Category: Litigation

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Five Social Media Legal Mistakes That Your Business Is Making

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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.

Advertising, Branding, Certification Marks, Compliance, Content Development, Copyright, Creative Content, Design, Entertainment, Entrepreneurs, Facebook, Fashion, Finance, Greenwashing, Infringement, Internet, Legislation, Litigation, Marketing, Media, Monetizing Content, Privacy, Production, Regulation, Small Business, Social Media, Start-ups, Technology, Trademarks

RSA 2012 Conference Podcast: Social Media Legal & Regulatory Compliance

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.

Advertising, Compliance, Content Development, Creative Content, Entrepreneurs, Finance, Internet, Legislation, Litigation, Marketing, Media, Regulation, Social Media, Technology, Uncategorized

Regulated Industries – Social Media Legal & Regulatory Compliance

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For the past year and a half, I have been traveling to various conferences around the country to speak on Legal and Regulatory compliance in social media. In the beginning, case law and regulatory guidance was scarce and little information was available to provide businesses engaged in social media with a roadmap for Social Media Legal and Regulatory compliance. However, a lot has changed over the last year and a clear trend is emerging. Industry regulators are aware of the use – and abuse – of social media by their members. This article examines recent guidance provided by the Federal Trade Commission (FTC), the Food & Drug Administration (FDA), the National Labor Relations Board (NLRB), the Financial Industry Regulatory Authority (FINRA) and the Securities Exchange Commission (SEC).

Social Media in Marketing, Advertising & Commerce.

The FTC has a prime directive to protect consumers. In the social media sphere, the FTC has pursued this mandate by enforcing companies’ Terms of Use and privacy policies. In addition, the FTC has recently issued updated guidance for companies and individuals that review, promote, advertise or otherwise write about various products and services. In 2009, the FTC tackled its first social media case, an investigation involving Twitter. The focus of the FTC action was Twitter’s privacy policy that asserted A concern about safeguarding confidentiality of personally identifiable information and privacy settings designed to designate tweets as private.

The settlement, first announced in June 2010, resolved charges that Twitter deceived consumers and put their privacy at risk by failing to safeguard their personal information. Lapses in the Twitter’s data security allowed hackers to obtain unauthorized administrative control of Twitter, including both access to non-public user information and tweets that consumers had designated as private, and the ability to send out phony tweets from any account. Under the terms of the settlement, Twitter has hit ended and ongoing obligations concerning consumers and the extent to which it protects the security, privacy, and confidentiality of nonpublic consumer information, including the measures it takes to prevent unauthorized access to nonpublic information and honor the privacy choices made by consumers.

In a similar action, the FTC settled and investigation into Facebook,the leading social media platform/service. The social networking service agreed to settle Federal Trade Commission charges that it deceived consumers by telling them they could keep their information on Facebook private, and then repeatedly allowing it to be shared and made public. The settlement requires Facebook to take several steps to make sure it lives up to its promises in the future, including giving consumers clear and prominent notice and obtaining consumers’ express consent before their information is shared beyond the privacy settings they have established.

Read the FTC update here.

As recently as January 10, 2012, the FTC reached a settlement with UPromise, Inc., stemming from charges that the company – a membership reward service – allegedly used a web-browser toolbar to collect consumers’ personal information, without adequately disclosing the extent of personal information collected. The FTC found that the toolbar was collecting the names of all websites visited by its users as well as information entered into web pages by those users, including user names, passwords, credit card numbers, social security numbers and other financial and/or sensitive data. Furthermore, this data was transmitted in unencrypted, clear text that could be intercepted or viewed by third parties in a WiFi environment. The result? UPromise had to destroy all data it collected under the “Personalized Offers” feature of its “TurboSaver” toolbar in addition to other obligations related to data collection practices and consent to collection of personal information.

Other Industry Guidance.

In October 2009, the Federal Trade Commission released it’s updated “FTC’s Guides Concerning the Use of Endorsements and Testimonials in Advertising.” The updated Guides contain two notable areas of concern for marketers. First, the Guides removed the safe harbor for advertisements featuring a consumer’s experience with a product or service, the so-called “results not typical” disclosure. Second, the FTC Guides underscored the longstanding principle of disclosing “material connections” between advertisers and the consumers, experts, organizations, and celebrities providing reviews and endorsements of products and services.

For concise guidance on when, how and what to disclose, see my article here.

Social Media in the Healthcare & Pharmaceutical Industries.

