social media: implications for intellectual property law

Social Media: Implications for Social Media: Implications for

Intellectual Property LawIntellectual Property Law

Blaine T. Blaine T. BettingerBettinger

May 11, 2010May 11, 2010

Bond, Schoeneck & King, PLLCBond, Schoeneck & King, PLLC

Syracuse, New YorkSyracuse, New York

What Is Social Media?What Is Social Media?

►► ““Social MediaSocial Media”” is a term used to describe the is a term used to describe the online interaction of individuals and exchange of online interaction of individuals and exchange of useruser--generated content/informationgenerated content/information

►► Examples of social media sites:Examples of social media sites:�� MicrobloggingMicroblogging (Twitter(Twitter®®))

�� Social networking (LinkedInSocial networking (LinkedIn®®, , FacebookFacebook®®))

�� Social bookmarking (Social bookmarking (Del.icio.usDel.icio.us®®, , StumbleUponStumbleUpon®®))

�� Social News (Social News (DiggDigg®®, , RedditReddit®®))

�� Multimedia (Multimedia (FlickrFlickr®®, YouTube, YouTube®®) )

Rapid Growth of Social MediaRapid Growth of Social Media

As of April 2010:As of April 2010:

►►FacebookFacebook -- >400 million users>400 million users

►►Twitter Twitter –– ~106 million users~106 million users

►►LinkedIn LinkedIn –– >65 million users>65 million users

►►MyspaceMyspace -- >100 million accounts>100 million accounts

Rapid Growth of Social MediaRapid Growth of Social Media

►► As of April 2010, actor Ashton As of April 2010, actor Ashton KutcherKutcher has the has the

largest Twitter following with 4.7 million largest Twitter following with 4.7 million

followers:followers:

�� Larger population than 50% of the worldLarger population than 50% of the world’’s countriess countries

►► 50 million Tweets a day (600/second)50 million Tweets a day (600/second)

►►More than 8 billion minutes (195 lifetimes) are More than 8 billion minutes (195 lifetimes) are

spent on spent on FacebookFacebook each dayeach day

Social Media and Intellectual Social Media and Intellectual

Property IssuesProperty Issues

►► DefamationDefamation

►► PatentPatent

►► CopyrightCopyright

►► TrademarkTrademark

►► Trade SecretTrade Secret

Areas of concern:Areas of concern:

Social Media & IPSocial Media & IP

DefamationDefamation

Social Media & IP: DefamationSocial Media & IP: Defamation

Elements of Defamation:Elements of Defamation:1.1. A false statement;A false statement;

2.2. Published to a third party without privilege Published to a third party without privilege or authorization;or authorization;

3.3. With fault amounting to at least negligence; With fault amounting to at least negligence; andand

4.4. Causing special harm or constituting Causing special harm or constituting defamation per se.defamation per se.


►►The Citizen Media Law Center tracks lawsuits The Citizen Media Law Center tracks lawsuits

involving social mediainvolving social media

►►Currently several cases involving social media Currently several cases involving social media

and defamationand defamation

�� Twitter & defamation Twitter & defamation –– 9 pending cases9 pending cases

�� FacebookFacebook & defamation & defamation –– 9 pending cases9 pending cases

�� MySpace & defamation MySpace & defamation –– 6 pending cases6 pending cases


►►Example #1:Example #1:�� July July ’’09 09 -- Tenant sued for defamation by Tenant sued for defamation by realty company after tweeting:realty company after tweeting:

�� BonnenBonnen had just 20 Twitter followershad just 20 Twitter followers

�� Current status: Dismissed with prejudice; Current status: Dismissed with prejudice; tweets were too vaguetweets were too vague

�� BonnenBonnen’’ss Twitter account was later deletedTwitter account was later deleted


►►Example #1 (Example #1 (concon’’tdtd):):

�� Appendix A to Horizon RealtyAppendix A to Horizon Realty’’s complaint has s complaint has

several of several of BonnenBonnen’’ss other tweets:other tweets:

�� Spirit Airlines and McDonalds didnSpirit Airlines and McDonalds didn’’t suet sue

�� Emphasizes need to monitor brand while Emphasizes need to monitor brand while

being aware of possible repercussionsbeing aware of possible repercussions


►► The The ““Streisand EffectStreisand Effect””::

�� Attempt to block or remove online information results in Attempt to block or remove online information results in

greater dissemination of the informationgreater dissemination of the information

►► In 2003, Barbra Streisand sued In 2003, Barbra Streisand sued Pictopia.comPictopia.com for $50 million to for $50 million to

have aerial photos of her mansion removed from the website. have aerial photos of her mansion removed from the website.

