Keeping your Social Media

and Other Online

Campaigns on the Right

Side of Intellectual Property

Law

1. Trademark Law

2. Copyright Law

3. Trade Laws

4. Privacy Laws

PART 1 - TRADEMARKS

Trademarks - Assets of a Business – Both as property and as

goodwill

- words (brands)

- slogans

- designs/icons

- product configuration

Potential Liability for Trademark Infringement

Trademarks Must Not be Confusingly Similar to Other Marks

Factors to consider: In re E.I. DuPont du Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), some include:

A. visually, audibly, or phonetically similar?

B. are the goods/services related or competing?

B. trade channels overlap?

C. sophistication of consumers?

D. are there instances of actual confusion?

Federal Protection:

Protect against infringers who use

confusingly similar marks

Claim of Trademark Infringement 15 U.S.C. § § 1116 and 1117

(a) action can be in federal court for federally-registered

mark, they have original jurisdiction;

(b) relief available for trademark infringement:

(1) injunction;

(2) actual damages (including infringer’s profits);

(3) attorneys’ fees for exceptional cases; and

(3) destruction of infringing inventory.

Federal Protection Claim of Counterfeiting:

• a counterfeit (copy) of a mark that is registered on the

Principal Register in the United States Patent and

Trademark Office for such goods or services sold,

offered for sale, or distributed and that is in use,

whether or not the person against whom relief is

sought knew such mark was so registered…. 15

U.S.C. § 1116

• In addition to above remedies, may seek statutory

damages for up to $1 million

Federal Protection Claim of Dilution: 15 U.S.C. § 1125(c)

• Even if a mark does not infringe another’s trademark (or is

not confusingly similar), a trademark owner may still have a

cause of action for the loss of the trademark’s ability to

clearly identify one source.

• requires proof that: (1) the mark is famous, (2) the defendant

is making use of the mark in commerce, (3) the defendant's

use of the mark began after the mark became famous, and

(4) the likelihood of dilution

Minimizing Potential Liability for Use of a

Trademark

SEARCHES help to determine whether the mark is available for

registration and use

– Federal searches [www.uspto.gov]

– State searches [secretaries of state] – not tasked with

searching or enforcement

– Domain Name searches

• Domaintools.com

• allwhois.com

– “Common Law” – internet, phone books, business names

– Proprietary Databases

Sponsored Advertising on Social Media Sites

• Pay per click (PPC) is used on websites, where advertisers

pay their host only when the ad is clicked. With search

engines, advertisers typically bid on keyword phrases relevant

to their target market. Content sites commonly charge a fixed

price per click rather than use a bidding system.

Sponsored Advertising • Is an advertiser legally liable for a wrong if they

purchase their competitor’s trademark as a

keyword for sponsored advertising?

– Case law goes both ways right now

– Trend: requires something more

– Guidelines: Avoiding using the competitor’s

trademark in the title of the advertisement, the

text of the advertisement, in the url (domain

name), and in any other way that creates

confusion

Fair Advertising Strategies/Using the

Trademark of Another

• Comparative Advertising

• Puffery

– America’s Favorite/Best v. America’s #1

• Best Practices

– Be truthful

– Don’t be literally true, but deceptively misleading

– Disclaimers

– Trademark notices

PART 2 – COPYRIGHT

OWNERSHIP

REQUIREMENTS FOR COPYRIGHT

PROTECTION

• Work of original creative authorship

• Fixed in a tangible form of expression from

which it can be perceived, reproduced, or

otherwise communicated, directly or with aid of a

device

• Format or medium of work is irrelevant

• Focus is on the creative expression

Copyrights • Copyrights exist upon creation

– Registration is not required

– Notice is not required

• Originality is all that is required – not specific length. Must contain minimum creative authorship

• The Copyright Act protects “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102.

• Although some tweets are not eligible for copyright protection, some surely are “original.”

• RSS feeds are subject to copyright

protection

Duration of Copyright • individual authors for works created on or after 1/1/78:

life of author + 70 years.

• works made for hire created on or after 1/1/78:

95 years from publication or 120 years from

creation, whichever is shorter

• For works created prior to January 1, 1978, the duration

of copyright may vary depending upon when the work

was created and/or published.

