Trademarks - Assets of a Business – Both as property and as goodwill - words (brands) - slogans - designs/icons - product configuration
Potential Liability for Trademark InfringementTrademarks Must Not be Confusingly Similar to Other Marks Factors to consider: In re E.I. DuPont du Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), some include: A. visually, audibly, or phonetically similar? B. are the goods/services related or competing? B. trade channels overlap? C. sophistication of consumers? D. are there instances of actual confusion?
Federal Protection:Protect against infringers who useconfusingly similar marksClaim of Trademark Infringement 15 U.S.C. § § 1116 and 1117 (a) action can be in federal court for federally-registered mark, they have original jurisdiction; (b) relief available for trademark infringement: (1) injunction; (2) actual damages (including infringer’s profits); (3) attorneys’ fees for exceptional cases; and (3) destruction of infringing inventory.
Federal ProtectionClaim of Counterfeiting: • a counterfeit (copy) of a mark that is registered on the Principal Register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered…. 15 U.S.C. § 1116 • In addition to above remedies, may seek statutory damages for up to $1 million
Federal ProtectionClaim of Dilution: 15 U.S.C. § 1125(c)• Even if a mark does not infringe another’s trademark (or is not confusingly similar), a trademark owner may still have a cause of action for the loss of the trademark’s ability to clearly identify one source.• requires proof that: (1) the mark is famous, (2) the defendant is making use of the mark in commerce, (3) the defendants use of the mark began after the mark became famous, and (4) the likelihood of dilution
Minimizing Potential Liability for Use of aTrademarkSEARCHES help to determine whether the mark is available for registration and use – Federal searches [www.uspto.gov] – State searches [secretaries of state] – not tasked with searching or enforcement – Domain Name searches • Domaintools.com • allwhois.com – “Common Law” – internet, phone books, business names – Proprietary Databases
Sponsored Advertising on Social Media Sites• Pay per click (PPC) is used on websites, where advertisers pay their host only when the ad is clicked. With search engines, advertisers typically bid on keyword phrases relevant to their target market. Content sites commonly charge a fixed price per click rather than use a bidding system.
Sponsored Advertising• Is an advertiser legally liable for a wrong if they purchase their competitor’s trademark as a keyword for sponsored advertising? – Case law goes both ways right now – Trend: requires something more – Guidelines: Avoiding using the competitor’s trademark in the title of the advertisement, the text of the advertisement, in the url (domain name), and in any other way that creates confusion
Fair Advertising Strategies/Using theTrademark of Another• Comparative Advertising• Puffery – America’s Favorite/Best v. America’s #1• Best Practices – Be truthful – Don’t be literally true, but deceptively misleading – Disclaimers – Trademark notices
PART 2 – COPYRIGHT OWNERSHIP
REQUIREMENTS FOR COPYRIGHTPROTECTION• Work of original creative authorship• Fixed in a tangible form of expression from which it can be perceived, reproduced, or otherwise communicated, directly or with aid of a device• Format or medium of work is irrelevant• Focus is on the creative expression
Copyrights• Copyrights exist upon creation – Registration is not required – Notice is not required
• Originality is all that is required – not specific length. Must contain minimum creative authorship• The Copyright Act protects “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102.• Although some tweets are not eligible for copyright protection, some surely are “original.”• RSS feeds are subject to copyright protection
Duration of Copyright• individual authors for works created on or after 1/1/78: life of author + 70 years.• works made for hire created on or after 1/1/78: 95 years from publication or 120 years from creation, whichever is shorter• For works created prior to January 1, 1978, the duration of copyright may vary depending upon when the work was created and/or published.
Liability for Copyright Infringement• Individuals are liable for their own actions• Exposes employer or Contractor to liability• Potential Damages – Actual damages – Injunction – Statutory Damages • Up to $30,000/infringing work • Up to $150,000 for willful infringement of work • Attorneys’ fees/legal expenses
GuidelinesCertain works are NOT protected by copyright law• Works that are in the public domain unoriginal reprints of public domain works• U.S. Government Works • 17 U.S.C.§ 105: Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.