Hits increased to over 420,000 over the next monthHits increased to over 420,000 over the next month

�� Horizon Realty v. Horizon Realty v. BonnenBonnen::

►►Before Horizon acted, Before Horizon acted, BonnenBonnen had just 20 Twitter followershad just 20 Twitter followers

►►After filing, the story was picked up by journalists and After filing, the story was picked up by journalists and ““Horizon Horizon

RealtyRealty”” hit No. 3 on Twitterhit No. 3 on Twitter’’s list of trending topicss list of trending topics


►►Example #2:Example #2:

�� Dec Dec ’’09 09 –– Hyundai Dealer sends Hyundai Dealer sends c&dc&d letter letter

after reading an unhappy customerafter reading an unhappy customer’’s tweets:s tweets:

�� AlascioAlascio has just 174 followers on Twitterhas just 174 followers on Twitter


►►Example #2 (contExample #2 (cont’’d):d):

�� Attorney responded with letter pointing out Attorney responded with letter pointing out

protected speech and lack of injury; protected speech and lack of injury;

mentioned the mentioned the ““Streisand EffectStreisand Effect””

►►““You may wish to do some research on a concept You may wish to do some research on a concept

known as the known as the ‘‘Streisand Effect,Streisand Effect,’’ before advising before advising

your client further, or simply include the your client further, or simply include the

dealershipdealership’’s marketing manager in on any strategy s marketing manager in on any strategy

meetings before taking further action.meetings before taking further action.””


►►Example #3:Example #3:�� Oct Oct ’’09 09 –– Kim Kim KardashianKardashian tweets the following:tweets the following:

Dr. Dr. Siegal'sSiegal's Cookie Diet is falsely promoting that I'm on this Cookie Diet is falsely promoting that I'm on this diet.diet. NOT TRUE!NOT TRUE! I would never do this unhealthy diet! I do I would never do this unhealthy diet! I do QuickTrimQuickTrim! . . . ! . . .

If this Dr. If this Dr. SiegalSiegal is lying about me being on this diet, what is lying about me being on this diet, what else are they lying about?else are they lying about? Not cool!Not cool! . . . . . .

�� KardashianKardashian had 2.7 million followershad 2.7 million followers

�� Status: PendingStatus: Pending


►► Is it defamation if someone shares or reIs it defamation if someone shares or re--tweets the original tweet?tweets the original tweet?

�� Likely depends on element #3: Likely depends on element #3: ““with fault with fault amounting to at least negligenceamounting to at least negligence””

�� Is the reIs the re--tweet or posting negligent?tweet or posting negligent?

Social Media & IP: Defamation (Social Media & IP: Defamation (§§230 230

of the CDA)of the CDA)

►► CDA CDA -- Communications Decency Act:Communications Decency Act:

�� 230(c)(1) 230(c)(1) –– ““No provider or user of an interactive computer No provider or user of an interactive computer service shall be treated as the publisher or speaker of any service shall be treated as the publisher or speaker of any information provided by another information content provider.information provided by another information content provider.””

�� Provider of an Provider of an ““interactive computer serviceinteractive computer service”” includes social includes social media sites, & users are media sites, & users are ““information content information content provider[sprovider[s]]””

�� Encourages providers to create forums for online interaction andEncourages providers to create forums for online interaction andprovides protection against liability for defamation, breach of provides protection against liability for defamation, breach of contract, emotional distress, negligent misrepresentation, etccontract, emotional distress, negligent misrepresentation, etc……

�� Although CDA was later held to be unconstitutional, section 230 Although CDA was later held to be unconstitutional, section 230 survivedsurvived

Social Media & IP: Defamation (§230 of the CDA)

►Example #1 - Doe v. MySpace (2007):

� 13-year-old created MySpace account and reported her age as 18. She met a 19-year-old through the account who later assaulted her. She sued MySpace for negligence, fraud, and negligent misrepresentation.

� The court held that the case was actually a content case although defamation was not a claim, and thus §230 immunized MySpace.

� Current status: dismissed

Social Media & IP: Defamation (§230 of the CDA)

►Example #2 - Doe v. Friendfinder Network (2008):

� Friendfinder Network was sued for an allegedly false account created for Doe on the site

� Most claims were dismissed under §230, leaving only a state intellectual property claim and a Lanham Act claim.

� But the Ninth Circuit had previously held that §230immunized against state intellectual property claims (Perfect 10, Inc. v. CC Bill, LLC)


►►CDA CDA -- Communications Decency Act:Communications Decency Act:

�� Section 230 does NOT protect against federal Section 230 does NOT protect against federal

criminal or intellectual property (copyright, criminal or intellectual property (copyright,

trademark, etc) claims!trademark, etc) claims!

�� Circuit split? Might not protect against state Circuit split? Might not protect against state

intellectual property claimsintellectual property claims


Endorsements: Endorsements:

DefamationDefamation’’s Mirror Images Mirror Image

FTC GuidelinesFTC Guidelines

►►Effective December 1, 2009 Effective December 1, 2009 –– New FTC New FTC

guidelines: guidelines: ““endorsersendorsers”” must disclose any must disclose any

connections with advertisers (including on connections with advertisers (including on

social media)social media)

►►Addresses:Addresses:►►Disingenuous positive product reviewsDisingenuous positive product reviews

►►AstroturfingAstroturfing

►►FlogsFlogs


►►Who is an Who is an ““endorserendorser””??

