Right to Publicity? When Can a Celebrity or Public Figure Sue?

Hello:

It has been a while since I posted on this blog. I have been extremely busy working, writing, and speaking on Intellectual Property issues in New Media. No excuse for neglecting this space, but I hope to post here more often.

I have been writing quite a few articles for Black Web 2.0 and recently I wrote an article on the Right to Privacy and Right to Publicity Law. Specifically, I discussed how this law affects bloggers who feature and write about celebrities. Below is the article in full text. Also, please visit www.blackweb20.com to see more articles I have written about legal issues in new media.


50 Cent Sues WorldStarHipHop For Unlawfully Using His Image. Bloggers Take Note!

Rapper 50 Cent is suing the popular website WorldStarHipHop.com for using his image/likeness without his permission. Basically, the website used the rapper’s photo on its home page…like a banner. 50 cent claims the site’s use of his image resulted in increased traffic for the site and the public perception that 50 cent was affiliated with site due to his image prominently placed on WorldStarHipHop.com’s home page.

Do blogs, websites, or online magazines have to get permission to use every celebrity’s image or likeness before posting images of that celebrity? Well it depends on for what purpose the site uses the celebrity’s image.

The use of one’s image or likeness is covered under the Right to Publicity law. This law drives from the Right to Privacy. There are four basic Rights to Privacy:

1. Protection from unreasonable intrusion upon the seclusion of another. For example a home or a car,

2. Protection from appropriation of a person’s name or likeness (Right to Publicity). For example using a person’s name or image on a product or service without their permission,

3. Protection from publication of private facts. For example, income tax data, family quarrels, medical treatment, school records, etc.,

4. Protection from publication of information that places a person in a false light.
Prosser, Restatement 2nd of Torts.

The Right to Publicity is triggered where commercial speech is involved, i.e, when a company has used a celebrity’s “name, likeness, or voice” in connection with a product, thereby creating a false and misleading impression that the celebrity is endorsing the product. See, e.g., Eastwood v. Super. Ct., 149 Cal. App. 3d 409, 417 (1983).

In 50 cent case, he claims WorldStarHipHop.com used his image like a banner ad, therefore created the false impression that he was affiliated with the site. The use of his image resulted in increased traffic to the site and therefore increased ad dollars. If 50 cents claims are proven to be true, WorldStarHipHop.com will have to compensate 50 cents for using his image to endorse their product, i.e., their website.

But there are instances when a website can use a celebrity’s image without their permission. Under the First Amendment exception to the Right of Publicity rule, if the image is used in connection with reporting a newsworthy article that is a matter of public interest, then the site does not have to get the celebrity’s permission to use their image or likeness. Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 409 (2001); see also Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.Supp.2d 1146, 1182-83 (C.D. Cal. 2002).

For example, when a gossip blog reports breaking news that X celebrity was in an altercation or was caught drinking and driving, use of the celebrity’s image without their permission is permissible. However, if a gossip blog simply has images of celebrities on its site as a banner or as part of the site’s graphics, use of the celebrity’s image is not permissible without first obtaining the permission of the celebrity. In this instance, the site is using the celebrity’s image to promote their blog or site.

Bloggers and websites that report on celebrity news should take note and be very careful when using celebrity images. If the use of the celebrity’s image is not associated with breaking news or “newsworthy”, ALWAYS get permission.

Update: New FTC Rules on Blogger Product Endorsements, Effective December 1

Hello!

Previously I wrote a post about the "proposed" Federal Trade Commission Rules on Blogger Product Endorsements. Basically, the FTC was considering whether to require bloggers to disclose any financial relationship between themselves and brands whom products they endorse.

Well those proposed rules are now a reality. The FTC has established new rules on Blogger Product endorsement and they are as follows:

1. Bloggers must disclose if they receive a financial benefit when writing a post about a product or service. FTC views this transaction as an endorsement of the product or service.

2. Disclosure can be a banner or part of the review.

3. Diclosure must be clear and direct.

4. If there is no disclosure, FTC may send a Cease and Desist. If Cease and Desist is violated or ignored, then blogger can receive a 11K fine.

5. Rules go into effect December 1.

Although, the rules have been established, the FTC has admitted that they will not actively pursue bloggers. Most likely, the FTC will only pursue clear rampant violations and those will most likely be the result of a tip from a concerned consumer. Hopefully the new rules will encourage bloggers to be as transparent as possible regarding product reviews. Transparency allows consumers to make informed buying decisions.

I welcome your feedback!

Facebook's New Privacy Policy: What does it mean for users?

Hello:

Previously I wrote a blog post about the importance of having a privacy policy if you own or maintain a website (blog, social network, etc.)

I discussed the need of website to state clearly: what information is collected from users; reveal what type of technology is used to collect information; explain to users what is done with the information collected; give users the option to opt out of providing information; and reveal measures in place to protect users' personal information.

Facebook recently revealed the company modified its privacy policy to require API Developers (3rd party application developers) to inform users in advance of what categories of data is needed to use the application. In addition, when users authorize an application, they can opt out of giving certain information. This change comes on the heels of Canada's Privacy Commissioner's concern about the "over-sharing of personal information with third-party developers of Facebook applications such as games and quizzes."

