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2011 09-16 social media


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  • 1. Social Media IP Issues:Herein of Patents, Trademarks, Copyrights, Etc.
    Calhoun “Reb” Thomas
    Thomas Law Firm
    @KE2020, @KEventures
  • 2. CC BY-NC-SA
    These materials are provided under a BY-NC-SA Creative Commons License
    Attribution – NonCommercial - ShareAlike
    This license lets you remix, tweak, and build upon this work non-commercially, as long as you credit me and you license any derivative works under these same terms
    September 16, 2011
  • 3. Social Media
    What is it? Google yields 314M hits
    Wikipedia: 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.“
    Facebookcompared to Amazon
    September 16, 2011
  • 4. IP or Intellectual Property
    Utility patents – for useful, novel and non-obvious inventions
    Design patents – for ornamental aspects of utilitarian objects
    Trade secrets
    Trademarks, service marks, and trade dress rights for source of origin
    September 16, 2011
  • 5. September 16, 2011
    Copyrights & Patents
    Article I Section 8 of our Constitution provides that “The Congress shall have the power … To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”
  • 6. September 16, 2011
    In general, Title 17 U.S.C. 106 provides that the author of a work has the exclusive right to use, distribute, modify and display the work
    However, the copyright to a work belongs to an employer in the case of a “work made for hire”
    Employees vs independent contractors
  • 7. September 16, 2011
    “Work made for hire” and the independent contractor – get an assignment - not all works are covered
    Term of copyright
    Life of the author plus 70 years
    Works for hire – lesser of 95 years after publication or 100 years after creation
  • 8. September 16, 2011
    Protection subsists in original works …
    Fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device.
    Expression vs idea
  • 9. September 16, 2011
    Sales of copyright protected goods subject to “First Sale” doctrine
    Parody and “fair use” can trump the copyright
    Fair use factors: for criticism, comment, news reporting, teaching, scholarship, research - then you look at (1) purpose and character of use, (2) nature of the work, (3) amount copied, and (4) effect on market
  • 10. September 16, 2011
    Parody (think "Weird Al" Yankovic)
    Joint authorship – right to accounting
    Registration advantages such as attorney fees, statutory damages,
    Infringement issues
    Actual vs statutory damages
  • 11. September 16, 2011
    Digital Millennium Copyright Act (DMCA)
    Making or trafficking in software or devices whose primary purpose is defeating technological measures that control access is illegal.
    Copyleft – claims the copyright but permits others to use, modify and redistribute on the same Copyleftterms
    Creative Commons Licenses
  • 12. Facebook License
    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.
    Don’t write a book and put it on Facebook
    September 16, 2011
  • 13. Facebook (non-copyright)
    By submitting this notice, you declare under penalty of perjury that all of the information contained in this notice is accurate and that the use of your intellectual property described above, in the manner you have complained of, is not authorized by the rights owner, its agent, or the law.
    September 16, 2011
  • 14. Facebook (Copyright claim)
    By submitting this notice, you declare that you have a good faith belief that use of the copyrighted content described above, in the manner you have complained of, is not authorized by the copyright owner, its agent, or the law. You also declare that the information in this notice is accurate. And finally, you declare under penalty of perjury, that you are the owner or authorized to act on behalf of the owner of an exclusive copyright that is allegedly infringed.