““For purposes of this part, an endorsement means any advertising For purposes of this part, an endorsement means any advertising message (including verbal statements, demonstrations, or message (including verbal statements, demonstrations, or depictions of the name, signature, likeness or other identifyingdepictions of the name, signature, likeness or other identifyingpersonal characteristics of an individual or the name or seal ofpersonal characteristics of an individual or the name or seal of an an organization) that consumers are likely to believe reflects the organization) that consumers are likely to believe reflects the opinions, beliefs, findings, or experiences of a party other thaopinions, beliefs, findings, or experiences of a party other than the n the sponsoring advertiser, even if the views expressed by that partysponsoring advertiser, even if the views expressed by that partyare identical to those of the sponsoring advertiser. are identical to those of the sponsoring advertiser. The party The party whose opinions, beliefs, findings, or experience the whose opinions, beliefs, findings, or experience the message appears to reflect will be called the ENDORSER message appears to reflect will be called the ENDORSER and may be an individual, group, or institutionand may be an individual, group, or institution..””


►►Advertisers (or employers) might be liable Advertisers (or employers) might be liable

for misleading claims made by thirdfor misleading claims made by third--party party

endorsersendorsers

►►Therefore a duty to educate paid endorsers, Therefore a duty to educate paid endorsers,

celebrities, or giveaway recipients about the celebrities, or giveaway recipients about the

FTC guidelinesFTC guidelines


►►Best Practices TipBest Practices Tip::

�� Twitter Twitter –– use use hashtagshashtags::

•• ##sponspon (sponsored)(sponsored)

•• #paid (paid)#paid (paid)

•• ##sampsamp (sample)(sample)

�� ExampleExample: We love the new & improved Widgets! Only : We love the new & improved Widgets! Only

$9.99/per month at $9.99/per month at www.widgets.comwww.widgets.com #sponsored#sponsored



�� Blogs, Blogs, FacebookFacebook, etc, etc::►►Clearly disclose any material connection with Clearly disclose any material connection with advertisers/sponsorsadvertisers/sponsors

►►Recommendations from the Word of Mouth Recommendations from the Word of Mouth Marketing Association (Marketing Association (““WOMMAWOMMA””))


PatentsPatents

Social Media & IP: PatentsSocial Media & IP: Patents

►► Public Disclosure Via Social MediaPublic Disclosure Via Social Media

�� U.S. U.S. –– 1 year to file after invention first described in a 1 year to file after invention first described in a

““printed publicationprinted publication””

�� MPEP MPEP §§2128: 2128: ““An electronic publication, including an An electronic publication, including an

onon--line database or Internet publication, is considered line database or Internet publication, is considered

to be a to be a ‘‘printed publicationprinted publication’…”’…”

�� BUT note: publication must be sufficiently enabling & BUT note: publication must be sufficiently enabling &

must be accessible to those in the relevant artmust be accessible to those in the relevant art


►►Examples of Possible Public Disclosure of Examples of Possible Public Disclosure of

an Invention via Social Media:an Invention via Social Media:

�� A shared picture of the inventionA shared picture of the invention

�� A blog post or A blog post or FacebookFacebook notenote

�� FacebookFacebook or Twitter statuses (must be or Twitter statuses (must be

enabling)enabling)


►► Ex parte Ex parte ShaouyShaouy::

�� Examiner relied on a 2000 copy of a website cached in Examiner relied on a 2000 copy of a website cached in

the the ““WaybackWayback MachineMachine””

�� BPAI held that the reference was indeed valid prior artBPAI held that the reference was indeed valid prior art

�� Example of an Internet reference (no social media Example of an Internet reference (no social media

examplesexamples……yet)yet)



�� Avoid posting enabling disclosures through Avoid posting enabling disclosures through

social mediasocial media

►►Educate employeesEducate employees

►►Monitor & remedy disclosures Monitor & remedy disclosures –– the 1the 1--year clock year clock

starts ticking!starts ticking!


CopyrightCopyright

Social Media & IP: CopyrightSocial Media & IP: Copyright

►► Issues:Issues:

1. Protecting the User1. Protecting the User’’s Contents Content

2. Protecting the Content of Others 2. Protecting the Content of Others


1. Protecting the User1. Protecting the User’’s Content:s Content:

�� The content creator is the copyright holder The content creator is the copyright holder

of posted material under two conditions:of posted material under two conditions:

1.1. The content is originalThe content is original

2.2. Content satisfies the Content satisfies the ““threshold of originalitythreshold of originality””


TwitterTwitter’’s Policy:s Policy:


FacebookFacebook’’ss Policy:Policy:


MySpaceMySpace’’s Policy:s Policy:


Protecting the UserProtecting the User’’s Content:s Content:

�� Issue #1: Can a single Tweet or a Issue #1: Can a single Tweet or a FacebookFacebook status status

update satisfy the threshold of originality?update satisfy the threshold of originality?

►► Maybe, but Tweets for example are limited to just 140 Maybe, but Tweets for example are limited to just 140

characterscharacters

►► However, one of the worldHowever, one of the world’’s most famous short stories s most famous short stories

(usually attributed to Ernest Hemingway) is only 33 (usually attributed to Ernest Hemingway) is only 33

characters:characters:

““For sale: baby shoes, never worn.For sale: baby shoes, never worn.””


