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Old Rules for New Issues With New Media: ...

Old Rules for New Issues With New Media:
Is There a Gap in Intellectual Property Law?
Law Society Special Lectures 2012:
Employment Law and the New Workplace
in the Social Media Age

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    Sookman law society IP in social media Sookman law society IP in social media Presentation Transcript

    • McCarthy Tétrault Advance™ Building Capabilities for Growth Old Rules for New Issues With New Media: Is There a Gap in Intellectual Property Law? Law Society Special Lectures 2012: Employment Law and the New Workplace in the Social Media AgeBarry B. Sookmanbsookman@mccarthy.ca416-601-7949 April 25, 2012McCarthy Tétrault LLP / mccarthy.ca / 11395265 1
    • What is social media? ¬ “Social media includes web-based and mobile technologies used to turn communication into interactive dialogue between organizations, communities, and individuals. Andreas Kaplan and Michael Haenlein define social media as "a group of Internet-based applications that build on the ideological and technological foundations of Web 2.0, and that allow the creation and exchange of user-generated content." Social media is ubiquitously accessible, and enabled by scalable communication techniques.” Wikipedia. ¬ Microblogging (Twitter) ¬ Wikis, (Wikipedia) ¬ Content communities (YouTube, Flickr, Pinterest) ¬ Social networking sites (Facebook, LinkedIn)McCarthy Tétrault LLP / mccarthy.ca / 11395265 2
    • IP issues in employment context ¬ Intellectual property ¬ Copyrights ¬ Patents ¬ Trade-secrets and confidential information ¬ Trade-marks ¬ Industrial designs ¬ Other intangible property rights ¬ Issues: ¬ Ownership ¬ IP risksMcCarthy Tétrault LLP / mccarthy.ca / 11395265 3
    • Ownership issues ¬ Who owns Twitter handle, LinkedIn or Facebook account, or YouTube channel, names of blogs ¬ Who owns “followers”, “connections” or “friends” ¬ Who owns content e,g, tweets, profiles, postings, mentions, photographs, videos ¬ Can these be owned? ¬ Who owns them: the site, employer or employee?McCarthy Tétrault LLP / mccarthy.ca / 11395265 4
    • Can accounts be owned ¬ Eagle v Edcomm, Inc et al 2011 WL 6739448 (E.D.Pa. Dec 22, 2011) ¬ Linda Eagle had LinkedIn account. ¬ When dismissed her password was changed by her employer who accessed account and changed her profile to display a different name and photograph, but retaining her honors, awards, recommendations and connections. ¬ Eagle regained control of the LinkedIn account. ¬ Edcomm claims Eagles LinkedIn account was used for Edcomm business and Edcomm personnel developed and maintained all connections and much of the content on her account. ¬ Eagle sued, inter alia, for conversion of LinkedIn account. ¬ Edcomm drops conversion claim based on law suggesting that the account was not property.McCarthy Tétrault LLP / mccarthy.ca / 11395265 5
    • Can accounts be owned ¬ Eagle v Edcomm, Inc et al 2011 WL 6739448 (E.D.Pa. Dec 22, 2011) ¬ `Pennsylvania courts continue to hold that only tangible property, or intangible property rights which have merged with, or are otherwise connected to, a document, are subject to conversion.”… Apparel Bus. Sys., LLC v. Tom James Co., No. Civ.A.06 –1092, 2008 WL 858754, at *18 (E.D.Pa. Mar.28, 2008) (“Courts in the Eastern District of Pennsylvania have found that domain names and satellite signals are not subject to conversion because they are not types of intangible property that merge with particular documents.”). Defendant concedes these principles and states that, as a result, it “will not pursue conversion claims” with respect to the cell phone number and LinkedIn account.McCarthy Tétrault LLP / mccarthy.ca / 11395265 6
