The slides in this presentation were used to
accompany a talk given on January 20, 2010.
Neither the information contained on these slides,
nor the accompanying talk and/or recording thereof
construe legal advice. No attorney/client relationship
is formed through the viewing of these slides nor
listening to any audio recording of the talk. If you
have questions regarding the intellectual property
rights you or others may have, please contact an
Intellectual Property consists of:
– Trade Secrets
These various components are treated VERY
differently under the law, even though
multiple IP components may apply to a single
The economic right given to creators of
literary and artistic works.
Includes the rights to:
Reproduce the work
Perform or display the work publicly
Copyright holders have the right to…
…stop other parties from…
1. making copies of the work.
2. making changes to the work or creating new
works based on the original work.
3. distributing the work.
4. publishing the work.
5. licensing the work to others.
6. otherwise exploiting the work.
How does protection attach? The copyrighted material must be
– fixed in a tangible medium of expression
– The result of some creative effort
This Power Point presentation vs. the talk itself
State and federal levels- common law protection attaches as soon as
fixed, states provide protection, but federal registration is best
No duty to enforce infringement-- copyright holders have the choice to
enforce or not enforce infringement and, unlike trademark and patents,
do not risk losing their rights by not prosecuting infringement
What is not protected by Copyright?
Ideas are NOT subject to copyright protection
Things in the public domain
– Time of creation
– Improper copyright notice
Not a straightforward determination
Trademarks are commercial source indicators, distinctive signs
that identify certain goods or services produced or provided by
a specific person or enterprise.
Benchmark for protection is USE- common law protection-
geographic area; some states have protection but provides little
more than common law.
– Federal registration is the best protection- requires a trademark
search, publication with a period for contests to the issuance of the
Must prosecute infringement of trademark or risk
losing the mark yourself!!
An Example of Copyright AND
The gold-colored top of the New York Life
building is in the public domain and anyone
can photograph it. However, that image also
functions as a trademark for the New York
Life Company, and a competing company
could not use the image as a representation
of their company’s goods or services..
The exclusive right of the inventor to prevent
others from making, using and selling a
patented invention for a fixed period of time
in return for the inventor's disclosing the
details of the invention to the public.
Any information that may be used in the
operation of a business and that is
sufficiently valuable to afford an actual or
potential economic advantage.
Examples: Formula for Coca-Cola;
compilations of information that provides a
competitive advantage (customer
databases), advertising strategies
Popular Myths and Misconceptions
If I mail something to myself, I have
successfully registered “the poor man’s”
It’s okay to use something if:
– I use less than 8 seconds;
– I change 40% of it;
– I’m not selling it;
– I’m not making any money;
– I say where it came from/ link to it.
What is it? Besides misunderstood and incorrectly applied, that is….
Fair Use is a LEGAL DEFENSE
– That’s right, a LEGAL DEFENSE, which means you could be right, but
you’re already in court spending money, to prove it.
Fair use is any use of copyrighted material done for limited and
“transformative” purpose without permission of the copyright owner.
Transformative use: This is vague and ambiguous. Many have spent
billions trying to define this is legal actions. There are 2 main
– Comment and criticism
Fair Use is determined by a 4 factor test.
Comment/Criticism and Parody
If you are commenting on or critiquing a copyrighted
work – for instance, writing a book review -- fair use
principles allow you to reproduce some of the work
for your purposes.
– Quoting a few lines from a Bob Dylan song in a music
– Copying a few paragraphs from a news article for use by a
teacher or student in a lesson
Parody is a work that ridicules another, usually well-
known work, by imitating it in a comic way. Unlike
comment/criticism, fairly extensive use of the work is
allowed to “conjure up” the original.
Measuring Fair Use: The Four Factors
The only way to get a definitive answer is to
have a court evaluate these four factors:
The purpose and character of your use;
The nature of the copyrighted work;
The amount and substantiality of the portion
The effect of the use upon the potential
And along comes technology…
Let’s stick with Fair Use for a Minute:
– Fair Use is a Legal Defense
– Does not say there is not infringement but that the
infringement is permissible.
Infringement Claims Often Come Down
– He’s So Fine v. My Sweet Lord
– Spielberg stole my screenplay
– Tom Petty v. Chili Peppers
Todd Perry v. Chili Peppers
Digital Millennium Copyright Act
In 1998 the DMCA was passed mainly creating:
Makes it a crime to circumvent anti-piracy measures built into most
– Outlaws the manufacture, sale, or distribution of code-cracking devices used to
illegally copy software.