Like other consumer-oriented industries, Pharmaceutical and Biotech firms are rapidly expanding their presence online. This growth over the past several years has not gone unnoticed as evidenced by FDA Warning Letters targeting marketing campaigns “broadcast” via websites and social media platforms. The FDA also provides more general guidance for the industry. Policy and guidance development for promotion of FDA-regulated medical products using the Internet and social media tools are available in the FDA’s Consumer-Directed Broadcast Advertisements Questions and Answers. While this document provides clear direction for traditional media broadcasting , it only skims the surface regarding web content.

Social Media in the Workplace.

Probably no other federal agency has been as active as the NLRB in recent months. The NLRB has a mandate to protect employees rights to organize and discuss working conditions without fear of reprisals from employers. On August 8, 2011, the Associate General Counsel for the NLRB released a memo entitled “Report of the Acting General Counsel Concerning Social Media Cases.The report began by analyzing a case of first impression: whether an Employer unlawfully discharged five employees who had posted comments on Facebook relating to allegations of poor job performance previously expressed by one of their coworkers.

On January 25, 2012, the NLRB released a second report describing social media cases handled by the NLRB. The “Operations Management Memo” available here, covers 14 cases, half of which involve questions about employer social media policies. Five of those policies were found to be unlawfully broad, one was lawful, and one was found to be lawful after it was revised.

The remaining cases involved discharges of employees after they posted comments to Facebook. Several discharges were found to be unlawful because they flowed from unlawful policies. But in one case, the discharge was upheld despite an unlawful policy because the employee’s posting was not work-related. The report underscores two main points made in an earlier compilation of cases: 1) policies should not sweep so broadly that they prohibit the kinds of activity protected by federal labor law, such as the discussion of wages or working conditions among employees; and 2) an employee’s comments on social media are generally not protected if they are mere gripes not made in relation to group activity among employees.

Social Media and the Financial Services Industry.

From the Madoff scandal, to the Occupy Wall Street Movement, to Mitt Romney’s tax returns, the financial services sector is accustomed to the scrutiny and ire of the public and government regulators. Therefore it is no surprise that on January 4, 2012, the SEC’s Office of Compliance Inspections and Examinations, in coordination with other SEC staff, including in the Division of Enforcement’s Asset Management Unit and the Division of Investment Management, issued its “Investment Adviser Use of Social Media” paper. The paper begins by observing that although “many firms have policies and procedures within their compliance programs” governing use of social media” there is wide “variation in the form and substance of the policies and procedures.” The staff noted that many firms have multiple overlapping procedures that apply to advertisements, client communications or electronic communications generally, which may or may not specifically include social media use. Such lack of specificity may cause confusion as to what procedures or standards apply to social media use.

The SEC paper suggests that the following factors are relevant to determining the effectiveness of a Social Media compliance program:

  • Usage Guidelines
  • Content Standards
  • Monitoring
  • Frequency of Monitoring
  • Approval of Content
  • Firm Resources
  • Criteria for Approving Participation
  • Training
  • Certification
  • Functionality of web sites and updates thereto
  • Personal/Professional sites
  • Information security
  • Enterprise-wide web site content cross collateralization

Similarly, the Financial Industry Regulatory Authority (FINRA) has issued guidance for secutires brokerage firms. According to its web site, FINRA “is the largest independent regulator for all securities firms doing business in the United States.” FINRA protects American investors by ensuring fairness and honesty in the securities industry. In January 2010, FINRA issued Regulatory Notice 10-06, providing guidance on the application of FINRA rules governing communications with the public to social media sites and reminding firms of the recordkeeping, suitability, supervision and content requirements for such communications. Since its publication, firms have raised additional questions regarding the application of the rules. Key take aways from FINRA’s guidance include the flowing:

  • Brokerages have supervisory and record keeping obligations based on the content of the communications – whether it is business related – and not the media
  • Broker-dealers must track and supervise messages that deal with business
  • Firms must have systems in place to supervise and retain interactions with customers, if they are made through personal mobile devices
  • A broker must get approval from the firm if she mentions her employer on a social media site
  • Pre-approval for instant messages, also known as “unscripted interactions’ in legalese, is not necessary as long as supervisors are informed after the fact

Conclusion.

Many professionals in regulated industries are eager to leverage social media to market and communicate with existing and prospective clients and to increase their visibility. However, participants must ensure compliance with all of the regulatory requirements and awareness of the risks associated with using various forms of social media. Hopefully, the guidance outlined above can serve as a good starting point for discussions about how best to use of social media as well as suggestions regarding factors that firms may wish to consider is helpful to firms 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.