In my opinion this is a good move. Although the option to download third party applications is a user's choice, giving user's the ability to opt out of giving detailed personal information while still using the application, will possibly encourage more users to use the applications. Also the new policies give user's more detailed information about what information is required before downloading the applications. Now user's can make a more informed choice.

I welcome your thoughts!

Inventor's Association of Georgia and Cloud Computing

Hello:


I hope your life has been well! I have been busy busy busy. Last Saturday I gave a presentation on Trademarks and the importance of protecting them at the Inventor's Association of Georgia's monthly meeting. Despite technical difficulties with my MAC Ibook G4, the presentation went well. I gave examples of different types trademarks; discussed the difference between patents, trademarks, and copyrights; discussed cost effective solutions in defending and initiating trademark infringement actions; and gave advice on how to establish a cost effective trademark patrolling program.

Also I have been writing weekly for BlackWeb2.0. Last week, I wrote an article on privacy issues with Cloud Computing. Check it out and let me know what you think.

Until next time.

Update: RIAA File-Sharing Litigation: Obama Administration Backs RIAA

Hello!

I am finally back! I have been traveling for the past few weeks giving presentations and writing articles.

Previously I wrote a post about the RIAA vs. Tenenbaum case. This case is one of several high profile file-sharing lawsuits currently being reviewed by the courts.

Another case that has garnered national attention is the RIAA vs. Thomas-Rasset. Ms. Thomas-Rasset purchased songs from I-tunes and shared them with peers. A Minnesota federal jury found her guilty of copyright infringement and the court ordered her to pay $80,000 for each of the 24 downloaded song she shared. Her jury verdict came to a whopping $1.92 million dollars. She is now seeking to vacate the judgment for being too excessive.

However, last week, the Obama Administration submitted arguments in favor of the jury verdict. The Justice Department argued that the jury verdict was not too excessive considering the nature of file sharing. So although Ms. Thomas-Rasset may have shared the files with only a select group of individuals, those individuals continued to share the files with other users and so on. So the file sharing continues.

Clearly, The Obama Administration is intellectual property ownership friendly and is asserting its position as such. The RIAA really needs this support from the Justice Department considering the negative publicity and backlash it has received for going after individual consumers. It will be interesting to see if the judge actually reduced the monetary award. I will keep you posted.

I welcome your thoughts.

Twitter "Moldy Apartment" Libel Lawsuit

Hello Everyone!

I have been very busy traveling and speaking on protecting IP assets and legal issues in new media. This week I wrote an article on the Twitter "Moldy Apartment" lawsuit. If you have not heard, a Twitter user stated on Twitter that a management company had moldy apartments. The management company sued for libel and of course this story received massive attention. The issue here is whether the statement was factual or false. Read my take on this lawsuit here. If you like please join the discussion.

Have a great day!

Are News Stories Copyrighted Material?

Hello!

This week I wrote an article on whether news is copyrighted material. Specifically, can the Associated Press claim copyright protection for factual information? The article is posted here. Please leave a comment!

Copyright Office Forms

Hello:

This weekend I gave a presentation at the Synergy Club of Georgia on Protecting Business Intellectual Property Assets. The Synergy Club is an organization that provides much needed resources to women business owners. During the presentation I discussed the four main intellectual property assets a business can own: copyrights, trademarks, patents, and trade secrets.

The members of the club had great questions. I particularly received many questions regarding copyright registrations. One member asked a very good question concerning what is the appropriate copyright registration form to file for a sound recording. The copyright office has several paper forms for different types of works. They are as follows:

Form TX for literary works
Form VA for visual art works
Form PA for performing arts works (motion pictures, plays, dance performances, etc.)
Form SR for sound recordings, and
Form SE for single serials (periodicals, newspapers, magazines, newsletters, annuals, journals)

However, if a copyright registrant files their copyright application online using the Copyright's office eCO system using Form CO, a registrant can simply select any of the above categories as an option without filing separate and distinct applications.

Another advantage to filing the Form CO online is that the cost to file is $35 as opposed to $45 for paper applications.

As you can see, there are some advantages to using new technology...it is cheaper and more efficient!

I hope this information was helpful. I welcome your thoughts!

Internet Webcasters Get A Small Break!

Hello:

This week I wrote an article for Black Web 2.0 discussing the legal battle concerning royalty rates between internet radio stations and the Copyright Royalty Board. Click here to read the full article.

Does Your Website have a Privacy Policy?

Hello!

As web 2.0 continues to expand, online privacy is becoming a major focus point for individual consumers and regulators. Specifically, there is concern about how personal information of users and visitors of social networks and blogs is gathered and used by owners of these sites. There are several bodies of rules and regulations that address this very issue. They are the Federal Trade Commission's rules on behavioral advertising, Communications Decency Privacy Act, European Union Directive on Data Protection and various state privacy laws.

An owner of a website should have a very clear and direct privacy policy that states the following:

1. what type of personal information is collected
2. what type of technology is used to collect information
3. how the website will use the information collected
4. who will receive the personal information collected
5. specific measures in place to protect personal information
6. if the website will not use personal information
7. if the user voluntarily shares their personal information to the public, then their is no expectation of privacy,
8. how one can opt out of their personal information being gathered and/or shared with third parties.