Certain works are NOT protected by copyright law•Facts and ideas • While the protection does cover the particular, distinctive words a writer uses to present ideas or facts, control over the underlying concepts or truths cannot be owned. Thus, a biography about a famous athlete qualifies for copyright, but the events and facts of his life do not. • Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991)data is not protected by copyright; selection and arrangement of data can be protected by copyright”
Certain works are NOT protected by copyright lawWorks which have not been fixed in a tangible form of expression• Titles, names, short phrases, and slogans• Mere listings of ingredients or contents• Works consisting entirely of information that is common property and which contains no original authorship (e.g. height & weight charts, tape measures, calendars, etc.
MANAGING LIABILITY WITH BLOGS, BULLETINBOARDS and OTHER AVENUES FORINTERACTIVE COMMUNICATION• The Digital Millennium Copyright Act provides a safe harbor.• But company must comply with DMCA procedures for designation and registration of a “copyright agent” and implementation of a “notice-and-takedown” regime.• One jury awarded $32M against hosting company for infringement by sites it hosted.
Best Practices• Assume it is copyrighted. When in doubt (which is probably most of the time) seek permission or create something original• If commenting or criticizing, only use as much as necessary and make sure comment/criticism is present• When quoting, give attribution
Best Practices• Do not copy photographs, drawings, videos, or other visual works of art without permission• When using stock photos, be sure the license permits the intended use, i.e. commercial use• Use original photos/drawings as much as possible• Do not merely reproduce a copyrighted illustration• Use federal government works when you can
Best Practices• Wikipedia: “The Wikimedia Foundation does not own copyright on Wikipedia article texts and illustrations.” • “Permission is granted to copy, distribute and/or modify Wikipedias text under the terms of the Creative Commons Attribution-ShareAlike 3.0 Unported License and, unless otherwise noted, the GNU Free Documentation License. unversioned, with no invariant sections, front-cover texts, or back-cover texts. “
UNDERSTANDING COPYRIGHT IMPLICATIONS FROMPOSTING ON THE SITES OF OTHERSThe copyright owner may not retain control of material posted to a social networking site such as Facebook• “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. In addition…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.”
• Even though Facebook does not own copyright in users’ content, it may own copyright in users’ pages. Facebook Inc. v. Power Ventures Inc., N.D. Cal., No. C 08-5780, 5/11/09).• Gmail T & C: “By submitting, posting or displaying the content you give Google a perpetual, irrevocable, worldwide, royalty‐free, and non‐exclusive license to reproduce, adapt, modify, translate, publish, publicly perform, publicly display and distribute any Content which you submit, post or display. . .”
PART 3 – TRADE LAWS
Commercial Blogging• FTC Guidelines 10/5/09 – FTC Act - “material connections” (sometimes payments or free products) between advertisers and endorsers – Applies to bloggers or other “word-of-mouth” marketers
Commercial Blogging• While decisions will be reached on a case-by- case basis, the post of a blogger who receives cash or in-kind payment to review a product is considered an endorsement. Bloggers who make an endorsement must disclose the material connections they share with the seller of the product or service.
Commercial Blogging• If a company refers in an advertisement to the findings of a research organization that conducted research sponsored by the company, the advertisement must disclose the connection between the advertiser and the research organization.
Social media posts are considered sponsored advertisingmessages and are regulated by the FTC if they meetcertain conditions. When deciding if a post should beconsidered an advertising message (an “endorsement”),the FTC will look at whether the writer: – is compensated (cash or in-kind) by the marketer or a third party – has an ongoing relationship with the marketer – participates in a word of mouth marketing program that provides products to review publicly – receives similar products or services regularly, or expects to in the future
• The FTC makes it clear that there are three things you need to do to limit your liability: 1. Require disclosure and truthfulness in social media outreach. 2. Monitor the conversation and correct misstatements. 3. Create social media policies and training programs.