    September 16, 2011
  • 15. September 16, 2011
    Trademarks are governed by Federal law, however states may also have trademark laws so long as they are not inconsistent with Federal law
    Often interrelated with state law entity naming statutes and unfair or deceptive business practices statutes
    A trademark identifies the source of origin of a good or service
  • 16. September 16, 2011
    Similarly, a service mark identifies the source of origin of a service
    Marks are usually words or symbols used to identify the “goods and/or services” of the manufacturer or retailer
    Label or the packaging should bear the trademark – service marks are usually displayed on advertising materials
  • 17. September 16, 2011
    The best way to develop your mark is through use
    The best way to protect your mark is by a Federal registration
    US vs most foreign countries – earliest usage matters vs first to file
  • 18. September 16, 2011
    US trademark rights depend on use of the mark on the goods or in connection with the sale of the services
    Use based & intent to use filings
    Must identify the “class” or “classes” you are filing in
  • 19. September 16, 2011
    Arbitrary or fanciful marks are much better than descriptive or generic marks
    Examples (good & bad):
    KODAK for photographic equipment
    JAVA for software
    STARBUCKS for coffee
    BED & BATH for selling bed & bath items
    QUIK-PRINT for copying services
  • 20. September 16, 2011
    Merely registering a mark as a domain name does not provide trademark rights
    Registering domain name involves entering into a contract
    “The registrant... represents that ... the selected domain name, to the best of the registrant's knowledge, does not interfere with or infringe upon the rights of any third party”
  • 21. September 16, 2011
    Start the trademark search process with several Internet searches using the major search engine sites
    What if you discover another company is already using and/or registered the XYZ mark for its product
    Dilution of a “famous” mark
  • 22. September 16, 2011
    For a next stage preliminary screen, go to the US Trademark Office website at
    Unidym & CNI
  • 23. September 16, 2011
    Some famous examples of marks that had troubles are:
    Internet Explorer
    Dreamworks vs Amazon Bookstore, Inc.
    Victoria’s Secret vs Victor’s Little Secret
  • 24. Lamebook
    Lamebook vs Facebook – preemptive strike just happens to garner more publicity, then settlement with promise not to register (would that have even been likely, maybe just the Facebook fig leaf attempt to justify their infringement assertions)
    September 16, 2011
  • 25. Twitter
    According to a recent Mashable article, the name Twitter was picked out of a hat. A small group of employees from Odeo, the San Francisco podcasting startup where Twitter initially began, had a brainstorming session. They were trying to come up with names that fit with the theme of a mobile phone buzzing an update in your pocket. After narrowing down the options (which included Jitter and Twitter), they wrote them down, put them in a hat, and let fate decide. Fate decided on Twitter (because clearly asking someone if they saw your latest "jeep" is just weird).
    September 16, 2011
  • 26. Twitter Goods & Services
    IC 38 G & S: Telecommunication services, namely, providing online and telecommunication facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; enabling individuals to send and receive messages via email, instant messaging or a website on the internet in the field of general interest; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing an online community forum for registered users to share information, photos, audio and video content [ abut ] * about * themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking.
    IC 41 G & S: Providing on-line journals, namely, blogs featuring user-defined content in the field of social-networking.
    IC 45 G & S: Providing a website on the internet for the purpose of social networking.
    September 16, 2011
  • 27. September 16, 2011
    Similar to Copyright law in that Patent law is Federal law, states may not legislate in this area
    A patent is an intangible form of personal property
    Patents for “Social Media” inventions? = 2,210 hits
    Patents only have national effect
  • 28. September 16, 2011
    Patents Statistics
    Over 8 million utility patents have been issued by the US Patent Office
    The Patent Office issues approximately 4,000 utility patents
    The Patent Office receives about 500K patent applications every year
    The average patent takes about 3 years to go from non-provisional application to issuance
  • 29. September 16, 2011
    Granted to an individual or individuals
    who invents or discovers
    a process (method),
    article of manufacture,
    composition of matter, or
    improvement thereof
  • 30. September 16, 2011
    That is new, useful and non-obvious to one of ordinary skill in the art
    Must be an “invention” – not just an idea – you have an invention when you have complete conception and reduction to practice
    A patent is the opposite of trade secret in a sense – must disclose the invention
  • 31. September 16, 2011
    Most focus on “utility” patents, but design patents may be relevant for ornament aspects in a fashion similar to trademarks
    The term of a utility patent ends 20 years after the date of application but design patents are still good for only 14 years from issuance
    A patent provides the holder with the right to exclude others from making, using, offering for sale, or selling the patented invention – it is an offensive weapon that the owner must assert – too many clients think government will enforce their patent
  • 32. September 16, 2011
    Employee and independent contractor assignment issues
    Patent searches and prior art – anything that an examining agent can rely on to reject a claim in a pending application
    The inventor(s) must file the patent application – can be a provisional, non-provisional or PCT application
  • 33. September 16, 2011
    Patents - AIA
    The Leahy-Smith America Invents Act or AIA (previously known as the Patent Reform Act of 2011) is scheduled to be signed today. It is 152 pages. No, I have not read the whole act yet. Probably the most notable change to our law is the move from “first to invent” to “first to file” – thus becoming more like the rest of the world.