Liability for Copyright Infringement

• Individuals are liable for their own actions

• Exposes employer or Contractor to liability

• Potential Damages

– Actual damages

– Injunction

– Statutory Damages

• Up to $30,000/infringing work

• Up to $150,000 for willful infringement of work

• Attorneys’ fees/legal expenses

Guidelines

Certain works are NOT protected by copyright law

• Works that are in the public domain unoriginal reprints of

public domain works

• U.S. Government Works

• 17 U.S.C.§ 105: Copyright protection under this title

is not available for any work of the United States

Government, but the United States Government is

not precluded from receiving and holding copyrights

transferred to it by assignment, bequest, or

otherwise.

Certain works are NOT protected by copyright law

•Facts and ideas

• While the protection does cover the particular, distinctive

words a writer uses to present ideas or facts, control over

the underlying concepts or truths cannot be owned. Thus, a

biography about a famous athlete qualifies for copyright,

but the events and facts of his life do not.

• Feist Publications, Inc., v. Rural Telephone Service Co.,

499 U.S. 340 (1991)data is not protected by copyright;

selection and arrangement of data can be protected by

copyright”

Certain works are NOT protected by copyright law

Works which have not been fixed in a tangible

form of expression

• Titles, names, short phrases, and slogans

• Mere listings of ingredients or contents

• Works consisting entirely of information that is

common property and which contains no original

authorship (e.g. height & weight charts, tape

measures, calendars, etc.

MANAGING LIABILITY WITH BLOGS, BULLETIN

BOARDS and OTHER AVENUES FOR

INTERACTIVE COMMUNICATION

• The Digital Millennium Copyright Act provides a safe

harbor.

• But company must comply with DMCA procedures for

designation and registration of a “copyright agent” and

implementation of a “notice-and-takedown” regime.

• One jury awarded $32M against hosting company for

infringement by sites it hosted.

Best Practices

• Assume it is copyrighted. When in doubt (which

is probably most of the time) seek permission or

create something original

• If commenting or criticizing, only use as much as

necessary and make sure comment/criticism is

present

• When quoting, give attribution

Best Practices

• Do not copy photographs, drawings, videos, or

other visual works of art without permission

• When using stock photos, be sure the license

permits the intended use, i.e. commercial use

• Use original photos/drawings as much as

possible

• Do not merely reproduce a copyrighted

illustration

• Use federal government works when you can

Best Practices

• Wikipedia: “The Wikimedia Foundation does not

own copyright on Wikipedia article texts and

illustrations.” • “Permission is granted to copy, distribute and/or modify

Wikipedia's text under the terms of the Creative Commons

Attribution-ShareAlike 3.0 Unported License and, unless

otherwise noted, the GNU Free Documentation License.

unversioned, with no invariant sections, front-cover texts, or

back-cover texts. “

UNDERSTANDING COPYRIGHT IMPLICATIONS FROM

POSTING ON THE SITES OF OTHERS

The copyright owner may not retain control of material

posted to a social networking site such as Facebook

• “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…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.”

• Even though Facebook does not own copyright in users’

content, it may own copyright in users’ pages. Facebook Inc.

v. Power Ventures Inc., N.D. Cal., No. C 08-5780, 5/11/09).

• Gmail T & C: “By submitting, posting or displaying the content

you give Google a perpetual, irrevocable, worldwide,

royalty‐free, and non‐exclusive license to reproduce, adapt,

modify, translate, publish, publicly perform, publicly display

and distribute any Content which you submit, post or display. .

.”

PART 3 – TRADE LAWS

Commercial Blogging • FTC Guidelines 10/5/09

– FTC Act - “material connections” (sometimes

payments or free products) between

advertisers and endorsers

– Applies to bloggers or other “word-of-mouth”

marketers

Commercial Blogging • While decisions will be reached on a case-by-

case basis, the post of a blogger who receives

cash or in-kind payment to review a product is

considered an endorsement. Bloggers who

make an endorsement must disclose the

material connections they share with the seller of

the product or service.

Commercial Blogging • If a company refers in an advertisement to the

findings of a research organization that

conducted research sponsored by the company,

the advertisement must disclose the connection

between the advertiser and the research

organization.

Social media posts are considered sponsored advertising

messages and are regulated by the FTC if they meet

certain conditions. When deciding if a post should be

considered an advertising message (an “endorsement”),

the FTC will look at whether the writer:

– is compensated (cash or in-kind) by the marketer or a

third party

– has an ongoing relationship with the marketer

– participates in a word of mouth marketing program

that provides products to review publicly

– receives similar products or services regularly, or

expects to in the future

• The FTC makes it clear that there are three things you

need to do to limit your liability:

1. Require disclosure and truthfulness in social media

outreach.