Organizations must require disclosure and truthfulnessfrom anyone who participates in their social mediaprograms and train them how to do it. “Advertisers are subject to liability for false or unsubstantiated statements made through endorsements, or for failing to disclose material connections between themselves and their endorsers.”
• Disclosure must be “clear and conspicuous” — understandable to the “average consumer.” This has always been the FTC standard.• Many marketers miss a key concept in staying safe:“Endorsements must reflect the honest opinions, findings,beliefs, or experience of the endorser”.This means that you should never ask bloggers to write apost about a product they have not actually used.
“When the advertisement represents that the endorseruses the endorsed product, the endorser must have been abona fide user of it at the time the endorsement was given.Additionally, the advertiser may continue to run theadvertisement only so long as it has good reason to believethat the endorser remains a bona fide user of the product.”Using a service that pays for blog posts without providing aproduct or experience to the blogger appears to be entirelyillegal and should not be done.
PART 4 – PRIVACY LAWS• Privacy Generally• COPPA• HIPAA
General privacy laws apply to information posted on social media sites, as well as• libel laws• right of publicity laws• securities laws
COPPA [15 U.S.C. §6501-6506]•Enforced by the Federal Trade Commission and otherstate and federal agencies• applies to operators of commercial websites and onlineservices directed to children under 13 that collect, use, ordisclose personal information from children, and operatorsof general audience websites or online services with actualknowledge that they are collecting, using, or disclosingpersonal information from children under 13.
3. Give parents the choice of consenting to the operator’scollection and internal use of a child’s information, butprohibiting the operator from disclosing that information tothird parties;4. Provide parents access to their child’s personalinformation to review and/or have the information deleted;5. Give parents the opportunity to prevent further use oronline collection of a child’s personal information;
6. Maintain the confidentiality, security, and integrity ofinformation they collect from children.7. The Rule also prohibits operators from conditioning achild’s participation in an online activity on the child’sproviding more information than is reasonably necessary toparticipate in that activity.More information at:http://www.ftc.gov/privacy/coppafaqs.shtm
HIPAA• HIPAA’s privacy regulations apply to healthcare providers, defined as: “a provider of medical or health services…and any other person or organization who furnishes, bills, or is paid for health care in the normal course of business.” 45 C.F.R. 160.103• The HIPAA Privacy Rule protects the patient’s protected health information, which is “all individually identifiable health information held or transmitted by a covered entity or its business associate, in any form or media, whether electronic, paper or oral.” 45 C.F.R. 160.103
• HIPAA provides severe penalties for the dissemination of protected health information (PHI).• Fines of $100 per disclosure of PHI and up to $25,000 for multiple violations in the same year. 42 U.S.C. §1320(d)(5).• Fines up to $250,000 and/or 10 years imprisonment for knowingly misusing individually identifiable PHI. 42 U.S.C. §1320(d)(6).
Best Practices• Limit liability by establishing clear policies and procedures. Review and revise them as needed.• These policies should: – explain appropriate use of social media platforms – clearly define how information posted there will be used – specify what degree of privacy can be expected
– state clearly that these forums are not to be used for personal medical advice (if applicable) – state clearly that the site is NOT monitored 24 hours a day, seven days a week• Post these policies prominently on the social media sites and incorporate them into off-line documents such as Notice of Privacy Practices.• Make sure you follow your own privacy notice procedures• Train staff in policies and procedures.
• Don’t practice medicine online. Some patients are more open than others, and are willing to post details about themselves that others consider private.• When comments or questions on your social media platform are approaching HIPAA violations, take them offline. Ask the patient to call the medical institution for more details.• Regularly monitor social media platforms. Remove any posts or comments that violate HIPAA regulations by disclosing protected health information.
Thank You! Cheryl Burbach Hovey Williams LLP 84 Corporate Woods 10801 Mastin Blvd., Suite 1000 Overland Park, KS 66210 email@example.com