Safeguarding Trademarks and Copyrights On the Web May

Safeguarding Trademarks and Copyrights On the Web May 20, 2013 Jeanne Hamburg jhamburg@nmmlaw. com

Overview Ø Copyright and Trademark Issues Arising from Social Networking Ø Copyright and Trademark Issues Not Unique to Social Networking § § Getting Permissions to Use Copyrighted Content Web Publishing Web Site Development Phishing, pop-up ads online key word purchases, hyperlinking, Ø Contentious/Enforcement Issues § § Domain name recovery (cybersquatting) Litigation of online copyright infringement and licensing cases

Social Networking Ø 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 third largest country in • the world Adding 100 million new users every nine months

Social Networking Ø Twitter § Reported in March, 2012 140 million tweets per day § On average in one week there are 1 billion tweets Ø You. Tube § 60 hours of video are uploaded every minute, or one hour of video is uploaded to You. Tube every second. § Over 4 billion videos are viewed a day § Over 800 million unique users visit You. Tube each month § More video is uploaded to You. Tube in one month than the 3 major US networks created in 60 years

Social Networking Pros Ø Ability to create and leverage a powerful marketing and PR tool Ø It’s free Ø Increased exposure, traffic, popularity Ø Way to gain insight into the public’s and your customers’ perception of your products and services

Social Networking Cons Ø Potential for issuing hair-raising public statements that are difficult or impossible to retract/expunge Ø “Official” statements may not represent company’s position Ø Real-time complaints and disputes may cause PR headaches Ø Legal liability for actions of employees and third party users interacting with your social media presence

Facebook Page Basics Ø Among other things, FB enables companies to create corporate “pages” Ø 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 Ø Twitter allows users to post brief messages, up to 140 characters, to a network of followers Ø These are called “tweets” Ø Must have an account to send tweets Ø You can reach many more people at one time than via email Ø You can use Twitter as a micro-blog Ø You may block specific followers Ø You can “retweet” someone else’s tweet. Ø You can curate sets of favorite feeds through “lists” even if you are not following a specific user Ø Direct messaging allows one-on-one private communication through Twitter

Legal issues/exposure Ø 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 Ø 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 Ø 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 Ø Photographer sued for copyright infringement Ø 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 Ø 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? Ø Two issues: users interacting with your social media presence; employees purporting to act on behalf of your company. Ø Prevent third party interaction altogether with your Page but may deprive you of ability to learn consumer response Ø 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? Ø 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 Ø Carefully review the social network’s Terms of Use (e. g. if no pre-screening allowed consider disabling user postings)

Taking Charge Ø Get permission to post user-generated content Ø 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 Ø Prohibit “unofficial” company blogs Ø Identify who, what and how your employees can post Ø 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 Ø Effective weapon for copyright owners whose rights are infringed on the web Ø Provides protection to those companies or social network sites that unwittingly serve as a host for copyright infringement Ø 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 Ø For copyright owner, fantastic remedy when infringer’s identity is not known or infringer is uncooperative Ø 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? Ø The site or company claiming protection is called the Internet Service Provider or ISP. Ø The ISP has a “copyright complaint” procedure in its TOU which identifies an agent to receive complaints about copyright infringement from the copyright owner Ø The complaint may take the form of an electronic submission on the site, or be sent to an email address, or faxed Ø 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 Ø The user who made the posting may “counter-notify” the site/company explaining why its posting was permitted under the copyright laws Ø 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 Ø Apple (i. Tunes, App store) Ø Facebook, twitter, tumblr Ø Google § Gadgets § Android Ø Amazon, e. Bay

Protecting Your Brand in Social Media Ø FB has automated forms: “Report an Infringing Username” and “Notice of Non-Copyright IP Infringement” Ø 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 Ø 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 Ø Distinguish whether content is being licensed or just a trademark § Trademark is an exclusive identifier of source § Copyright covers original creative content Ø Is the content copyrightable? (May not require a license). Feist Ø What type of use is contemplated? (May not require permission)

Permissions Ø What kind of permission? § Exclusive or non-exclusive Ø 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) Ø Representations and Warranties Ø Credit, right of attribution, right of publicity