Advertising, Branding, Compliance, Content Development, Copyright, Creative Content, Design, Entertainment, Entrepreneurs, Facebook, Internet, Legislation, Litigation, Marekitng, Media, Privacy, Social Media, Technology, Uncategorized

FTC Puts an End to Facebook’s Freewheeling Privacy Ways

The social networking service Facebook has agreed to settle Federal Trade Commission charges that it deceived consumers by telling them they could keep their information on Facebook private, and then repeatedly allowing it to be shared and made public. The proposedsettlement requires Facebook to take several steps to make sure it lives up to its promises in the future, including giving consumers clear and prominent notice and obtaining consumers’ express consent before their information is shared beyond the privacy settings they have established.

Read the FTC update here.

Advertising, Branding, Chicago, Compliance, Content Development, Copyright, Creative Content, Entertainment, Entrepreneurs, Facebook, Finance, Infringement, Internet, Legislation, Litigation, Marekitng, Media, Monetizing Content, Privacy, Production, Small Business, Social Media, Start-ups, Technology, Trademarks, Uncategorized

Social Media Legal Risks: Seven Ways to Maintain Social Media Marketing Legal Compliance

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In October 2009, the Federal Trade Commission released it’s updated “FTC’s Guides Concerning the Use of Endorsements and Testimonials in Advertising.” The purpose of the update was to address the increasing use of endorsements by consumers, experts, organizations and celebrities in online marketing. The update is particularly relevant to the explosive growth of social media as a marketing tool.

The updated FTC Guides contain two notable areas of concern for marketers. First, the Guides removed the safe harbor for advertisements featuring a consumer’s experience with a product or service, the so-called “results not typical” disclosure. Second, the FTC Guides underscored the longstanding principle of disclosing “material connections” between advertisers and the consumers, experts, organizations, and celebrities providing reviews and endorsements of products and services.

Even with the illustrations provided within the FTC Guides themselves, it is still confusing for advertisers, marketers, bloggers and social media users to know how to comply with the guidelines. The purpose of this article is to provided simple, concrete standards to determine (1) when to make certain disclosures and (2) the type of disclosures required by the situation. I have grouped the disclosures into seven categories: Personal Opinion, Free Samples & Free Gifts, Promotional Relationship, Employment Relationship, Affiliate Relationship, Healthcare Disclosures, and Financial Guidelines & Disclosures. The key requirement to keep in mind is the obligation to disclose any relationship that may have influenced you.

1. Personal Opinion

If you write a review or blog post and your post contains only your own opinions, you haven’t received any compensation for the review or post, and you otherwise have no material connection to the topic of your post, you have nothing to disclose.

2. Free Sample/Free Gift

If you have been given a free copy, sample, or gift of a product or service and you write a review or blog post, you must disclose the facts and circumstances of how you received the item or service, even if you have not been paid to review or post on that topic. You do not run afoul of the disclosure rules if you receive payment unrelated your content. This disclosure is useful to keep in mind when your content relates to product previews, reviews of samples, services, gifts, books, software, music, movies, etc.

3. Promotional Relationships

If you write a review or blog post and your post is based upon an advertising relationship, and you have received compensation (cash, free services, product samples for personal use or a gift) for the review or post, you must disclose the nature of the relationship, whether you received anything of value, and information about relationships with advertisers or endorsers that would have a material impact about how a prospective consumer would view the message. This disclosure is useful to keep in mind when your content relates to paid posts, sponsored messages, tweets, fan page postings, etc.

4. Employment Relationships

If you write a review or blog post and your post is based upon an employment relationship, e.g. you are an employee or shareholder of a related company, you have a “material business relationship” to disclose, even if you are not being directly compensated for the message. You may post on behalf of a business or brand. In fact, it may even be part of your job description. Again, be mindful of the requirement to disclose any “connections” that may have influenced you, including both direct and indirect relationships.

5. Affiliate Relationships

If you write a review or blog post and your post is based upon an affiliate relationship, e.g., you have included affiliate links on your page, you must disclose the fact that the relationship exists and that you will be paid for referrals from your page.

6. Healthcare Disclosures

If you write a review or blog post and your content is based upon a connection to a pharmaceutical or healthcare product or program, you need to include relevant healthcare-related disclosures or information safety warnings, side effects, or official links with information.

