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How Associations Can Protect their Intellectual Property


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This presentation was a webinar hosted by Association Trends on all aspects of intellectual property for trade associations and other nonprofits.

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How Associations Can Protect their Intellectual Property

  1. 1. Protecting Your Association's Intellectual Property Association Trends Webinar September 25, 2013 Jefferson C. Glassie, Esq. Eileen Morgan Johnson, Esq. Whiteford, Taylor & Preston Washington, DC
  2. 2. Welcome
  3. 3. Program Overview      Copyrights Trademarks Internet Applications Social Media Association activities (international, publishing, lists, affinity programs, etc.)
  4. 4. Copyright Protection  “Copyright Protection subsists in original works of authorship fixed in any tangible medium of expression…” Section 102 of Copyright Act  Rights accrue upon creation; no notice or registration is required  Ideas, facts, concepts are not covered
  5. 5. Works of Authorship Include:         Literary works Musical works Dramatic works Pictorial, Graphic, and Sculptural works (includes graphics, charts, and figures) Motion pictures and other audio-visual works Sound recordings Architectural works Yes, electronic docs and websites are included!
  6. 6. Copyright Rights        Copyright includes a “bundle” of rights: Reproduce the work (photocopies) Prepare derivative works (second editions) Distribute the work (sell) Perform the work (music) Display the work (visual; e.g., websites) Can own copyright to the entirety of a work, even though not the parts
  7. 7. Work-for-Hire  Section 101 of Copyright Act defines as  “Work prepared by an employee within the scope of his or her employment;” or  Specifically ordered or commissioned as a contribution to collective work, part of audiovisual work, translation, supplementary work, compilation, instructional text, test, answers to test, or atlas, IF expressly agreed in a written instrument signed by the parties.
  8. 8. Fair Use  The Infamous “Fair Use” Doctrine under Section 107 of Copyright Act:  Defense to copyright infringement  Allows use of a copyrighted work without permission of author  For criticism, comment, new reporting, scholarship, or research  BUT - Vague and Subjective  Lots of Litigation  Totality of Circumstances
  9. 9. Fair Use Factors 1. Purpose and nature of Use  nonprofit or commercial use 1. Nature of copyrighted work  how creative / original 1. Amount of original work used  entire work versus minor part  important versus incidental part 1. Affect on market for original  will new use displace sales of original?
  10. 10. Copyright Notice  Proper Notice under Section 401 of Copyright Act is:  Symbol © or “Copyright” or “Copr.”  Year of first publication of work  Name of copyright owner  Notice is NOT required for ownership, but use of notice prohibits innocent infringement defense
  11. 11. Registration  Works (including websites) may be registered with U.S. Copyright Office, Library of Congress, with deposit of work (Sec. 408)  Registration is NOT necessary to own copyright  If work registered prior to infringement or within three months of publication under Section 412, copyright owner can sue for copyright infringement and claim statutory damages of up to $150,000 for each willful infringement and attorneys’ fees (Sec. 504)
  12. 12. Assignment / License  Copyrights can be assigned (i.e., transferred) only upon signed written instrument under Section 204 of Copyright Act  Permission (i.e., license) to use copyrighted works can be granted, and can be expansive or limited (only certain rights); can be written or implied (exclusive must be in writing)
  13. 13. What is a Trademark?  A word, phrase, symbol, sound, or design (or combination) that distinguishes the source of products, programs, or services  Service marks are generally the same as trademarks, but they refer to services, not tangible products  Certification marks for those certified  Collective membership marks  Rights accrue upon USE in commerce  Associations can have rights in name, acronym, design logo, slogan/tagline, but often weak
  14. 14. Commonly Litigated Subcontract Provision: Arbitration Clause  Before use a mark should be screened to ensure that it is:  Non-infringing  Sufficiently distinctive  Screening  Preliminary and full: USPTO, legal databases, search engines, domain name availability, etc.  The infringement test  Is the mark likely to confuse users as to the source of the products, programs, or services?  PTO focuses on similarity of marks and services
  15. 15. Distinctiveness of a Mark Strong Fanciful Weak Arbitrary Suggestive Descriptive Generic  Examples:  Fanciful (Exxon® gasoline and Xerox® copiers)  Arbitrary (Apple® computers)  Suggestive (Igloo® coolers and YAHOO!® search engine)  Descriptive (e.g., American Lawyers Association)  Generic (aspirin, kleenex, elevator)
  16. 16. How to Protect Trademarks  Trademark Notice  Use ™ for an unregistered trademark or combination trademark/service mark  Use SM for an unregistered service mark  Use ® only for a federally-registered mark  Use properly, consistently, and constantly  Registration provides procedural protections (incontestibility and no innocent infringement, etc.)  Police for infringing uses and take appropriate action against infringers (e.g., warning letter, opposition, lawsuit)  Use written license agreements and review licensee use for compliance