Having a privacy policy can minimize liability for invasion of privacy claims and ensure a website owner is compliant with all federal and state privacy laws. A privacy policy also protects the reader or user of the website. The consumer is informed about how their information is used and can dictate to website owners whether they want their information shared or not.

Having a privacy policy is just good business sense.

I welcome your thoughts!

Trade Secrets: What Are They and How To Protect Them

Hello!

There are several forms of intellectual property that a business may own. They are trademarks, copyrights, patents, and trade secrets. On this blog I mainly discuss trademarks and copyrights. Recently, I have been advising clients on protecting valuable trade secrets. As a result, I am going to explain what are trade secrets and give practical tips on how to effectively protect them.

A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable to the public.

Some examples of trade secrets are:

1. Formula for the soft drink, Coca-Cola
2. Business processes
3. Marketing Strategies
4. Food Recipes
5. Computer Algorithms

In addition, the trade secret must be of an economic advantage over a business' competitors or customers. Lastly, the owner of the trade secret must take reasonable efforts to maintain its secrecy.

Reasonable efforts to protect a trade secret is key in maintaining intellectual property rights in the trade secret and in pursuing those who steal the trade secret for economic gain. Here are a few tips on how to protect trade secrets:

1. Require all employees, vendors, contractors, business partners, etc to sign non-disclosure/confidentiality agreements regarding the confidentiality of any trade secrets.

2. Implement adequate security measures to protect the secrecy of the trade secret. This may include keeping the trade secret under lock and key; using code words; restricting access to a select few individuals; restricting access to trade secrets by using programmable access passcards, computer fire walls, multiple level password protection, and secured intranets.

Once again, taking reasonable measures to protect trade secrets is key when pursuing a claim for "trade secret theft". If it is proven that the owner of the trade secret did not implement an adequate security system to protect trade secrets, then the trade secret loses its protection.

I welcome your thoughts!

Defamation and Social Media

Hello!

Defamation is becoming a huge issue on social media sites such as Blogs, Twitter, and Facebook. Recently there have been some notable cases involving defamation litigation. Specifically, Courtney Love is being sued for making an alleged defamatory "tweet" about a famous designer.

What is a defamatory statement? The law defines defamation as spoken or written words that are false and or misleading that gives the defamed a negative image and or hurts their reputation. The defamatory statement must be made to someone other than the person subject to the defamation. The law also differentiates between written and oral defamatory statements. Written statements are called libel and oral statements are slander.

Who is liable for libel statements made on blogs or social networks? Are owners of these sites liable for defamatory statements made by users of their sites? Or is the person who made the defaming statement solely liable?

Under the Communications Decency Act, an owner of a social networking site is not liable for the defamatory statements made about another on their site unless the site owner actively engages in the gathering of information from the user that leads to the defamatory statement. An example of this type of behavior is a blog owner soliciting comments from users on whether they dislike Celebrity X and why? The comments leads to defamatory statements about the celebrity and the blog owner supports, encourages, and endorses the libel statements.

Of course, anyone who makes a defamatory statement about another on any social network is personally liable for his or her statements.

How can owners of social networking sites and users of these sites protect themselves from defamation liability?

Owners should discourage and immediately remove potentially defamatory or libel statements from their sites. Owners should never enter into any dialogue with a user concerning a person's reputation. In addition, including a disclaimer or statement regarding your removal of any defamatory statements on your site, may potentially discourage users from engaging in such behavior. Plus it puts the public on notice that you do not endorse defamatory conduct.

Users of social networking sites should avoid personal opinions or negative comments that are not 100% factual and or statements that may harm a person's image or reputation. The best advice I have ever received is "if you don't have anything positive to say, then don't say nothing at all." One negative comment could cost you tons of money and heartache.

I welcome your thoughts!

File Sharing & Fair Use: What does it mean for Consumers

Hello!

I hope your week has been productive.

I came across this article on the Daily Online Examiner, which gives an update on the Napster File Sharing Litigation. As many of you know, the Recording Industry Association of America (RIAA) waged a legal battle against Napster and users of file-sharing services for the past 10 years. However, one of those cases can effectively end the RIAA argument that file-sharing is copyright infringement and therefore punishable by a fine and or jail time.

In the case of RIAA vs. Joel Tenenbaum, the court is currently accepting an argument that peer to peer file sharing is a Fair Use exception to Copyright Infringement Laws. Essentially, the argument is that file sharing is not commercial use and therefore not copyright infringement. In lay terms, this means that as long as individual consumers are sharing files with friends for personal enjoyment and not a monetary fee, then copyright infringement does not exist and file-sharing is not a crime. I will explain Fair Use in more detail below:

Copyright Infringement occurs when another unlawfully copies, sells, displays or performs a copyright owner's work without their express permission. However, in some instances, copying a copyright owner's work without their permission is allowed. This is called the Fair Use exception. Specifically, an infringer of a copyright can argue Fair Use if they meet one of the following criteria:

1. the purpose and character of the use is for non-profit or non-commercial purposes;
2. the nature of the copyrighted work is artistic and benefits the public;
3. the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole; and
4. the effect of the copying upon the potential market for or value of the copyrighted work is minimal.

