Intellectual Property Law and the Internet

What You Need to Know

© 2010, Kelly Kocinski, Esq. All Rights Reserved

Disclaimer

  The slides in this presentation were used to accompany a talk given on January 20, 2010. Neither the information contained on these slides, nor the accompanying talk and/or recording thereof construe legal advice. No attorney/client relationship is formed through the viewing of these slides nor listening to any audio recording of the talk. If you have questions regarding the intellectual property rights you or others may have, please contact an attorney.

IP Basics

  Intellectual Property consists of: –  Copyright –  Trademark –  Patent –  Trade Secrets

  These various components are treated VERY differently under the law, even though multiple IP components may apply to a single work.

Copyright

  The economic right given to creators of literary and artistic works.

  Includes the rights to: Reproduce the work Make copies Perform or display the work publicly

Copyright holders have the right to…

…stop other parties from… 1.  making copies of the work. 2.  making changes to the work or creating new

works based on the original work. 3.  distributing the work. 4.  publishing the work. 5.  licensing the work to others. 6.  otherwise exploiting the work.

Copyright

  How does protection attach? The copyrighted material must be –  fixed in a tangible medium of expression –  Original –  The result of some creative effort

Example: This Power Point presentation vs. the talk itself

  State and federal levels- common law protection attaches as soon as fixed, states provide protection, but federal registration is best

  No duty to enforce infringement-- copyright holders have the choice to enforce or not enforce infringement and, unlike trademark and patents, do not risk losing their rights by not prosecuting infringement

What is not protected by Copyright?

  Ideas are NOT subject to copyright protection   Things in the public domain

–  Time of creation –  Registration –  Publication –  Renewal –  Improper copyright notice

  Not a straightforward determination

Trademark

  Trademarks are commercial source indicators, distinctive signs that identify certain goods or services produced or provided by a specific person or enterprise.

  Benchmark for protection is USE- common law protection- geographic area; some states have protection but provides little more than common law.

–  Federal registration is the best protection- requires a trademark search, publication with a period for contests to the issuance of the mark.

  Must prosecute infringement of trademark or risk losing the mark yourself!!

An Example of Copyright AND Trademark

  The gold-colored top of the New York Life building is in the public domain and anyone can photograph it. However, that image also functions as a trademark for the New York Life Company, and a competing company could not use the image as a representation of their company’s goods or services..

Patents

The exclusive right of the inventor to prevent others from making, using and selling a patented invention for a fixed period of time in return for the inventor's disclosing the details of the invention to the public.

Trade Secrets

  Any information that may be used in the operation of a business and that is sufficiently valuable to afford an actual or potential economic advantage.

  Examples: Formula for Coca-Cola; compilations of information that provides a competitive advantage (customer databases), advertising strategies

Popular Myths and Misconceptions

  If I mail something to myself, I have successfully registered “the poor man’s” copyright.

  It’s okay to use something if: –  I use less than 8 seconds; –  I change 40% of it; –  I’m not selling it; –  I’m not making any money; –  I say where it came from/ link to it.

Fair Use

  What is it? Besides misunderstood and incorrectly applied, that is….   Fair Use is a LEGAL DEFENSE

–  That’s right, a LEGAL DEFENSE, which means you could be right, but you’re already in court spending money, to prove it.

  Fair use is any use of copyrighted material done for limited and “transformative” purpose without permission of the copyright owner.

  Transformative use: This is vague and ambiguous. Many have spent billions trying to define this is legal actions. There are 2 main categories:

–  Comment and criticism –  Parody

  Fair Use is determined by a 4 factor test.

Comment/Criticism and Parody

  If you are commenting on or critiquing a copyrighted work – for instance, writing a book review -- fair use principles allow you to reproduce some of the work for your purposes.

–  Quoting a few lines from a Bob Dylan song in a music review

–  Copying a few paragraphs from a news article for use by a teacher or student in a lesson

  Parody is a work that ridicules another, usually well-known work, by imitating it in a comic way. Unlike comment/criticism, fairly extensive use of the work is allowed to “conjure up” the original.

Measuring Fair Use: The Four Factors

The only way to get a definitive answer is to have a court evaluate these four factors:

  The purpose and character of your use;   The nature of the copyrighted work;   The amount and substantiality of the portion

taken; AND   The effect of the use upon the potential

market

And along comes technology…

  Let’s stick with Fair Use for a Minute: –  Fair Use is a Legal Defense –  Does not say there is not infringement but that the

infringement is permissible.

