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10 Steps to Reduce Social Media Risks Richard B. Biagi Daniel J. Schaeffer Jeremy M. Roe N EAL & M C D EVITT, LLC Slide 2 Agenda What Is Social Media? What Can You Do To Ensure Your Materials Are Protected? Policies and Best Practices Slide 3 What is Social Media? There are various definitions of social media: Media designed to be disseminated through social interaction, created using highly accessible and scalable publishing techniques Media that is created to be shared freely Works of user-created video, audio, text or multimedia that are published and shared in a social environment, such as a blog, wiki or video hosting site Primarily Internet- and mobile-based tools for sharing and discussing information among human beings Slide 4 What is Social Media? There are several types of social media: Social networking websites: Facebook, Twitter, MySpace Professional networking websites: LinkedIn Blogging sites: Blogger, WordPress Slide 5 What is Social Media? Types of social media, continued: Video and picture content sharing sites: YouTube, Picasa, Flickr News and Review sites: Digg, Reddit, Yelp* User-editable information: Wikipedia Slide 6 #10: Unique Issues Related to Dynamic Information Slide 7 Dynamic Information Wikipedia is a unique information resource, in that content may be edited at any time by anyone who signs up to do so. Possible problems: Inaccurate information, deletion of accurate information. Flagged revisions for entries about living people, Wikipedia is testing a system requiring approval for any changes. Not clear if this will apply for corporate entries. Wikipedia keeps a record of all changes, meaning the person (or at least the IP address) making changes can be identified Slide 8 Dynamic Information Wikipedias standard is verifiability, not accuracy; if there is bad information in an offline source, it may get picked up and repeated in Wikipedia. Slide 9 #9: Understand the legal distinction between defamation/disparagement and fair use/free speech (gripe sites) Slide 10 Defamation/Disparagement Gripe sites Ihatedell.net Deltareallysucks.com Review sites Epinions.com Yelp.com Blogs Twitter Facebook Pages A Florida HS student was suspended after settnig up a FB page to criticize her teacher; her lawsuit against the principal/school survived a motion to dismiss because she was exercising First Amendment rights Slide 11 Defamation/Disparagement Gripe Sites Trademark issues with domain names are overshadowed by First Amendment and fair use analysis False claims can be addressed Slide 12 Defamation/Disparagement Review Sites Starting in 2007, the plastic surgeon in Maui, Hawaii, who has practiced medicine for 28 years, began asking his new and existing patients to sign a legal contract that precludes them from posting online ratings (either rants or raves) about the treatment they receive at his office. Any statements they do post about his services become his property under copyright law. In return for their discretion, he grants each patient additional privacy protection beyond that mandated by HIPAA or state confidentiality laws. -- Do Online Ratings Matter?, Physicians Practice, http://www.physicianspractice.com/display/article/1462168/1590040, accessed 3/17/11 http://www.physicianspractice.com/display/article/1462168/1590040 Slide 13 Defamation/Disparagement Section 230 Communications Decency Act (CDA) Section 230 immunizes providers from liability for information posted by users. (47 U.S.C. 230(c)(1)) RipoffReport.com they do not create the reports, so they are completely immune from liability. 47 U.S.C. 230(c)(2) immunizes a provider from liability for implementing filtering or remediation systems. Slide 14 Defamation Streisand Effect a primarily online phenomenon in which an attempt to hide or remove a piece of information has the unintended consequence of publicizing the information more widely -- Wikipedia, http://en.wikipedia.org/wiki/Streisand_effect, accessed 3/17/11http://en.wikipedia.org/wiki/Streisand_effect Slide 15 #8: Know what you are agreeing to with various social media providers Slide 16 Terms and Conditions Each social media site has its own terms and conditions, with different approaches to IP, privacy, procedures. Example: Facebook. IP: User grants FB a non-exclusive, transferable, sub- licensable, royalty-free, worldwide license to use any content posted. The license ends when user deletes the content unless it has been shared with others who do not delete it. Privacy: FBs privacy policies change often, and each change is monitored carefully in the media. Generally, FB tracks, uses, and may disclose a wide variety of information and it is up to the user to manage privacy settings. Slide 17 Terms and Conditions Compare to LinkedIn: IP: User grants LinkedIn a non-exclusive, irrevocable, worldwide, perpetual, unlimited assignable, sublicenseable, fully paid up and royalty-free right to do pretty much anything they want to with any content. Privacy: LinkedIn collects more limited information from/about