Media Law: Avoiding Legal Minefields Monday, August 3, 2015 Portland, OR 1 Statewide Editors...

Media Law: Avoiding Legal MinefieldsMonday, August 3 , 2015 • Po r t land , OR

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Statewide Editors Association 2015 SEA Institute

Media Law: Avoiding Legal Minefields

Presented by Matthew R. Wilmot


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Overview

• Protecting and Defending Your Content: Copyright Law for the Media

• Being Aware of Brands: Protecting Your Trademarks and Defending Against Trademark Claims

• Fighting for Transparency: Accessing Governmental Information

• Watch What You Say: Defamation and Privacy Concerns


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Part One:Protecting and Defending Your Content: Copyright Law for the

Media


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Copyright Law

• What is a copyright?– Protects original works of authorship fixed in

tangible form.• Must have some minimal degree of creativity. Low threshold.

– Protects only the expression – does not protect the ideas or concepts underlying the expression.

• How do copyrights differ from other IP? – Trademark, patent, trade secret, etc.

• What rights are granted in copyrights?– Exclusive rights to use, reproduce, prepare derivative

works of, distribute, publicly perform, and publicly display the work.


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Copyright Law (cont’d)

• What does having “exclusive” rights mean?– Use– Publicly perform– Publicly display– Distribute– Create derivative works

• What about moral rights?– Rights of attribution– Rights of integrity

• Moral rights can be waived.


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• Do copyrights need to be registered?– Technically no, but practically yes.

• To sue in federal court, the exclusive venue for copyright claims, you must have at least applied.

• A copyright registration also provides valuable remedies of statutory damages and attorneys’ fees.

– Registration must occur pre-infringement, subject to 3 month grace period for published works.

• How long do copyright rights last?– 70 years plus the life of the author (subject to

exceptions).• Do you have to use a © symbol?

– Not required, but helpful.


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• Ownership.– Default rule is that author owns copyright rights, unless

“work made for hire” or assignment.• Publisher unlikely to own content created by independent authors

and contributors unless agreement states otherwise.

– Contribution Agreements.• Agreement addressing relationship between publisher and author. • Typically addresses issues such as: what the publisher can do with

the work; how the author will be compensated; how the materials will be delivered; what quality of work is acceptable; etc.

• Publications that use materials from outside authors should prepare a standard form of contribution agreement.


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• Important Terms for Contribution Agreements.– Grant of Rights/Reserved Rights.

• What rights are retained by author and what rights are granted to the publisher? Important for publisher to account for distribution through future technology.

– Author Representations and Warranties.• Publisher may ask author to represent and warrant that the work is non-infringing.

However, publisher should perform at least some due diligence of its own.

– Publishing decisions.• Publisher should retain right to edit submissions, including, moving the placement of

the article, amending the title, etc.

– Financial Terms.• Agreement should set forth how much the author gets paid and how much.

– Future Works. • Publisher should consider whether it wants rights to future works from author –

i.e., right of first refusal, etc.


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• Copyright Infringement.– Test for Infringement.

• Direct Infringement: (1) access; and (2) substantial similarity.• Indirect Infringement: (1) actual or constructive knowledge; and

(2) that the user contributed to or induced the direct infringement.• Vicarious Infringement: (1) financial interest in the infringing

activity; and (2) right or ability to control direct infringer.

• Remedies.– Depends on whether the plaintiff has a registration.

• Plaintiff’s actual damages and defendant’s profits; statutory damages; attorneys’ fees; injunctive relief.


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• Defenses to Copyright Infringement.– Copyright invalidity– Independent creation– Scenes a faire/merger– Preemption– Statute of limitations– Copyright misuse– Equitable defenses


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• Copyright Fair Use (17 U.S.C. § 107).– Very fact-specific multi-factor test:

• Purpose and character of the use.• Nature of the copyrighted work.• Amount and substantiality of the portion used in relation to the

copyrighted work as a whole.• Effect of the use upon the potential market for or value of the

copyrighted work.


