Domain Names Are Trademarks Too

Hello Friends:

I know I have neglected this blog, but I have been so busy working. In addition, I have experienced major life changes in the past six months.

But it is good to be back.  I am really excited about the new social media platforms and changes in the social media space in the past year.  Pinterest and Instagram are blowing up and with their popularity comes a host of issues and questions regarding copyright law.  Apple is still tangled in a battle for use of the iPAD name.  And, with the emergence of mobile apps and computing, privacy concerns are very real and immediate for consumers.

In the next few weeks, I will give insight on these legal issues and hopefully provide an understanding on how to protect your valuable intellectual property, your privacy, and tips on how to not infringe on other's IP.  So tune in and if you have any questions, please do email me at lgivens@phillipsgivenslaw.com.

Today, I want to talk about domain names.  As a branding strategy, always think of domain names as trademarks.  So choose a domain name carefully.  Domain names can be business names, product names, blog names, or tag lines.  All of these can be trademarks if they are unique to a product or service.  For example, my blog name is IPLAW101, which is also the domain name for the blog and is a trademark.  It is a trademark because it is unique in describing my blog's original content.  


Sometimes cybersquatters or trademark infringers may use a variation of an owner's domain name or an owner's actual trademark name in order to divert traffic from the owner's site or to benefit from the goodwill one has built from a good trademark.  If your domain name is also your trademark, you can pursue these infringers through cease and desist orders.  From my experience, cybersquatters and trademark infringers usually cease infringement or give up the rightful owner's domain name if they know further legal action is pending.


If you have any comments, please leave one.  


Until next time, 


Latoicha Givens

Edouard Lambelet Founder of Paper.li discusses Copyright Infringement and Fair Use with IPLAW101

Happy New Year!

I hope your New Year started off awesome and wonderful things happen for you in 2011.

Have you heard of the service Paper.li? Well it is the new rage on Twitter and it is beginning to take off. Paper.li allows users to organize links shared on Twitter and now Facebook into a newsletter style format. For example, a Twitter user can create a free paper.li account and designate specific Twitter users' links, usually based on subject or topic, into their own online newspaper. Sounds like a pretty amazing service. However, I observed that the newspaper does not only post the links to the content but a portion of the content published in those links. Sometimes the amount of content is a sentence or two. However, other times the service may publish a portion of content that equals a small paragraph.

I had an opportunity to interview one of the founder's of Paper.Li, Edouard Lambelet, regarding how the service works; benefits of paper.li; and possible copyright challenges. Below is what he had to say:


IPLAW101: Mr. Lambelet thank you so much for taking time out of your busy day to talk to IPLAW101 about paper.li.

Edouard: No problem. We enjoy talking to content producers. Content producers are the leaders in social curation and this is what our service is about.

IPLAW101: How did you come up with the concept of Paper.Li?

Edouard: We just wrote a blog post on this very question. On the blog we gave an in depth analysis of the need for paper.li. Paper.Li was created to fill the void in content curation. Basically, there is so much information being shared on Social Media platforms and it can be overwhelming. Paper.Li acts as a filter and organizes content by semantics and ranking. Through this system we are able to arrange content via topics and relevancy to the user.

IPLAW101: I have used the service and had my content re-published in other newsletters. I was a bit concerned about the amount of content that was published in the newsletter. The service re-publishes links but also a portion of content from those links. What is your reasoning behind re-publishing content and not just links to content? Are you concerned about Copyright challenges?

Edouard: Well the re-publishing of a small portion of the content contained in the links makes it easier for users to read and discern what content to read and in what order relevant to them. Also the re-posting of a snippet of the content provided by links is pretty much the standard now in social networking platforms. Twitter and Facebook are currently providing the same type of service to their users.

In addition, we do not re-publish links from private accounts on either Twitter or Facebook. We only re-publish links from public accounts.

IPLAW101: I think the difference in paper.li's service is that the user is able to create their own newspaper and acts as a publisher of the content whereas on Twitter and Facebook the user is freely sharing their content and links. So initially it seems as if the user may be publishing content without the owner's permission. I had a Twitter debate regarding paper.li and a fellow Twitter user suggested maybe your service can require users to send a link to content creators asking their permission to re-publish portions of their content. Have you ever considered making this an option with your service?

Edouard: Actually no. We have never received any complaints about the re-publishing of a portion of content via links. As a matter of fact, users have raved about the service because it boosts blog traffic. Users generally experience a tremendous boost in blog traffic.

IPLAW101: Yes, I have heard this from other Paper.Li users and they all are amazed about the jump in blog traffic.

Edouard: In addition, if a content producer does not want their content included in a paper.li newspaper, we do give them the option to opt-out of the service. Our goal is to be the leader in social curation and help users of share and consume content in an highly organized fashion.

IPLAW101: Thank you for your time.

Edouard: Thank you.