its users, and explicitly says it does not sell, rent, or otherwise provide your [PII] to any third parties for marketing purposes. Slide 18 Terms and Conditions Compare to Twitter: IP: User grants Twitter a worldwide, non-exclusive, royalty- free license to do pretty much anything they want to with tweets, including repackaging it for other purposes/media. But whats yours is yours you own your content. (E.g., tweetshirt/me make t-shirts from your tweets.) Its not certain whether tweets are subject to copyright anyway. Privacy: Twitter is capable of collecting location information, but its a user-selected option (default: off). Twitter users can also elect to keep their tweets protected i.e., not displayed to anyone not expressly granted access by the user. Key tip in Twitters Ts and Cs: What you say on Twitter may be viewed all around the world instantly. Slide 19 #7: Be aware of the potential securities regulatory risks in disclosing information Slide 20 Securities Issues The disclosure of securities-related information in social media carries significant risks, both for an association and its members. Regulation FD mandates that publicly traded companies must disclose material information to all investors at the same time. What is material information? Earnings, mergers, joint ventures, new products, customer issues, securities issues, audit notifications, and bankruptcies. Regulation FD requires full and fair disclosure to the public at large. Slide 21 Securities Issues Considerations for social mediadoes a posting via the companys Twitter or Facebook account qualify as a broad, public disclosure? If only followers or fans of those sites have access to those announcements, the company could face SEC disciplinary action. Companies should consider using social media as an additional method of information distribution, but not in place of traditional press releases and the like. Social media posts should also direct traffic back to the official announcement. Slide 22 Securities Issues Another aspect is securities implications for online postings. Example: The CEO of Whole Foods was taken to task for a series of message board postings he had made under a pseudonym, talking down his companys competitor, Wild Oats. When Whole Foods later acquired Wild Oats, the SEC investigated to determine whether his postings had been an illegal attempt to affect Wild Oatss stock price. While the SEC ultimately took no action against him or Whole Foods, the incident demonstrates how careful companies and their executives and employees must be. Slide 23 #6: Understand the employment implications related to the use of social media Slide 24 Employment Law Issues Potential candidates for positions inevitably have a presence in social media (Facebook page, LinkedIn profile). According to a 2009 survey, 45% of employers screen social media for potential applicants. Reviewing this information prior to making a hiring decision could open a company up to liability, as those profiles may contain protected class information (race, religion, sexual orientation, ethnicity, age, family status, disabilities, veteran status). Firms may wish to avoid reviewing any social media information prior to making a hiring decision. Slide 25 Employment Law Issues Alternatively, firms could consider only reviewing professional websites such as LinkedIn, or only reviewing finalists for a position. The company should document its pre-hiring review process via its policies, and maintain documentation of all on-line information that was reviewed. Slide 26 Employment Law Issues Social media also plays a role in termination decisions. Employee posts on Facebook or YouTube could raise grounds for termination. There are numerous cases of employees being fired for Facebook statements about their previous employer. Slide 27 Employment Law Issues Employees could file suit for discrimination, invasion of privacy Harassment could also occur via social media. Example: An interior designers employer impersonated her by authoring Tweets and Posts on her Twitter and Facebook accounts while she was ill. The employee has filed claims for false endorsement, invasion of privacy, and violation of her right of publicity. Employers should designate official employer accounts on Facebook and Twitter and clearly define an employees personal account, even if it involves the business. Slide 28 #5: Be familiar with advertising and endorsement rules for social media Slide 29 Advertising and Endorsement Issues Issues relate to advertising claims made by advertisers in social media. Bloggers with material connections to advertisers have disclosure obligations. Running promotions in social media requires adherence to policies. Slide 30 Advertisers Claims in Social Media An advertisers own claims in social media are subject to the same federal and state regulations as traditional forms of advertising. Claim substantiation remains a key requirement to avoiding false advertising liability. The FTC has recently increased enforcement efforts against false and misleading