Presenting a 90‐Minute Encore Presentation of the Teleconference/Webinar with Live  Interactive Q&A 

Trademark Threat @ Facebook  Twitter and 

with Live, Interactive Q&A 

Trademark Threat @ Facebook, Twitter and Other Social Networking WebsitesPolicing and Protecting Against Brand Infringement and Counterfeiting by Website Users

T d ’ f l f

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, DECEMBER 14, 2010

Today’s faculty features:

Ian C. Ballon, Shareholder, Greenberg Traurig, Santa Monica & Palo Alto, Calif.

Paul W. Garrity, Partner, Sheppard Mullin, New York

Jennifer L. Barry, Latham & Watkins, San Diego

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Emerging Trademark ThreatEmerging Trademark Threat@ Twitter, Facebook, MySpace

Presented By:Ian Ballon, Greenberg Traurig LLP

Jennifer Barry, Latham & Watkins LLPPaul W. Garrity, Sheppard, Mullin, Richter & Hampton LLP

AgendaAgenda

Current IP trends surrounding Twitter, Facebook and MySpace

Infringement risks arising from social networking sites

Regulation of social media marketing Regulation of social media marketing

Issues of secondary liability

Best practices to protect brands

Q&A

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Current IP TrendsCurrent IP Trends

Social networking sites can actually be useful for g ybusiness Celebrities

B i d ti i Business advertising http://twitter.com/starbucks (1 million+ followers) http://www.facebook.com/costplusworldmarket p p

(118,185 fans) Exposure for company’s leader/personality Networking/BD Networking/BD Small business infrastructure

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Current IP TrendsCurrent IP Trends

With any opportunity, of course, comes risk With any opportunity, of course, comes risk Expense

Content and graphicsg p Personnel Legal issues

Overload Too many sites!

Li k dI Fli k Y T b W dP Di LinkedIn, Flickr, YouTube, WordPress, Digg . . . Infringement

Our central topic today

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Our central topic today

User Account LitigationUser Account Litigation

LaRussa v. Twitter Tony LaRussa is a well-known baseball manager. An unknown party registered the Twitter username

Tony LaRussa and used it to post off-color comments.Tony LaRussa and used it to post off color comments. LaRussa sued, claiming trademark infringement,

cybersquatting, and violation of right of publicity. Case settled shortly after filing with the username Case settled shortly after filing, with the username

being disabled and turned over to LaRussa. Oneok v. Twitter

T itt i t d th ONEOK t th Twitter registered the username ONEOK to another party, which posted information about Oneok.

Complaint was dismissed almost immediately.

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Trademark Policies of Social Media SitesTrademark Policies of Social Media Sites

Twitter: "Using a company or business name, logo, or other t d k t t d t i l i th t i l dtrademark-protected materials in a manner that may mislead or confuse others or be used for financial gain may be considered a trademark policy violation." (Emphasis added).

MySpace: "MySpace respects the intellectual property of others, andMySpace: MySpace respects the intellectual property of others, and requires that our users do the same. You may not upload, embed, post, email, transmit or otherwise make available any material that infringes any copyright, patent, trademark, trade secret or other proprietary rights of any person or entity It is MySpace’s policy toproprietary rights of any person or entity. It is MySpace s policy to terminate, in appropriate circumstances, the membership of repeat infringers."

Facebook: "You will not post content or take any action on Facebook that infringes or violates someone else's rights or otherwise violates the law."

LinkedIn: "Don’t undertake the following: Upload, post, email, InMail, transmit or otherwise make available or initiate any content that: ( )

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transmit or otherwise make available or initiate any content that: (…) Infringes upon patents, trademarks, trade secrets, copyrights or other proprietary rights."

Corollary to Infringing Domain Names?Corollary to Infringing Domain Names?

Infringing domain name registrations fall Infringing domain name registrations fall under the Lanham Act.

Trademark Infringementg Must prove likelihood of confusion Primary remedy is injunctive relief.y y j

Cybersquatting claim Must prove bad faith in registering domain.p g g Provides for statutory damages.

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Cybersquatting RemedyCybersquatting Remedy

Anti-Cybersquatting Consumer Protection y q gAct, 15 U.S.C. § 1125(d), creates ability to sue in rem for recovery of a domain name where:where: Domain name is “identical or confusingly

similar” to a valid trademark. Domain name was registered with “bad faith

intent to profit.”N d lik lih d f f i No need to prove likelihood of confusion.

Unclear if the “domain name” language would reach social networking usernames

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reach social networking usernames.

Domain Names in CourtDomain Names in Court

Knight-McConnell v. Cummins, 2004 WL 1713824 g(S.D.N.Y. July 29, 2004) “[D]efendant's use of the plaintiff's name in the post-

domain path of a URL and placement of URLs using p p gthe plaintiff's name in the post-domain paths on chat forums, discussion boards, and search engines do not give rise to any source confusion.”

Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687 (6th Cir. 2003) the post-domain path of a URL “merely shows how the the post domain path of a URL merely shows how the

website's data is organized within the host computer's files” and does not suggest an association between page and mark holder

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p g

Injunctions Specifically Addressing Social MediaInjunctions Specifically Addressing Social Media

Grooms v. Legge, 2009 WL 962067 (S.D. Cal. 2009) Preliminary injunction entered barring “the

unauthorized use of photographs, graphics, and designs bearing [plaintiff’s names and marks] whether published or not published including the worldwidepublished or not published including, the worldwide web, Facebook, MySpace, traditional media channels, word of mouth, or in any other type of marketing or advertising.”

TDC Int’l Corp. v. Burnham, 2010 WL 330374(E.D. Mich. 2010) Defendant had been enjoined from using plaintiff’s

k b t th l t d T itt t dmark, but nevertheless created a Twitter account under plaintiff’s name.

On motion for contempt, Court orders the defendant to “disappear from the internet ”

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disappear from the internet.

Lessons From Cases To DateLessons From Cases To Date

Courts may be skeptical of idea that account y pnames alone generate confusion.

This may particularly be the case if the h i l lcontent on those pages is clearly not

sponsored by the brand owner. Social networking sites have tools in place to Social networking sites have tools in place to

allow brand owners to address allegations of trademark infringement.

In the event that suit needs to be brought, aggressive injunctive relief may be available.

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Emerging Regulation Of Social MediaEmerging Regulation Of Social Media

Food and Drug AdministrationFood and Drug Administration

Fi i l I d t R l t A th itFinancial Industry Regulatory Authority

Federal Trade Commission

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Food and Drug AdministrationFood and Drug Administration

FDA in November 2009 had a public hearing FDA in November 2009 had a public hearing to discuss potential new rules concerning social media and FDA regulated products, and solicited written comments on the issue through February 2010.

FDA plans to address the issue through a guidance document, and may propose regulations as was encouraged by manyregulations, as was encouraged by many participants at the public hearing.

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Financial Industry Regulatory AuthorityFinancial Industry Regulatory Authority

Issued a Regulatory Notice (10-06) entitled “Social M di W b Sit ” i J 2010Media Web Sites” in January 2010

The NASD rules regarding suitability apply to a firm or its personnel recommending a security through a

i l di itsocial media site. Firms must have a general policy prohibiting any

associated person from engaging in business communications in a social media site that is notcommunications in a social media site that is not subject to the firm’s supervision.

FINRA does not consider a third-party post to be a firm communication with the public unless the firm orfirm communication with the public unless the firm or its personnel either is entangled with the preparation of the third-party post or has adopted its content.

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Federal Trade CommissionFederal Trade Commission

Guides concerning the use of Endorsements and gTestimonials (the “Guides”) updated in October 2009.

FTC’s changes make it explicit that the principles in th G id l t ’ k ti f itthe Guides apply to a company’s marketing of its products or services through social networks.

A blogger with a “material connection” to anA blogger with a material connection to an advertiser is subject to the Guides.

Any claim by such blogger will be attributable to the d ti d t b b t ti t dadvertiser, and must be substantiated.

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Issues of Secondary Trademark Li biliLiability

No DMTABut the standards of liability areBut the standards of liability are

tougher: Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 439

( )n.19 (1984)

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Issues of Secondary Trademark Liability

I d L b t i I I L b t i Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 546 U.S. 844, 854 (1982) Liability may be imposed where a

manufacturer or distributormanufacturer or distributor Intentionally induces another to infringe a

trademark orC ti t l d t t Continues to supply a product to someone who the defendant knows or has reason to know is engaged in trademark infringement

P d t i ? Products or services? Hard Rock Café Licensing Corp. v.

Concession Services, Inc., 955 F.2d 1143, 1148 (7th Cir 1992)

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1148 (7th Cir. 1992).

Issues of Secondary Trademark Liability Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010)

District court: Where liability is premised on the conduct of a user of a venue (as District court: Where liability is premised on the conduct of a user of a venue (as opposed to a manufacturer or distributor of a product) an initial threshold showing must be made that the defendant had direct control and monitoring over the means of infringement. Lockheed Martin Corp. v. NSI, 194 F.3d 980 (9th Cir. 1999)

eBay does not take possession of goods; no allegation of inducementy p g ; g Standard: Continuing to supply a product with knowledge or reason to know that

the person is engaging in trademark infringement Liability must be premised on knowledge of specific listings, not generalized

knowledge that a site is being used for infringement District court: cease and desist or demand letters do not impute knowledge.

Reason to know in this context means willful blindness, which was not applicable in this case (“suspect wrongdoing and deliberately fail to investigate”)

eBay responded every time it received a notice, terminated repeat infringers and “continually refined its anti-fraud measures”

Unresolved issuesA diff t lt i ht bt i h th it i i t lik B (i A different result might obtain when the site or service is not like eBay (i.e., a responsible site with extensive assistance to ip rights owners): Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., No. C 07-03952 JW, 2009

WL 3062893 (N.D. Cal. Aug. 28, 2009)

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Issues of Secondary Trademark Liability Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., No. C 07-03952

JW 2009 WL 3062893 (N D Cal Aug 28 2009) (jury verdict forJW, 2009 WL 3062893 (N.D. Cal. Aug. 28, 2009) (jury verdict for $31,500,000 in statutory damages for contributory trademark infringement against two Internet hosting companies and the individual who owned them) Louis Vuitton Malletier S A v Akanoc Solutions Inc 591 F Supp Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 591 F. Supp.