  • 34. Patents - AIA
    Best Mode: On the date of enactment of the AIA, failure of best mode will no longer be a basis for adjudging a patent invalid or unenforceable.
    Dis-Joinder: A second litigation-focused issue that goes into force on the date of enactment is the new dis-joinder provision. Section 19 of the AIA bars a plaintiff from suing multiple defendants in a single lawsuit if the only justification for the joinder is that all defendants are alleged to have infringed the same patent. The law would also bar a court from consolidating cases for the same purpose absent waiver from the multiple defendants. The idea behind the provision is simply to raise the litigation costs of non-practicing entities who allege that their patents are being infringed by a broad spectrum of corporate defendants.
    September 16, 2011
  • 35. Patents - AIA
    USPTO has set up a website describing the implementation procedures they will use in preparing and circulating the new rules.
    This site has a lot of information including a copy of the Act and a section-by-section summary.
    September 16, 2011
  • 36. Interesting Cases
    Bilski – The Supreme Court changed Federal Circuit’s formulation of the legal test for patentability from being exclusively “machine-or-transformation” to a broader analysis with greater flexibility for the courts to deny a business method patent when appropriate
    Microsoft v. i4i – Microsoft could not convince the court to lower the standard of review on appeal to a preponderance of the evidence. The Supreme Court was straight to the point - “We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does."
    September 16, 2011
  • 37. Social Media Marketing
    ABA “Law Firm Marketing Strategies Conference November 8-9 in Philadelphia
    Three big name technology lawyers—Dennis Kennedy, Tom Mighell and Tim Stanley—discuss the impact and use of social media.
    Also, check out Dennis Crouch at (great IP blog)
    September 16, 2011
  • 38. Links to recent articles, etc
    Get Your Social Media Under Control
    Real Networking In A Virtual World
    Great quote – a Facebook page is not a social media strategy
    September 16, 2011
  • 39. Aditional resources
    Michelle Golden recently authored Social Media Strategies for Professionals and Their Firms: The Guide to Establishing Credibility and Accelerating Relationships (Wiley, 2011) and she maintains a blog at
    Kevin O'Keefe, CEO of LexBlog, Inc. and author of Real Lawyers Have Blogs, speaks with callers and attendees from the Get a Life conference on his session, 'Effective Blogging and Social Media‘
    September 16, 2011
  • 40. Google+
    Google+ Hangouts (public performance of a copyrighted work for 9 others??)
    Hosting a cooking show for small specialized audience??
    Live mini-concerts (date, time zone & country), “electronics show and tell” sessions, interconnections with YouTube, a G+ cooking school ??
    September 16, 2011
  • 41. More Uses For Google+
    Collaborative coding
    Customer service
    tweetified, facebookized, Google plussed
    Data Liberation Front (supported by Google, fighting with Facebook)
    Your complete guide to Google+
    September 16, 2011
  • 42. Recent ABA articles
    Why Lawyers Should Plus the Google+ Project
    Also Not Your Marketer's Social Media: Ten Ways Lawyers Can Benefit from Non-Marketing Uses of Social Media
    September 16, 2011
  • 43. Cloud
    What is the cloud? Think of it as on-demand computing power – like the electricity grid, it is there when you need it (in theory)
    Basically large companies control the cloud through large data centers and the large networks that provide the interconnections (public utilities idea)
    Early thinkers envisioned in 1960’s
    September 16, 2011
  • 44. Cloud
    The use of the “cloud” symbol was an abstraction for complicated (an typically as yet undefined) networks of computers and their interconnections
    Kind of like the cartoon blackboard with the long, complicated formulas leading ultimately to the “miracle occurs here” joke that indicates no one knows how it works
    September 16, 2011
  • 45. Cloud and SaaS
    Famous quote from Thomas Watson, first IBM CEO, as to the worldwide market for computers
    SaaS = Software as a Service
    New buzz phrase for something that has been around for a long time – outsourcing the operations of a data center to a shared facility with the software license embedded
    September 16, 2011