7. Financial Guidelines & Disclosures

If you write a review or blog post and you work for a financial services company, you may be making investor-relations communications and your communications are subject to regulation by the NASD, SEC, FINRA and potentially state and federal regulatory agencies. The FINRA Guidance on Blogs & Social Networking Sites” can be found here. Record Retention: ensure that you can retain records of those communications. Suitability: a particular communication a “recommendation” for purposes of NASD Rule 2310 and is it suitable for potential recipients. Public Appearances: determine whether  your post part of an “interactive online forum” and whether supervision is required. Third-Party Posts: If your firm created or “sponsors” and online forum, be aware that, under certain circumstances, a customer’s or other third party’s content on a social media site may become attributable to the firm. Whether third-party content is attributable to a firm depends on whether the firm has (1) involved itself in the preparation of the content or (2) explicitly or implicitly endorsed or approved the content.

Clearly, legal and regulatory compliance for social media remains a minefield. Although this article is intended to give you a working knowledge of the types of risks created by, and disclosures required for, the use of Social Media, it is NOT LEGAL ADVICE. Each situation is unique and you should consult with qualified legal counsel regarding your specific circumstances.

ABOUT THE AUTHOR

David M. Adler, Esq. is an attorney, author, educator, entrepreneur and partner at the boutique intellectual property, entertainment & media law firm LEAVENS, STRAND, GLOVER & ADLER, LLC based in Chicago, Illinois. My responsibilities include providing advice to business units and executives on copyright, trademark, ecommerce, software/IT, media & entertainment and issues associated with creating and commercializing innovations and creative content, drafting and negotiating contracts and licenses, advising on securities laws and corporate governance and managing outside counsel. Learn more about me here: www.ecommerceattorney.com and here: Leavens Strand Glover & Adler, LLC.

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Content Development, Copyright, Creative Content, Entertainment, Infringement, Litigation, Media

Marvel Comics Wins Key Work-For-Hire Decision Against Stan Lee’s Heirs

What is this case really about? Judge Colleen McMahon notes in her opinion that “this case is not about whether Jack Kirby or Stan Lee is the real ‘creator’ of Marvel characters, or whether Kirby (and other freelance artists who created culturally iconic comic book characters for Marvel and other publishers) were treated ‘fairly’.” Rather this case is about “whether Kirby’s work qualifies as work-for-hire under the Copyright Act of 1909, as interpreted by the courts.”

On Thursday, Judge McMahon ruled that the heirs of the late Jack Kirby, creator and co-creator of the well-known Marvel Comics superheroes such as Fantastic Four, X-Men, the Hulk and more, have no legal claim to the copyrights of those characters.

Despite press efforts (including two pieces in the New York Times) to characterize the proceeding as “unfair” to the artists and creators upon whose labors companies profited, the decision reflects long-standing law that vests ownership of certain creative works in the company that commissions them as a “work-made-for-hire.”

ABOUT THE AUTHOR

David M. Adler, Esq. is an attorney, author, educator, entrepreneur and partner at the boutique intellectual property, entertainment & media law firm LEAVENS, STRAND, GLOVER & ADLER, LLC based in Chicago, Illinois. My responsibilities include providing advice to business units and executives on copyright, trademark, ecommerce, software/IT, media & entertainment and issues associated with creating and commercializing innovations and creative content, drafting and negotiating contracts and licenses, advising on securities laws and corporate governance and managing outside counsel. Learn more about me here: http://www.ecommerceattorney.com and here: Leavens Strand Glover & Adler, LLC

Advertising, Branding, Compliance, Creative Content, Finance, Infringement, Internet, Legislation, Litigation, Marekitng, Media, Monetizing Content, Privacy, Social Media, Technology, Uncategorized

Will the News of the World voicemail snooping saga accelerate US privacy reform?

The United States is one the few countries in the developed world that lacks a comprehensive law protecting consumer privacy. Geolocation, personalized ads, group-buying deals, tracking cookies and other technologies have a wide range of privacy implications. Incidents like the phone-hacking scandal in the U.K. underscore the growing concern among both the general public and Congress here in the U.S.

Unlike citizens in Europe, Asia and Latin America, U.S. laws addressing rights and obligations surrounding sensitive-information tend to be sector-specific and inconsistent (HIPPA, COPPA, etc.). Notably, the FTC, the federal agency tasked with safeguarding consumers, has taken a largely laissez-faire approach. The result of Guidelines and enforcement actions is essentially a policy of “do as you like, just don’t lie about it.”

While congressional attention has been focused on updating the regulatory regime, the current legislation reflects the piecemeal approach of the past. Here is a break-down of the Five leading government privacy initiatives. Bills starting with H.R. are from the US House, and bills starting with S. are from the US Senate. The numbers are from the 112th Congress: 2011-2012.