I really did appreciate Edouard giving me this interview at 10pm Paris time. He was very open to discussing the platform. Essentially his view is that the benefits of paper.li outweighs any possible copyright issues.

My take:

As I have previously discussed on this blog, copyright infringement occurs when:

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.

Paper.li's publishing of a portion of the copyright owner's work without their permission arguably falls under number 3 of the Fair Use exception, the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole. To be fair to paper.li, re-publishing only a couple of sentences may very well qualify as Fair Use. Plus the U.S. Courts have not been very definitive about what portion of a copyright work is Fair Use or Copyright Infringement. These cases are usually decided on a case by case basis. For example, a few sentences of an article may be copyright infringement if it contains the heart of the work. Harper & Row, Publishers, Inc. v. Nation Enters, 471 U.S. 539 (1985). In the alternative, a substantial portion of a work may be Fair Use if the use is a parody or criticism. Campbell v. Acuff-Rose Music, INc., 510 US 569 (1994).

So far the service has not received any challenges and user's find it beneficial to their blogs. Paper.li has over 2 million users and has just raised another $2.1 million in financing to expand the service globally. So paper.li is having a great deal of success. I will be watching to see how the service grows and deals with issues as they arise.

What is Fair Use and Intellectual Property 101

Hello:

I hope everyone had a wonderful Thanksgiving Holiday. This time of year is always busy for me because clients want to wrap up legal issues before the end of the year and I have a family that demands my attention with all the Holiday hoopla!

Currently, I am working on a very interesting story about what does copyright case law say about proper linking and quoting in regards to copyright infringement. What is Fair Use and what is not? As copyright owners, we do not want individuals quoting our work without our permission. However, service providers and news organization want to be able to provide 'snippets' or a portion of copyright protected material and links without always having to go to the copyright owner for permission. So I will explore in my article what does the law say about this delicate balance between copyright infringement and Fair use? Stay tuned, it will be a very informative and interesting piece.

Also, next week I am speaking to a momprenuer networking group about Intellectual Property 101! Yes, these ladies have some pretty genius products and business ideas and they want to know how to protect them. So I will explain the difference between patents, trademarks, trade secrets and copyrights; how to properly protect these types of intellectual property and the benefits of licensing and royalty income. I love educating individuals on Intellectual Property and am I am looking forward to it.

Thanks for reading!

Twitter's New Trademark Guidelines: Why Trademark Guidelines are Important

Hello Everyone:

Recently, Twitter revealed its new trademark guidelines regarding the proper use of the Twitter name and trademarks.

Some key terms of the new trademark guidelines are as follows:

1. When users promote their own Twitter accounts, they need to use the proper Twitter logo and ensure the letter "T" in Twitter is capitalized.

2. When mentioning Twitter on TV or any other public forum, users should refer to the company as Twitter and messages as Tweets. Also unless expressly given permission to do so, do not imply an endorsement or relationship with Twitter.

3. Users must not ever manipulate or change the Twitter logo. Furthermore, ensure the Twitter logo is not next to your logo to imply an association.

4. When developing Twitter applications, developers are now forbidden to use Twitter or Tweet in the name of the app.

5. Developers are also forbidden from copying the look and feel of the Twitter website in developing applications and websites.

Twitter's new trademark guidelines were necessary in order for Twitter to protect and manage its brand. Remember a trademark owner can lose trademark rights if the trademark is not controlled and managed. Specifically, a trademark owners has to:

1. Ensure the mark does not become generic (a common name for the goods or services and ceases to function as a source for the goods);

2. Ensure trademark infringers are prosecuted effectively and swiftly. A trademark owner that allows anyone to use their trademark without prosecuting infringers, has a weak trademark. A weak trademark is one that is no longer considered unique to the trademark owner's product or service.

Trademark Guidelines Assist in Brand Management

Trademark guidelines are first steps in alerting the public to the proper use of a company's trademarks and ultimately brand. They ensure the trademark is used properly; forbids impermissable uses or as Twitter states "the lawyers get involved"; and clearly gives direction as to when express permission or a license is needed for use.

Trademark Guidelines are especially important if your brand is entering a partnership with another brand or if your brand is used by multitudes of people.

Does your brand have trademark guidelines in place?

Facebook vs. Faceporn: Trademark Infringement or Copyright Infringement

Hello!

Recently, Facebook filed a lawsuit against the pornographic social networking site, Faceporn, alleging trademark infringement of its trademark, Facebook. Specifically, Facebook alleges the use of the mark, Faceporn, is "confusingly similar" to the mark Facebook and the use of the mark, Faceporn, is causing dilution of the Facebook brand.

Dilution

Dilution is a trademark infringement legal claim that can be asserted by famous brands. I have previously discussed Dilution here. Dilution occurs when a lesser known brand uses the mark of a famous trademark owner, and the use of the more famous mark by the lesser known brand, dilutes the distinctiveness of the famous trademark. Dilution can be asserted by famous trademarks even if the products or services are totally unrelated.