If Tennebaum's argument is successful, peer to peer file sharing may be considered legal and enjoy the same treatment as copying of television or cable shows for personal enjoyment. Currently, consumers can copy or record television or cable shows in their home as long as the recording is done for personal enjoyment and the recording is not re-broadcast or viewed by consumers for a fee.

It will be interesting to see how the judge rules this case. I will keep you posted.

I welcome your thoughts!

Understanding USPTO Office Actions

Hello!

Welcome Back! Posting was kind of slow this past week because my MAC is in the shop getting a much deserved upgrade!

Understanding USPTO Office Actions can be a very daunting tasks for a non-attorney. Office Actions are drafted by USPTO attorneys and set forth the legal status of a trademark application. Thus the Office Action contains a lot of legalese, i.e., rules, laws, etc. that may need interpretation and sometimes further research and explanation. Understandably, an individual who filed their application without an attorney can be intimated and confused. There are several types of Office Actions. However, I will address the two types I encounter the most.

Office Action: An USPTO examining attorney informs the applicant of any conflicts with another trademark. Also an examining attorney may address issues such as whether the trademark is valid under US trademark law or the sufficiency of submitted specimens. An applicant has 6 months to respond to the Office Action and to correct or address each issue raised. If each issue is not addressed and appropriately remedied within the 6 month time frame, then the application will be abandoned.

Priority Action: An USPTO examiner will issue this action after consulting with the applicant or the applicant's attorney regarding specific requirements that have to be met before the application is approved for publication. If the requirement is not met, the application will be abandoned. However, if the applicant responds within 2 months, the application is given priority processing.

If you are a business or individual who receives one of the above actions, and have no idea how to respond, it is very important to obtain legal assistance. If an applicant does not address all of the issue and/or does not respond within 6 months, the applicantion can be abandoned. I obtain many clients who are near the abandonment stage or their application has been abandoned because they did not answer the Office Action correctly. Fortuantely, if an application is abandoned, the USPTO does allow the applicant to Petition the USPTO to revive the application. The cost is $100 and must be received within 2 months after the abandonment takes effect.

As always I welcome your thoughts. And please if you have a question, please ask.

USPTO Filing Fees: Why Some Are More Expensive Than Others

Hello!

Last week I wrote a post mentioning USPTO fees to file two classifications under one trademark. I stated that the fees were $275 per classification for one trademark and the filing fee for each unique trademark is $325. However, a reader rightfully pointed out that USPTO filing fees are different prices depending on whether you are filing a paper application vs. online application. Also, the USPTO has a shorter online application that is less expensive than a regular online application.

As a result of @BSpeer's comment, I decided to break down the USPTO application fee structure below:

$275 per classification if you qualify to use a TEAS PLUS online application. For a list of requirements to file a TEAS PLUS online application, click here. Most importantly, your services or goods must appear in the USPTO's Acceptable Identification of Goods and Services Manual and you must agree to communicate with the USPTO regarding your application via email.

$325 per classification if do not qualify to use TEAS PLUS and you have to use a regular TEAS online application.

$375 if you choose not to apply online and use a paper application.

I hope this post clarifies my earlier statements and gives a better explanation of the USPTO's filing fees for trademark applications. I always welcome your thoughts and comments.

When Filing a Trademark Application: Make Sure to Include the Correct Classifications

Hello!

I hope your week is going well!

Today I want to discuss another common error individuals make when filing a trademark application without the assistance of a trademark attorney. This error is not choosing the correct identification or class for goods and/or services or not choosing enough classifications to cover all goods and services.

The USPTO has an extensive list of acceptable identifications for goods and services. For example, if you are offering entertainment services, usually your classification number is 041. If you are selling cosmetics, your classification number is 003. It is very important to choose the appropriate classification because if the classification is wrong, the USPTO will reject the application. Furthermore, if you don't include all classifications that apply to your product or services, you will have to file another trademark application to include those classificationss. The following is an example:

I have a barbecue restaurant business but I also sell my famous barbecue sauce. I have one trademark that applies to my restaurant and barbecue sauce. When I submit my trademark application, I would choose classification 043 for restaurant services and classification 030 for barbecue sauce.

The above scenario is less expensive than having to file two separate trademark applications. Each identification filed under one trademark costs $275.00. Whereas, filing two separate applications for each class is $325.00 per application.

However, if you have a trademark for the restaurant and a separate trademark for the barbecue sauce, then you would have to file two separate trademark applications. The USPTO only accepts one trademark per application.

I hope you found this information helpful. If you would like, please share your thoughts.

NOTE: The above fees apply when filing an application online.

When Submitting a Trademark Application: What is an appropriate specimen

Hello!

I hope everyone had a great Memorial Day Weekend!

I am still continuing my "Why You Should Hire a Trademark Lawyer Series." As I have said before, this series is very important because a good percentage of my client base comes from individuals who have attempted to file a trademark on their own.