    • Can accounts be owned ¬ Tucows.Com Co v Lojas Renner 2011 ONCA 548 ¬ Issue: is a domain name (renner.com) personal property located in Ontario within the meaning of Rule 17.02(a) ¬ The bundle of rights associated with the domain name <renner.com> that Tucows has (as purchaser and registrant) satisfies the attributes of property...in that at present Tucows can enforce those rights against all others... ¬ Tucows derives income from being the holder of the rights in the domain name <renner.com>… The registered owner of the domain name has the right to exclusively direct traffic to the domain name’s corresponding website and to exclude anyone else from using the same name... ¬ While the decisions in Kremner, Saulnier, and Bouckhuyt and the academic commentators all emphasize exclusivity of a right as an essential aspect of property, other judicial decisions...hold that other requirements must also be met...“[b]efore a right or an interest can be admitted into the category of property, or of a right affecting property, it must be definable, identifiable by third parties, capable in its nature of assumption by third parties, and have some degree of permanence or stability.” A domain name also satisfies this definition of property.McCarthy Tétrault LLP / mccarthy.ca / 11395265 7
    • Can accounts be owned ¬ Tucows.Com Co v Lojas Renner 2011 ONCA 54. ¬ [A property model] best accords with the way market participants relate to domain names. Even though a domain name is a form of contractual license from a registrar to a registrant, it results in a valuable asset that is freely traded on the open market and that is occasionally stolen by a bad faith actor. Even though a transfer of a domain name is, in reality, a de-registration from the original registrant and re-registration to the new registrant, it is now treated routinely as a seamless transfer, as if the name was being handed directly from the original registrant to the new registrant. Further, the acceptance of a property rights rationale for regulating generic domain names could take advantage of existing property-based laws such as theft and conversion, and simply extend them judicially to virtual property. Quoting from Jacqueline D. Lipton “Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property, and Restitution” (2010) 23 Harv. J.L. & Tech. 447McCarthy Tétrault LLP / mccarthy.ca / 11395265 8
    • Who owns accounts ¬ Phonedog v Noah Kravitz Case 3:11 CV-03474 (N.D.Cal.Jan 30, 2012) ¬ Who owns Twitter account and followers ¬ Phonedog sued ex editor for ownership of Twitter account names Phonedog_Noah that had 17k followers ¬ Claim is for $2.50/month for each Twitter follower, based on decrease in traffic to the Phonedog website from the account which decreased the number of website pageviews and discouraged advertisers from paying for ad inventory ¬ Claim based on “misappropriation of trade secrets”, intentional interference with prospective economic advantage”, negligent interference with prospective economic advantage” and conversion.McCarthy Tétrault LLP / mccarthy.ca / 11395265 9
    • Who owns content ¬ What body of law will provide the answer ¬ Copyright ¬ Trade secret ¬ Employment contracts, implied contracts, course of conductMcCarthy Tétrault LLP / mccarthy.ca / 11395265 10
    • Who owns content ¬ Is content capable of being protected ¬ Twitter: profiles, photos, tweets, direct messages, mentions, followers, who following ¬ LinkedIn: profiles, photos, connections, messages, posts ¬ Facebook: profile, info, wall information, photos, notes, friends, ¬ Flickr, Pinterest: photos, ¬ YouTube: videosMcCarthy Tétrault LLP / mccarthy.ca / 11395265 11
    • Who owns content¬ Is content capable of being protected ¬ Copyright: must be protected subject matter and for works be original ¬ Protects literary, artistic, dramatic and musical works and other subject matters such as sound recordings. ¬ Can protect, text, profiles, photos, messages, videos, compilations of information, other user generated content (UGC) ¬ Originality requires ‘skill and judgment’. CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 ¬ Tweets, short messages, followers, compilation of tweets or messages?McCarthy Tétrault LLP / mccarthy.ca / 11395265 12
    • Who owns content¬ Is content capable of being protected¬ A “trade secret”...should be understood as being a plan or process, tool, mechanism or compound which possesses the following characteristics: ¬ (1) the information must be secret in an absolute or relative sense (is known only by one or a relatively small number of persons); ¬ (2) the possessor of the information must demonstrate that he has acted with the intention to treat the information as secret; ¬ (3) the information must be capable of industrial or commercial application; ¬ (4) the possessor must have an interest (e.g. an economic interest) worthy of legal protection. Merck Frosst Canada Ltd. v. Canada (Health), 2012 SCC 3¬ A trade secret is a subset of confidential commercial information.¬ The test for whether there has been a breach of confidence involves establishing three elements: (1) that the information conveyed was confidential; (2) that it was communicated in confidence; and (3) that it was misused by the party to whom it was communicated. Lac minerals ltd. v. International corona resources ltd., [1989] 2 SCR 574McCarthy Tétrault LLP / mccarthy.ca / 11395265 13