Although, Facebook is claiming the use of the Faceporn mark is diluting its brand via tarnishing its reputation, with the revision of the Dilution statute, the only thing Facebook has to prove is the use of the Faceporn mark will cause a likelihood of confusion between the two trademark among the relevant consuming public.

Likelihood of Confusion

The courts determine whether likelihood of confusion exists by balancing 8 factors. Those factors are: if the marks are similar in sight, sound, and meaning; the similarity of the goods and services sold; the similarity of the distribution channels and customers for the goods or services at issue; the sophistication of purchasers and the expense of the product or service at issue; the similarity of means and methods of advertising and promoting the goods or services at issue; whether there is evidence of actual confusion of consumers or other relevant groups; the strength of the mark; and was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark?

I think Facebook would have a hard time proving the trademarks were similar in sight, sound, and meaning. Facebook and Faceporn clearly do not have the same meaning. Furthermore, they really do not sound the same...book and porn. The only thing Facebook could possible claim is similar is the word "face" in both trademarks. But I do not believe that is similar enough. Next, Faceporn could certainly refute that Facebook and Faceporn have the same customers and/or distribution channels. Individuals looking for porn are not going to go to Facebook to find it. At least I don't think so. In addition, Facebook users seems to be very sophisticated consumers and would have enough intellect not to go to Facebook looking for or expecting to see the contents of Faceporn. Also, I am sure Facebook and Faceporn are not promoting their services through the same advertising and/or marketing channels. Lastly, I do not believe Facebook can prove actual confusion between both sites among their and Faceporn's consumers. Like I said earlier, people looking for porn are not going to visit Facebook attempting to find it and vice-versa.

However, I do believe the strength of Facebook's lawsuit against Faceporn lies in the last two factors. Clearly, Facebook, has a strong trademark. It is a unique term created by Facebook and was created to brand the number one social networking site. Also, Facebook could easily prove Faceporn created the trademark and site with the intent to copy the famous Facebook trademark. Specifically, Faceporn's site did have the same look and feel as Facebook. The logo was in the same type and font, the color scheme was the same and the layout was identical to Facebook's. I believe Facebook would have a stronger copyright infringement claim than a trademark claim. Clearly, Faceporn copied the layout and style of Facebook's site.

You can view a screen shot of the Faceporn site here. It has since been changed. But what do you think?

Speaking About FTC Rules and Ethical Blogging At Lavish!

Hello!

I have been neglecting this blog because I am so busy these days. Which is a good thing and I am not complaining.

So here is an update on my activities for the last month. I attended another social media conference, Blogalicious. It was a good time and of course I learned a few things. Most importantly, individuals are using social media in such creative and business savvy ways. It is amazing. There is a lot of intellectual property being created through social media and individuals have to become educated about protecting their intellectual property.

I was invited to speak at the Lavish Experience Conference. It is a conference conceived and produced by Shameeka Ayers of The Broke Socialite and focuses on the Lifestyle blogger. Lifestyle blogging is Big Big Business and mainstream media and corporations are taking note! I will discuss how to navigate offers of paid income to blog or advertise on beauty and fashion blogs while also adhering to the revised Federal Trade Commissions Regulations regarding disclosure of paid advertising and product endorsement on social media platforms. Yes disclosure is required on all blogs, Facebook updates, Twitter feeds, etc.

The conference will take place here in Atlanta, GA at Mansion Hotel from December 10-12.

If you can not attend, please follow my tweets on that day. My tweets will include all the good information you need!

Senate Bill Cracks Down On Online Infringement

Hello!

Last week, Senator Leahy along with a host of other co-sponsors, introduced SB 3804: Combating Online Infringement and Counterfeits Act. This Bill gives the Attorney General authority to seize domains of infringing websites if it is proven the sites are totally dedicated to Intellectual Property infringing activity. The Bill defines infringing activity as: websites that provide access or offer for sale unauthorized copies of copyright protected material or any website that sells or distributes good or services bearing a counterfeit mark in violation of a trademark's owner exclusive right to use the mark. Specifically this Bill is targeted to websites that sell counterfeit goods for luxury items such as designer purses, watches, jewelry and shoes.

This Bill also gives Internet Service Providers (hosting companies, domain registrar, etc.) the right to shut down the infringing site and provides immunity to the ISPs for doing so. The Bill also allows the Attorney General to prevent a website that is non-domestic from conducting business in the U.S. and prevent the importation of infringing goods and services. The Attorney General will also keep a list of infringing websites or domains available to the public via online.

Results?

As evidenced, Intellectual Property Infringement is rampant on the Internet. Intellectual Property owners spend considerable amounts of money defending their Intellectual Property through DMCA take down requests, cease and desist demand letters, TROs and IP Internet Monitoring Services. However, sometimes these efforts may stop infringers for a moment, but if they are highly organized, they re-group and infringe again. This is particularly relevant when it comes to counterfeit goods. This bill allows the Attorney General to combat online infringement at the source.