2d 1098 (N.D. Cal. 2008) (granting summary judgment on plaintiff’s claim for vicarious liability)

Gucci America Inc v Frontline Processing Corp F Supp 2d Gucci America, Inc. v. Frontline Processing Corp., __ F. Supp. 2d __, 2010 WL 2541367 (S.D.N.Y. 2010) (granting in part and denying in part defendant’s motion to dismiss claims for secondary trademark infringement brought against payment processing services that facilitated website sales of counterfeit bags) But see Perfect 10, Inc. v. VISA Int’l Service Ass’n, 494 F.3d 788, 807

(9th Cir. 2007), cert. denied, 128 S. Ct. 2871 (2008)

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Other Claims vs. Service Providers -47 U.S.C. § 230

230(c)(1): No provider or user of an interactive computer service shall be treated as the publisher or speaker of anyservice shall be treated as the publisher or speaker of any information provided by another information content provider

230(c)(2)(A): No liability on account of “any action l t il t k i d f ith t t i t tvoluntarily taken in good faith to restrict access to or

availability of material that the provider or user considers to be obscene, lewd, lascivious, filthy, excessively violent, harassing, or otherwise objectionable, whether or not

tit ti ll t t dconstitutionally protected... Scope: Defamation, most state civil and criminal claims, federal

civil (but not criminal) claims. Preempts inconsistent state laws. Excludes: federal criminal claims, claims under the ECPA or “any

similar state law” and “any law pertaining to intellectual property.” Excludes Lanham Act claims State trademark, dilution and unfair competition claims?

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Other Claims vs. Service Providers -47 U.S.C. § 230

Perfect 10, Inc. v. CCbill, 481 F.3d 751 (9th Cir. 2007) (right of publicity claim)claim) But see Doe v. Friendfinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H.

2008) Atlantic Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690

(S.D.N.Y. 2009) Doe v. MySpace, 528 F.3d 413 (5th Cir. 2008)

Compare Doe v. SexSearch.com, 551 F.3d 412 (6th Cir. 2008) (TOU) Chicago Lawyer’s Comm. for Civil Rights v. Craigslist, Inc., 519 F.3d 666

(7th Cir. 2008) (no liability for discriminatory user-posted housing notices)F i H i C il R t LLC 521 F 3d 1157 (9th Ci Fair Housing Council v. Roommates.com, LLC, 521 F.3d 1157 (9th Cir. 2008) (en banc) Multiple choice questionnaire written by Roommates.com vs. white

space Nemet Chevrolet Ltd v Consumeraffairs com Inc 591 F 3d 250 (4th Cir Nemet Chevrolet, Ltd. v. Consumeraffairs.com, Inc., 591 F.3d 250 (4th Cir.

2009) Dart v. Craigslist, Inc., 665 F. Supp. 2d 961 (N.D. Ill. 2009) Blockowicz v. Williams, 675 F. Supp. 2d 912 (N.D. Ill. 2009)

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How Do I Protect My Brand While Taking Ad f h Si ?Advantage of These Sites?

Register trademarks with each siteRegister trademarks with each siteConsider registering every possible

domain name that could be associateddomain name that could be associated with brand (within reason)

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How Do I Protect My Brand While Taking Ad f h Si ?Advantage of These Sites?

Monitor sites to determine if trademark is Monitor sites to determine if trademark is being used without permission Internal monitoringg Third party vendors Law firm monitoringg

Understand basic terms of service of each site

Report alleged infringement to social networking site

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How Do I Protect My Brand While Taking Ad f h Si ?Advantage of These Sites?

Develop P&P for use of sites by employees Develop P&P for use of sites by employees What to post (and NOT to post) on company’s

behalf Guidelines for personal use

Develop and implement anti-counterfeiting p p gprograms

Insurance considerations

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Reference MaterialsReference Materials

Terms of Use http://twitter.com/tos http://www.facebook.com/terms.php?ref=pf http://www.myspace.com/index.cfm?fuseaction=misc.t

erms “Protecting Your Rights in 140 Characters or Less:Protecting Your Rights in 140 Characters or Less:

Trademark Protection on Twitter” http://www.lw.com/upload/pubContent/_pdf/pub2684_1.pdf

“Creative Business Uses of Twitter” Creative Business Uses of Twitter http://www.businessweek.com/the_thread/blogspotting/archives/2008/04/creative_busine.html?campaign_id=rss_blog_blogspotting

http://twittercounter.com/

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Ian Ballonballon@gtlaw.com310.586.6575

Jennifer Barryjennifer.barry@lw.com619 238 3024619.238.3024

Paul W. Garritypgarrity@sheppardmullin.com212.634.3057

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