Transcript Slide 1

Safeguarding Trademarks
and Copyrights On the Web
May 20, 2013
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
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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
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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 PRESCREEN 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.
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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
AFP Case
 AFP, the photo agency, uploaded from Twitter and then shared with
Getty photos of devastation caused by Haiti earthquake. Photos
were misattributed by someone who tweeted them as his own, but
actually stole them from true photographer’s tweets
 Photographer sued for copyright infringement
 NY federal appeals court ruled that Twitter’s terms of use did not
confer a license on third parties to freely exploit tweeted
photographs without the copyright owner’s prior permission
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 Non-Copyright 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)
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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 (non-employee) 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