Association Law Online ConferenceJune 13, 2013

Jefferson C. Glassie, Esq.Whiteford, Taylor & Preston LLP

Washington, DC

Intellectual Property and Technology

Program Overview

• Copyrights• Trademarks• Internet Applications• Social Media• Association activities (international,

publishing, lists, affinity programs, etc.)

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

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!

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

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.

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

Fair Use Factors

1. Purpose and nature of Use-- nonprofit or commercial use

2. Nature of copyrighted work–how creative / original

3. Amount of original work used–entire work versus minor part–important versus incidental part

4. Affect on market for original–will new use displace sales of original?

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

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)

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)

• Advisable to have written license or assignment for any association volunteers or vendors contributing or creating content

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; registration not

mandated• Associations can have rights in name, acronym, design logo,

slogan/tagline, but often weak

Screening Proposed Trademarks

• 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

Distinctiveness of a Mark

• 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)

Strong Weak

Fanciful Arbitrary Suggestive Descriptive Generic

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

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, can not maintain/renew

registration• Can’t make material changes to registered mark

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

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

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

Some Laws that Apply

• Communications Decency Act, includes Section 230, which protects providers of interactive computer service (may include associations) from defamation/tort claims based on third party content

• FTC Guidelines on Endorsements and Testimonials – added social media in recent rules – disclosure of any compensation

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

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

Potential Legal Problems

• Law is evolving, but potential liability:– Antitrust– Defamation– Copyright– Trademark– Privacy– Breach of confidentiality

• Overall not a significant risk, if prudent

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

Sample Terms of Use

• Require adherence to code of conduct• No slurs, demeaning jokes, sexist terms, offensive

photos, etc.• No posting of photos or other IP without permission or

ownership• No postings that could be antitrust violations• Right to monitor posts• Right to remove inappropriate posts

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

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

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

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)

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

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!

Contact Information