Another reason, trademark applications are rejected by the USPTO is because they do not include the appropriate specimen. When filing a trademark application based on actual "Use", an appropriate specimen should show that the trademark or servicemark is being used in commerce, i.e., goods or services are being offered or sold to the public.

The following are examples of specimens that are acceptable when submitting a trademark application for products:

1.Product or package labels or tags (for clothing, etc.).
2.Banners, Window Displays, Signs.
3.Catalogs showing the products for sale.
4.Website pages showing the products for sale.

The following are not acceptable specimens for products:

1. Advertisements. Any type of ads, brochures, flyers, etc.
2. Price Lists.

Acceptable Specimens for Services:

1. Advertisements are acceptable here. So any ads, brochures, flyers, etc. advertising the services are appropriate.
2.Company Letterhead. If letter includes an offer for services.

Specimens not acceptable for Services:

1. Memos.
2. Invoices.
3. Business Plans

Remember submitting the wrong specimen can delay your trademark application for 6 months or more. I hope you found this information useful. Please share your thoughts.

Why I Should Hire a Trademark Lawyer? Comprehensive Search Resources

Hello!

In my previous post, I discussed the number one pitfall individuals make when submitting a trademark application to the USPTO, which is not performing a comprehensive search. In this post, I will explain what a comprehensive search entails and provide a list of resources to conduct the search.

A comprehensive search will gather any information or trademarks that are similar to your trademark. This type of search will include:

A search of the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet.

In addition, if you plan to sell your product or service in another country, you can also obtain an international search.

The cost for this type of search for a name only starts at $550.00. However if you want a search performed for a logo and name, the cost is around $950.00. International Searches do require much larger fees.

There are several companies that perform comprehensive searches. Here are a few:

CT Corsearch.

CompuMark

4 Trademark.com


I hope this information was helpful. Please leave a comment if you have any questions.

Why I Should Hire a Trademark Lawyer?

Hello!

Welcome Back.

As I have previously stated, many of the clients I obtain are those who have tried to register their trademarks without the assistance of an attorney and the USPTO rejects their application. Consequently, I have started this series appropriately titled "Why I Should Hire a Trademark Lawyer" to address common questions or pitfalls many trademark owners commit when attempting to navigate the USPTO on their own. Today, I am going to discuss in depth the number one pitfall:

1. Not obtaining or performing an adequate trademark search.

A simple search on Google to determine whether a trademark name, logos, or taglines are in use by another party, simply will not do. If I submitted a trademark application to the USPTO, based on a Google Search, I would be sued for malpractice. This is a big big public misconception. There are thousands of viable trademark claims or rights that simply do not show up in a Google Search. Why?

a. Some businesses do not own a website,
b. Some business are operating under DBAs that search engines may not find,
c. Some businesses, do not do any active advertising or marketing

However, this list is not exhaustive. There are so many mom and pops that fall under this category. You would not know if they existed unless you hired an attorney or a search company to do a comprehensive trademark search.

Another misconception is that if a search is performed using the USPTO's trademark database, and the name is not taken, you are in the clear. WRONG. WRONG. WRONG. The USPTO's database only includes registered trademarks, not common law trademarks. A common law trademark right exists when one is the first to use the mark in their region, regardless of whether the mark has been registered with the USPTO.

Once the USPTO receives your trademark application, they will perform a comprehensive search and if your trademark is already in use, your application will be rejected. In addition, you will have to possibly choose another trademark name, logo, and/or tag line.

So before deciding to file a trademark application, consult with an attorney regarding a comprehensive search. It will save you time, headaches, and money.

In my next post, I will give an detailed example on what a comprehensive search includes.

New Federal Trade Commission Proposed Rules on Blogger Product Endorsements: What brands and bloggers need to know

Hello!

Welcome Back! The Federal Trade Commission recently released proposed changes to their Consumer Product Testimonial and Endorsement Rules. They are:


An advertisement containing a consumer endorsement about the performance of an advertised product or service must reflect the actual performance of the product or service. Essentially the advertiser must have sufficient evidence, if applicable, competent and scientific evidence, to verify that the consumer endorsement is correct. Sec. 255.2(a)

In addition, the consumer endorsement must be representative of the results consumers would generally achieve. The endorsement can not be an atypical result. Advertisers must also have sufficient evidence to support general results.

These proposed changes do not apply to highly subjective testimonials for certain products such as movies, games, or restaurants. But if the advertiser is paying the consumer endorser to endorse the product, then the above rules do apply.

Most importantly, if an advertiser is paying a consumer to endorse a product with cash or free products, then the advertiser and the consumer must disclose the financial relationship. If not, both advertiser and consumer may be held liable for making false statements.

HOW DOES THESE RULES AFFECT BLOGGERS AND ADVERTISERS IN NEW MEDIA?

In the new proposed rules, The Federal Trade Commission also addressed advertising in new media (Web 2.0). Essentially, if an advertiser pays a blogger to write a review endorsing a product or service, the advertiser and the blogger must disclose the financial relationship. In addition, both blogger and advertiser both will be liable for any false or unsubstantiated claims regarding results of products or services.

WHAT CAN ADVERTISERS AND BLOGGERS DO TO AVOID LIABILITY?