    • Who owns content¬ Eagle v Edcomm, Inc et al 2011 WL 6739448 (E.D.Pa. Dec 22, 2011) ¬ Edcomm also claimed that Eagle misappropriated Edcomm’s trade secrets and confidential information by continuing to use the connections on LinkedIn account e.g. using account information, customer contacts, instructor identities and contacts. (No claim for copyright infringement) ¬ Eagle conceded that identity of its customers publicly disclosed on its website could not be a trade secret. ¬ Claim for misappropriation of trade secret in LinkedIn connections failed as they were public: ¬ In the present case, to the extent Defendant alleges misappropriation of a trade secret, its claim must necessarily fail. As set forth above, neither the telephone number nor the LinkedIn account connections qualify as trade secrets, as both are either generally known in the wider business community or capable of being easily derived from public information.McCarthy Tétrault LLP / mccarthy.ca / 11395265 14
    • Who owns content¬ Sasqua Group, Inc. v Courtney 2010 WL 3613855 (E.D.N.Y. Aug. 2, 2010), adopted 2010 WL370468 (S.D.N.Y. Sep. 7, 2010) ¬ Sasqua brought trade secret misappropriation claim against former consultant in executive search business. ¬ Claim was that defendant used database that contained needs of clients, preferences, hiring practices and business strategies. ¬ Claim dismissed as database was not a trade secret given easy public availability on internet and social networks like Facebook and LinkedIn. ¬ In sum, Plaintiffs have failed to prove a physical appropriation or copying of confidential information or wrongful disclosure or use of a trade secret... The information in Sasquas database concerning the needs of its clients, their preferences, hiring practices, and business strategies, as well as Sasquas acquaintance with key decision-makers at those firms may well have been a protectable trade secret in the early years of Sasquas existence when greater time, energy and resources may have been necessary to acquire the level of detailed information to build and retain the business relationships at issue here. However, for good or bad, the exponential proliferation of information made available through full-blown use of the Internet and the powerful tools it provides to access such information in 2010 is a very different story.McCarthy Tétrault LLP / mccarthy.ca / 11395265 15
    • Who owns content ¬ Twitter ¬ You retain your rights to any Content you submit, post or display on or through the Services. By submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty- free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods (now known or later developed). ¬ Tip This license is you authorizing us to make your Tweets available to the rest of the world and to let others do the same.McCarthy Tétrault LLP / mccarthy.ca / 11395265 16
    • Who owns content ¬ LinkedIn ¬ You own the information you provide LinkedIn under this Agreement, and may request its deletion at any time, unless you have shared information or content with others and they have not deleted it, or it was copied or stored by other users. Additionally, you grant LinkedIn a nonexclusive, irrevocable, worldwide, perpetual, unlimited, assignable, sublicenseable, fully paid up and royalty-free right to us to copy, prepare derivative works of, improve, distribute, publish, remove, retain, add, process, analyze, use and commercialize, in any way now known or in the future discovered, any information you provide, directly or indirectly to LinkedIn, including, but not limited to, any user generated content, ideas, concepts, techniques or data to the services, you submit to LinkedIn, without any further consent, notice and/or compensation to you or to any third parties.McCarthy Tétrault LLP / mccarthy.ca / 11395265 17