Permissions: Fair Use Ø Fair use” codified at 17 U. S. C. 107 Ø Allows the user of copyrighted material to do things otherwise exclusively the right of the copyright owner—so permission not required Ø Must be for “fair use” purposes enumerated by statute: e. g. , criticism, comment, news reporting, teaching, scholarship, research Ø 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 Ø You want to use creative content you found on the web Ø Cannot assume creative content (graphic, textual, sound recordings, etc. ) is not protected by copyright simply because available on web Ø Sites claim to make material available that is in “the public domain” (copyright has expired) but may not be Ø Example: software developer, stock images from Getty, found them elsewhere. Getty = one of largest stock photo agencies in world.

Permissions: Web Content Ø If license content from such a site look for representations and warranties that site owner has the rights Ø 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 Ø Right of publicity/privacy issues if person is depicted in connection with promoting a business

Web Publishing Ø Holder of rights in and to copyrightable work uses third party site to “publish” (make available for printing, download or viewing) content Ø 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 Ø Form of license, same issues as with permissions Ø Technological safeguards on unauthorized copying § Code to prevent (called “anti-circumvention measures”) § Digital watermarks Ø Does third party site have terms of use prohibiting unauthorized use of digital content purchased?

Web Site Development Ø Hiring of third party (independent contractor) to develop site Ø 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? Ø 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 Ø 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 Ø Some courts: violates the law if it points to illegal material with the purpose of disseminating that illegal material

Hyperlinking Best Practices Ø In an email, do not provide a “live” hyperlink Ø 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 Ø Are a site owner’s copyrights or trademarks infringed when a competitor’s pop up ad is displayed when a consumer access the site? Ø 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 Ø 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 Ø 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? Ø Issue may be treated differently abroad and in US

Pay Per View/Pay Per Click Advertising Ø 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 Ø 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 Ø 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 Ø However, Google's Ad. Sense 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 Ad. Sense. Ø "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 Ø 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. Ø 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. Ø 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. Ø Master. Card/UDRP recovery and investigation

Legislation on Phishing Ø No legislation directly prohibits, but there may be copyright and trademark remedies available since site content and trademarks are copied Ø Credit Card Fraud Act Ø The Identity Theft and Assumption Deterrence Act Ø Fair and Accurate Credit Transaction Act Ø 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 Ø Cybersquatting Ø Litigation of online copyright/licensing cases

Cybersquatting Ø Trademark, or confusingly similar mark, is used in a web site address (e. g. maztercard. com, tetrisforfree. com) Ø Prohibited by federal law: anticybersquatting protection act (ACPA), part of the federal trademark statute (Lanham Act) Ø Vehicles for domain name recovery: § Federal court litigation § Uniform Domain Name Dispute Resolution Proceeding

Cybersquatting/UDRP case Ø Legitimate use or interest in domain name Ø Noncommercial or fair use Ø Attempt to divert traffic Ø Attempt to transfer the domain name for money Ø 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 Ø Arbitration proceeding Ø 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 Ø ICANN (Internet Corporation for Assigned Names and Numbers) sets rules and policy as adopted by the arbitral forum authorized by ICANN Ø Most popular forums are WIPO in Switzerland NAF in Minneapolis Ø Complaint, Reply, and Surreply, then a single member or three member panel will decide. All filed electronically.

Federal Court Action for Cybersquatting Ø 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 Ø Expensive Ø Advantage is that you do not have to prove the domain name was registered in bad faith

Litigating Online Copyright Infringement Cases Ø Copyrightable expression (factual data organized logically not protected) Ø Access to copyrightable work (can often be demonstrated with IP addresses) Ø Copying § Copying is presumed from substantial similarity—the key test for infringement Ø Fair Use

Litigating Online Copyright Cases Ø Must obtain registration before you sue; expedited registration may be secured for this purpose (10 days vs. several months) Ø Preliminary injunction often ends the case Ø Declaratory judgment is popular for the alleged infringer Ø Must bring suit in federal court Ø Often choice of jurisdiction

Litigating Online Copyright Infringement Cases: Licenses Ø “Click through” agreements or “terms of use” can raise special issues § § § 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