green claims, called greenwashing. For example, in June 2009, the FTC challenged the use of biodegradable claims by three companies, including K-Mart. Misleading green trademarks are also subject to scrutiny by the U.S. Patent and Trademark Office. Another example: eBay launched a green hub for promoting and selling sustainable products. Slide 31 FTC Blogger Guidelines The Federal Trade Commission has adopted revisions to its Guides Concerning the Use of Enforcements and Testimonials in Advertising. A new provision applies to bloggers who have a material connection to an advertiser (via financial ties, freebies, etc.). Statement must be an endorsement, that the opinion expressed is independent of the sponsoring advertiser Statement must be sponsored An advertiser must advise the blogger that it must disclose the material connection, and it must monitor the conduct of its bloggers. Bloggers and brand owners can be filed up to $11,000 for failing to disclose relationships. Slide 32 FTC Blogger Guidelines The blogger must clearly and conspicuously disclose the material connection. Endorsements guidelines also require that representations not be deceptive, be generally achievable, and be substantiated. The Guidelines do not apply to consumers that buy a product themselves and write about their experience on their blog. The Guides are available on the FTCs website: http://www.ftc.gov/os/2009/10/091005endorsementguidesfnnotic e.pdf http://www.ftc.gov/os/2009/10/091005endorsementguidesfnnotic e.pdf Slide 33 FTC Blogger Guidelines In 2010, the FTC investigated Ann Taylor Lofts blogger launch party for a new LOFT clothing line. The company invited bloggers to the launch and promised a free gift, while also entering bloggers into a gift card draw. The FTC was concerned that bloggers would not disclose the gifts. Ultimately no action was taken by the FTC. Slide 34 FTC Blogger Guidelines In 2011, the FTC reached a settlement with Legacy Learning, concerning allegations that it used affiliates to promote its instructional courses while not requiring affiliates to disclose their affiliation with Legacy. Reviewers also failed to disclose their material connection (some included fine-print disclaimers). Per the settlement, Legacy agreed to pay $25,000, monitor and submit monthly reports to the FTC, and ensure that affiliates disclose their commission status. Slide 35 FTC Blogger Guidelines Slide 36 Promotions Considerations Social media providers may have their own promotions and contest rules and regulations. Review their terms and conditions closely. Failure to adhere to those policies could result in action being taken against the companys presence on that site (i.e. suspension or termination of account). For example, Facebook has rigorous standards for running a promotion (contest, sweepstakes, or competition) on a Fan Page. While written permission from Facebook is no longer required, contests must still be administered via a third-party app on the Facebook platform. It is also a best practice to disclaim sponsorship or endorsement from the social media provider. Slide 37 Promotions Considerations Social media providers may have their own promotions and contest rules and regulations. Review their terms and conditions closely. Failure to adhere to those policies could result in action being taken against the companys presence on that site (i.e. suspension or termination of account). On-line sweepstakes rules vary by state. Slide 38 Promotions Considerations A new consideration is the use of flash-deal websites such as Groupon. A class-action was recently filed against Groupon for allegedly misleading customers by having expiration dates on their gift certificates. Federal and state law prohibit the sale and issuance of gift certificates with expiration dates. Slide 39 #4: Utilize takedown procedures for misuse of copyright protected materials Slide 40 Takedown procedures for misuse of copyright protected works Protecting copyrighted works: use of the Digital Millennium Copyright Act (DMCA) notice and takedown procedure Safe harbor qualifications for online service providers DMCA case examples Protecting trademarks: takedown measures for unauthorized use of trademarks on the internet Trademark case examples Slide 41 Takedown procedures for misuse of copyright protected works The DMCA is a statutory provision in federal copyright law that provides a legal mechanism for the removal of infringing materials from a website. It applies only to infringing uses of copyright protected works, not other forms of intellectual property such as trademarks or trade secrets. Social media providers utilize somewhat similar procedures for trademark misuse, but there is no statutory requirement. Slide 42 Notice and takedown procedure Under the DMCA, if a copyright owner believes in good faith that material on a website infringes its rights in a copyright- protected work, it can send a written Notice and Takedown request to the designated agent for the online service provider (OSP) to request that the material be removed. The