    • Who owns content ¬ Copyright – will be owned by employer where: ¬ work was created by an employee e.g. a person under a contract of service not a contract for services; see 671122 Ontario Ltd. v. Sagaz Industries Canada Inc [2001] 2 S.C.R. 983 ¬ work was made in the course of employment; and ¬ there is no employment or other agreement to the contrary. ¬ How to determine if social media site content was created in the course of employment. See generally, University of British Columbia v. University of British Columbia Faculty Associatio , 2006 CanLII 6155 (BC LRB) ¬ Trade secrets and confidential information – implied terms or constructive trusts may apply.McCarthy Tétrault LLP / mccarthy.ca / 11395265 18
    • IP Risks - Patent problems ¬ Public disclosure of inventions ¬ The subject matter defined by a claim in a patent application for a patent in Canada must not have been disclosed more than 1 year before the applicant’s filing date in such a manner that the subject-matter became available to the public in Canada or elsewhere. Patent Act s. 28.2 ¬ Public disclosures can occur by a picture or enabling disclosure on ¬ Blogs ¬ Social networking site e.g. Facebook note ¬ Photo siteMcCarthy Tétrault LLP / mccarthy.ca / 11395265 19
    • IP Risks - Copyright problems ¬ Use of content which is not owned or licensed could result in infringement claims ¬ Unauthorized use of photos of earthquake in Haiti uploaded to Twitpic and used by Agence France Presse (AFP). Agency France Presse v Morel, 769 F.Supp.2d 295 (S.D.N.Y. 2011) ¬ Creation of user generated content ¬ Webcasts, live tweeting ¬ Removal of author attribution or modification of content could result in moral rights claims for violation of paternity or integrity rights ¬ See, Google Inc v Copiepresse et al, Brussels Court of Appeal (9th Chamber) May 5, 2011 ¬ The Google News service infringed the right of paternity because the authors’ names were not mentioned in the search results. ¬ The right of integrity was infringed because only extracts of articles were reproduced and the works had been modified.McCarthy Tétrault LLP / mccarthy.ca / 11395265 20
    • Copyright problems ¬ Publishing content without use restrictions ¬ Implied licenses to users to reproduce documents on websites? Guillot v. Istek Corp. (2001), 14 C.P.R. (4th) 67 (Fed. T.D.). ¬ Implied licenses to search engines to reproduce, cache and link to content? Field v. Google, Inc 412 F.Supp.e2d 1106 (D. Nev. 2006). ¬ Statutory copyright exceptions e.g. Bill C-11 creates exception for educational institutions to copy materials made publically available over the Internet. ¬ Account suspension risks ¬ YouTube ¬ “YouTube takes copyright infringement very seriously. If you receive three copyright strikes, your account and all videos uploaded to that account will be removed. In order to prevent this from happening, you should refrain from uploading videos that infringe the copyright of others.”McCarthy Tétrault LLP / mccarthy.ca / 11395265 21
    • International Risk ¬ Shropshire v Canning Case 10-CV-01941-LHK (N.D.Cal. Aug. 22, 2011) ¬ Canning, Ontario resident, creates x-mas video synced with Irish Rovers singing “Grandma Got Run Over by a Reindeer” and posts it on YouTube. Canning is sued for copyright infringement in California. ¬ The Court finds that in this case, the alleged act of direct copyright infringement — uploading a video from Canada to YouTubes servers in California for display within the United States — constitutes an act of infringement that is not "wholly extraterritorial" to the United States… The allegedly infringing act in this case began in Canada, where Defendant created his Grandma song video. Had Defendant stopped there, there is no doubt that the strict presumption against extraterritoriality would apply and Plaintiff would not have a claim. ¬ The problem is that Defendant did not stop at the mere creation of the Grandma song video in Canada, but instead allegedly uploaded it to YouTubes California servers for display in the United States after agreeing to YouTubes Terms of Service agreement.McCarthy Tétrault LLP / mccarthy.ca / 11395265 22