The Bill has been referred to Committe and should be up for a vote soon.

Do you think this is a step in the right direction in stopping online Intellectual Property Infringement?

Are Recording Contracts Works Made for Hire?

Hello:

In light of the recent decision in the Fifth-Six Hope Road Music Ltd (Estate of Bob Marley) vs. UMG Recordings, many Artist are worried that all of their sounds recordings are going to be classified as "works made for hire." Basically, the judge ruled in the Bob Marley case that all of his recordings with Island Records from 1973-1977 were "works made for hire" and Universal Music Group is the rightful owner of the copyrights to five recordings Marley recorded. Specifically, the judge determined that despite Marley's artistic control over the recordings, both parties had a contractual agreement that clearly indicated the Marley sound recordings were "works made for hire."

A work made for hire is defined as a work created by an employee within the scope of the employee's employment. A work made for hire can also be created by a contractual agreement between two parties. Because most recording contracts are classified as independent contractor relationships and not employer-employee relationships, recording contracts are not usually deemed as works made for hires. However, record labels are now adding work made for hire clauses into recording contracts and artists and artists rights organizations are up in arms.

Work made for hire clauses in recording contracts have serious legal implications for artists. If the sound recording is classified as a work made for hire, the record label can retain the copyright to the work and the Masters in the recording. As a general rule, the Artists retains the right to have the Masters returned after a ten year period. This gives the Artist control over licensing and other revenue that can be obtained from the Masters. In addition, there is also "termination of copyrights" to consider. Termination of copyrights assists artists who may have signed away their copyrights. After 56 years, the artist can recapture the copyright for the last 39 years of the 56 years. For example, a contract signing away copyrights entered into in 1950 can be terminated in 2006 and the copyright can revert (artist has to give proper notice of termination) back to the artist or original author of the work. However, termination of copyrights is not applicable if the work is specifically a "work made for hire."

It is evident that both record labels and artists have a lot of stake when it comes to work made for hire clauses. Artists should hire good legal representation to ensure their works are not classified as works made for hire. Especially if the artist has created the work indepedently and not as an employee.

I welcome your thoughts.

Twitter TOS: Does It Apply To Celebrities?

Hello Everyone!

I hope all is well.

A couple of weeks ago, I wrote a post on Black Web 2.0 about Twitter's Terms of Service Agreement and whether it applied to Celebrity Twitters. The article spread like wildfire on the web and I was kind of surprised. Read the full article below and tell me what do you think.



Over the past week Hip-Hop artist, 50 Cent, took control of his Twitter account and went on a tweet rampage. He threatened to kill people, posted pornographic images, issued defamatory statements against other artists, and also made racist statements. His Twitpic account was suspended due to the pornographic images. But his Twitter account is still up and running.

If that weren’t enough, last Sunday, Denver Nuggets forward, Carmelo Anthony and his wife Lala got into a Twitter fight with exhibitionist Kat Stacks. Allegedly, Carmelo offered $5000 cash to anyone who would physically harm Kat Stacks. He also allegedly threatened her with physical harm. As a result Stacks has filed charges against Anthony.

Is Twitter becoming the wild, wild west of social networks? Twitter does have “Twitter Rules” in their Terms of Service Agreement that outlines Rules of Content for posted content. Specifically Twitter prohibits:

1. Impersonation

2. Trademark Infringement

3. Violation of Privacy

4. Violence and Threats

5. Copyright Infringement

6. Promotion of Illegal Activities

7. Spam Abuse

But considering 50 Cent’s Twitter account is still up and running and other Tweeters are also guilty of violating Twitter’s Rules of Conduct, does Twitter actually enforce these rules? Twitter states “we do not actively monitor user’s content and will not censor user content, except in the above limited circumstances.” Twitter basically covers themselves with this statement and considering the millions of users on Twitters, it makes sense. But is Twitter motivated to take action against violaters, especially if they are celebrities and have millions of followers like 50 Cent? The rapper even bragged that @ev (Evan Williams), co-founder of Twitter, gave him a call and said he was the best thing that happened to Twitter. This may or may not be true, but it is an interesting statement.

Carmelo Antony’s Twitter account was deleted but we don’t know if Twitter deleted his account or the NBA forced him to delete his account. His statements to Kat Stacks are a federal crime and if proven he did in fact make the statements from his computer or mobile device, he could potentially face jail time and suspension from the NBA. Carmelo and his wife are now claiming his Twitter account was hacked and he did not send the criminal tweets.