– Does permit the cracking of copyright protection devices, however, to conduct
encryption research, assess product interoperability, and test computer security
systems. Provides exemptions from anti-circumvention provisions for nonprofit
libraries, archives, and educational institutions under certain circumstances.
In general, limits Internet service providers from copyright infringement
liability for simply transmitting information over the Internet.
– Service providers, however, are expected to remove material from users' web
sites that appears to constitute copyright infringement. Limits liability of nonprofit
institutions of higher education -- when they serve as online service providers and
under certain circumstances -- for copyright infringement by faculty members or
States explicitly that "nothing in this section shall affect rights, remedies,
limitations, or defenses to copyright infringement, including fair use..."
Where Does Software Belong?
Another example of overlap, but not in the
Nike Swoosh, Coca-Cola formula way.
Initially software was deemed to be not in the
purview of copyright- it was a process and
kicked to patent
RAM makes a copy, so fixed
Code itself is written expression
Eventually we got back to copyright
Major problems for software creators who
tried to sell their new software/ applications
Reps and Warranties violations that caused
many deals to fall through
DMCA: ISP Liability
ISP’s are only liable if it knows one of its
subscribers was using its system to infringe.
However, the DCMA allows copyright holders
to ask that an ISP’s remove access to
copyright infringing material if the copyrighted
material is made available through the ISP.
Trying to Make Sense of Law and
Following are some more examples, based
on cases that have formed the foundation of
law as it deals with new technology, to show
how the law is attempting to keep up.
Copyright: Music was the Canary
When software became readily available to
make perfect copies of music, services such
as MP3.com, Napster, Kazaa and Limewire
sprung up. The RIAA is the organization for
the music industry who polices the world
attempting to thwart music pirates. The RIAA
fought against companies and people as well
as lobbied the government to try and curb
Trademark: Internet Infringement
Consumer Confusion: Courts will usually prohibit trademark
uses where consumers are likely to be confused because two
marks are similar and used in the same channels of trade.
Playboy v. Calvin Designer Label: Playboy sued the defendant
for trademark infringement, claiming that the defendant used its
PLAYBOY mark as a metatag on its website. The court granted
Playboy a preliminary injunction after finding such use created
a likelihood of confusion in the marketplace.
However, use of a logo to criticize a good or service is allowed
because it doesn’t create a likelihood of confusion. Bally’s gym
sued for use of their logo on a website saying Bally’s Sucks.
Trademark: Deep Linking
Linking, and even deep linking has been found
acceptable under trademark law. However,
sometimes, a link is constructed in such a way that it
confuses or misleads the user by implying that the
linked sites have an affiliation, such as endorsement
Tickets.com provided information about sporting
events. The deep linked to Ticketmaster’s site to
buy tickets to that event. This was ruled ok but the
court noted, if a link causes a likelihood of confusion
as to the source or sponsorship, the linking can
constitute unfair competition.
Cybersquatting, according to the United States federal law known as the
Anticybersquatting Consumer Protection Act, is registering, trafficking in, or
using a domain name with bad faith intent to profit from the goodwill of a
trademark belonging to someone else. The cybersquatter then offers to sell the
domain to the person or company who owns a trademark contained within the
name at an inflated price.
People for Ethical Treatment of Animals v. Doughney: In 1995, Doughney
registered the domain name peta.org for the fictitious organization "People
Eating Tasty Animals." The website contained links to over 30 sites including
some that promoted the sale of leather goods and meats. At the bottom of the
page, the website inquired "Feeling lost? Offended? Perhaps you should, like,
exit immediately" and provided a link to the actual People for the Ethical
Treatment of Animals website. PETA requested that Doughney transfer the
domain name, but Doughney refused. The court found for PETA because the
peta.org site was used in commerce and not a parody. It prevented consumers
from reaching the People for Ethical Treatment of Animals website and it
contained links to commercial sites.
Trademark: Communicative Use
Using a trademark is sometimes necessary for
Terri Welles was Playboy Playmate of the Year in
1981. Her site contained that fact along with the
logo PMOY ’81 as a watermark. The site also
contained a disclaimer stating Playboy hadn’t
endorsed the site. Playboy sued but lost because
the court found the use was fair use because it fairly
described and identified Ms. Welles. The court also
noted there was no evidence of actual consumer
Protect Yourself Content You Create
Although copyright is automatic (no steps are
required to create a copyright), in order to
insure the greatest level of protection you
– Include a copyright notice on your work.