    • International Risk ¬ Shropshire v Canning Case 10-CV-01941-LHK (N.D.Cal. Aug. 22, 2011) ¬ Defendants intent has no bearing on whether Plaintiff has stated a viable claim for relief under the Copyright Act. Thus, even if true, Defendants protest that he did not know that YouTubes servers were in California and simply tried to upload his video only to youtube.ca, YouTubes Canadian web address, is of no moment to the issue of liability. Id. at 584 ("[defendant] contends that any allegedly infringing activity in the United States was unintended and unavoidable. Even if true, however, this is no defense to an infringement of copyright. Direct infringement does not require intent or any particular state of mind. See 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.08 (1996) (`in actions for statutory copyright infringement, the innocent intent of the defendant will not constitute a defense to a finding of liability)."McCarthy Tétrault LLP / mccarthy.ca / 11395265 23
    • Trade-mark and brand problems ¬ Trade-mark infringement or passing off claims ¬ For names of blogs, accounts ¬ For domain names ¬ Account suspension risks ¬ Twitter Trademark Policy ¬ Using a company or business name, logo, or other trademark- protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation. ¬ When there is a clear intent to mislead others through the unauthorized use of a trademark, Twitter will suspend the account and notify the account holder.McCarthy Tétrault LLP / mccarthy.ca / 11395265 24
    • Trade-mark and brand problems ¬ Impersonation ¬ YouTube: Impersonating another user by copying their channel layout, using a similar username, or posing as them in comments, emails or videos is considered harassment and is a violation of our Community Guidelines. ¬ Username squatting ¬ YouTube: In general, users are expected to be active members within the YouTube community. If an account is found to be overly inactive, the account may be reclaimed by YouTube without notice.... In cases of username squatting, YouTube may release usernames in cases of a valid trademark complaint. ¬ Twittter: In cases of username squatting, YouTube may release usernames in cases of a valid trademark complaint.McCarthy Tétrault LLP / mccarthy.ca / 11395265 25
    • Trade-mark and brand problems ¬ Disparaging comments against employer ¬ Lougheed imports Ltd (cob West Coast Mazda) 2010, B.C.L.R.B.D. No. 190 ¬ The comments made by the Complainants on Facebook were damaging comments about the Employer’s business such as don’t spend your money at West CoastMazda as they are crooks out to hose you and the shop ripped off a bunch of people I know. ¬ The comment was very egregious in that it named the Employer and attempted to encourage people not to spend money at the Employers business...I agree and find that there is proper cause for the termination of A.PMcCarthy Tétrault LLP / mccarthy.ca / 11395265 26
    • Trade-secret problems ¬ Disclosing trade secret or confidential information ¬ Disclosure of customers, contacts, connections over LinkedIn ¬ Tweet of product announcement or product trade-mark before launch ¬ Blog disclosing technical information about a product or process ¬ Blog containing photos and information ¬ Chatham-Kent (Municipality) v National Automobile. Aerospace, Transportati 159 L.A.C (4th) 321 (employee terminated for posting photos and information about residents in home for the aged in violation of her NDA).McCarthy Tétrault LLP / mccarthy.ca / 11395265 27
    • Trade-secret problems ¬ Trade secret misappropriation ¬ Re-tweets or other re-dissemination of confidential information ¬ Not all Facebook, LinkedIn posts, or tweets are automatically in public domain. ¬ See, DVD Control Association, Inc. v. Bunner 4 Cal.Rptr.3d 69 (2003) ¬ That is not to say that a trade secret is automatically lost any time it is posted on the Internet. Amici Curiae Intellectual Property Law Professors et alia argue, for example, that information posted on an obscure Internet site and detected quickly should not lose trade secret status. This position is consistent with case law holding that minor disclosures of a trade secret followed by a brief delay in withdrawing it from the public domain do not cause trade secret status to be lost.McCarthy Tétrault LLP / mccarthy.ca / 11395265 28
    • Concluding remarksMcCarthy Tétrault LLP / mccarthy.ca / 11395265 29
    • Slides available @ barrysookman.com and mccarthy.ca * Translations of French language cases were created using Google Translate. Some translations were altered for clarification.McCarthy Tétrault LLP / mccarthy.ca / 11395265 30