Infringement Claims Often Come Down to Access

  Examples: –  He’s So Fine v. My Sweet Lord –  Spielberg stole my screenplay –  Tom Petty v. Chili Peppers

  Todd Perry v. Chili Peppers

Digital Millennium Copyright Act (DMCA)

In 1998 the DMCA was passed mainly creating:   Makes it a crime to circumvent anti-piracy measures built into most

commercial software. –  Outlaws the manufacture, sale, or distribution of code-cracking devices used to

illegally copy software. –  Does permit the cracking of copyright protection devices, however, to conduct

encryption research, assess product interoperability, and test computer security systems. Provides exemptions from anti-circumvention provisions for nonprofit libraries, archives, and educational institutions under certain circumstances.

  In general, limits Internet service providers from copyright infringement liability for simply transmitting information over the Internet.

–  Service providers, however, are expected to remove material from users' web sites that appears to constitute copyright infringement. Limits liability of nonprofit institutions of higher education -- when they serve as online service providers and under certain circumstances -- for copyright infringement by faculty members or graduate students.

  States explicitly that "nothing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use..."

Where Does Software Belong?

  Another example of overlap, but not in the Nike Swoosh, Coca-Cola formula way.

  Initially software was deemed to be not in the purview of copyright- it was a process and kicked to patent

  RAM makes a copy, so fixed   Code itself is written expression   Eventually we got back to copyright

Open Source

  Major problems for software creators who tried to sell their new software/ applications

  Reps and Warranties violations that caused many deals to fall through

DMCA: ISP Liability

  ISP’s are only liable if it knows one of its subscribers was using its system to infringe. However, the DCMA allows copyright holders to ask that an ISP’s remove access to copyright infringing material if the copyrighted material is made available through the ISP.

Trying to Make Sense of Law and Technology

  Following are some more examples, based on cases that have formed the foundation of law as it deals with new technology, to show how the law is attempting to keep up.

Copyright: Music was the Canary

  When software became readily available to make perfect copies of music, services such as MP3.com, Napster, Kazaa and Limewire sprung up. The RIAA is the organization for the music industry who polices the world attempting to thwart music pirates. The RIAA fought against companies and people as well as lobbied the government to try and curb piracy.

Trademark: Internet Infringement

  Consumer Confusion: Courts will usually prohibit trademark uses where consumers are likely to be confused because two marks are similar and used in the same channels of trade.

  Playboy v. Calvin Designer Label: Playboy sued the defendant for trademark infringement, claiming that the defendant used its PLAYBOY mark as a metatag on its website. The court granted Playboy a preliminary injunction after finding such use created a likelihood of confusion in the marketplace.

  However, use of a logo to criticize a good or service is allowed because it doesn’t create a likelihood of confusion. Bally’s gym sued for use of their logo on a website saying Bally’s Sucks.

Trademark: Deep Linking

  Linking, and even deep linking has been found acceptable under trademark law. However, sometimes, a link is constructed in such a way that it confuses or misleads the user by implying that the linked sites have an affiliation, such as endorsement or sponsorship.

  Tickets.com provided information about sporting events. The deep linked to Ticketmaster’s site to buy tickets to that event. This was ruled ok but the court noted, if a link causes a likelihood of confusion as to the source or sponsorship, the linking can constitute unfair competition.

Trademark: Cybersquatting

  Cybersquatting, according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.

  People for Ethical Treatment of Animals v. Doughney: In 1995, Doughney registered the domain name peta.org for the fictitious organization "People Eating Tasty Animals." The website contained links to over 30 sites including some that promoted the sale of leather goods and meats. At the bottom of the page, the website inquired "Feeling lost? Offended? Perhaps you should, like, exit immediately" and provided a link to the actual People for the Ethical Treatment of Animals website. PETA requested that Doughney transfer the domain name, but Doughney refused. The court found for PETA because the peta.org site was used in commerce and not a parody. It prevented consumers from reaching the People for Ethical Treatment of Animals website and it contained links to commercial sites.

Trademark: Communicative Use

  Using a trademark is sometimes necessary for communication purposes.

  Terri Welles was Playboy Playmate of the Year in 1981. Her site contained that fact along with the logo PMOY ’81 as a watermark. The site also contained a disclaimer stating Playboy hadn’t endorsed the site. Playboy sued but lost because the court found the use was fair use because it fairly described and identified Ms. Welles. The court also noted there was no evidence of actual consumer confusion.

Protect Yourself Content You Create and Administer

Although copyright is automatic (no steps are required to create a copyright), in order to insure the greatest level of protection you should: –  Include a copyright notice on your work. –  Register your work with the U.S. copyright office

Copyright notices

  Before 1989, a published work HAD to contain a valid copyright notice to receive protection under the law. But this requirement has been removed.