H.R. 654: Do Not Track Me Online Act, sponsored by Rep. Jackie Speier [D-CA12] is to direct the Federal Trade Commission to prescribe regulations regarding the collection and use of information obtained by tracking the Internet activity of an individual, introduced Feb 11, 2011. Status: This bill is in the first step in the legislative process.

S. 913: Do-Not-Track Online Act of 2011, sponsored by Sen. John Rockefeller [D-WV] is a bill to require the Federal Trade Commission to prescribe regulations regarding the collection and use of personal information obtained by tracking the online activity of an individual, introduced May 9, 2011. Status: This bill is in the first step in the legislative process.

H.R. 1895: Do Not Track Kids Act of 2011, sponsored by Representatives Edward J. Markey, Massachusetts Democrat, and Joe Barton, Texas Republican, is aimed specifically at internet marketing to minors, introduced May 13, 2011. Status: This bill is in the first step in the legislative process.

S. 413: Cybersecurity and Internet Freedom Act of 2011, associated with the phrase the “internet kill switch” was, sponsored by Sen. Joseph Lieberman [I-CT], introduced Feb 17, 2011. Status: This bill is in the first step in the legislative process.

S. 799: Commercial Privacy Bill of Rights Act of 2011, sponsored by Sen. John Kerry [D-MA] Introduced Apr 12, 2011. Status: This bill is in the first step in the legislative process

Complete text of the various bills is available at GovTrack.us.

ABOUT THE AUTHOR

David M. Adler, Esq. is an attorney, author, educator, entrepreneur and partner at the boutique intellectual property, entertainment & media law firm LEAVENS, STRAND, GLOVER & ADLER, LLC based in Chicago, Illinois. My responsibilities include providing advice to business units and executives on copyright, trademark, ecommerce, software/IT, media & entertainment and issues associated with creating and commercializing innovations and creative content, drafting and negotiating contracts and licenses, advising on securities laws and corporate governance and managing outside counsel. Learn more about me here: http://www.ecommerceattorney.com and here: hLeavens Strand Glover & Adler, LLC

Advertising, Branding, Certification Marks, Content Development, Creative Content, Entrepreneurs, Infringement, Litigation, Marekitng, Small Business, Technology, Trademarks, Uncategorized

Trending @ The Trademark Office: Bona Fide Intent

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Recent Decisions Highlight Need For Objective Evidence of Intent to Use Mark

Two recent decisions at the Trademark Trial & Appeal Board (TTAB) indicate what may be an emerging trend in Trademark practice: challenges based on lack of evidence of a “bona fide” intent to use a mark for which a Section 2(b) Intent-to-Use (ITU) application has been filed. The two relevant decisions are Kaplan v. Brady and Nintendo of America, Inc. v. Adar Golad.

Every ITU Applicant makes a legal averment, under oath, that it has a “bona fide” intent to use the mark in commerce. “To show a bona fide intent to use, there must be ‘objective evidence,’ that is evidence in the form of ‘real life facts and by the actions of the applicant.’ J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sec. 19:14 (4th ed. 2009). There should be some ‘definite’ (if not necessarily ‘concrete’) plan by applicant. For example, ‘written plan of action for a new product or service,’ or a ‘re-branding of an existing line of goods or services.’ Id.”  In the two cited cases, lack of such definite evidence proved fatal.

The first decision is a Cancellation action where one party (Kaplan) sought to have the registration of another party (Brady)  cancelled. Kaplan’s claim for cancellation of Brady’s FUNNY-FACE mark was based on the existence of Kaplan’s ITU application for the mark FUNNY FACE FIZZY BLAST!  Although the parties exchanged several motions, of interest here is the Board’s determination that Kaplan lacked standing to prosecute the cancellation because Kaplan had “produced no documentation supporting his alleged bona fide intent to use such mark other than a “completely phony” and undated business plan that is merely a “slightly altered version” of a business plan for use of the mark BAKE OFF! on a “cleansing product.”

The second decision is an Opposition proceeding where one party (Nintendo) sought to prevent the registration of another party’s (Golad) mark by opposing the application.  Golad filed an ITU application to register the mark FLASHBOY for “plug and play interactive video games … comprised of computer hardware and software.” Nintendo opposed the registration on the ground that FLASHBOY is likely to cause confusion with its Registration for the mark GAMEBOY for game equipment, etc.