Protecting the UserProtecting the User’’s Contents Content-- Questions:Questions:

�� Issue #2: Can a series of postings satisfy Issue #2: Can a series of postings satisfy

the threshold?the threshold?

�� Issue #3: Is a reIssue #3: Is a re--tweet (a wordtweet (a word--forfor--word word

copy of the original tweet) fair use or a copy of the original tweet) fair use or a

violation of copyright?violation of copyright?



Twitter and the Library of Congress:Twitter and the Library of Congress:

�� On April 14, 2010, the On April 14, 2010, the LoCLoC announced (via announced (via

Twitter) that it would archive and make Twitter) that it would archive and make

available for research EVERY public tweetavailable for research EVERY public tweet




�� Under Twitter TOS, users grant Twitter a Under Twitter TOS, users grant Twitter a ““worldwide, nonworldwide, non--exclusive, royaltyexclusive, royalty--free license (with a right to sublicense) to use, free license (with a right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, dispcopy, reproduce, process, adapt, modify, publish, transmit, display lay and distribute such content in any and all media or distributionand distribute such content in any and all media or distributionmethods (now known or later developed).methods (now known or later developed).””

�� The license includes The license includes ““the right for Twitter to make such Content the right for Twitter to make such Content available to other companies, organizations or individuals who available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distributiopartner with Twitter for the syndication, broadcast, distribution or n or publication of such Content on other media and services, subjectpublication of such Content on other media and services, subject to to our terms and conditions for such Content use.our terms and conditions for such Content use.””




�� Further, the Further, the LoCLoC falls under the library exception of section 108:falls under the library exception of section 108:

►►““it is not an infringement of copyright for a library or it is not an infringement of copyright for a library or archives, or any of its employees acting within the scope archives, or any of its employees acting within the scope of their employment, to reproduce no more than one of their employment, to reproduce no more than one copycopy……of a workof a work……if:if:””�� 1. the reproduction/distribution is without a commercial purpose1. the reproduction/distribution is without a commercial purpose;;

�� 2. the library is open to the public and the collections are ava2. the library is open to the public and the collections are availableilable

�� 3. the notice of copyright in the original work remains intact o3. the notice of copyright in the original work remains intact or r therethere’’s a legend stating that it may be protected under copyright. s a legend stating that it may be protected under copyright.




�� Archiving Tweets at Archiving Tweets at LoCLoC is almost certainly is almost certainly

permissible under the Copyright Actpermissible under the Copyright Act

�� But what about the actions of researchers who But what about the actions of researchers who

use/reproduce/distribute those archived tweets?use/reproduce/distribute those archived tweets?


2. Protecting the content of others:2. Protecting the content of others:

�� Terms of ServiceTerms of Service

�� The Digital Millennium Copyright ActThe Digital Millennium Copyright Act


►►TwitterTwitter’’s Copyright Policy:s Copyright Policy:

�� ““Twitter respects the intellectual property rights of Twitter respects the intellectual property rights of

others and expects users of the Services to do the others and expects users of the Services to do the

same. We will respond to notices of alleged copyright same. We will respond to notices of alleged copyright

infringement that comply with applicable law and are infringement that comply with applicable law and are

properly provided to usproperly provided to us……We reserve the right to We reserve the right to

remove Content alleged to be infringing without prior remove Content alleged to be infringing without prior

notice and at our sole discretionnotice and at our sole discretion……””


►► FacebookFacebook’’ss Copyright Policy:Copyright Policy:

�� ““We respect other people's rights, and expect you We respect other people's rights, and expect you

to do the same.to do the same.

1.1. You will not post content or take any action on You will not post content or take any action on FacebookFacebook

that infringes or violates someone else's rights or that infringes or violates someone else's rights or

otherwise violates the law. otherwise violates the law.

2.2. We can remove any content or information you post on We can remove any content or information you post on

FacebookFacebook if we believe that it violates this Statement.if we believe that it violates this Statement.

3.3. We will provide you with tools to help you protect your We will provide you with tools to help you protect your

intellectual property rights. To learn more, visit our How to intellectual property rights. To learn more, visit our How to

Report Claims of Intellectual Property Infringement page.Report Claims of Intellectual Property Infringement page.””


►►DMCA DMCA -- Digital Millennium Copyright Act:Digital Millennium Copyright Act:

�� Remember: Section 230 of Communications Remember: Section 230 of Communications

Decency Act does not apply to intellectual Decency Act does not apply to intellectual

property claimsproperty claims

�� The Digital Millennium Copyright Act (DMCA) The Digital Millennium Copyright Act (DMCA)

in 1998 acts as a gap filler by creating in 1998 acts as a gap filler by creating

copyright safe harborscopyright safe harbors


DMCA DMCA -- Digital Millennium Copyright Act:Digital Millennium Copyright Act:

�� Safe harbors created for:Safe harbors created for:1.1. Provider of conduit communications (ex. ISP, telephone Provider of conduit communications (ex. ISP, telephone

company)company)