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• Fair Use Factors.– Purpose and character of the use.

• Commercial use?– Media/First Amendment use nearly always fair use.

• Transformative?– Adds something to the original content or alters the character or use.

– Nature of the copyrighted work.• Creative versus fact based? Published or unpublished work?

– Amount and substantiality.• How much of the copyrighted work was used?

– Effect of the use on the potential market.• How does the work affect sales of the original?


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• Digital Millennium Copyright Act (“DMCA”).– To balance benefits and risks of content made available over the

Internet, Congress enacted the DMCA in 1998.

• Protects Internet “service providers.” – A “service provider” is “an entity offering the transmission, routing, or

providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received,” including “a provider of online services or network access, or the operator of facilities therefor.”

• Applies only to copyright infringement claims.– Does not apply to trademark claims, defamation, etc.


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• DMCA Safe Harbor.– DMCA provides safe harbor from liability resulting

from various activity on the Internet, including without limitation:

• Acting as a conduit for transmission of infringing content;• Providing server space for an infringer’s content (such as a

website or blog); or• Referring or linking users to an online location containing

infringing material.

– Websites may want to include a statement dealing with DMCA compliance.


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• DMCA Safe Harbor Eligibility.– Service provider must adopt and reasonably implement, and inform users

of, a policy that provides for termination of repeat infringers.• Policy should require users to accept terms and conditions as a pre-requisite to

use.

– Service provider must name a designated agent for copyright complaints. – Service provider must accommodate, and not interfere with, standard

technical measures to identify or protect copyrighted works.– Service provider must not have actual knowledge of infringing activity or

content, or turn a blind eye to red flags of such activity or content. • Once service provider is aware of infringing activity, service provider must act

expeditiously to remove the infringing content or disable access (see below). • If content is removed, service provider must provide notice to user whose content

was removed. User may then counter-notify the service provider.• If counter-notice, service provider must restore content within 10-14 days.


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• DMCA Notice and Take Down.– A valid DMCA “take down” request requires that the requesting party

satisfy specific notice requirements:• Signature of the requesting party (or a party authorized to act its behalf); • Identification of the copyright copyrighted work;• Identification of the infringing material and its location;• Identification of complaining party;• Statement of good faith belief; and • Statement that information is accurate.

– Counter-notice submitted by alleged infringer must also meet certain specific requirements:

• Name, address, phone number and signature of party submitting counter-notice;• Identification of removed material and where it used to be found;• Statement of good faith belief; and• Statement of consent to jurisdiction of Federal District Court in relevant jurisdiction.


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Part Two: Being Aware of Brands:

Protecting Your Trademarks and Defending Against Trademark

Claims


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Trademark Law

• What is a trademark?– A word, name, symbol, design, etc. used in connection with

goods or services to indicate the source of the goods or services and to distinguish the goods and services of third parties.

– Whether referred to as a trade name, a service mark, a trademark, or trade dress, the law is essentially the same.

– Test for Infringement: Likelihood of Confusion.• Multi-factor test. Factors given most weight by courts are the

similarity between the parties’ marks and relatedness of the parties’ goods/services.


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Trademark Law (cont’d)

• Establishing a Defensible Mark is a Combination of Selection and Registration.– Choose a distinctive mark: Scope of protection depends

on mark selected.• Generic – never entitled to trademark protection.• Descriptive – only protectable upon a showing of secondary

meaning.• Suggestive – protectable as a trademark but scope of protection is

more narrow.• Arbitrary – given broadest trademark protection.• Fanciful – given broadest trademark protection.

– In other words, not all marks are created equally.


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• Perform a Search:– A pre-filing search increases the likelihood that your mark

will be enforceable/registerable and minimizes risk of infringing third party rights.

– Searching Options:• Third party search report – most expensive, but most

thorough.• In-house search – typically performed by law firm, but is

considered less thorough than third party search report option.