  17. 17. Registration Requirements  Must file to renew registrations in 5-6th year and 9-10th year thereafter  PTO does not send notices  Failure to file will result in abandonment  Could still use mark, but not ®  If do not use, cannot maintain/renew registration  Can’t make material changes to registered mark
  18. 18. Use of Trademarks of Others  As a general rule, you should not use another’s trademark without permission  Limited ‘fair use’ exceptions:  Comparative advertising  Descriptive use  Nominative use (where name is critical)  Parody  License from others is advisable
  19. 19. Domain Names  Associations generally secure domain names  Good idea to secure .com, .org., .info, .biz, etc. and misspellings, common words  Basic protection for your association’s domain name(s)  Police the marketplace  Watch services, Google alerts, etc.  Registered mark can help enhance domain name protection
  20. 20. Cyber Squatters  Bad faith registration, sale or use of a domain name that is confusingly similar to another’s trademark  Anti-Cybersquatting Consumer Protection Act  What to do when a squatter shows up  Cease and desist letter  File a domain name dispute proceeding  ICANN’s Uniform Domain Name Dispute Resolution  Faster and less expensive than litigation  Cancellation of squatter’s registration  No monetary damages or attorney fees  File a lawsuit
  21. 21. Some Laws that Apply  Communications Decency Act, includes Section 230, which protects providers of interactive computer service (may include associations) from defamation claims based on third party content  FTC Guidelines on Endorsements and Testimonials – added social media in recent rules – disclosure of any compensation
  22. 22. Digital Millennium Copyright Act  Limits liability of online service providers for copyright infringement  Can protect associations  Also protects unauthorized uses of association copyrighted material  Notice and take down provisions  Must meet specific requirements  But effective for copyright infringement
  23. 23. Cybersecurity  Associations have been hacked, targeted by phishing schemes, and had privacy/data breaches  Crucial to have privacy policies and follow them  State laws mandate Written Information Security Plans (WISPS) for security breaches  Costs of compliance can be high  Insurance for privacy breaches available, as well as First Party costs of public response
  24. 24. Insurance  Cyber liability insurance  Claims made policies  Typically provide both first party and third party coverage  Coverage available  Privacy notification expenses  Crisis management expenses  Extortion expenses  Copyright infringement
  25. 25. Potential Legal Problems  Law is evolving, but potential liability:  Antitrust  Defamation  Copyright  Trademark  Privacy  Breach of confidentiality  Overall not a significant risk, if prudent
  26. 26. Association Uses  Blogs, list-servs, chat rooms, virtual trade shows, etc.  Always advisable to have terms of use/social media policy/disclaimers  Terms include obtain right to use posts, require proper decorum, and suspend privileges for inappropriate conduct  Don’t need specific approval from each poster (unless changing purpose or intent)  ASAE has a good sample
  27. 27. Third Party Sites  Facebook, LinkedIn, etc.  Have their own rules  Association pages – have your own rules, include rights to monitor and remove inappropriate posts, and should not need specific approval to use posts
  28. 28. International  Copyright treaties applicable  Trademark laws vary between ‘first use’ (U.S.) and ‘first to file’ (most other countries)  Best course, file in each country to protect association marks  European Community Mark  Madrid Protocol
  29. 29. Publishing     Differences in print and electronic publishing First sale doctrine doesn’t hold for e-pub Law is similar, but problems more accute Infringement by association and of association materials  Distribution channels different  Pricing models – wholesale vs. agency
  30. 30. Use of Lists and Databases      Lists are facts unless creatively organized Slim copyright protection for association lists Can rent lists with license agreement Privacy issues for European contact information Note automated databases are protectable, including screen shots (by software)
  31. 31. Sponsorships / Affinity Programs  General rules apply  Corporate sponsorship – use of corporate name and logo - recognition versus taxable advertising  Affinity programs – involve use of association name, logo, and lists by vendor to members for license fee/royalty to association – passive royalties not taxable  Cause related marketing – similar, but to public
  32. 32. Chapters / Affiliates  Invariably use association name and marks, so should have written license and trademark use policy  No modifications without approval  Consistent use strengthens brand for all!
  33. 33. Contact Information Jefferson C. Glassie, Esq. Partner Whiteford, Taylor & Preston 202-689-3156 Eileen Morgan Johnson, Esq. Partner Whiteford Taylor & Preston 703-280-9271