For Trademark lawyers and brand owners, Google’s AdWords program has engendered no small amount of debate. Many companies have tried, unsuccessfully, to hold Google liable for keyword advertising triggered when a brand-owner’s competitor buys keyword advertisements under the AdWords program by purchasing the brand-owner’s trademarks as keywords. Rosetta Stone’s lawsuit is no different.
However, what is different this time is that Google will have to defend at trial its program of selling companies’ well-known trademarks to the highest bidder. In the widely watched ruling, the Court reinstated most of Rosetta Stone’s claims relating to infringement and dilution.
On the claim of direct trademark infringement, the Court found that there was evidence in the record to create a question of fact as to whether “a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result.” Google’s own internal studies suggested that it was likely confusion would result from the use of third-party trademarks.
On the claim of contributory infringement, the appeals court stated that the district court had improperly shifted the burden from Google to Rosetta Stone on the issue of whether Google allowed known infringers and counterfeiters to bid on Rosetta Stone’s trademarks as keywords
On the claim of trademark dilution, the appellate court reversed the district courts approval of Google’s “fair use” defense finding that the district court had not addressed Google’s good faith, and wrongly placed the burden of proof on Rosetta Stone, when the it was Google that was the party asserting fair use as a defense.
Lastly, the appeals court addressed the functionality doctrine which is the use of a product design considered necessary by the nature of the product itself. Such aspects of the product design are not protectable and others are free to use it. The court of appeals stated “[t]he functionality doctrine simply does not apply in these circumstances,” since Rosetta Stone’s trademarks were not a “functional” feature of its software.
The legal and regulatory environment impacting social media is constantly evolving. Here is a collection of recent articles impacting everything from law enforcement use of social media to new legislation.
A social media tip line for police
Boston.com
“Use of social media has provided an additional outlet for people to interact with law enforcement” says Lauri Stevens – founder of LAwS Communications, a consulting company that helps law enforcement agencies expand into social media.
Social media limits and the law
Monterey County Herald
Leland Yee, a San Francisco Democrat, introduced a bill that would prohibit employers, public or private, from requiring or requesting in writing a prospective employee to disclose user names or passwords for personal social media accounts.
Ariz. bill says unlawful to ‘annoy’ others online
BusinessWeek
“Speaking to annoy or offend is not a crime,” Media Coalition Executive Director David Horowitz said. Horowitz said if the proposal becomes law, speech done in satire, political debate or even sports trash talking could get people in unnecessary legal trouble.
Social Media in China, Innovation
Washington Post
Apr. 2, 2012 – April 2 (Bloomberg) — Vivek Wadhwa, fellow at Stanford Law School and head of academics at Singularity University, talks about social media in China and innovation.
UAE legal experts want libel to apply to social networking sites
GMA News
Claiming that Facebook, Twitter and other social networking sites can be used to spread rumors and false information, the legal community in the United Arab Emirates (UAE) is seeking that libel laws be applied to offenders on the Internet.
Is Your Facebook Password Like Your Mail, House Key, or Drug Test?
The Atlantic
A day after it was proposed, the amendment was voted down — almost entirely along party lines — thus closing one door to social media privacy legislation, at least on the national level. (There are similar social media privacy laws — full bills, …
Sponsor: Arizona bill isn’t aimed at Internet trolls
CNN
The fear is that the bill would prohibit hateful comments on news and social-media sites, amounting to a ban on so-called Internet trolling. The problem: The bill won’t do any of that, its sponsor told CNN on Wednesday. “I think they’re absolutely …
How Family Law Attorneys Use Social Media Evidence [Infographic]
PR Web (press release)
Family Law Attorneys Dishon & Block formally released today an infographic that illustrates how attorneys use social media to collect “smoking gun” evidence for divorce and child custody cases. With the advancement in technology and modernizing of laws …
See all stories on this topic »
PR Web (press release)
Topics to be addressed include best practices for direct, digital and mobile marketing including advising on permission-based marketing, emerging technologies, the use of various social media platforms, as well as data security and privacy issues related to electronic and mobile commerce.
New FTC guidelines in the areas of advertising any marketing, as well as consumer privacy and security, have raised awareness of these issues for brands, marketing firms and service providers.
David M. Adler, Esq. is an attorney, author, educator, entrepreneur and nationally-recognized speaker in the fields of intellectual property, media & entertainment and technology law with a multidisciplinary practice focused on counseling businesses across the interrelated areas of Intellectual Property Law, Media & Entertainment, Information Technology and Corporate Law. David provides legal counsel on trademark and copyright clearance, registration and enforcement, digital and new media licensing, production, finance, regulations, Social Media, litigation and corporate-commercial transactions.
David has an extensive private-practice and in-house background counseling clients on marketing, advertising and content deals, lead-generation agreements, referral agreements, advertising-supported revenue deals, product placement, affiliate marketing/group-couponing platforms, CAN-SPAM compliance, digital rights management for video, music, and games. We work with many of the leading studios, labels, social networking sites, and online music companies. He also specializes in advising artistic talent and creative professionals in the arts, entertainment, media and sports industries.