1. When using bloggers to endorse product or services, advertisers should make certain that their products do what they claim. Advertisers should extensively test products, run trials, and document evidence that substantiate results for most users of the product or service.

2. Advertisers should provide data to bloggers that evidence typical results for most individuals. Advertisers should stress to bloggers that if the product does not produce the desired results as documented, do not write a favorable review.

3. Advertiser should include disclaimers on consumer endorsements that state that results are typical of most individuals using the products. However, if a consumer achieves an unfavorable result, it is atypical and may be based on a variety of personal factors unknown to the advertisers.

4. When writing a favorable review or endorsement of a product, bloggers should always disclose they received the product for free or was paid to write the review.

5. Bloggers should always give their true opinion of the product whether paid or not.

6. Bloggers should post any product disclaimers and company trials or evidence substantiating their review of the product.

Although the proposed rules have yet to be adopted, I think the above tips are great practices for advertisers and bloggers. The Commission may not adopt all of the rules, but considering the explosion of new media, regulation is inevitable.

I welcome your thoughts!

Can An Individual Trademark Their Legal Name?

Hello!

Since I have been practicing trademark law, individuals always ask me if they can trademark their legal names. This particularly becomes an issue when the individual has developed a reputation as a recognized leader in their field; earns a salary from speaking engagements; writes published material; is a recognized inventor, or is a celebrity.

The trademark laws state that common first and last names can be trademarked if they are distinctive, i.e, developed a secondary meaning; or used to identify a source of goods, services, or talent associated with the individual. Lastly, the goods, services, or talent must be sold in commerce.

I will use the name Bill Gates as an example.

How can a common name like Bill Gates become distinctive? As stated above, a common name acquires distinctiveness if it develops a secondary meaning. When someone sees or hears the name Bill Gates they automatically think the inventor of the computer operating system, Windows. Thus Bill Gates' name has developed a secondary meaning, i.e. inventor of Windows. In addition, the name Bill Gates is associated with the origination of the product Windows and Microsoft Software. Lastly, Windows and Microsoft are sold in commerce in the U.S. and around the world. As a result, Bill Gates is a name that can be trademarked and protected from use by other individuals for commercial gain.

So when wondering if you can trademark your legal name. Consider these factors?

Have you become famous in your field?
Do you gain an income from the use of your name?
When people see or here your name, do they automatically think of a product, service or talent you offer?

If so, I would recommend that you hire a trademark attorney to possibly trademark your name. In addition, I would suggest you register your name as a domain name asap!

When Choosing a Business Name Also Perform a Trademark Search!

Hello!

When choosing to go into business, there are several imperative tasks you must accomplish to ensure you are legally compliant. They are:

1. legally organize your business with the Secretary of State's Office;
2. obtain a valid business license;
3. obtain a federal employee identification number and if needed a sales tax number;
4. claim and obtain a trade name (if needed);
5. claim and apply for a trademark

However, most new business owners never consider claiming and applying for a trademark until it becomes a necessity or someone else asserts claim to their trademark. For this very reason, I advise my client to:

1. do a preliminary search to ensure that a trademark right has not been claimed in the company's business name;
2. after a trademark search has been completed, and the business name appears free from trademark claims, immediately apply for state and federal trademarks.

In my legal opinion, it is imperative to perform a trademark search as soon as you choose a company name. Why? If you choose a name that already has priority trademark rights, and you have spent considerable funds establishing and growing the business, you may have to change your name. Ouch! In addition, if no trademark rights have been asserted in your company name, you would want to claim ownership of the trademark. Very often people tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!

A preliminary search on Google will cost you $0. However, to ensure you are not infringing another trademark owner's rights, a more comprehensive search can be done for $550. In my opinion, $550 is a small price to pay for a piece of mind.

I welcome your thoughts!

New Kindle Audio Feature: Is Text to Speech Reading essentially the Audio Book experience?

Hello!

I hope all has been well in your world!

As many of you may know, Kindle has added an audio feature that allows a user to click a button and the book is read aloud. Cool right? However, the Author's Guild, the organization that protects the rights of authors, has claimed that the use of the Audio function on the new Kindle is copyright infringement. Specifically, the Author's Guild argues Kindle was granted the use of copyrighted material for electronic reading only...not audio. To understand the Author's Guild argument, you must first have a working knowledge of the rights granted to a copyright holder under the U.S. Copyright laws. Those rights are as follows:

A copyright owner has the exclusive right to:


1. reproduce the copyrighted work in copies;

2. to prepare derivative works based upon the copyrighted work;

3. to distribute copies of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
US Copyright Act.

The Author's Guild argues the authors did not grant Kindle a right to create a derivative work (audio) of the electronic books. The right to create a derivative work basically means the copyright owner has a right to transform the original work into another medium. For example, transforming a painting into a sculpture; transforming a novel into a motion picture; or transforming a book into an audio reading (audio book). The Author's Guild's position is that the audio function of the new Kindle, that allows the book to be read aloud, is an audio version of the book and therefore a derivative of the original book. However, Kindle argues that the text to speech function is performed by software generated technology and is not the same as an audio book experience.