2.2. Those who cache content hosted by another (ex. Those who cache content hosted by another (ex.

Google caching)Google caching)

3.3. Those who host content provided by another (ex. social Those who host content provided by another (ex. social

media websites)media websites)

4.4. Search engines (Google)Search engines (Google)


DMCA Procedure:DMCA Procedure:

1.1. Copyright holder discovers allegedly Copyright holder discovers allegedly

protected work posted to a social media siteprotected work posted to a social media site

2.2. Copyright holder files a DMCA takedown Copyright holder files a DMCA takedown

notice with the site (with the required notice with the site (with the required

detailed information)detailed information)

3.3. The site takes down the contentThe site takes down the content


DMCA Procedure Continued:DMCA Procedure Continued:

4.4. The user can file a counterThe user can file a counter--notice if he feels notice if he feels

the content was wrongly taken down (it was the content was wrongly taken down (it was

original, fair use, etcoriginal, fair use, etc……))

5.5. Copyright holder then has 14 days to file a Copyright holder then has 14 days to file a

lawsuit in district courtlawsuit in district court

6.6. If no lawsuit is filed, the site must restore If no lawsuit is filed, the site must restore

the removed content the removed content


►►Example #1:Example #1:�� August August ’’08 08 –– Cable channel AMC filed DMCA Cable channel AMC filed DMCA

takedown notices with Twitter to remove accounts of takedown notices with Twitter to remove accounts of

users posting in voice of characters from users posting in voice of characters from ““Mad MenMad Men””

�� AMC (upon advice from marketing) later rescindedAMC (upon advice from marketing) later rescinded


►►Example #2:Example #2:

�� 2008 2008 -- Hasbro filed DMCA takedown notice with Hasbro filed DMCA takedown notice with

FacebookFacebook to remove to remove ScrabulousScrabulous

�� July 2008 July 2008 -- FacebookFacebook forwarded notice to the forwarded notice to the

makers of makers of ScrabulousScrabulous, who removed the , who removed the

contentcontent

�� ScrabulousScrabulous had 500,000 daily users and was had 500,000 daily users and was

generating at least $25,000/monthgenerating at least $25,000/month

�� Later reLater re--launched as: launched as:


Issue Issue -- DMCA Abuse:DMCA Abuse:

-- In March In March ’’09, Google reported statistics 09, Google reported statistics

about DMCA takedown notices for its sites about DMCA takedown notices for its sites

(including social media site YouTube):(including social media site YouTube):

-- 57% of notices were sent by business 57% of notices were sent by business

competitorscompetitors

-- 37% of notices were not valid copyright claims 37% of notices were not valid copyright claims


►►Tweet CompilationsTweet Compilations

�� Even if a single tweet is not protectable under Even if a single tweet is not protectable under

copyright law, a gathering of tweets will likely copyright law, a gathering of tweets will likely

be protectable be protectable

�� Tweet compilation servicesTweet compilation services


►► TweetNotebookTweetNotebook::

�� A 320A 320--page notebook containing 320 random tweets page notebook containing 320 random tweets from a Twitter accountfrom a Twitter account

�� Whose Twitter account?Whose Twitter account?►► ““I agree with the I agree with the Terms and ConditionsTerms and Conditions and confirm I own the and confirm I own the rights to use the tweets of this user.rights to use the tweets of this user.””

�� TOS: TOS: ““The Buyer agrees that as an express condition of the The Buyer agrees that as an express condition of the holding of an account with the Seller the Buyer shall not use thholding of an account with the Seller the Buyer shall not use the e service offered by the Seller to infringe the intellectual propeservice offered by the Seller to infringe the intellectual property rty rights of others in any way.rights of others in any way.””

�� Will this policy be effective?Will this policy be effective?

►►But see But see TweetBookzTweetBookz::

�� Posted to forum by Posted to forum by TweetbookzTweetbookz::

►►““We at We at www.TweetBookz.comwww.TweetBookz.com also faced this same also faced this same

exact issue exact issue -- whether to let people access everyone's whether to let people access everyone's

Twitter history or just their ownTwitter history or just their own……We chose the safer We chose the safer

route and only allow people to print books composed of route and only allow people to print books composed of

tweets from their own Twitter account.tweets from their own Twitter account.””


►► LiveLive--Tweeting or LiveTweeting or Live--Blogging:Blogging:

�� Tweeting/writing about an event in realTweeting/writing about an event in real--timetime

�� Legal & ethical issuesLegal & ethical issues

�� Does the event have rules/regulations Does the event have rules/regulations

regarding media access and/or social media regarding media access and/or social media

use?use?


►► LiveLive--Tweeting or LiveTweeting or Live--Blogging:Blogging:

�� In 2009, CSHL revised its Reporting Policy In 2009, CSHL revised its Reporting Policy following a complaint from a news service that following a complaint from a news service that attendees were liveattendees were live--tweeting and livetweeting and live--blogging blogging without having to register or obtain permission without having to register or obtain permission from the speakerfrom the speaker

�� All attendees now required to obtain All attendees now required to obtain permission from the speaker before permission from the speaker before communicating results to thirdcommunicating results to third--partiesparties


►► CSHLCSHL’’ss New Policy:New Policy:

By registering for the meeting, you agree to abide By registering for the meeting, you agree to abide

by the following policy.by the following policy.