– Register your work with the U.S. copyright office
Before 1989, a published work HAD to
contain a valid copyright notice to receive
protection under the law. But this
requirement has been removed.
HOWEVER, it is still important to include a
notice. When a work contains a valid notice,
an infringer cannot claim in court that he or
she didn’t know it was copyrighted. Plus it
How to register your work
Registering a copyright is a simple process:
– Fill out the appropriate form for the type of work
you are registering.
– Enclose a deposit of one or two samples of the
work (depending on what type of work it is)
– Pay the fee per registration (if you are registering
several works that are part of one series, you may
register the works together as a group
registration). New: $55 if online registration.
Take Down Policies
If you use social media sites, including You Tube,
Twitter, Facebook, etc., all have a link to their
Take advantage of the take down policy if your work
appears without your permission on another site.
Some of these policies, like Facebook’s, are forms
that were produced under the DMCA.
Always there is a formal process, which protects the
site and its owners.
DMCA: Takedown Procedure
Here's an example of how a takedown procedure would work- a little retro:
Alice puts a copy of Bob's song on her AOL-hosted website.
Bob, searching the Internet, finds Alice's copy.
Charlie, Bob's lawyer, sends a letter to AOL's designated agent (registered with the
Copyright Office) including:
– contact information, the name of the song that was copied, the address of the copied song, a
statement that he has a good faith belief that the material is not legal, a statement that, under
penalty of perjury, Charlie is authorized to act for the copyright holder, his signature .
AOL takes the song down.
AOL tells Alice that they have taken the song down.
Alice now has the option of sending a counter-notice to AOL, if she feels the song was
taken down unfairly. The notice includes
– contact information, identification of the removed song, a statement under penalty of perjury
that Alice has a good faith belief the material was mistakenly taken down, a statement
consenting to the jurisdiction of Alice's local US Federal District Court, or, if outside the US, to
a US Federal District Court in any jurisdiction in which AOL is found, her signature
AOL then waits 10-14 business days for a lawsuit to be filed by Bob.
If Bob does not file a lawsuit, then AOL may put the material back up.
Bring It! But Where?
With online commerce reaching everywhere,
there is no longer quite the fear that having to
file an infringement claim against someone in
Montana will have you and your attorneys on
the next plane.
– Sufficient minimum contacts;
– Long arm statutes
Protect Yourself: Using the Content of
Some easy steps
Using work you have permission to use is
another way to avoid copyright problems.
– Determine if permission is needed
– Identify the owner
– Identify the rights you need
– Plan ahead for permissions
– Negotiate whether payment is required
– Get it in writing
Determining if permission is needed
Is the material protected under IP laws?
Would your use constitute a violation of law?
What is the risk of not asking for permission?
Identifying the owner
Indentifying the owner is crucial and usually
easy. It is usually part of the copyright
However, different mediums and industries
have different practices. Photographs are
often owned by stock photo houses, sound
recordings by music publishers, etc.
Identifying the rights you need
Exclusive vs. Nonexclusive
Term of use
Get it in Writing
Relying on oral or implied agreement is
almost always a mistake. The two parties
may have misunderstood each other.
However, oral permission may be legally
enforceable if it qualifies as a contract under
general contract law, such as reliance.
Licenses vs. Releases
A license is the legal right to do something that you
otherwise would not be permitted to do.
– A copyright owner can give you the right to duplicate a
photograph, use a piece of music, adapt a novel into a
screenplay, post your video on YouTube, Tweet your talk
while it’s happening.
A release is an agreement by which someone
releases you from legal liability for a certain activity.
- A TV show gets a release from you to use your
image free from invasion of privacy problems.
– Remember the open source software issue? Liability is
incurred by the developer signing a release.
Comply with Cease and Desist
Ultimately, this is a business decision- if you feel
strongly that you have done nothing wrong or that
you are the rights holder, you may be in, at least, for
a take down/ put back up struggle through the host.
– Do a cost-benefit analysis. You can be wrong for free and
right for many millions of dollars and months of time;
– Consult with an attorney to determine the strength of your
– Try negotiating or hiring counsel to do so for you;
– If that fails and you want to fight, get out your checkbook!
Brave New World: Blogging and Social
Blogging has its own set of rules.