definition of "online service provider" is quite broad, and includes anyone who hosts a website where materials can be posted or stored at a user's direction (for example, email providers, entertainment providers, and e-shopping sites). Social media providers qualify as OSPs, but an association may also be an OSP if its website allows user-generated content. The notice must include a variety of technical matters to be properly received and acted upon by the OSP. Slide 43 Notice and takedown procedure- example The Illinois Association of Trauma Surgeons (IATS) hosts its annual meeting in Chicago and hires David Grant as its official photographer for the event. IATS signs a work-for-hire agreement with Grant that vests ownership of Grants photos with IATS. IATS posts certain images on its website and via its electronic newsletter. Slide 44 Notice and takedown procedure- example Tim Evans writes a personal blog on developments in general surgery, and uploads one of David Grants images to his Blogger account (Blogger is owned by Google). IATS becomes aware of Evans unauthorized use of the photo and confirms that Evans does not have permission to use the materials. IATS itself, or through its in-house counsel or outside counsel, should prepare a notice and takedown request to have the image deleted from Evans account. Slide 45 Notice and takedown procedure- example IATS can file a complaint in multiple ways. IATS could attempt to send a cease and desist to Evans. IATS could instead use Googles online web form for copyright complaints: Slide 46 Notice and takedown procedure- example Slide 47 Slide 48 Alternatively, IATS could locate the designated agent for Google in order to send a formal notice and takedown letter. A comprehensive list of online service providers designated agents is located at www.copyright.gov/onlinesp www.copyright.gov/onlinesp IATS would search for Google and click on its designated agent form. Slide 49 Notice and takedown procedure- example Slide 50 Slide 51 Using the info on the designated agent form, IATS or its agent or counsel prepares a takedown letter to Googles designated agent. Major components of the takedown letter: Copyright owners information, including name, address, email. Description of the infringing work(s), including specific URL. Description of the copyright-protected work, including registration number (if available), and location of owners use online, if any. Statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. Statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. A physical or electronic signature from a person authorized to act on behalf of the copyright owner. Slide 52 Notice and takedown procedure- example Googles agent receives the takedown letter, determines it was properly sent, and removes the infringing photo from Evans blog. Google then notifies Evans that it has removed the image. Evans can then send a counter-notice to Google if he has reason to believe the photo was removed improperly. A counter-notice must include similar technical requirements as the takedown letter, while also describing its basis for its good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled. A party submitting a counter-notice also consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber's address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who submitted the takedown notification or an agent of such person. Slide 53 Notice and takedown procedure- example The final steps regarding the image depend on whether Evans submits a counter-notice to Google. If Evans does not send any counter-notice, the materials remained removed. If Evans sends a valid counter-notice with some evidence that the photo was not in fact owned by David or that his use was a fair use, Google must alert IATS. Google notifies IATS of the counter-notice and then waits at least 10 business days to determine if IATS will file a lawsuit against Evans for infringement. If IATS files a lawsuit, Google must comply with the outcome. If IATS files no lawsuit within 14 business days, Google must repost the image to Evans account. Slide 54 Key Points Unlike filing a federal lawsuit, no copyright registration is needed to send takedown letter. If the takedown letter is properly sent and the claim is valid, the OSP must act expeditiously to remove the infringing content to qualify for the safe harbor provision. A valid counter notice based on defenses such as fair use or no valid copyright could open the complaining party to potential damages in a lawsuit. Slide 55 Limitations There are substantial criticisms to the DMCA as it is currently utilized. Materials are taken down prior to the subscriber being able to make any formal response. It affirmatively requires the subscriber to file a counter-notice for materials to be re-posted. Anonymous posters are somewhat immune to takedown procedurewhile their initial infringing posts may be deleted, they can create new dummy accounts and repost infringing content. Thus, content owners must continually monitor for repeat offenders. There is