Any participant intending to blog, twitter or otherwise communicAny participant intending to blog, twitter or otherwise communicate orate or

disseminate results or discussion presented at the meeting to andisseminate results or discussion presented at the meeting to anonymous onymous

third parties must obtain permission from the relevant presentinthird parties must obtain permission from the relevant presenting author g author

BEFORE communicating any results or discussion to third party grBEFORE communicating any results or discussion to third party groups, oups,

message boards, blogs or other online resources (other than yourmessage boards, blogs or other online resources (other than your own own

lab or departments).lab or departments).


►► Best Practices Tip:Best Practices Tip:

Before liveBefore live--tweeting or livetweeting or live--blogging, blogging,

check the eventcheck the event’’s policy and/or s policy and/or

confirm with organizersconfirm with organizers


TrademarksTrademarks

Social Media & IP: TrademarksSocial Media & IP: Trademarks

►►Issues:Issues:

�� Trademark InfringementTrademark Infringement

�� ImpersonationImpersonation

�� ParodyParody

�� Name SquattingName Squatting


►►Trademark infringementTrademark infringement

�� The use of a mark that is identical or The use of a mark that is identical or

confusingly similar to a mark owned by another confusingly similar to a mark owned by another

partyparty


►►Trademark infringementTrademark infringement

�� TwitterTwitter’’s Policy:s Policy:

►►““Using a company or business name, logo, or other Using a company or business name, logo, or other

trademarktrademark--protected materials in a manner that may protected materials in a manner that may

mislead or confuse others or be used for financial mislead or confuse others or be used for financial

gain may be considered a trademark policy violation. gain may be considered a trademark policy violation.

Accounts with Accounts with clear intentclear intent to mislead others will be to mislead others will be

suspended; even if there is not an explicit trademark suspended; even if there is not an explicit trademark

policy violation, attempts to mislead others may policy violation, attempts to mislead others may

result in suspension.result in suspension.””


►►Example Example –– OneokOneok, Inc. & Twitter:, Inc. & Twitter:

�� OneokOneok, Inc. of Oklahoma sued Twitter for trademark , Inc. of Oklahoma sued Twitter for trademark

infringement in Sept. infringement in Sept. ’’09 over user account "09 over user account "Oneok_iOneok_i" which " which

used the company's logoused the company's logo

�� Suit dropped the next day when Twitter suspended accountSuit dropped the next day when Twitter suspended account

�� OneokOneok’’ss real Twitter account:real Twitter account:


►►Impersonation:Impersonation:

�� User names User names –– possible liability for user names possible liability for user names

that confuse others about source or dilutes a that confuse others about source or dilutes a

trademarktrademark


►►TwitterTwitter’’s Impersonation Policy:s Impersonation Policy:

�� ““Impersonation is pretending to be another Impersonation is pretending to be another

person or entity in order to deceive. person or entity in order to deceive.

Impersonation is a violation of the Twitter Impersonation is a violation of the Twitter

Rules and may result in permanent account Rules and may result in permanent account

suspension.suspension.””


►►Example #1 Example #1 –– Tony Tony LaRussaLaRussa & Twitter:& Twitter:

�� Tony Tony LaRussaLaRussa sued Twitter for trademark infringement (& sued Twitter for trademark infringement (&

other claims) in May other claims) in May ’’09 over user account 09 over user account ““TonyLaRussaTonyLaRussa””

which included which included LaRussaLaRussa’’ss photophoto

�� Twitter suspended the account and the case settledTwitter suspended the account and the case settled


►► BUT See TwitterBUT See Twitter’’s PARODY Policy:s PARODY Policy:

�� ““Twitter users are allowed to create parody, Twitter users are allowed to create parody,

commentary, or fan accounts. Twitter provides a commentary, or fan accounts. Twitter provides a

platform for its users to share and receive a wide platform for its users to share and receive a wide

range of ideas and content, and we greatly value and range of ideas and content, and we greatly value and

respect our users' expression. Because of these respect our users' expression. Because of these

principles, we do not actively monitor users' content principles, we do not actively monitor users' content

and will not edit or remove user content, except in and will not edit or remove user content, except in

cases of violations of our Terms of Service.cases of violations of our Terms of Service.””


►► Example of a Parody Impersonation Account:Example of a Parody Impersonation Account:

�� DanyelleDanyelle Freeman: restaurant critic for New York Daily NewsFreeman: restaurant critic for New York Daily News

�� Twitter account Twitter account ““restaurantgirlrestaurantgirl”” parodies Freemanparodies Freeman


►► Freeman Parody Continued:Freeman Parody Continued:

�� In April In April ’’09, Freeman sent cease & desist letter to 09, Freeman sent cease & desist letter to

imposter; account still active as of Octoberimposter; account still active as of October

�� In August In August ’’09, Freeman was let go by the Daily 09, Freeman was let go by the Daily

NewsNews

�� Current status: PendingCurrent status: Pending


►►Twitter Parody Example #2:Twitter Parody Example #2:


►►Username Squatting:Username Squatting:

�� Registering or using a user name with a bad Registering or using a user name with a bad

faith intent to profit from goodwill belonging faith intent to profit from goodwill belonging

to someone else.to someone else.