– Not laws but etiquette
Don’t monopolize the comments section just for your own self-
– What about linking?
Good etiquette, bad law.
Remember that infringement is taking a right that is exclusively
the copyright holder’s. That includes copying, reproducing,
and public display.
Proper citation without permission not enough legally.
Back to take down procedures by the host.
Comments- Wit and Liability
Another consideration : comments, both on
your blog and the comments you leave on
the blogs of others.
– Do you monitor comments?
readers and participants to see/ agree to?
– Do you leave comments on other sites that are
original works and do not violate a third party’s
rights? (see linking, etc, above)
To let users know, in plain language, that:
– you will not tolerate their posting of work that is not their own;
– that you have a right to take down anything that might be
a violation of someone else’s rights; OR
libelous and subject you to liability.
– if comments remain posted, the blog as a whole is your property
and they are conceding their copyright to you. This means:
they are not entitled to compensation or credit as a contributor to your
blog absent an express agreement to the contrary- no matter what
flame war they start or publicity they generate for the site.
They are not allowed to reproduce portions of the blog, even those
including their comments, without your permission
Consider the flip side
– Are you happy to agree to these terms when you
are the one commenting?
– Is this like
Spike Lee’s sound mixer
the dancer claiming to be a collaborator
The painting in the background of the shot
– Some of the responsibilities of technology
Social Media Sites
Facebook controversy over
They owned content
forever and ever, even after
you deleted it
– Sharing Your Content and Information You own all of the content and information you post on
Facebook, and you can control how it is shared through your privacy and application settings.
– For content that is covered by intellectual property rights, like photos and videos ("IP
content"), you specifically give us the following permission, subject to your privacy and
application settings: you grant us a non-exclusive, transferable, sub-licensable,
royalty-free, worldwide license to use any IP content that you post on or in
connection with Facebook ("IP License"). This IP License ends when you
delete your IP content or your account unless your content has been shared
with others, and they have not deleted it.
– When you delete IP content, it is deleted in a manner similar to emptying the recycle bin on a
computer. However, you understand that removed content may persist in backup copies for a
reasonable period of time (but will not be available to others).
– When you add an application and use Platform, your content and information is shared with
the application. We require applications to respect your privacy settings, but your agreement
with that application will control how the application can use the content and information you
share. (To learn more about Platform, read our About Platform page.)
– When you publish content or information using the "everyone" setting, it means that everyone,
including people off of Facebook, will have access to that information and we may not have
control over what they do with it.
– We always appreciate your feedback or other suggestions about Facebook, but you
understand that we may use them without any obligation to compensate you for them (just as
you have no obligation to offer them).
– Where does this fit into the law?
– Self Monitoring User Utopia?
The Twitter Rules
Our goal is to provide a service that allows you to discover and receive content from
sources that interest you as well as to share your content with others. We respect the
ownership of the content that users share and each user is responsible for the content
he or she provides. Because of these principles, we do not actively monitor
user’s content and will not censor user content, except in limited circumstances
In order to provide the Twitter service and the ability to communicate and stay connected with
others, there are some limitations on the type of content that can be published with Twitter. These
limitations comply with legal requirements and make Twitter a better experience for all. We
may need to change these rules from time to time and reserve the right to do so. Please
check back here to see the latest.
*Impersonation: You may not impersonate others through the Twitter service in a manner that
does or is intended to mislead, confuse, or deceive others
*Trademark: We reserve the right to reclaim user names on behalf of businesses or individuals
that hold legal claim or trademark on those user names. Accounts using business names and/or
logos to mislead others will be permanently suspended.
*Privacy: You may not publish or post other people's private and confidential information, such as
credit card numbers, street address or Social Security/National Identity numbers, without their
express authorization and permission.
*Violence and Threats: You may not publish or post direct, specific threats of violence against
*Copyright: We will respond to clear and complete notices of alleged copyright infringement. Our
copyright procedures are set forth in the Terms of Service.
*Unlawful Use: You may not use our service for any unlawful purposes or for promotion of illegal
activities. International users agree to comply with all local laws regarding online conduct and
*Verified accounts: You may not use the Verified Account badge unless it is provided by Twitter.
Accounts using the badge as part of profile pictures, background images, or in any way implying
false verification will be permanently suspended.
Powerful tech savvy lobby for new rules?
Priority of IP Law Modification and
The Law Office of Kelly Kocinski