2. Monitor the conversation and correct misstatements.

3. Create social media policies and training programs.

Organizations must require disclosure and truthfulness

from anyone who participates in their social media

programs and train them how to do it.

“Advertisers are subject to liability for false or

unsubstantiated statements made through

endorsements, or for failing to disclose material

connections between themselves and their

endorsers.”

• Disclosure must be “clear and conspicuous” —

understandable to the “average consumer.” This has

always been the FTC standard.

• Many marketers miss a key concept in staying safe:

“Endorsements must reflect the honest opinions, findings,

beliefs, or experience of the endorser”.

This means that you should never ask bloggers to write a

post about a product they have not actually used.

“When the advertisement represents that the endorser

uses the endorsed product, the endorser must have been a

bona fide user of it at the time the endorsement was given.

Additionally, the advertiser may continue to run the

advertisement only so long as it has good reason to believe

that the endorser remains a bona fide user of the product.”

Using a service that pays for blog posts without providing a

product or experience to the blogger appears to be entirely

illegal and should not be done.

PART 4 – PRIVACY LAWS

• Privacy Generally

• COPPA

• HIPAA

General privacy laws apply to information posted

on social media sites, as well as

• libel laws

• right of publicity laws

• securities laws

COPPA

[15 U.S.C. §6501-6506]

•Enforced by the Federal Trade Commission and other

state and federal agencies

• applies to operators of commercial websites and online

services directed to children under 13 that collect, use, or

disclose personal information from children, and operators

of general audience websites or online services with actual

knowledge that they are collecting, using, or disclosing

personal information from children under 13.

In order to comply with COPPA, there are various notice

requirements that are identified in the attached document

provided by the Federal Trade Commission. The

requirements include:

1. Post a clear and comprehensive privacy policy on their

website describing their information practices for

children’s personal information;

2. Provide direct notice to parents and obtain verifiable

parental consent, with limited exceptions, before

collecting personal information from children;

3. Give parents the choice of consenting to the operator’s

collection and internal use of a child’s information, but

prohibiting the operator from disclosing that information to

third parties;

4. Provide parents access to their child’s personal

information to review and/or have the information deleted;

5. Give parents the opportunity to prevent further use or

online collection of a child’s personal information;

6. Maintain the confidentiality, security, and integrity of

information they collect from children.

7. The Rule also prohibits operators from conditioning a

child’s participation in an online activity on the child’s

providing more information than is reasonably necessary to

participate in that activity.

More information at:

http://www.ftc.gov/privacy/coppafaqs.shtm

HIPAA

• HIPAA’s privacy regulations apply to healthcare

providers, defined as: “a provider of medical or health

services…and any other person or organization who

furnishes, bills, or is paid for health care in the normal

course of business.” 45 C.F.R. 160.103

• The HIPAA Privacy Rule protects the patient’s protected

health information, which is “all individually identifiable

health information held or transmitted by a covered entity

or its business associate, in any form or media, whether

electronic, paper or oral.” 45 C.F.R. 160.103

• HIPAA provides severe penalties for the dissemination of

protected health information (PHI).

• Fines of $100 per disclosure of PHI and up to $25,000

for multiple violations in the same year. 42 U.S.C.

§1320(d)(5).

• Fines up to $250,000 and/or 10 years imprisonment for

knowingly misusing individually identifiable PHI. 42

U.S.C. §1320(d)(6).

Best Practices

• Limit liability by establishing clear policies and

procedures. Review and revise them as needed.

• These policies should:

– explain appropriate use of social media platforms

– clearly define how information posted there will be

used

– specify what degree of privacy can be expected

– state clearly that these forums are not to be used for

personal medical advice (if applicable)

– state clearly that the site is NOT monitored 24 hours a

day, seven days a week

• Post these policies prominently on the social media sites

and incorporate them into off-line documents such as

Notice of Privacy Practices.

• Make sure you follow your own privacy notice

procedures

• Train staff in policies and procedures.

• Don’t practice medicine online. Some patients are more

open than others, and are willing to post details about

themselves that others consider private.

• When comments or questions on your social media

platform are approaching HIPAA violations, take them

offline. Ask the patient to call the medical institution for

more details.

• Regularly monitor social media platforms. Remove any

posts or comments that violate HIPAA regulations by

disclosing protected health information.

Thank You!

Cheryl Burbach

Hovey Williams LLP

84 Corporate Woods

10801 Mastin Blvd., Suite 1000

Overland Park, KS 66210

913.647.9050

cburbach@hoveywilliams.com