  HOWEVER, it is still important to include a notice. When a work contains a valid notice, an infringer cannot claim in court that he or she didn’t know it was copyrighted. Plus it discourages infringement.

What is a valid copyright notice?

  A copyright should contain: 1.  The word “Copyright” 2.  A “c” in a circle (©) 3.  The date of publication, AND 4.  The name of either the author or the owner of all

the rights 5.  “All Rights Reserved”   EXAMPLE: A Year in Provence. Copyright © 1989

by Peter Mayle. All Rights Reserved.

How to register your work

  Registering a copyright is a simple process: –  Fill out the appropriate form for the type of work

you are registering. –  Enclose a deposit of one or two samples of the

work (depending on what type of work it is) –  Pay the fee per registration (if you are registering

several works that are part of one series, you may register the works together as a group registration). New: $55 if online registration. Copyright.gov

Take Down Policies

  If you use social media sites, including You Tube, Twitter, Facebook, etc., all have a link to their takedown policy.

  Take advantage of the take down policy if your work appears without your permission on another site.

  Some of these policies, like Facebook’s, are forms that were produced under the DMCA.

  Always there is a formal process, which protects the site and its owners.

DMCA: Takedown Procedure

  Here's an example of how a takedown procedure would work- a little retro:   Alice puts a copy of Bob's song on her AOL-hosted website.   Bob, searching the Internet, finds Alice's copy.   Charlie, Bob's lawyer, sends a letter to AOL's designated agent (registered with the

Copyright Office) including: –  contact information, the name of the song that was copied, the address of the copied song, a

statement that he has a good faith belief that the material is not legal, a statement that, under penalty of perjury, Charlie is authorized to act for the copyright holder, his signature .

  AOL takes the song down.   AOL tells Alice that they have taken the song down.   Alice now has the option of sending a counter-notice to AOL, if she feels the song was

taken down unfairly. The notice includes –  contact information, identification of the removed song, a statement under penalty of perjury

that Alice has a good faith belief the material was mistakenly taken down, a statement consenting to the jurisdiction of Alice's local US Federal District Court, or, if outside the US, to a US Federal District Court in any jurisdiction in which AOL is found, her signature

  AOL then waits 10-14 business days for a lawsuit to be filed by Bob.   If Bob does not file a lawsuit, then AOL may put the material back up.

Bring It! But Where?

  With online commerce reaching everywhere, there is no longer quite the fear that having to file an infringement claim against someone in Montana will have you and your attorneys on the next plane.

  Jurisdictional Issues –  Sufficient minimum contacts; –  Foreseeability; –  Long arm statutes

Protect Yourself: Using the Content of Others

  Some easy steps

Permission

  Using work you have permission to use is another way to avoid copyright problems. –  Determine if permission is needed –  Identify the owner –  Identify the rights you need –  Plan ahead for permissions –  Negotiate whether payment is required –  Get it in writing

Determining if permission is needed

  Is the material protected under IP laws?   Would your use constitute a violation of law?   What is the risk of not asking for permission?

Identifying the owner

  Indentifying the owner is crucial and usually easy. It is usually part of the copyright notice.

  However, different mediums and industries have different practices. Photographs are often owned by stock photo houses, sound recordings by music publishers, etc.

Identifying the rights you need

  Exclusive vs. Nonexclusive   Term of use   Territory

Get it in Writing

  Relying on oral or implied agreement is almost always a mistake. The two parties may have misunderstood each other.

  However, oral permission may be legally enforceable if it qualifies as a contract under general contract law, such as reliance.

Licenses vs. Releases

  A license is the legal right to do something that you otherwise would not be permitted to do.

–  A copyright owner can give you the right to duplicate a photograph, use a piece of music, adapt a novel into a screenplay, post your video on YouTube, Tweet your talk while it’s happening.

  A release is an agreement by which someone releases you from legal liability for a certain activity.

- A TV show gets a release from you to use your image free from invasion of privacy problems.

–  Remember the open source software issue? Liability is incurred by the developer signing a release.

Comply with Cease and Desist

  Or don’t.   Ultimately, this is a business decision- if you feel

strongly that you have done nothing wrong or that you are the rights holder, you may be in, at least, for a take down/ put back up struggle through the host.

–  Do a cost-benefit analysis. You can be wrong for free and right for many millions of dollars and months of time;

–  Consult with an attorney to determine the strength of your position;

–  Try negotiating or hiring counsel to do so for you; –  If that fails and you want to fight, get out your checkbook!

