What Are Your Products Doing Online?

Presented by

Sarah E. Bruno

Arent Fox LLP

Washington, DC | New York, NY | Los Angeles, CA

August 19, 2008

Overview

What Rights Are Implicated? Copyrights and Protection Strategy

Trademarks and Part Number Protection Strategy

Infringement of These Rights

Enforcement Strategy Practical Strategies for Taking Action

Consider Your Marketing Strategies

Part I:

What Rights Are At Risk?

Your Rights

Copyright Rights

Web Site Designs

Advertisements

Product Packaging

Catalogs and Pricing Sheets

Web Designs

Advertisements

Copyright in Your Product’s “Dress”

Original

Non-Functional

Creative

Protection Strategy

Think Outside of the Box:

What is “Standard” may not be protectable, because its Standard!

Examples….

Catalogs

Must ensure that the Catalog contains original elements that are arranged in a distinct manner.

Consider: Photograph arrangement

Original descriptions

Use of logos

Use of design elements

Consider…

vs

Vs.

Pricing Sheets

Protectable?

Pricing Sheets

Protectable?

Your Rights

Trademark Rights

Logos and product names

Part Numbers

Shape and design of your product

Part Numbers

It must be an original part number that is only used to identify parts from your company

You should avoid developing part numbers that incorporate aspects that are commonly used in the industry

Webb Wheel Examples:

Trade Dress

Trade Dress Rights Extend to the Look and Feel of Your Product or the Package Design

Part II:

Infringement of These Rights

Infringement of these Rights?

Infringement of these Rights?

Counterfeit Goods

These Rights Are At Risk on the Web

Counterfeit goods may be sold via auctions on eBay

Counterfeit?

Deceptive Marketing?

Part III:

Protection Strategies

Enforcement Strategy

Infringement of Trademarks Via the Internet Prioritize your concerns

Determine who is using your mark and contact the owner of the site with a Cease and Desist letter

If ignored, consider contacting the host to have them disable the web site

Filing a lawsuit if egregious enough

Co-Existence or license agreement as an option

Monitor the site for more egregious use

Enforcement Strategy

Protecting Your Copyright Works Make sure you have a “Terms of Use” on your site

Register your copyrights

Password Protection

Determine who is using your content and contact the owner of the site with a Cease and Desist letter

If ignored, consider contacting the host to have them disable the web site.

Filing a lawsuit if egregious enough

Enforcement Strategy

Counterfeit Goods Monitor auction sites and develop a strategy that allows for

shutting down auctions on a weekly or bi-weekly basis (eBay Vero Program)

Make a purchase of the product to determine where the seller is located (establish jurisdiction for lawsuit)

Register your marks with Customs

Federal agency assistance

Factory raid

Bring suit and make a name in the industry

Attempt to settle with smaller infringers and gain publicity

Enforcement Strategy

Deceptive Marketing You must demonstrate that the action was deceptive,

false or misleading

– Expert Opinions

– Consumer Surveys

– Actual Evidence of Confusion

Send a Cease and Desist Letter

Consider contacting the host of the web site if you can assemble a claim based on copyright.

Filing a Law Suit

Other Options

Licensing Strategy

Why Do It? Quality Control

Revenue Stream

Obtaining rights in a foreign market

Ensure the License Protects Your Rights Never allow licensee to register mark

Make licensee acknowledge your rights

Make licensee assist in protecting the mark

Part IV:

The Risk of Viral Marketing

Marketing Campaigns

User Generated Content Campaigns Creates brand loyalty and a community environment

Inexpensive way to create advertisements and viral marketing

Potential liability for allowing users to post third party content.

Better practice to supply elements used

Chevy Tahoe example

Subway v. Quiznos

Promotions and Marketing Campaigns

Chevy Tahoe video

Subway v. Quiznos

Enforcement Strategy

Create a Terms of Use on your site that allows you to remove content that is infringing, disparaging or otherwise objectionable

Prohibit the use of third party logos, trademarks or other comparisons

Take down content asap after receiving notice.

Questions?