• Self search using Google and USPTO online records.– Self search better than nothing, but not recommended.

Trademark infringement is a legal test, and therefore infringement/availability requires legal analysis.


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• Registering your trademark.– Do you need a registration to have trademark rights? No - trademark rights

are created through use in commerce and not through registration, although registration is highly advisable in that a registration enhances unregistered rights.

– Unregistered rights are limited in geographic scope, among other things.

• Registration enhances rights at common law.– Statutory presumptions: ownership, validity; exclusivity of use. – Protection against registration of confusingly similar marks.– Potential for incontestable status.

• Principal Register v. Supplemental Register.– Principal Register for inherently distinctive marks.– Supplemental Register for marks that can acquire distinctiveness over time.


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• Creating Brand Value and Goodwill.– Always use your mark as a trademark.

• Use your mark as an adjective followed by a noun.• When using your trademark on marketing or promotional materials, use a

different colored or bold font.• Use an appropriate trademark symbol, i.e. ™ or ®.

– Enforce Your Mark.• Your mark represents your goodwill. Protect against tarnishment or dilution by

enforcing your mark where appropriate.– But do your homework. Make sure that the third party infringer does not have a

clear defense or perhaps even priority.

– Be Consistent.• Pick a mark and stick to it – consistency is key. • Develop and adhere to brand guidelines.


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• Trademark Fair Use.– Like copyright law, trademark law also provides a fair use

defense.– Two types:

• Classic fair use: Use of a mark or term in a non-trademark manner in order to refer to the party’s own goods/services.

• Nominative fair use: Use of a third-party’s trademark to refer to the third-party’s goods/services. Requires a showing of the following:

– The product or service cannot be readily identified without use of the mark;– The user only uses as much of the mark as is necessary for the

identification (i.e., the words but not the logo); and– The use does not suggest sponsorship or endorsement.


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Part Three: Fighting for Transparency: Accessing Governmental

Information


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Accessing Governmental Information

• Federal and State laws mandate governmental disclosures of information under appropriate circumstances.

• Freedom of Information Act (“FOIA”).– Enacted in 1966, provides access to the public records of all

departments, regulatory agencies, cabinet and military departments, commissions, offices, government-controlled corporations, and other organizations of the Executive Branch of the federal government.

– Does not cover:• Sitting President, Congress or federal judiciary;• Federally funded organizations with no federal control or regulation;• Private persons or organizations; and • State and local governments.


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Accessing Governmental Information (cont’d)

• FOIA requires federal agencies to:– Provide access to their records and information, barring certain exemptions;– Suffer penalties for refusing to release covered information;– Appoint a FOI officer charged with responding to information requests; and– Publish agency regulations and policy statements, including their rules for

handling FOIA information requests, in the Federal Register.

• FOIA gives the right to request access to government records to any person for any reason, whether the person is a U.S. citizen or a foreign national.

– All non‐exempt electronic and physical records held by federal agencies must be disclosed under FOIA.

– Federal agencies covered by FOIA are permitted to withhold documents, or redact portions of documents, if the records (or information in the records) are covered by one of the exemptions established by FOIA (see below).


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• Exempt Documents.– Following documents exempt from FOIA:

• Classified Documents• Internal Agency Personnel Rules

– If trivial and of no genuine public interest, or if disclosure would risk circumvention of law or agency regulations.

• Information Exempt Under Other Laws– For example, personal tax returns.

• Privileged Documents• Trade Secrets or Confidential Commercial Information• Internal Agency Memoranda and Policy Discussions

– I.e., internal agency memoranda and letters discussing policy options.

• Personal Privacy • Law Enforcement Investigations• Federally Regulated Banks• Oil and Gas Wells


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• Making a FOIA Request.– FOIA requests must be made in writing. – Should be mailed, faxed, emailed or hand delivered to the relevant agency,

depending on the methods allowed by the agency.– FOIA request should be addressed to the FOIA officer or agency head. It must

include:• The requesting party’s name, address (if records are to be mailed), and/or email (if

records are to be emailed);• A statement that the requesting party is requesting records under FOIA; and• A description of the records the requesting party is seeking.

