Combating Widespread IP Infringement and Abuse On The Internet Lee J. Eulgen Neal, Gerber & Eisenberg LLP (Chicago) Stephen Feingold Kilpatrick Townsend

Combating Widespread Combating Widespread IP Infringement and Abuse IP Infringement and Abuse

On The InternetOn The InternetLee J. Eulgen

Neal, Gerber & Eisenberg LLP (Chicago)

Stephen Feingold Kilpatrick Townsend & Stockton LLP (New York)

John SlafskyWilson Sonsini Goodrich & Rosati (Palo Alto)

Moderated by: Andrew Berger

Tannenbaum Helpern Syracuse & Hirschtritt LLP (New York)

April 28, 2011

American Conference InstituteAdvanced IP Forum for Advertising Counsel

2010 TRADEMARK LAW SEMINAR

THE FUTURE OF BRAND PROTECTION TODAY’S DISCUSSIONTODAY’S DISCUSSION

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

2


THE FUTURE OF BRAND PROTECTION Emerging PlatformsEmerging Platforms

3

• Microblogs

• Social networking sites

• Geolocation services

• Sponsored links

• Photo- and video-sharing sites

• Wikis

• Crowdsourcing

• Auction Sites

Examples of New Online Examples of New Online Challenges for IP OwnersChallenges for IP Owners

4

5

6

7

8

An Official Corporate Page:

9

A Community Page:


THE FUTURE OF BRAND PROTECTIONBest Defense Is Good OffenseBest Defense Is Good Offense

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

10


THE FUTURE OF BRAND PROTECTIONBest Defense Is Good OffenseBest Defense Is Good Offense

“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

11

12

• 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.

13

John Doe5 mutual friends

Jane Doe7 mutual friends

John Doe and 3 otherfriends live here.

14

YouTubeYouTube

Geolocation IssuesGeolocation Issues

15

Deciding When &Deciding When &How to RespondHow to Respond

16

Social Media Has Changed Social Media Has Changed The Relationship Between The Relationship Between

Brands and ConsumersBrands 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


THE FUTURE OF BRAND PROTECTION

Avoid the Extremes –Avoid the Extremes –Overly Lax EnforcementOverly Lax Enforcement

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).

18


THE FUTURE OF BRAND PROTECTION Avoid the Extremes – Avoid the Extremes –

Overly Aggressive EnforcementOverly Aggressive Enforcement

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

19



““Trademark Bullies”Trademark Bullies”Study by the USPTOStudy by the USPTO

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 . . . .”

20


THE FUTURE OF BRAND PROTECTIONCriteria for Decision MakingCriteria for Decision Making

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

21

22

Spectrum of Online Spectrum of Online InfringementsInfringements

Egrergious Threat

Fan uses

Tolerable

Counterfeit productPre-release contentImpersonationTarnishmentPhishing and other fraud

Use of mark/logoin non-commercial context

Review Criticism



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?

23



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

24



Setting Procedure forSetting Procedure forHow to RespondHow to Respond

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

25


THE FUTURE OF BRAND PROTECTION Self-Help? Good Luck!Self-Help? Good Luck!

Facebook Promotions GuidelinesFacebook Brand Permissions Center

Twitter Trademark Policy

Twitter Guidelines for ContestsYouTube Homepage Advertisers Guidelines

Facebook Terms of Service

Facebook Advertising Guidelines

Facebook Platform Principles and Policies

Facebook Developer Policy

Facebook User Infringement Policy

Twitter Rules

Twitter Name Squatting PolicyTwitter Impersonation Policy

YouTube Terms of Service

YouTube Ad Guidelines

YouTube Trademark Policy for Promoted Videos

YouTube Contest Platform Terms and Conditions of Use

26



The recent case of Agence France Presse v. Morel is 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

Misuse of User NamesMisuse of User Names

28

29

User NamesUser Names

30

31

32



Challenges toChallenges toSearch Engine AdvertisingSearch Engine Advertising

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

33


THE FUTURE OF BRAND PROTECTIONWhat About Cybersquatting? What About Cybersquatting?

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

34

35

Expanded Nominative Fair UseExpanded Nominative Fair Use

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

Lesson One: Chose Your Venue Carefully!



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

36

Lesson Two:Lesson Two:Create A Rationale Consistent Approach to EnforcementCreate A Rationale Consistent Approach to Enforcement



37

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.

A Review Of Recent WIPO Complaints Illustrates The Lack Of Rationality In Many Cases



Create victory pageWarning not demand letters

Experience suggests that domainers stay clear of brands that consistently and aggressively enforce

38

Lesson Three:Lesson Three:Creative EnforcementCreative Enforcement

39

FAN SITESFAN SITES

40



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

41

Fan Sites and PagesFan 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

42

Fan Sites and Pages

43


THE FUTURE OF BRAND PROTECTION Managing Infringements ViaManaging Infringements Via

Business DealsBusiness Deals

The Way To Beat Scrabulous Is Not With Lawsuits Or Crappy Versions Of Scrabblefrom 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

44


THE FUTURE OF BRAND PROTECTION Managing Infringements ViaManaging Infringements Via

Business DealsBusiness Deals

Setting appropriate terms for online partnerships

Be careful about signing clients up for too much rigorous oversight

45



WIKIPEDIAWIKIPEDIA

46


THE FUTURE OF BRAND PROTECTION Responding to Wikipedia Issues Responding to Wikipedia Issues

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

47

48

Questions?Questions?

49


THE FUTURE OF BRAND PROTECTIONContact Us…Contact Us…

Lee J. Eulgen Neal, Gerber & Eisenberg LLP (Chicago)

[email protected]

Stephen Feingold Kilpatrick Townsend & Stockton LLP (New York)

[email protected]

John Slafsky Wilson Sonsini Goodrich & Rosati (Palo Alto)

[email protected]

Andrew Berger Tannenbaum Helpern Syracuse & Hirschtritt LLP (New York)

[email protected]

50

Documents

Combating Widespread IP Infringement and Abuse On The Internet Lee J. Eulgen Neal, Gerber & Eisenberg LLP (Chicago) Stephen Feingold Kilpatrick Townsend