Intellectual property is often the most significant driver of value among a company’s assets. Therefore, it is increasingly important for companies to actively manage their intellectual property assets to identify, categorize, register and enforce IP assets while minimizing the possibility of legal disputes.
Whether acquiring technology, developing new products or taking stock of the company’s intangible assets, companies must develop ways to protect their assets better, determine ways to realize more revenue from such assets, and reduce risks of costly litigation.
Below are ten intellectual property management tips that will help Companies and their counsel identify and protect IP assets and address infringement issues, among other key steps.
1. Identify: Simply put, think about what patents,trademarksand copyrights you might have and categorize them appropriately. This includes ideas in development.
2. Organize: Once categorized, review the relevant creation and publication/use dates. Determineregistrationstatus. File necessary maintenance documents as appropriate and create calendar/docket future due dates for supplemental filings.
3. Monitor: Review the USPTO and Copyright office databases periodically to ensure no junior users may weaken your rights.
4. Conduct a USPTO “Basic Search”: Start your search here. Individual results pages will include direct links to the mark’s records in TARR (best way to check current status of application/mark), ASSIGN (best way to see if the mark has been assigned), TDR (best way to retrieve relevant documents), TTAB (search and review board proceedings).
5. Conduct a USPTO Document Search: Use this database to determine existence of and locate documents related to specific applications.
6. Conduct a Copyright.gov Search: This is the best place to start with any copyrightrelated questions. Includes searched for copies of registered works.
7. Google- search: Great secondary, broad-stroke search. Tends to return higher percentage of irrelevant results, but good at finding that needle-in-a-haystack type rip-off/con artist.
8. Create Google alerts: Use these to stay abreast of relevant changes in the database. Narrow alert criteria to specific keywords/phrases.
9. Conduct a State Trademark Databases Search: Don’t forget your own back yard. Search state databases for d/b/as, etc. (IL=cyberdriveillinois.com).
10. Ask you lawyer about specific concerns. Every situation is different and the only way to properly asses the risks/costs of any course of action is to discuss your matter with a competent attorney who practices in this area.
Seemingly overnight, Social media has moved from a business curiosity to an invaluable tool for customer engagement, brand positioning and employee empowerment. For example, social media use for 18-29 year olds has grown from 16% in 2005 to 89% in 2010. A recent survey, now in its third year, found that Social Media is imperative and effective to stand out in a crowded market: 88% of all marketers found that it helped increase exposure and 76% found that it increased traffic and subscriptions.
Faced with the rapid adoption of social media services and platforms, companies find themselves in a dilemma: move quickly to adapt to new technologies, or put policies in place that support marketing goals. Finding the right balance between taking appropriate business risks and minimizing legal ones is a dilemma shared by all businesses, and it can be particularly tricky in the rapidly changing realm of social media. A social media snafu could pull a business into a range of legal imbroglios, involving employment law, intellectual property rights, advertising, defamation, libel, antitrust, and privacy protection. What follows is a list of five common social media legal mistakes that businesses are making.
1. Your Company does not have a social media policy.
Social media is going through an evolution from social media to social business. Yet In the rush to avoid being left behind, some 79% of companies do not have social media policies in place. Companies and employees are becoming deep users of Twitter, LinkedIn, Facebook, blogs, private-label platforms, and the like. Absence of a policy has led to lawsuits over basic issues such as ownership of LinkedIn profiles and Twitter followers. Lack of a policy could also lead to awkward situations that require a response, but may not rise to the level of a legal quandary such as public criticism by a volunteer or advisor.
Having a social media policy cannot prevent the occurrence of unintended consequences. However, it can address most risks that businesses will face and provide an informal framework for addressing issues that will inevitably arise before they become full-fledged emergencies that require a legal solution.
2. Your Company’s social media policy is unenforceable.
Not surprisingly, one of the most active legal areas of social media for business has been in the context of Employer-Employee relations. In 2011, the U.S. Chamber of Commerce released a report stating that the National Labor Relations Board (NLRB) had received 129 cases involving social media. The majority of claims concerned overly-restrictive employer social media policies or employee discipline and even termination based on use of social media.
More recently, the NLRB released updated guidance discussing 14 such cases in particular. Significantly, the NLRB criticized five employers’ social media policies, as “unlawfully overly broad” (e.g., too restrictive). In four cases, an employee’s use of Facebook to complain about their employer was held to be “protected concerted activity.” The benefit for employers is that the report frames the discussion for the appropriate scope of an enforceable social media policy.
3. Your employees don’t understand your social media policy.
For companies who have drafted a social media policy, another risk is that the employees who are engaged in social media on behalf of the company or brand do not understand the policies. Training employees about what it is, how it works and what’s expected is just the beginning.