also the potential for abuse by copyright owners, who may file notifications with no good faith basis, or who re-file against a user who filed a valid counter-notice. Slide 56 Safe Harbor Provision for OSPs Another part of the DMCA creates a "safe harbor" for online service providers whose users posted materials that were accused of copyright infringement. As long as the OSP does not receive a direct financial benefit from the infringement and does not have actual knowledge of the infringement, it can avoid liability by having specific procedures in place to address infringement claims. Today, the most popular social media providers such as YouTube, Facebook, and Twitter have evolving IP policies that include compliance with the safe harbor requirements. Slide 57 Example: YouTube Slide 58 Safe Harbor Provision for OSPs If an association operates or hosts a website where users can post and upload content and other materials, it should register a designated agent with the U.S. Copyright Office for the receipt of DMCA notices. The form is available at the website www.copyright.gov/onlinesp/, and the filing fee is $85.www.copyright.gov/onlinesp Listing a designated agent with the Copyright Office is just one of the qualifications for the safe harbor, however. The OSP also must publicize and enforce its takedown policies, via its Terms and Conditions, Legal Policies, and Privacy Policies. Also, bear in mind that the safe harbor provision does not preclude potential infringement liability for the OSPs own acts of alleged infringement, should they arise. Slide 59 Recent Cases Involving the DMCA Viacom v. Google/YouTube, 718 F. Supp. 2d 514 (S.D.N.Y. 2010). Viacom/Comedy Central sent several DMCA takedown notices to YouTube (and its parent Google) requesting that clips of copyrighted programming from The Daily Show (and other Viacom programs from Paramount and DreamWorks) be removed from its website based on Viacoms ownership of the rights in those clips. While YouTube complied with the specific DMCA takedown requests, it did not remove tens of thousands of additional infringing clips, according to Viacom. Viacom sued YouTube for copyright infringement, seeking damages in excess of $1 billion. Viacom claimed that YouTube had actual knowledge of massive infringement and was responsible for removing infringing content. Slide 60 Recent Cases Involving the DMCA Viacom v. Google/YouTube, 07-Civ-3582 (S.D.N.Y. June 24, 2010). YouTube moved for summary judgment, stating that it qualified for the safe harbor because it removed the specific clips. The court agreed with YouTube, holding that YouTube qualified for the safe harbor provision of the DMCA. The court noted that YouTube responded quickly to specific DMCA takedown notices and was not obligated to make an affirmative determination of infringement. Instead, that was the copyright holders responsibility. Mere knowledge of prevalence of infringement is not enough. Slide 61 Recent Cases Involving the DMCA Lenz v. Universal Music Group, 572 F. Supp. 2d 1150 (N.D. Cal. 2008). In 2007, Lenz, posted a 29-second home video of her toddler-age son dancing to the Prince song "Let's Go Crazy" and posted on YouTube. Universal Music Group, copyright owner for the song, sent a takedown notice to YouTube to remove the video. This time, YouTube complied. Lenz sent a counter-notice to YouTube, stating that her video was within the scope of fair use. YouTube reposted the video after UMG failed to file suit after 14 days. Lenz sued UMG for misrepresentation to recover her legal costs, claiming the music company had acted in bad faith by ordering removal of a video that represented fair use of the song. In August 2008, U.S. District Court held that copyright holders cannot order a deletion of an online file without determining whether that posting reflected "fair use" of the copyrighted material. The case remains pending. Slide 62 Slide 63 DMCA Case Example Facebook Fails to Repost Materials Overture Films, producers of an upcoming vampire film Let the Right One In, issued a takedown notice based on an unofficial fan page for the movie in September 2010. Facebook removed the materials, and the fan group filed a counter- notice. While Overture Films never filed suit against the group, Facebook did not repost the materials in a timely fashion. The DMCA merely states that the OSP may replace the materials, not that it is required to do so. Contrast this with the OSPs obligations to act expeditiously to delete materials after receipt of a valid takedown notice. Slide 64 Slide 65 DMCA Case Example Slide 66 Slide 67 Slide 68 Design Furnishings Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. 