
registered in bad faith
Litigating Online Copyright
Infringement Cases
• Copyrightable expression (factual data
organized logically not protected)
• Access to copyrightable work (can often be
demonstrated with IP addresses)
• Copying
– Copying is presumed from substantial similarity—
the key test for infringement
• Fair Use
Litigating Online Copyright Cases
• Must obtain registration before you sue;
expedited registration may be secured for this
purpose (10 days vs. several months)
• Preliminary injunction often ends the case
• Declaratory judgment is popular for the alleged
infringer
• Must bring suit in federal court
• Often choice of jurisdiction
Litigating Online Copyright
Infringement Cases: Licenses
• “Click through” agreements or “terms of use” can
raise special issues
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Important to attend to the terms
Consent to jurisdiction
Restricts use of content that is not copyrightable
Adhesion: courts generally find these agreements
binding
– Authority to bind company
– Hospital sued by provider of health care ratings