Whether Twitter enforces its Rules of Conduct are debatable. However, when Tweets are written and sent, they are forever in cyberspace regardless of whether the user deletes the tweet or their Twitter Account. Tweets are public records and can be used as evidence in any civil or criminal litigation. I previously wrote a post on the Do’s and Dont’s of Twitter. Many of those Do’s and Dont’s included several of the above Twitter Rules. But regardless if Twitter kicks violators off Twitter or not, engaging in “Dont’s” can get you sued, jail time, and fines.

So be careful what you tweet. When in doubt, just don’t.
Category: Featured, Social Networking | Tags: 50 Cent, black web 2.0, Civil Litigations, Criminal conduct, Defamation, Federal Crimes, IPLAW101, Kat Stacks, La La and Carmelo Anthony, NBA, Phillips Givenslaw, Pornography, terms of service agreements, Threats, twitter, Twitter Rules of Conduct, Violence

Madonna Sued for Trademark Infringement for Material Girl Collection

Hello Everyone!

Trademark infringement lawsuits are plentiful. Pop Icon, Madonna, is currently being sued by apparel manufacturer, LA Triumph, over the use of the trademark "Material Girl", the name of Madonna's new teen clothing line. L.A. Triumph claims it has used the "Material Girl" trademark in commerce since 1997. The company further stated, it has used the trademark in the same classification as Madonna, which is junior clothing. Apparently, both lines offer similarly styled clothing which is reflective of the 80s era.

Who Has Priority Trademark Rights

I did a search for Material Girl on the USPTO Trademark database website and Madonna's company, Material Girl Brand, LLC, filed for the trademark "Material Girl" in the clothing and accessory classifications based on intent to use. The application was published for Opposition (meaning another company can assert priority trademark rights and have the application denied) on July 20, 2010. Then there is L.A. Triumph, which does not have a registered trademark or pending trademark application with the USPTO, claiming it has been using the mark in commerce (offering goods for sale to the public) since 1997.

As I have previously discussed on this blog, an unregistered trademark, has priority rights, if the mark is used first in the region the mark originated. If it is proven L.A. Triumph did actually have a viable junior clothing line using the trademark "Material Girl" since 1997, then L.A. Triumph can assert trademark infringement in its region: the West Coast. Madonna could possibly still use the mark in other parts of the country, but of course that would be near impossible as the clothing is offered nationwide in Macy's stores.

Did Madonna's team do a thorough trademark search?

The answer to that question is not known. Either her legal team did not perform a good comprehensive trademark search and did not discover L.A. Triumph's prior use of the "Material Girl" mark. Or the search was valid and because of L.A. Triumph's non-use of the mark, could not be found. We just do not know the answer to that question yet.

Resolution

Madonna could fight L.A. Triumph regarding the use of the "Material Girl" trademark or she could settle. I predict she will settle because millions of dollars have already been spent manufacturing, marketing the clothes, and distributing the line. So a quick resolution is in the best interest of Material Girl Brand, LLC. A settlement could include either the purchase of the trademark rights outright or an agreement to some type of licensing fee.

I am looking forward to the outcome of this case.

Pillsbury Doughboy vs. My Dough Girl: Is it trademark infrigement?

Hello Everyone:

Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.

Are the marks too similar?

Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.

Similar Doughboy registered trademarks

Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.

What is next for My Dough Girl

Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.

Blogher 2010: Mastering Intellectual Propery Law on the Internet Session Recap

Hello Everyone:

As some of you know, I co-presented a presentation at Blogher 2010 entitled Mastering Intellectual Property Law on the Internet and other legal issues in cyberspace. My co-presenter was Wendy Seltzer of the blog ChillingEffects.org. She is a Berkman fellow and law school professor. She specializes in copyright, fair use, and other legal issues in cyberspace such as first amendment and privacy issues.

We covered four main topic areas. They were: Protecting your own Intellectual Property, Respecting others Intellectual Property, Privacy, and Defamation on the Internet. We tag teamed all topics and had so many detailed questions we actually ran over our allotted time. Apparently this is a much needed topic for social media enthusiasts.

When discussing protecting intellectual property, we specifically covered how to protect copyrights, trademarks, and trade secrets. We also discussed why owners of these types of intellectual property should protect them. One reason is because owners of intellectual property can lose out on valuable royalty or licensing income if not protected. No one wants to lose money!

Next we discussed how to respect others intellectual property and not infringe their works. We explained when it is permissible to copy without permission in certain Fair Use circumstances. Wendy explained in detail proper linking, the DMCA take down procedure, and creative common licenses.

I then gave a general overview of Privacy issues. I explained the need for every website or blog to have a basic privacy policy which is a disclosure document. A privacy policy protects the owner of the site and the user. Read my article on Privacy policies here.

Lastly, we both touch on Defamation and how to avoid defamation on the Internet. We also discussed the Communications Decency Act which states website owners or internet service providers are not liable for defamatory statements left by visitors.

If you are interested in seeing the notes or hearing the audio from this presentation, please click here.

Is Google Winning the Battle in Key Words Advertising Litigation?