– Government must respond with a denial or grant of access within 20 business days. Note that the only a response is required; documents need not be delivered within this timeline.

• Agency may exceed 20 day period if it needs more information from requesting party.• Agency may extend by 10 additional working days under “exceptional circumstances.”

– Expedited processing is available under certain requirements.


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• Fees.– Federal agencies are allowed to charge “reasonable” costs for

responding to FOIA requests.– FOIA breaks down requesters into three categories for determining

fees:• Commercial use requesters, who must pay all fees for search, duplication,

and review;• Requesters from the professional media, educational institutions, and

scientific institutions, who do not have to pay search fees and only pay duplication costs after the first 100 pages; and

• All other requestors, who pay search fees after the first two hours and duplication costs after the first 100 pages

– Reproduction fees are $.10 per page. Hourly fees range from $23 to $48.


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• Legal Remedies if Request Denied.– Informal resolution.

• Simplest and sometimes most effective means of resolution.

– Appeal within relevant agency.• If the agency denies the request or fails to timely respond, appeal can be made

to the agency’s FOIA appeals officer.• Period of time to appeal is generally around 30 days, but may vary.• FOIA requires that final ruling on appeal be made within 20 days.

– File a lawsuit. • If the request is denied and the internal appeal does not reverse the decision, the

party may file suit in Federal District Court in party’s jurisdiction of residence. • Suit must be filed within 6 years from date of initial FOIA request.• Fees may be recovered if suit is “substantially successful.”


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• State Open Records and Open Meetings Laws.– All states have some form of open records and open

meetings laws. – Support generally found in 6th Amendment to U.S.

Constitution, and applicable state’s constitution.– Laws may vary from state to state, so please refer to

relevant state statutes/regulations.


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Part Four: Watch What You Say:

Defamation and Privacy Concerns


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Defamation and Privacy

• Defamation and False Light.– Defamation is the term for a legal claim involving

injury to reputation caused by false statements of fact.• Incudes both libel (typically written or recorded statements)

and slander (typically spoken statements).

– False light, which is similar to defamation, generally involves untrue factual implications.

– The premise of both claims is falsity.• Truthful statements and implications that harm another’s

reputation will not create liability, although publishers may be liable if information is personal or highly private in nature.


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Defamation and Privacy (cont’d)

• Elements of Defamation.– Defamation is governed by state law, but generally requires the

following:• That the statement was published; • That the statement was about the plaintiff;• That that statement harmed the reputation of the plaintiff; • That the defendant was negligent (if the plaintiff is a private figure), or that the

statement was made with actual malice if the plaintiff is a public figure; and• That the statement was not subject to an applicable privilege.

– In cases involving public figures or matters of public concern, a plaintiff must prove that the statement was false.

– Statements of pure opinion cannot be defamatory.– Plaintiff must prove damages, other than for “per se” defamation.– Recovery of compensatory damages and potential punitive damages.


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• Elements of False Light.– False light is a “privacy tort” that is similar to defamation. Requires

that the plaintiff show the following:• That the defendant published the information widely;• That the publication identifies the plaintiff;• That the publication places the plaintiff in a false light that would be highly

offensive to reasonable person; and• That the defendant was at fault in publishing the information.

– Some states do not recognize false light claims. – False light is very similar to defamation.– Avoid false light claims by checking all facts and by documenting

the support for all of the information published.• Statements that may innocuous or harmless may still offend.


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• Right of Privacy.– Right of privacy entails separate torts.

• Intrusion Upon Seclusion:– That the defendant, without authorization, intentionally invaded the private affairs

of the plaintiff (most commonly a physical trespass (literally or electronically));– The invasion must be offensive to a reasonable person (beyond embarrassment); – The matter intruded upon involved a private matter (not newsworthy); and– The intrusion caused mental anguish or suffering.