Brave New World: Blogging and Social Media

  Blogging has its own set of rules. –  Not laws but etiquette

  Don’t monopolize the comments section just for your own self-promotion.

–  What about linking?   Good etiquette, bad law.   Remember that infringement is taking a right that is exclusively

the copyright holder’s. That includes copying, reproducing, and public display.

  Proper citation without permission not enough legally.   Back to take down procedures by the host.

Comments- Wit and Liability

  Another consideration : comments, both on your blog and the comments you leave on the blogs of others. –  Do you monitor comments? –  Do you have a terms of use policy for your

readers and participants to see/ agree to? –  Do you leave comments on other sites that are

original works and do not violate a third party’s rights? (see linking, etc, above)

Terms of Use Agreement

  Why?   To let users know, in plain language, that:

–  you will not tolerate their posting of work that is not their own; –  that you have a right to take down anything that might be

  Offensive; OR   a violation of someone else’s rights; OR   libelous and subject you to liability.

–  if comments remain posted, the blog as a whole is your property and they are conceding their copyright to you. This means:

  they are not entitled to compensation or credit as a contributor to your blog absent an express agreement to the contrary- no matter what flame war they start or publicity they generate for the site.

  They are not allowed to reproduce portions of the blog, even those including their comments, without your permission

Terms of Use Agreement

  Consider the flip side –  Are you happy to agree to these terms when you

are the one commenting? –  Is this like

  Spike Lee’s sound mixer   the dancer claiming to be a collaborator   The painting in the background of the shot

–  Some of the responsibilities of technology

Social Media Sites

 Facebook controversy over Terms of Use – Then: They owned content

forever and ever, even after you deleted it

Facebook now: –  Sharing Your Content and Information You own all of the content and information you post on

Facebook, and you can control how it is shared through your privacy and application settings. In addition:

–  For content that is covered by intellectual property rights, like photos and videos ("IP content"), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook ("IP License"). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.

–  When you delete IP content, it is deleted in a manner similar to emptying the recycle bin on a computer. However, you understand that removed content may persist in backup copies for a reasonable period of time (but will not be available to others).

–  When you add an application and use Platform, your content and information is shared with the application. We require applications to respect your privacy settings, but your agreement with that application will control how the application can use the content and information you share. (To learn more about Platform, read our About Platform page.)

–  When you publish content or information using the "everyone" setting, it means that everyone, including people off of Facebook, will have access to that information and we may not have control over what they do with it.

–  We always appreciate your feedback or other suggestions about Facebook, but you understand that we may use them without any obligation to compensate you for them (just as you have no obligation to offer them).

Twitter

  Retweets   Shout-outs

–  Where does this fit into the law? –  Etiquette? –  Infringement? –  Newsworthiness? –  Terms of Use? –  Self Monitoring User Utopia?

Twitter Rules   The Twitter Rules   Our goal is to provide a service that allows you to discover and receive content from

sources that interest you as well as to share your content with others. We respect the ownership of the content that users share and each user is responsible for the content he or she provides. Because of these principles, we do not actively monitor user’s content and will not censor user content, except in limited circumstances described below.

  In order to provide the Twitter service and the ability to communicate and stay connected with others, there are some limitations on the type of content that can be published with Twitter. These limitations comply with legal requirements and make Twitter a better experience for all. We may need to change these rules from time to time and reserve the right to do so. Please check back here to see the latest.

  *Impersonation: You may not impersonate others through the Twitter service in a manner that does or is intended to mislead, confuse, or deceive others

  *Trademark: We reserve the right to reclaim user names on behalf of businesses or individuals that hold legal claim or trademark on those user names. Accounts using business names and/or logos to mislead others will be permanently suspended.

  *Privacy: You may not publish or post other people's private and confidential information, such as credit card numbers, street address or Social Security/National Identity numbers, without their express authorization and permission.

  *Violence and Threats: You may not publish or post direct, specific threats of violence against others.

  *Copyright: We will respond to clear and complete notices of alleged copyright infringement. Our copyright procedures are set forth in the Terms of Service.

  *Unlawful Use: You may not use our service for any unlawful purposes or for promotion of illegal activities. International users agree to comply with all local laws regarding online conduct and acceptable content.

  *Verified accounts: You may not use the Verified Account badge unless it is provided by Twitter. Accounts using the badge as part of profile pictures, background images, or in any way implying false verification will be permanently suspended.

What Now?

  More self-policing?   Powerful tech savvy lobby for new rules?   Priority of IP Law Modification and

Modernization?

The Law Office of Kelly Kocinski

  kelly@kocinskilawoffice.com   347-788-0672   www.kocinskilawoffice.com