Google may have won the battle in Europe in regards to allowing advertisers to purchase trademarks as key words in their Google Ads program. Recently, the highest court in France found Google not liable for trademark infringement in the Google vs. LVMH case and referred the case back to the France Court of Appeals.

Previously, the lower court ruled Google was liable for trademark infringement for this practice. I previously wrote about this practice here. Basically Google allows a competitor of a company with a well established trademark like "Catepillar", to purchase the trademarked "Catepillar" as a key word. When a search is executed for the competitor company on Google, the competitor's link may show up before "Catepillar's" own link. Doesn't sound fair, does it? Many companies have either complained or sued Google for this practice and the courts have been split. In the U.S. one circuit agrees it is trademark infringement, while another circuit disagrees. However, in Europe, Google seemed to be having a harder time defending this practice as the courts have pretty much sided with the trademark owners.

The French lower court concluded a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products. I previously covered this ruling here. However, the higher court disagreed.

Where does this leave Google? Well Google feels like this decision was in their favor and believes and I quote "All cases which get ruled upon by the French Supreme Court go back to the French Court of Appeal as matter of course," Ben Novick, a Google spokesman said. Google further argues, "The French Court of Appeal will need to apply the law as laid down by the Cour de Cassation today. The Cour de Cassation has ruled that Google is not guilty of trade mark infringement, unfair competition or misleading advertising. All else is 'ifs' and 'buts."

However, LVMH feels differently. They welcome the case being remanded to the Court of Appeals and believes the French Court of Appeals "will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization. The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton"

It will be an interesting outcome.

The Importance of a Website Compliance Program

Hello Hello!

I have been somewhat absent on this blog but that is going to change. My goal is to recommit to posting weekly on this blog. Thank you for continuing to read and visit this blog.

Today I am going to discuss the importance of an effective website compliance program. Website owners should ensure employees and users of their websites are not exposing them or their companies to liability by posting items that are illegal, defamatory, or infringing. A perfect example of a website that did not have an effective website compliance program is Blogetery.com. Two weeks ago, web host, Burst.net, shut down the Blogetery website, a platform that hosted 70,000 blogs. Why? The FBI contacted Burst.net and informed the company that an FBI investigation revealed the site's server contained terrorist threats and Al-Queda activity. There was only one blog in the platform that engaged in the illegal activity, but Burst.net chose to shut down the entire site because it violated the Terms of Service Agreement. Blogetery.com could have avoided termination of its services/website if they were ensuring all blogs posted on the blog were complying with applicable laws and Terms of Service.

What does a website compliance program look like?

A website compliance program involves content scanning and analysis to help ensure compliance with privacy rules, industry regulations, (such as HIPAA) as well as internal Web quality standards such as defamatory statements and infringing activity. A company can hire one or two people dedicated to ensuring all content posted is in compliance or a company can purchase website compliance software that will do the job.

For example, a website such as Blogetery.com, which hosted 70,000 blogs, should install website compliance software to ensure compliance. It would take an army of individuals to effectively ensure a site that large was in compliance. However, a smaller website or blog, can simply have one person dedicated to identifying potential liable information and removing it immediately. This person may also have the authority to issue the offender a warning and/or permanently block the offender from the site.

There are several website compliance software programs available. They can be programmed and tailored to fit each website's needs. Here are a few:

IBM Rational Policy Tester

Trace Security, Website Compliance Audit

Does your website have some sort of compliance program or procedure in place?

Rising Recording Artists and Producers: How to Properly Clear a Song?

I have been absent from this blog because I have been extremely busy working and writing for other publications and my own personal blog. But every week, visitors come to this blog to receive good information about Intellectual Property and I am grateful. I hope to update this blog more often. Thank you for continually reading and supporting this blog.

Popular recording artist Drake and his record labels Cash Money, Inc. and Universal Music Group, Inc. are currently being sued for copyright infringement for allegedly using a song as a sample without the copyright owner's express permission. If the allegations are proven true, I can only conclude that someone on Drake's production team either did not understand the process of clearing a song or simply did not follow through with the process. In my practice I have represented recording artist and producers and the clearance process can be one of frustration and confusion for an artist. Therefore it is important that artists' representatives are diligent in ensuring their clients are not committing infringement when creating art.

The clearance process is relatively simple but can be complex for numerous reasons. They are:

1. The copyright owner is not available,
2. The copyright owner refuses to give permission to use the work,
3. The copyright owner demands an excessive royalty,
4. The need to get permission from multiple copyright owners of one song.

For artists who are not represented, here are a few simple tips in clearing a song:

1. Search the U.S. Copyright Office database to locate the owner of a song. All copyright registrations require the owner to list their contact information.
2. If the copyright owner is not available, search the databases of ASCAP, BMI, or SESAC to properly locate the publisher or copyright owner.
3. Send a request to use the song and an offer of royalties in writing.
4. Follow-up the letter with a phone call.
5. Negotiate an acceptable royalty rate to use the song.
6. Get a licensing agreement in writing.