2010) Zen Path, a furniture manufacturer, sent sixty-three (63) DMCA takedown notices to eBay, regarding Design Furnishings, Inc.s (DFI) use of certain photographs and text on the website. The takedown notices were sent in response to DFIs online sales of outdoor wicker patio furniture, which Zen Path argued infringed its own furniture design. DFI refused to stop selling the furniture. eBay promptly responded to the DMCA notices and took down DFIs posts. This action resulted in negative feedback on DFIs account and lost sales, as well as potential harm to future business. Design Furnishings, Inc. (DFI) sought an injunction against Zen Path LLC to stop them from filing additional DMCA takedown notices. DFI argued that eBay could suspend or terminate its account in the future if Zen Path could continue filing notices. Slide 69 DMCA Case Example Design Furnishings Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. 2010) DFI argued that Zen Path acted in bad faith by sending the takedown notices to eBay, because Zen Path did not own a copyright registration and did not have a reasonable basis for believe that it had copyright protectable works. Under the DMCA, a party that knowingly materially misrepresents that material or activity is infringing shall be liable damages incurred by the alleged infringer who is injured by such misrepresentation, as the result of the service provider removing or disabling access to the material or activity claimed to be infringing. Courts have held that under this standard mistake is not enough, instead there must be a demonstration of actual knowledge when asserting a misrepresentation. Slide 70 DMCA Case Example Design Furnishings Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. 2010) The court found that Zen Paths furniture would be unlikely to obtain copyright protection, because of the industrial design of the furniture. The court held that a purely utilitarian articlesuch as bedroom furniture receives no protection. Because Zen Paths furniture was utilitarian, it was, in fact, not registrable. Thus, Zen Path had no standing to assert claims of copyright infringement against DFI. Because Zen Path knew it had a pending registration for an unregistrable work, the court found that DFI was likely to succeed on its DMCA bad faith claim. The court granted injunctive relief to DFI, precluding Zen Path from filing any additional DMCA notices with eBay based on the furniture design. Slide 71 Copyright Considerations Any company that operates a website where users can contribute or upload content should promptly register a designated agent with the Copyright Office, and should also develop and implement a plan to respond to any takedown notifications that agent receives. Also consider repeat offender penalties. Without a designated agent and appropriate takedown procedures in place, an OSP is vulnerable to claims of copyright litigation and potential liability. Copyright owners must actively monitor and police unauthorized uses of their works via takedown procedures, and if necessary, via litigation. Slide 72 #3: Monitor misuse of trademarks and proactively register marks on social media websites Slide 73 Protecting Trademarks Remember, the DMCA applies to copyright protected material only, not trademarks. Unauthorized use of trademarks online is a hot topic, including keyword advertising issues, false designations of origin in social media, and false username accounts on sites such as Facebook and Twitter. There is no statutory provision in the Lanham Act (the federal trademark act) at this time. The standard procedures are infringement and contributory infringement, as well as unfair competition, such as false designation of origin. OSPs may voluntarily provide mirror procedures for trademark abuses, but practices differ greatly. Slide 74 Enforcing your trademark rights In order to have an actionable claim against someone for use of your trademark, such use must be in interstate commerce Twitter example Fair use or nominative fair use is a defense to a claim of trademark infringement Marks need not be registered in order to sue for infringement or unfair competition Most providers have some type of policy in place to protect trademark owners and/or provide for a mechanism to address misuse of marks Slide 75 GoDaddy Slide 76 eBay Slide 77 Facebook Slide 78 Twitter Slide 79 Recent Trademark Case Tiffany, Inc. v. eBay, Inc., 600 F. 3d 93 (2d Cir. 2010) Tiffany brought claims of direct and contributory trademark infringement, direct and contributory dilution, unfair competition, and false advertising against eBay. Tiffany asserted that eBay facilitated and allowed counterfeit Tiffany itemsspecifically silver jewelryto be sold on its website bearing the famous TIFFANY marks. eBays defense was that it had taken affirmative steps to remove counterfeit products, suspended seller accounts, invested more than $20 million and nearly 4,000 employees in trust and safety issues. eBay also implemented a fraud engine and Verified Rights Owner programs. Slide 80 Tiffany v. eBay The district court ruled in favor of eBay on each of Tiffanys claims, and the Second Circuit affirmed. It held that eBay was not liable for direct or contributory infringement or dilution, based on its proactive monitoring and VeRO programs. Contributory infringement required specific knowledge, not merely general knowledge that some listings may be counterfeit The court did remand