For example, Australian telecomm company Telstra is an excellent example of social media transparency. This 40,000+ employee company mandates social media training built around a manageable policy focused on “3Rs” – responsibility, respect and representation. To promote awareness and understanding, the comic book-styled policy answers simple questions like “what is Facebook?” and more complex issues like employer criticism on personal blogs. Taking it a step further, the company published their entire social media training guide online for others to study and critique.
4. Your privacy policy is out of date.
Back in the early days of the Internet “Gold Rush,” companies raced to create an online presence complete with ecommerce storefronts. Partly due to the length of time it took to get a web site up and partly due to the fear of risks associated with ecommerce, companies made sure to implement comprehensive Terms of Use and Privacy Policies. Many have not revisited those policies since.
The risks of an outdated privacy policy are twofold. First, it may be unenforceable for any number of reasons. For example, the company has changed the way it gathers and stores information about site visitors, has changed the platforms from which it gathers such data and potentially with whom it shares such data, even unwittingly.
More importantly, the dynamics of online usage and marketing have changed. The availability of GPS data and commonly used technologies for targeted advertising and related services pose new privacy risks such as leaking personally identifiable information including usernames, email addresses, first names, last names, physical addresses, phone numbers, and birthdays. A recent series of articles by the Wall Street Journal analyzed the tracking files installed on people’s computers by the 50 most popular U.S. websites, plus WSJ.com and found that some sites like dictionary.com had over 200 such tracking cookies.
Second, an outdated privacy policy may subject a business to scrutiny and even penalties from the Federal Trade Commission (FTC). On October 12, 2011 the FTC announced a settlement with a file-sharing application developer over allegations that it used deceptive default privacy settings, which would lead consumers to unintentionally and unknowingly share personal files from their mobile device or computer with the public.
5. Your Company is Not Engaging In The Conversation.
Lastly, social media enables instantaneous, ubiquitous, electronic social interaction using highly accessible and scalable publishing techniques. The platforms and services that enable this interaction also provide an unfettered medium for defamatory statements about individuals, disparaging remarks about a companies’ products and services and inaccurate or misleading remarks by over-enthusiastic employees.
The legal risk is that a company often does not control such conversations which can quickly spiral out of control. Many web sites and blogs allow comments and invite participation by unrelated third parties. Having a strategy for when, how, and why to engage is critical to mitigate the legal risks since this area of law is notoriously fact and circumstances dependent and varies by jurisdiction.
Contact Us For a Consultation.
Is your business making one of the mistakes described above? Do you want to learn how to use social media to market and communicate with existing and prospective clients and do so in a way that minimizes potential risks and pitfalls? Hopefully, the guidance outlined above can serve as a good starting point for discussions about how best to use social media as well as suggestions regarding factors that firms may wish to consider in strengthening their compliance and risk management programs. We invite you to contact us with comments and requests about how we can help you educate your employees, prevent fraud, monitor risk, and promote compliance. We can be reached at lsglegal.com, 866-734-256, @adlerlaw and dadler@lsglegal.com.
The past few years have witnessed an explosion of legal and regulatory activity involving social and other new media. This session will examine several key areas, including copyright, trademark and related intellectual property concerns; defamation, obscenity and related liability; false advertising and marketing restrictions; gaming; data privacy issues presented by social media; and impacts of social media on employees and the workplace. Attendees will learn how to identify legal risks and issues before they become full-scale emergencies and how to develop appropriate policies and guidelines covering social media activity.
The RSA® Conference 2012 is coming up: February 27 – March 2, 2012 at the Moscone cEnter in San Francisco, CA.
Can’t make the Conference? Listen to the podcast here to get a sense of what you need to know.
Image by London College of Fashion short courses via Flickr
On July 13, 2011, Congress once again took up the the so-called “Fashion Bill” a/k/a the “Innovative Design Protection and Piracy Prevention Act,” H.R. 2511 (“IDPPPA”). This version of the Bill would amend the Copyright Act to extend certain protections to fashion designs.
The major effect of the law would be the extension of design protection to fashion designs, by amending § 1301(a) to provide that “A fashion design is subject to protection under this chapter” and by amending § 1302(b) to include “an article of apparel” in the definition of “useful articles” subject to protection. The bill would make clear that for purposes of Chapter 13 a fashion design is the appearance as a whole of an article of apparel, including its ornamentation. The bill elaborates on what would constitute “apparel” for purposes of Chapter 13:
an article of men’s, women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear, and headgear;
The term of protection for fashion designs would be only 3 years. Proponents of the legislation have explained that the purpose of the legislation is to protect designs of haute couture during the period of time in which such high-end clothing is sold at premium prices of thousands of dollars and to prevent others from marketing clothing with those designs at substantially lower prices during that initial period, thereby undercutting the market for a hot new fashion design. Because the peak demand for such designs is relatively short-lived, a 3-year term is considered adequate to satisfy the designer’s reasonable expectation of exclusivity.
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