If the publisher or copyright owner refuses to negotiate or allow use of the song, the only remedy is to choose another song and get clearance. It is the copyright owner's right to allow use of their work as they see fit.

When and How to use Licensing Agreements

Intellectual Property is just that — property. It is a very valuable asset to the owner. It can be brought and sold, used as leverage, and licensed. Licensing Intellectual Property is a great source of income for IP owners. Licensing Intellectual Property serves two purposes for the IP owner: It provides valuable income and a way to further market and grow the owner’s business or IP in the market place.

An IP owner should seek or approach a potential licensee in the following circumstances:

1. If the potential licensee is an infringer. An IP owner can make it a win/win situation for both parties. The IP owner can receive income for the infringer using the owner’s IP. Also, the IP infringer gains the reputation of the IP owner and becomes a licensee rather than an infringer. Both parties can now make satisfactory income from the arrangement.

2. The IP owner wants to expand its product or services. By licensing the IP to like-minded licensees, the IP owner can expand its brand into other geographic areas or markets. It also allows the IP owner to expand its customer base.

How to License IP

1. First make sure you own the IP you want to license. An IP owner will need to prove to the licensee that the IP owner has rights to the Intellectual Property. Evidence can be demonstrated by USPTO and Copyright Registrations. In addition, if the IP owner acquired the IP from another owner, a transfer of ownership agreement should be presented.

2. Determine the value of the IP. IP Licensing fees can range from 1 to 20 percent of the sales of the licensee. The royalty fee or licensing fee depends on the value of the IP. If the IP is unique, the licensing fee is higher. If it is common, it is much lower. An IP owner can hire an IP agent to determine the value.

3. An IP owner should ensure that they receive a minimum licensing fee regardless of the licensee’s sales. This will ensure the IP owner receives compensation for their IP regardless of the licensee’s sales.

An IP owner should hire a IP attorney to draft an effective licensing or royalty agreement to ensure the agreement protects the IP owner’s interest. The agreement will include such particulars as how the IP should be used or displayed. The brand has to be communicated correctly so it does not use its value.

Theft of Trade Secrets: Apple, Gizmodo, and Apple Software Engineer

By now everyone has heard that Gizmodo's Editor, Jason Chen's, home was raided by authorities last week. The police seized computers and servers in an effort to ascertain how he obtained the stolen i-Phone 4G prototype phone. Gizmodo admitted they paid $5000.00 for the unreleased prototype and refused to reveal their source. The knew the phone was stolen and yet they still displayed and discussed the unreleased i-Phone 4G prototype on their website.

Of course Apple did not take their actions too kindly and promptly launched an investigation. Chen and Gizmodo are claiming the search warrant was unlawful because he deserves reporter's privilege. However reporter's privilege has never extended to a reporter who knowingly commits a crime or aids and abets in the commission of a crime. They are many arguments regarding what type of crime was committed by Chen, Gizmodo, and the employee that "allegedly" left the phone at a bar. However, I argue that Apple has every right to pursue prosecution based on California Law concerning "Theft of Trade Secrets."

Trade Secrets

Trade Secrets are a type of intellectual property. A trade secret can be 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
6. Prototypes
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.

Apparently Apple is upset that Gizmodo has exposed company's trade secrets of the prototype. Of course if Apple's competitors have been watching surely this exposure lessens Apple's competitive advantage over the competition. But knowing Apple, they will simply raise the stakes and change the design.

Consequences for Theft of Trade Secrets

Under California Law, the acquisition by improper means of trade secrets (meaning by theft, bribery, or breach of duty to maintain secret) is a punishable criminal crime and civil liability. California Civil Code Section 3426.1-3426.11 California law also holds the receiver of a trade secret liable if the receiver "knew or should have known" that the alleged wrongdoing was occurring. California Civil Code Sec. 3426.1(b).

Clearly Chen and Gizmodo knew that they had received the i-Phone 4G prototype, unlawfully. Therefore according to California Statute they are guilty of Theft of Trade Secrets.

In addition the California Penal Code states Theft of Trade Secrets is a crime and punishable by imprisonment in state prison or county jail not to exceed 1 year. California Penal Code Sec. 499 (c). I gather this is why the authorities raided Chen's home in an effort to ascertain whether they have enough evidence to prosecute Chen under this code.

One thing is clear. Apple has put the public on notice that they are not tolerating any such leaks in the future.

Elan Requesting Ban on Imports of Apple’s iPAD

Elan, a touch-pad manufacturer, petitioned the United States International Trade Commission requesting the Commission ban all imports of Apple’s new iPad. Elan and Apple are currently involved in patent infringement litigation regarding the “touch-pad” function of Apple’s iPhone, iPad, iPod Touch, and Apple’s line of MacBooks. Elan has alleged that Apple used two of the company’s patents for “touch-pad” technology without their permission and refuses to properly compensate the company for creating the technology. Apple is denying the allegation and is also counter-suing Elan for infringing three of its patents for “touch-pad” technology.