During discovery, Golad admitted that he did not have a business plan or any other documentation reflecting plans to “advertise, manufacture or otherwise use the mark FLASHBOY in commerce on the goods for which applicant seeks registration.” That was enough to establish a lack of bona fide intent.

Summary: Practice Tip

Both applicants and trademark counsel need to be aware of the requirement that an ITU application be supported by at least some definite evidence of the applicant’s bona fide intent to use the mark. While it remains unclear whether  a business plan alone is sufficient to meet this burden, an applicant must be able to produce some type of evidence, through documents or testimony, indicating plans to advertise, manufacture, distribute, license or otherwise use the mark.

Advertising, Branding, Certification Marks, Chicago, Content Development, Copyright, Creative Content, Entertainment, Entrepreneurs, Infringement, Litigation, Marekitng, Media, Monetizing Content, Production, Small Business, Social Media, Start-ups, Technology, Trademarks, Uncategorized

Neoformix Tweet Topic Explorer is a Powerful New Tool For Social Media Marketing

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WordCluster Analytics Provide Rapid Visualization of Hot Topics

Kudos to Barry Ritholz and his Blog The Big Picture for turning us all on to a phenomenal new social media metrics tool: Tweet Topic Explorer.  This Tool retrieves the most commonly used words in recent (no word on time period covered by “recent”) “tweets” for a specific user and displays these visually using bubble clusters. The area of the circle for a word is proportional to that word’s frequency. Words most often used together are grouped by color.

For example, using my Twitter handle, @adlerlaw, produces a cloud that shows the words “film,” “media,” “legal,” “social” and “Chicago” are among my most frequently used words.  Looking at groupings, “Film” is used most commonly with words like “tax” and “indie.” The words “Law” and “Legal” appear most frequently with “social,” “media” “brand,” and “trademark.”

The potential for brand managers and social media marketing professionals is obvious. First, a brand manager can quickly and easily analyze what key words are being used and how they are being used for any given twitter handle. Note that if your handle is identical to a brand name, this is critical visual evidence of the words being used in connection with your brand! Second, if you area  marketing professional, you can analyze individual handles to get feedback on words being used by social media influencers and other specific followers.

The value should be obvious by now. This tool creates an amazing feedback mechanism. The brand owner/marketing professional can easily see if the message they are trying to communicate is really coming through as well as they intend. For example, check out the word cloud for “Coca-Cola.” I was amazed to see that the most frequent word is “^GD.” I don’t know about you, but that’s not communicating anything about the brand. Whereas positive attribute words like “sharing” and “delicious” are much less prominent.

Also, the potential to uncover negative words will be displayed prominently. This gives brand managers insight into the areas, issues and users that they need to target.

I’m not saying its going to be easy. In order to get the most out of this tool, one is going to have to spend time analyzing users one by one. However, this is one of the best tools I’ve seen that breaks tweets down into a clear, visual, actionable matrix.

ABOUT THE AUTHOR

David M. Adler, Esq. is an attorney, author, educator, entrepreneur and founder of a boutique intellectual property law firm based in Chicago, Illinois. With over fourteen years of legal experience, Mr. Adler created the firm with a specific mission in mind: to provide businesses with a competitive advantage by enabling them to leverage their intangible assets and creative content in a way that drives innovation and increases the overall value of the business. Learn more about me HERE.

David M. Adler, Esq.  Safeguarding Ideas, Relationships & Talent®

Entrepreneurs, Litigation, Media, Small Business, Social Media

NLRB Raising Profile of Social Media in the Workplace

According to the National Labor Relations Board, the Thomson Reuters Corp. Social Media policy may be violating federal law. At issue is the company’s Twitter policy. The NLRB maintains that it improperly restricts an employee’s right to use Twitter to discuss working conditions with co-workers.

According to the Newspaper Guild, a labor union representing Reuters employees, Reuters publicly disciplined reporter Deborah Zabarenko for posting a Twitter message that said, “One way to make this the best place to work is to deal honestly with Guild members.” The NLRB is taking the position that Reuters policy impairs employees’ rights to discuss working conditions and that it applied the policy improperly.

This marks the second case initiated by the NLRB involving a company’s social media policy.

In the first case arising last October, American Medical Response of Connecticut Inc. allegedly violated labor law when it terminated an employee allegedly for criticizing her boss on Facebook.

The significance of these cases should be clear to any business. First, it is important to have a Social Media policy in place. More importantly, however, Social Media policies need to be written with legal and regulatory compliance in mind. An overly retractive Social Media policy or one that penalizes employees for expressing protected speech will result in legal liability.