�� FacebookFacebook’’ss Policy:Policy:

►►““If you select a username for your account we If you select a username for your account we

reserve the right to remove or reclaim it if we believe reserve the right to remove or reclaim it if we believe

appropriate (such as when a trademark owner appropriate (such as when a trademark owner

complains about a username that does not closely complains about a username that does not closely

relate to a user's actual name).relate to a user's actual name).””



�� TwitterTwitter’’s Policy:s Policy:

►►Username squatting is prohibited by the Twitter Username squatting is prohibited by the Twitter

Rules:Rules:

�� ““Name Squatting: You may not engage in name squatting. Name Squatting: You may not engage in name squatting.

Accounts that are inactive for more than 6 months may also Accounts that are inactive for more than 6 months may also

be removed without further notice.be removed without further notice.””


►►TwitterTwitter--Squatting:Squatting:

�� Many major brands subject to brand Many major brands subject to brand

squattingsquatting

�� In 2009, Michael In 2009, Michael WerchWerch conducted an conducted an

experiment to test brand squatting via Twitter:experiment to test brand squatting via Twitter:►►Dec. 1, 2009 Dec. 1, 2009 –– set up account set up account ““@@HJ_HeinzHJ_Heinz””

►►Tweeted 175 times, gathered 367 followersTweeted 175 times, gathered 367 followers

►►Dec. 14, 2009 Dec. 14, 2009 –– account changed to account changed to ““@@NOThj_HeinzNOThj_Heinz””



�� Welch received an email from Twitter:Welch received an email from Twitter:►►““It has come to our attention that your Twitter It has come to our attention that your Twitter account, @username, is in violation of the Twitter account, @username, is in violation of the Twitter Rules, specifically the section on Trademark. Rules, specifically the section on Trademark. ……To To avoid confusion regarding brand and/or official avoid confusion regarding brand and/or official affiliation with the business or company in question, affiliation with the business or company in question, we've made the following changes to your accountwe've made the following changes to your account…”…”

�� Damage could have been extensive Damage could have been extensive



�� Lessons learned:Lessons learned:

►►Monitor your brand!Monitor your brand!

►►Prevent brand squatting by engaging with social Prevent brand squatting by engaging with social

mediamedia


►►Engaging With Social Media:Engaging With Social Media:

�� In August 2008, two individuals started a CocaIn August 2008, two individuals started a Coca--Cola fan page on Cola fan page on FacebookFacebook

�� In November 2008, a new In November 2008, a new FacebookFacebook policy policy required all pages to be authorized by or required all pages to be authorized by or associated with the brandassociated with the brand

�� CocaCoca--Cola asked Cola asked FacebookFacebook to let the individuals to let the individuals keep the page as long as they shared it with keep the page as long as they shared it with CocaCoca--ColaCola


►►Engaging With Social Media (contEngaging With Social Media (cont’’d):d):

�� The CocaThe Coca--Cola page now has over 5 million Cola page now has over 5 million

membersmembers


Trade SecretsTrade Secrets

Social Media & IP: Trade SecretsSocial Media & IP: Trade Secrets

►► Elements of Trade Secret MisappropriationElements of Trade Secret Misappropriation::

1.1. Existence of a valid trade secretExistence of a valid trade secret

2.2. Secret disclosed or used without consentSecret disclosed or used without consent

3.3. Defendant knew, or should have known, Defendant knew, or should have known,

that the trade secret was acquired by that the trade secret was acquired by

improper meansimproper means

4.4. Harm to the owner of the trade secretHarm to the owner of the trade secret


►► Examples of Possible Trade Secret Misappropriation via Examples of Possible Trade Secret Misappropriation via Social Media:Social Media:

�� A shared or posted picture of the trade secret subject A shared or posted picture of the trade secret subject mattermatter

�� A blog post or A blog post or FacebookFacebook notenote

�� A video posted to YouTubeA video posted to YouTube

�� FacebookFacebook or Twitter statuses or Twitter statuses ––►►Example from a fictional KFC employee: Example from a fictional KFC employee: ““just ordered the just ordered the following 11 herbs and spices for delivery next Tuesday: following 11 herbs and spices for delivery next Tuesday: marjoram, basil,marjoram, basil,…”…”


►► But what about a friend who reBut what about a friend who re--posts or reposts or re--tweets the KFC tweet?tweets the KFC tweet?

�� Likely depends upon element #3 of misappropriation Likely depends upon element #3 of misappropriation claim: Defendant knew, or should have known, that claim: Defendant knew, or should have known, that the trade secret was acquired by improper meansthe trade secret was acquired by improper means

�� And when does widely disseminated content make a And when does widely disseminated content make a trade secret no longer secret?trade secret no longer secret?