Ban on Imports

Although Apple is an American company, all of its products are manufactured by two Chinese IT solutions companies, Foxconn and Inventec. Apple contracts with these Chinese manufacturers to produce their product and they in turn ship the products back to the U.S. for sale.

U.S. International Trade Commission

The International Trade Commission is a independent organization that “with broad investigative responsibilities on matters of trade. Among other things, the Commission also adjudicates cases involving imports that allegedly infringe intellectual property rights.” If the International Trade Commission determines that Apple violated Trade Laws by importing infringing products, the Commission could ban all Apple “touch-pad” technology into the U.S.

What’s Next

I doubt the International Trade Commission will issue such a ban on Apple’s “touch-pad” products. Both Elan and Apple are claiming patent infringement and are entrenched in patent infringement litigation. I think the International Trade Commission may await the result of any settlement or court decision before making such a decision. I think we all have to wait until the dust settles on this one.

Net Neutrality: Good or Bad Public Policy

Hello:

Here is a reprint of an article I wrote over at Black Web 2.0. It is gaining a lot of buzz. What do you think of Net Neutrality.



There is a lot of buzz surrounding Net Neutrality. Consumers want to know how it affects them in regards to their Internet service. In this article, I will attempt to explain Net Neutrality in plain terms and further explain what is means for you, the consumer.

Net Neutrality

Net Neutrality is the principle that everyone regardless of wealth, power, or influence should have the same access to the Internet.

Does everyone have the same access to the Internet?

Apparently not. The Federal Communications Commissions imposed sanctions against Comcast when it discovered the cable giant discriminated against peer-to-peer networking file traffic in an effort to restrict bandwidth usage demand on its broadband network. Comcast is appealing this decision. Consumers have also alleged the principle providers of broadband service, are charging a premium to consumers who require faster connections, better quality of service, and larger bandwidths to transmit data.

Federal Communications Policy regarding Internet Freedoms

The FCC imposed sanctions against Comcast based on the Four Internet Freedoms enacted in 2005. Due to numerous consumer complaints and vocal opposition from the cable industry, last fall, the FCC included two more rules to round out the set. They are as follows:

1. Consumers are entitled to access the lawful Internet content of their choice.
2. Consumers are entitled to run applications and use services of their choice, subject to the needs of law enforcement.
3. Consumers are entitled to connect their choice of legal devices that do not harm the network.
4. Consumers are entitled to competition among network providers, application and service providers, and content providers.
5. Broadband providers cannot block or degrade lawful traffic over their networks, favor certain content or applications over others and cannot “disfavor an Internet service just because it competes with a similar service offered by that broadband provider.”
6. Broadband providers must be transparent about the service they are providing and how they are running their networks.

The FCC announced their intention to formally adopt all 6 rules that will become the FCC policy on Net Neutrality. The Commission requested public comment and debate regarding the proposed rules and will make its final decision this year.

How Does Net Neutrality Affect the Consumer?

Net Neutrality benefits the consumer because the consumer will be confident they can use the Internet at an affordable flat rate without having to pay for faster connections or more bandwidth. Also consumers can rest assured that if they are using a large amount of bandwidth, the cable operators would not be able to block their Internet access.

Net Neutrality particularly affects business consumers who offer VoIP, downloadable movies, gaming and other services that require a great deal of bandwidth. These business consumers argue that Net Neutrality is needed so they can effectively compete with Cable operators that may offer the same services.

How Does Net Neutrality Affect Cable Operators?

Of course, cable operators and other Internet Service Providers are against Net Neutrality. The cable operators argue they have to charge a premium for better quality of service (faster connections, larger bandwidth). Understandably, the Cable operators argue that they will not be able to invest in better networks and connections if they cannot charge a premium to those who “tax” the broadband system. They also contend that Net Neutrality will stifle competition and result in higher flat rates for consumers.

The bottom line is that there needs to be some type of balance regarding Net Neutrality Rules. Yes the Internet should be open and non-discriminatory. However, providers of broadband and other Internet services should be able to charge a bit more for consumers who tax their service.

IPLAW101 Listed as 1 of 20 Twitters to follow on theGrio a NBC Universal Company

Hello Everyone!

Good news! IPLAW101 was listed as one of the 20 Twitters you should follow on Twitter! Thanks to theGrio and BlackWeb20.com. Check out the slide show of the 20 influential Twitters here.

theGrio is a a video-centric news community site devoted to providing African Americans with stories and perspectives that appeal to them but are underrepresented in existing national news outlets. It is affiliated with MSNBC.com and is owned by NBC Universal. Black Web 2.0 is is the premier destination for African-American’s in Technology and New Media.