» Most commonly results from trespass or on to property that involves the taking of a picture or video.

• Publication of Private Facts:– The disclosure must be public (limited disclosures ok); – The facts disclosed must be private and not generally known;– Must be highly offensive to reasonable person of ordinary sensibilities; and– Must not be newsworthy (First Amendment right to publish newsworthy info).

– Damages most commonly compensatory/punitive damages.


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• Right of Publicity.– Right of publicity is the inherent right of every human

being to control the commercial use of his or her identity.

– Right of publicity is violated where the publicity rights (i.e., name, likeness or personal attributes) are used for an exploitive purposes or for the user’s own benefit.

• Difference between right of publicity and right of privacy is that right of privacy is for emotional distress, whereas the right of publicity concerns monetary injury.


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• Elements of Publicity Rights Claim.– Generally requires:

• That the defendant used the plaintiff’s publicity rights; • That appropriation was to the defendant’s advantage, commercially or

otherwise; • Lack of consent; and• Resulting injury.

– Damages can include plaintiff’s actual damages, the defendant’s profits, and possibility of punitive damages.


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• Defenses and Limitations on Damage.– Truth or Substantial Truth: Generally a complete defense to defamation.– Fair Report: Protects defendants who report on the deliberations of a public body.

Generally a defense to defamation. – Opinion/Fair Comment: Statements of opinion cannot support a cause of action

for defamation.– Neutral-reporting Privilege: Protects news organizations who publish statements

made by others about a public figure on a matter of public interest even if the press suspects the statements are not true. Generally a defense to defamation.

– Statute of Limitations: If the plaintiff has waited too long to file a lawsuit, a defamation or privacy claim may be time-barred by the statute of limitations.

– Consent: Implied or express consent can act as a defense to a privacy claim. – Public Participation: Statements made as part of legislative, judicial or other

similar proceedings are immune from defamation claims.


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• Defenses and Limitations on Damage (cont’d).– First Amendment.

• First Amendment concerns generally limit damages or otherwise preclude claims for defamation or for privacy violations.

– Defamation: » If alleged defamatory statement was made against a public

figure or on a matter of public concern, then the plaintiff must prove by clear and convincing evidence that the defendant acted with actual malice.

– Privacy Claims: Newsworthy and/or matters of public concern can preclude and/or mitigate claims for violations of privacy rights.


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• Defenses and Limitations on Damage (cont’d).– Federal Communications Decency Act (“CDA”).

• Provides immunity for liability for providers and users of an “interactive computer service” who publish information by others.

– Practical effect is that provider or user is not treated as a “publisher or speaker” of any information provided by another content provider.

• Elements:– Defendant must be a “provider or user” of an “interactive computer service”;– The cause of action asserted by the plaintiff must treat the defendant as the

publisher or speaker of the harmful information.– The defendant must not be the original information content provider.

• CDA has been interpreted as complete defense for Internet service providers for defamation, privacy claims, and other claims involving the provision of false information.


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Questions?


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Disclaimer

The information included in this document is intended for informational purposes only and is not intended to serve as legal advice regarding specific matters nor should it be construed as a legal opinion. Neither this presentation or this document establish an attorney-client relationship between you and the presenter. The information included in this document should not be used to replace the advice of a licensed attorney.


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About the Presenter

Matthew R. Wilmot is a Partner with Stoel Rives, LLP, a full service law firm with nearly 400 attorneys operating out of 12 offices in seven states and the District of Columbia. Matt focuses his practice in intellectual property matters, including trademark, copyright, domain name, and media law.

If you would like more information or assistance, please contact Matt at 503.294.9851 or at [email protected].

Matt is admitted to practice in Oregon and California.

mailto:[email protected]

Media Law: Avoiding Legal Minefields Monday, August 3, 2015 Portland, OR 1 Statewide Editors...

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