►► DVD Copy Control Association, Inc. v. DVD Copy Control Association, Inc. v. BunnerBunner::

�� The DVD CCA sued The DVD CCA sued BunnerBunner and several others and several others alleging misappropriation of trade secrets under alleging misappropriation of trade secrets under California lawCalifornia law

�� DVD CCA was the sole licensor of DVD DVD CCA was the sole licensor of DVD encryption technologyencryption technology

�� Decryption software (reverse engineered) Decryption software (reverse engineered) appeared online & was quickly disseminated, appeared online & was quickly disseminated, including by including by BunnerBunner



�� CA Appellate Court:CA Appellate Court:

►►Lack of evidence that the program was still a trade Lack of evidence that the program was still a trade

secret by the time secret by the time BunnerBunner posted it to his websiteposted it to his website

�� Although posting to the Internet does not automatically Although posting to the Internet does not automatically

make a trade secret no longer a secret, this trade secret make a trade secret no longer a secret, this trade secret

was quickly disseminated to millionswas quickly disseminated to millions

►►Lack of evidence that the decryption software was Lack of evidence that the decryption software was

generated by improper meansgenerated by improper means



�� Assuming that it WAS improper means:Assuming that it WAS improper means:

�� ““it does not necessarily follow that once the information became it does not necessarily follow that once the information became publicly publicly available that everyone else would be liable under the available that everyone else would be liable under the trade secret laws for retrade secret laws for re--publishing it simply because they knew publishing it simply because they knew about its unethical origins. In a case that receives widespread about its unethical origins. In a case that receives widespread publicity, just about anyone who becomes aware of the contested publicity, just about anyone who becomes aware of the contested information would also know that it was allegedly created by information would also know that it was allegedly created by improper means. Under DVD improper means. Under DVD CCACCA’’ss construction of the law, in such construction of the law, in such a case the general public could theoretically be liable for a case the general public could theoretically be liable for misappropriation simply by disclosing it to someone else. This imisappropriation simply by disclosing it to someone else. This is not s not what trade secret law is designed to do.what trade secret law is designed to do.



�� Balancing the Peril and the Promise of the InternetBalancing the Peril and the Promise of the Internet

�� Quoting District Judge Ronald Whyte:Quoting District Judge Ronald Whyte:

““The court is troubled by the notion that any Internet The court is troubled by the notion that any Internet useruser……can destroy valuable intellectual property rights by can destroy valuable intellectual property rights by posting them over the Internet, especially given the fact posting them over the Internet, especially given the fact that there is little opportunity to screen postings before that there is little opportunity to screen postings before they are made. Nonetheless, one of the Internet's virtues, they are made. Nonetheless, one of the Internet's virtues, that it gives even the poorest individuals the power to that it gives even the poorest individuals the power to publish to millions of readers, can also be a detriment to publish to millions of readers, can also be a detriment to the value of intellectual property rights. The anonymous the value of intellectual property rights. The anonymous (or judgment proof) defendant can permanently destroy (or judgment proof) defendant can permanently destroy valuable trade secrets, leaving no one to hold liable for the valuable trade secrets, leaving no one to hold liable for the misappropriation.misappropriation.””

Social Media & IP: PoliciesSocial Media & IP: Policies

Social Media PolicySocial Media Policy


►►Why it matters:Why it matters:

�� Even if your company or organization Even if your company or organization

doesndoesn’’t use social media, your employees, t use social media, your employees,

customers, and constituents willcustomers, and constituents will……

�� Therefore you need a risk management Therefore you need a risk management

strategystrategy


►►Today:Today:

�� Only 29% of companies have an official Only 29% of companies have an official

social media policy (Source: 2009 social media policy (Source: 2009

Manpower Survey)Manpower Survey)


►► Step #1 Step #1 –– Minimize Liability by Protecting the IP of Minimize Liability by Protecting the IP of Others:Others:

�� Educate employees and clients to recognize and respect Educate employees and clients to recognize and respect the intellectual property of othersthe intellectual property of others

�� Establish and enforce a social media policy that Establish and enforce a social media policy that prohibits at least the following conduct:prohibits at least the following conduct:

►►Defamatory statementsDefamatory statements

►►Copyright and Trademark infringementCopyright and Trademark infringement

►►Endorsing goods without revealing material connectionsEndorsing goods without revealing material connections


►► Step #2 Step #2 –– Protect YOUR IP:Protect YOUR IP:

�� Educate employees and clients about social media and Educate employees and clients about social media and

intellectual property issuesintellectual property issues

�� Monitor your brand (including copyrights, trademarks)Monitor your brand (including copyrights, trademarks)

�� Establish and enforce a social media policy that Establish and enforce a social media policy that

prohibits at least the following conduct:prohibits at least the following conduct:

►►Disclosure of proprietary or confidential informationDisclosure of proprietary or confidential information

►►Misuse of TrademarksMisuse of Trademarks

Questions?Questions?

Blaine T. Blaine T. BettingerBettinger

Bond, Schoeneck & King, PLLCBond, Schoeneck & King, PLLC

www.bsk.comwww.bsk.com

(315) 218(315) 218--82918291

Syracuse, New YorkSyracuse, New York

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