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Combating Widespread IP Infringement and Abuse On The Internet

Combating Widespread IP Infringement and Abuse On The Internet. American Conference Institute Advanced IP Forum for Advertising Counsel. Lee J. Eulgen Neal, Gerber & Eisenberg LLP (Chicago) Stephen Feingold Kilpatrick Townsend & Stockton LLP (New York) John Slafsky

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Combating Widespread IP Infringement and Abuse On The Internet

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  1. CombatingWidespreadIP Infringement and Abuse On The Internet American Conference InstituteAdvanced IP Forum for Advertising Counsel Lee J. Eulgen Neal, Gerber & Eisenberg LLP (Chicago) Stephen Feingold Kilpatrick Townsend & Stockton LLP (New York) John Slafsky Wilson Sonsini Goodrich & Rosati (Palo Alto) Moderated by: Andrew Berger Tannenbaum Helpern Syracuse & Hirschtritt LLP (New York) April 28, 2011

  2. Emerging platforms for infringement and abuse • Examples of new online challenges for IP owners • Best defense is a good offense • Deciding when and how to respond • Self-help via online service providers • Responding to search engine advertisements • Challenging domain names • Dealing with fan sites and pages • Partnering with alleged infringers TODAY’S DISCUSSION 2

  3. Microblogs • Social networking sites • Geolocation services • Sponsored links • Photo- and video-sharing sites • Wikis • Crowdsourcing • Auction Sites Emerging Platforms

  4. Examples of New Online Challenges for IP Owners

  5. An Official Corporate Page:

  6. A Community Page:

  7. Use your own marketing strategies pro-actively • iPhone and Android apps • Twitter pages • Facebook and other social networking sites • YouTube • Search engine advertisements • Prophylactically register domain names and use them Best Defense Is Good Offense

  8. “Official” company page on Facebook • Company name as Twitter handle • Company profile on LinkedIn • “Unlocked” business page on Yelp • Don’t forget about doing the same with key brands Best Defense Is Good Offense

  9. FooPets – 20th Century Fox • special edition "Marley & Me" themed puppy available for adoption on the iPhone • virtual interactive replica of the movie's labrador retriever complete with animation sequences recreated from the film.

  10. John Doe and 3 other friends live here. John Doe 5 mutual friends Jane Doe 7 mutual friends

  11. YouTube

  12. Geolocation Issues 15

  13. Deciding When &How to Respond

  14. Social Media Has Changed The Relationship Between Brands and Consumers Brands are now becoming conversation factors where academics, celebrities, experts and key opinion formers discuss functional, emotional and, more, interestingly, social concerns.” Simon Clift, CMO - Unilever 17

  15. IP owner’s duty to police • Inaction may mean narrowing scope of mark • Laches as against a single infringer • But Don’t Have to Threaten Everyone: [I]t is entirely reasonable for the [trademark owner] to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks . . . While not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use.” McDonald’s Corp. v. McKinley, 13 U.S.P.Q.2d 1895 (T.T.A.B. 1989). Avoid the Extremes –Overly Lax Enforcement

  16. Overzealous enforcement can mean loss of goodwill and damage to the reputation and image of the IP owner • Threats with no lawsuit, or suing and losing, may diminish rights • Internal organizational risks • Other risks to IP owner: • Award of attorney fees • Rule 11 sanctions • Malicious prosecution liability (e.g., Lady Di/Franklin Mint case) • Waste of corporate resources Avoid the Extremes – Overly Aggressive Enforcement

  17. Trademark Technical and Conforming Amendment Act of 2010, Pub. Law No. 111-146, 124 Stat. 66 (2010). March 17, 2010. • Section 4: “Not later than 1 year after the date of enactment of this Act, the Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, shall study and report to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives on – (1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner . . . .” “Trademark Bullies”Study by the USPTO

  18. Consumer injury and marketing harm • Commercial harm and desire for asset in question • P.R. risk • Equitable consequences • Identity of infringer • Need for deterring message • Budget Criteria for Decision Making

  19. Spectrum of Online Infringements Fan uses Egrergious Threat Tolerable Use of mark/logo in non-commercial context Counterfeit product Pre-release content Impersonation Tarnishment Phishing and other fraud Review Criticism

  20. Should I respond? • Who posted the content? • What result are you seeking and why? • Is the use damaging to your business/IP? • Is the use a violation of the law? • Is the use a violation of the TOS of the site?

  21. How should I respond? • Know the sites most prevalent in your arena/industry • Develop contacts at sites for speedy takedown and reveal (in the cases of proxies) assistance • Have standard DMCA, domain name complaint, and other demands and takedown notices • Create spreadsheets to track takedown requests and content that comes down

  22. Creating internal approval mechanism • Determining who should communicate with infringer • Have public relations message ready to go • Deciding how widely to issue and distribute company’s position Setting Procedure forHow to Respond 25

  23. Twitter Rules Facebook Terms of Service Facebook Developer Policy Facebook Advertising Guidelines Facebook Platform Principles and Policies YouTube Ad Guidelines YouTube Terms of Service Twitter Trademark Policy Twitter Name Squatting Policy Twitter Impersonation Policy YouTube Trademark Policy for Promoted Videos YouTube Homepage Advertisers Guidelines Twitter Guidelines for Contests Self-Help? Good Luck! Facebook User Infringement Policy Facebook Promotions Guidelines Facebook Brand Permissions Center YouTube Contest Platform Terms and Conditions of Use 26