So the question is whether the text to speech function qualifies as an audio version of the books and therefore a derivative of the original work?

In my opinion, I would argue that the text to speech function is an audio version of the original work. Audio is defined as any human audible sound. Whether the sound is computer or software generated is of no consequence. Like audio books in which the original author reads the books aloud, the new Kindle Text to Speech feature accomplishes the same goal: the reader is allowed the experience of having the book read to them as opposed to reading it themselves.

Of course, the real issue here concerns revenue. If the text to speech function is determined to be an audio version of the electronic books, Kindle would have to pay the Authors an additional licensing fee for the audio function. Kindle may not want to pay this additional fee and the Authors want to make as much money as possible for their works. What does this mean for consumers? It means that we may not get the benefit and advantage of purchasing one electronic book and receiving an audio version or experience for free!

I guess we have to wait and see how this all plays out.

Facebook's Terms of Service Agreement

Hello!

Facebook announced their new Terms of Service (TOS) Agreement this week. The new terms had the blogosphere in an uproar. Basically, the new Facebook TOS Agreement stated that users gave Facebook a perpetual (forever) license to use any intellectual property (writings, photos, links, etc.) posted on Facebook as the company wished. This license was granted and remained in effect even if you, the user, deleted your account. The old Facebook TOS Agreement stated that the license terminated once the account was deleted. Basically thousands of users protested this new change and Tuesday Marc Zuckerberg, CEO of Facebook, announced that the old Facebook TOS Agreement would stand.

In this article, I will examine what is a TOS; why every website should have one; and understanding the legal implications of agreeing to a TOS Agreement.

What is a TOS Agreement?

A term of service agreement is a document that outlines the terms and conditions that a user must agree with to use the services of the Internet Service Provider (ISP). Agreement to an ISP's TOS Agreement is usually required before the user can access the ISP's website. However, these agreements are always long and riddled with legal terms which most users do not read or simply do not understand. As a result, most users agree to the terms without knowing exactly what they are agreeing to.

Why are TOS Agreements important?

Terms of Service Agreements are important because they do the following:

1. Outline the services provided.
2. Explain what type of content the user can download and share on the site.
3. Explain who owns content provided by the user or ISP on the site.
4. Outline the required conduct of users of the site.
5. Require that users comply with applicable laws and regulations.

However this list is not exhaustive. The above terms ensure that the ISP is adequately protected from certain claims by users of their service. It also protects other users of the service from claims and from conduct that is harassing, derogatory, or offensive. These terms definitely come into play when users post original content that they have created, i.e, intellectual property. Intellectual Property is owned by its creator. However, an owner of intellectual property can always license, sell, or transfer rights and ownership in the intellectual property. If an individual or entity uses another's intellectual property without their permission, the owner can assert a claim for infringement. Considering the potential legal claims for infringement, all ISPs have very extensive and iron-clad clauses regarding intellectual property posted on their sites. Usually the clauses contain the following terms:

"You grant the ISP a perpetual, royalty-free (no payment) irrevocable, non-exclusive license to use, reproduce and distribute your Content within the service.......You authorize third parties to use and reproduce your content." Second Life TOS.

In addition, in some cases the ISP can use your content in any or all media for marketing and/or promotional purposes in connection with the Service. Furthermore, some TOS agreements state that any intellectual property you post on their site is 100% owned by the ISP!

Usually if a user terminates the service with the ISP, these clauses are no longer in effect. Facebook briefly changed this term to state that they owned the content regardless of a user's termination. Why? Because of the nature of file-sharing that is commonplace on a site such as Facebook, Facebook can not control who has access to your intellectual property or how they use it. So once you terminate your relationship, Facebook may delete your account, but your content may still live on Facebook through file sharing.

What are the legal implications of the above clauses?

When agreeing to a TOS Agreement make sure you read the agreement and understand what you are agreeing to. Every ISP's TOS Agreement is not the same. For example, any intellectual property created or posted in Second Life is 100% owned by the user. However, when using virtual world sites such as Disney or Coca Cola, the TOS Agreement states that they will own any material created or posted by the user.

Essentially, if you want total control over your intellectual property either do not use the service or do not post any material that you do not want the ISP to use or retain as they wish. Crying foul after you have agreed to an ISP's terms and conditions will not disaffirm or erase what you have already agreed to.

I welcome your thoughts!

Malia and Sasha Dolls: A Right to Privacy and Right to Publicity Issue

Hello!

I hope all is well. Last week Ty Inc., the maker of the Beanie-Baby toys, introduced two dolls named Marvelous Malia and Sweet Sasha. The company stated these dolls were modeled after President Obama's daughters. Specifically, the company introduced the dolls to celebrate the new historic First Children. However, a few days after the debut of the dolls, First Lady Obama released a statement that she did not approve of the company's use of her daughters' name or likeness for marketing or commercial purposes. The company immediately retracted its earlier statement that the dolls were modeled after Malia and Sasha Obama.

So the questions are:

Do the Obama children have a Right to Privacy?

More importantly, do they have a right to control the marketing and commercialization of their likeness and image?


Right to Privacy.