on the issue of whether advertisements were false by implication and misleading to consumers. Slide 81 Tiffany v. eBay Implications for brand owners: It is the mark owners responsibility to monitor counterfeit usage and potential infringement based on its superior ability and cost advantages The mark owner ultimately bears the burden of monitoring unauthorized use of its IP and prosecuting would-be infringers The mark owner must be vigilant and proactive in finding would-be counterfeit sellers and enforcing rights via litigation or using protections such as eBays abuse reporting system Slide 82 Fair use of trademarks on social media sites Gripe sites Protected free speech unless it is false and/or crosses the line into commercial speech Barbra Streisand effect Review sites Nominative fair use under trademark law protects such use of trademarks News or biographical sites Generally projected under the First Amendment Slide 83 Summary- Trademark Associations and their members own valuable trademarks and should actively police and monitor for potentially infringing uses in social media, both with regard to usernames and unauthorized use of trademarks and logos. Trademark owners have much less certainty with regard to takedown measures than copyright owners. Associations and their members should proactively seek to register their marks as usernames on the most popular social media sites to avoid potential infringement. Trademark owners may have little recourse against gripe sites or review sites that use their marks. Slide 84 #2: Be aware of the legal ramifications of the potential discoverability of information on social media sites in the context of litigation Slide 85 Discovery of electronically stored information In litigation, the Federal Rules of Civil Procedure provide for the discovery of electronically stored information (ESI) that is under the possession, custody, or control of the responding party. The Rules also impose a duty to preserve such information when litigation is reasonably anticipated (litigation hold) Courts have found social media sites to fall under the definition of ESI How do companies control and preserve information stored on third party social media sites? Slide 86 ESI on Social Media Sites e.g., Blogs, Facebook, Twitter, Wikipedia sites maintained by the company are all discoverable Information about your company posted by an employee on their personal social media site is also likely discoverable Facebook and other such profiles are discoverable even if they are set as private Guest v. Leis, 255 F.3d 325 (6th Cir. 2001) EEOC v. Simply Storage Mgmt., LLC, No. 1:09-cv-1223-WTL-DML (S.D. Ind. 2010) Romano v. Steelcase Inc., 2010 WL 3703242 (N.Y. Sup. Ct. 2010) The court ordered disclosure of all public and private information found on partys social media site Slide 87 Tips for dealing with ESI discovery issues Have policies and guidelines in place for use of social media sites by the company and by individual employees Make use of software tools to store/archive social media sites maintained by the company Educate your employees on the use of social media when referencing your business Slide 88 #1: Develop and implement a comprehensive social media policy Slide 89 Developing a social media policy Creating and enforcing a social media policy is of utmost importance. A social media policy may take various forms (a wholly separate policy, a section of an employee handbook or confidentiality policy, etc.). If the policy is separate, it should reference other relevant policies, such as confidentiality agreements. The policy should set forth a statement of purpose, that social media is supported but with certain conditions and understandings. Slide 90 Developing a social media policy Describe all content subject to pre-approval or forbidden to be shared (financial disclosures, acquisitions, new product lines). List appropriate disclaimers Include contacts in legal department or other departments (marketing) with any questions Include provisions regarding repercussions for failure to comply. Slide 91 Developing a social media policy Basic dos and donts Dont impersonate someone else Dont make false statements Dont disparage your employer or competitors Dont mislead consumers Have all employees read and sign the policy. Offer training for employees, additional specialized training for senior management, investor relations, and communications and marketing personnel that have specific involvement in social media. Slide 92 Developing a social media policy Consider inclusion of enforcement measures. If you are monitoring employees use of social media, disclose it. Include reporting violations procedure. Be flexible, as the use of social media will continue to evolve. Any type of policy change to include social media will grab the attention of employees. Slide 93 10 Steps to Reduce Social Media Risks Richard B. Biagi rbiagi@nealmcdevitt.com Daniel J. Schaeffer dschaeffer@nealmcdevitt.com Jeremy M. Roe jroe@nealmcdevitt.com Copyright 2011, Neal & McDevitt LLC. All rights reserved.