  24. The recent case of Agence France Presse v. Morelis illustrative. Daniel Morel is a professional photographer who was in Haiti during the earthquake on January 12, 2010, and photographed its aftermath. Morel managed to access the internet that day opening accounts on Twitter and TwitPic, and Morel immediately posted on his TwitPic page a number of first-hand photographs of the Haiti devastation. A feeding frenzy of infringement followed. Morel then demanded payment from Agence France Presse and others alleging infringement. In response, AFP sued for declaratory judgment in the S.D.N.Y., alleging that, when Morel uploaded his photos to Twitter, Morel agreed to be bound by Twitter’s TOS which gave it a non-exclusive royalty-free license. The court agreed with AFP that the terms of service governed but construed them to favor Morel. In reaching this result, the court relied on the following term of service: You agree that this license includes the right for Twitter to make such Content available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such Content on other media and services. The court held this term required Twitter users to sublicense “only to Twitter and its partners.” In other words, although Twitter users were free to share and display Morel’s photos on that site, once a user attempted to distribute those photos via a sublicense, the sublicensee had to be a Twitter partner. Would the court’s holding apply to retweets? Why has Twitter not revised its Terms of Use to clarify this situation? 27

  25. Misuse of User Names 28

  26. User Names

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  30. Make sure your own house is in order, and make sure you’re on the same page with the Marketing Department • Manner of use (e.g., in text of ad or not) matters • Utilize search engine trademark policies • Contractually restrict affiliates from competitive bidding • Consider “negative matching” competitive brands Challenges toSearch Engine Advertising

  31. WIPO reports 20% increase in UDRP proceedings in 2010 over 2009. • Introduction of Many New TLDs in 2012 will exacerbate problem. • The Dilemma: Balancing Protection of Brand and Economic Reality What About Cybersquatting? 34

  32. Expanded Nominative Fair Use Lesson One: Chose Your Venue Carefully! Toyota Motor Sales USA, Inc. v. Farzad Tabari, 2010 WL 2680891 (9th Cir. July 8, 2010) Defendants allowed to use: • buy-a-lexus.com • buyorleaselexus.com

  33. Lesson Two: Create A Rationale Consistent Approach to Enforcement • Filing Fee for ICANN complaint is $1,500. Even with flat fees, cost of attacking every infringing domain name is too large. • Prioritize based on evidence of market injury: • Traffic, links, placement in search engines • Tarnishment or fraudulent activity • Independent business reason for domain name

  34. A Review Of Recent WIPO Complaints Illustrates The Lack Of Rationality In Many Cases • Every quarter there is a new set of companies filing dozens of UDRPs, typically against domain names getting no traffic or causing any injury. • In contrast, certain companies file one or two URDP every quarter, almost invariably against sites attracting large traffic or using name for pornography or the like. 37

  35. Lesson Three: Creative Enforcement • Create victory page • Warning not demand letters • Experience suggests that domainers stay clear of brands that consistently and aggressively enforce

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  37. Fan Sites 40

  38. Fan Sites and Pages • Fan sites should be encouraged not discouraged • Control by incentives not with stick • Free tickets • Access to unique content • Access to a membership mark • Access to a web network

  39. Fan Sites and Pages • Brand owners risk alienating fans by exerting level of control commonly exercised before internet • Brand success in the future will be result of marshalling public perception; not controlling it

  40. The Way To Beat Scrabulous Is Not With Lawsuits Or Crappy Versions Of Scrabble from the keep-trying dept In the ongoing saga of Scrabulous, the unauthorized online version of Scrabble that has found many fans on Facebook but has upset Mattel and Hasbro (who own the rights to Scrabble), it appears that RealNetworks and Mattel have finally put out an official version of Scrabble for Facebook -- but the problem is that it's terrible. As the NY Times reports, "Facebook Scrabble takes a long time to load, does not always quickly update to show recent moves, and the words the game will accept do not reflect standard Scrabble dictionaries, or even the English language." While it's nice to see that Scrabulous still hasn't been forced offline, it seems odd that the authorized version is so terrible. It still probably would have made the most sense to just do a deal with the brothers who created Scrabulous (and there are still rumors that a deal has been discussed, but without a decent resolution), but if that doesn't work, the way to compete is with a better product. Putting out a product that's not very good isn't likely to win over many fans. FROM TECHDIRT.COM Managing Infringements ViaBusiness Deals

  41. Setting appropriate terms for online partnerships • Be careful about signing clients up for too much rigorous oversight Managing Infringements ViaBusiness Deals

  42. WIKIPEDIA 46

  43. Edit pages only as is necessary to make information accurate • Be aware of Wikipedia guidelines re: neutrality • Corroborate items with references • Explain your edits to Wikipedia community • Register an account with Wikipedia for editing Responding to Wikipedia Issues

  44. Questions? 49

  45. Lee J. Eulgen • Neal, Gerber & Eisenberg LLP (Chicago) LEULGEN@NGELAW.COM • Stephen Feingold • Kilpatrick Townsend & Stockton LLP (New York) SFEINGOLD@KILPATRICKTOWNSEND.COM • John Slafsky • Wilson Sonsini Goodrich & Rosati (Palo Alto) JSLAFSKY@WSGR.COM • Andrew Berger • Tannenbaum Helpern Syracuse & Hirschtritt LLP (New York) BERGER@THSH.COM Contact Us…

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