There are four basic Rights to Privacy:

1. Protection from unreasonable intrusion upon the seclusion of another. For example a home or a car,

2. Protection from appropriation of a person's name or likeness (Right to Publicity). For example using a person's name or image on a product or service without their permission,

3. Protection from publication of private facts. For example, income tax data, family quarrels, medical treatment, school records, etc.,

4. Protection from publication of information that places a person in a false light.

Prosser, Restatement 2nd of Torts.

However, Public Figures do not have a Right to Privacy. Specifically, the law explains that where public figures are concerned, the newsworthiness or public disclosure of private information outweighs the right to privacy of the public figure. Why? These public figures have held themselves out for positions of public trust. We elect public figures to govern us and make decision regarding rules, laws, and regulations that affect our daily lives. So as citizens we need to know the character and factual activities of that public figure. However, the private information disclosed must be true and reported or printed without malice. So essentially, President Obama does not have a Right to Privacy. We are entitled to know as much information as possible about him and we are allowed to use his name or likeness, without his permission, on T-Shirts, Figurines, Books, and the like.

But it has been argued that children of public figures are private citizens and therefore enjoy all the four Rights to Privacy listed above. This fact is debatable. Some would argue that as children of the President, the Obama children lives are of public interest. Specifically, that they do have some level of power and influence on Society as daughters of the President. Children do want to buy the clothes they wear, copy their hairstyles, and attend a Friend School. Others would argue that the Obama themselves thrust their children into the public spotlight during the campaign. During the campaign we learned intimate details of their lives.

However, as minor children they do not have any control or power over how they are placed in the public arena or how they are perceived. So if they are private citizens, they have a Right To Privacy and ultimately a Right to Publicity. They should have control over how their image or likeness is used by others in the marketplace. In addition, they should have the right to profit monetarily from the marketing and commercialization of their images.

Regardless of whether we believe the Obama children are private citizens or public figures, the Ty Company should have approached the Obamas first before manufacturing and modeling dolls after the Obama Children. I think this simple approach would have saved both Ty, Inc. and the Obamas a lot of embarrassment.

I welcome your thoughts!

What PR Professionals Can Do to Protect their Intellectual Property

Hello!

Welcome Back! This year has started off with a bang and I have been busy. Recently I wrote a guest article on PR Professionals and Intellectual Property Law. This article helps PR practitioners identify their intellectual property and gives them practical tips on protecting it. Check out the article here. This article was written for Robin Caldwell of The J Standard PR Firm. She is an industry legend and is Amazing.

Introducing a new product online? Protect yourself against false advertising claims

Hello!

I hope all is well. Today I am going to discuss false advertising. Specifically, if you are a newbie to online advertising, how do you protect your business against false advertising claims?

Federal law prohibits unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce. 15 U.S.C. 45(1) Specifically, the Federal Trade Commission Act defines a false ad as one which is "misleading in a material respect." Sec. 12 FTC. Material misleading ads include:

1. false written or oral statements regarding a product or service;
2. misleading price claims or sales;
3. sale of hazardous or defective products or services without proper disclosure;
4. failure to perform promised services; or
5. failure to meet warranty obligations.
Firestone, 81 F.T.C. 398, 451-52 (1972),

When advertising or endorsing a product or service, a retailer or advertiser must be:

1. truthful at ALL COST
2. not deceptively misleading regarding the capabilities of a product or service, i.e., no embellishment
3. not unfair.

Of course, whether an advertiser's claim that a product will achieve the results advertised in some instances, may be subjective. For example, a face cream may achieve the desired results for one customer but not for another customer. The customer who did not achieve the results advertised may assert a claim for false advertising against the advertiser. How can an advertiser avoid such a claim?

An advertiser can protect itself from such a claim by placing very prominent disclosures on the advertisement. A disclosure for skin care may read like this:

Through clinical testing of "Said Product" skin achieved a more balanced and even skin tone within 12 weeks of use. However results may vary.

As stated, the disclosure must be prominent. So do not use small text and make sure the disclosure is in close proximity to your claim.

Although disclosures are a great defense against a frivolous false advertising claim, making purposeful false statements in ads can trigger legal action.

I hope this information was helpful. Leave a comment if you have any further questions.

Best

Happy New Year!

Hello!

Happy New Year! I hope your holiday break was wonderful! I am so excited to start the New Year. This is a very exciting time for Intellectual Property Law! There are some fantastic conferences on legal issues in new media that I am attending this year. Also I am very curious about the effect the newly created Intellectual Property Coordinator/Czar will have on IP issues in this new digital age.

In March I am attending another Practising Law Institute Conference which will focus on Intellectual Property law issues in Web 2.0. Specifically, the conference will cover:

Legal issues using mobile devices
Liability issues in social networks and blogs
Use of key words and meta-tags. I discussed these issues here.
The future of advertising and product placement.

I am particularly interested in the future of advertising and product placement as it relates to advertisers using social media and various new media platforms. I am so looking forward to this conference and can't wait to report back to you (my readers) about the cutting edge legal issues affecting your blogs, social networks, and other new media platforms.

Thank you for continually reading and supporting IP LAW 101. If there are any other topics you would like me to discuss, or if you have any questions, please let me know.

Best!