ACC00 2007 Annual Meeting: Enjoying the Ride on the Track to Success
October 29-31, Hyatt Regency Chicago
801 Doing Business on the Web: Internet Trademark & Copyright Issues
Ryan Blum
Senior Counsel - Scottrade, Inc.
Teresa Santos
General Counsel - TheStreet.com
Johann Thaheld
General Counsel - Mobilisa
ACC00 2007 Annual Meeting:
Enjoying the Ride on the Track to Success
October 29-31, Hyatt Regency Chicago
Copyright Violations & Defenses
Copyright Act of 1976 A federal statute governing copyright protection throughout the United States of America. Under the Copyright Act, copyright protects 00riginal works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.00/font>ACC00 2007 Annual Meeting:
Enjoying the Ride on the Track to Success
October 29-31, Hyatt Regency Chicago
Copyright Infringement on the Web
Despite the pervasive idea that the Internet is intended to allow information to be free, legal protection for copyrighted works is thriving, even though the internet may facilitate copying and access to information. Republishing without permission articles or other content from Web sites also infringes copyright. Common occurrences on web involve cpying articles from one website and 00asting00them into a blog or other Web forum Los Angeles Times v. Free Republic (C.D.Cal.Nov.9,1999)ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Copyright Defenses- Fair Use
00air use00may include reproduction of a copyrighted work for purposes such as: Criticism; Comment; News Reporting; Teaching (including multiple copies for classroom use); Scholarship; or Research. The doctrine of fair use is a fairly complex area of law. Fair use operates as a defense to a claim of copyright infringement. In deciding whether an alleged copyright infringer has made fair use of a copyrighted work, courts will examine a variety of factors, which include, but are not necessarily limited to: The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes; The nature of the copyrighted work; The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and The effect of the use upon the potential market for or value of the copyrighted work.ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Copyright Defenses: First Amendment
Claim that the First Amendment protects right to post copies of articles on the a Web site. Without the ability to post entire articles, some have asserted asserted that visitors to its site would not be able to express their opinions about media coverage of current events and politics, as well as their views concerning omissions and biases evident in the articles. The court rejected this defense for two reasons. First, copyright law promotes free expression by establishing a marketable right to use of one00 expression. Copyright thus creates and economic incentive to create and disseminate ideas. Copyright law also promotes the countervailing First Amendment right to refrain from speech by protecting the owner of a copyrighted work from being forced to publish it. Second, the court found that Free Republic failed to show that copying entire news articles is essential to allow visitors to its Web site to express their opinions and criticisms. BEST PRACTICE: Courts have made clear that republication of copyrighted materials, without permission and without a valid defense to infringement, violates copyright law, even when done in a public discussion forum. This is important because news articles00nd other copyrighted texts00re very frequently republished online in Usenet newsgroups, in online bulletin boards, on Web sites, and in e-mail lists. Always seek permission whenever possible.ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Copyright Defenses: Waiver, Implied License and Misuse of Copyright
Waiver Defense Under copyright law, waiver or abandonment of copyright occurs only if the owner of a copyright intends to surrender his, her, or its rights in the copyrighted work. Implied License Defense However, courts have found implied licenses only in limited circumstances where one party created a work at another party00 request and gave it to the other party, intending that the recipient of the work copy and distribute the work. Misuse of Copyright Defense The defense of copyright misuse prohibits a copyright holder from securing an exclusive right or a limited monopoly that the copyright law has not granted. Most of the court decisions that recognize affirmative defense of copyright misuse involve unduly restrictive licensing schemes. While unilateral refusal to license a copyrighted work may occasionally give rise to a claim to misuse, the simple desire to exclude others is likely to be a valid business justification for any immediate harm that the exclusion causes to consumers.ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Copyright and Hyperlinking
00yperlinking does not itself involve a violation of the Copyright Act00ince no copying is involved.00nbsp; The court noted that a visitor to the Web site is automatically transferred to 00he particular genuine web page of the original author.00nbsp; Therefore, no copying occurs as a result of the link. Ticketmaster Corp., et al. v. Tickets.com, Inc However, hyperlinking isn00 always permissible00o not inadvertently become a defendant for contributory infringement for linking to websites that are copyrighting a third party00 material At this point, copyright law as applied to linking between Web pages is developing but is still quite new. Until a coherent body of law emerges about linking in relation to copyright law, it remains a wise practice to obtain permission from the owners of Web sites to which you wish to link. Finally, never link to a webpage that contains material that you know or suspect to have been pirated from its copyright owner and have verified that the person granting the permission is truly the owner of the copyright. BEST PRACTICE to avoid such situations: ALWAYS EXECUTE LINKING LICENSE AGREEMENTS which contain proper representation, warranties and accompanying indemnities. (A sample Linking Agreement is contained in the supplemental materials)ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Liability for ISPs and Other 00osts00/b>
AOL, Earthlink, Craigslist, Weblogs, YouTube, MySpace , Friendster To what extent can these third party hosts who allow the public to post content be held responsible for copyright infringment? Internet Service Providers (ISPs) face special problems in the area of copyright law. The ISPs have little control over the activities of any particular subscriber at any given moment. However, despite this lack of control, an ISP or other online service could be held liable for some actions of its subscribers, such as copyright infringement. Statutory Reform: Protection for ISP00 In response to lobbying by ISP00, Congress has passed the Online Copyright Infringement Liability Limitation Act (the Act). Many ISP00 now include in their subscriber contracts indemnification provisions, whereby their subscribers agree to defend, hold harmless, and indemnify the ISP from any claims of intellectual property infringement, including infringement of copyright.ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Liability for ISPs and Other 00osts00The Online Copyright Infringement Liability Limitation Act provides:
General Requirements for Protection from Liability As an initial matter, to protect themselves from liability, all service providers must: Adopt and reasonably implement a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider00 system or network who are repeat infringers of copyrights. Inform their subscribers of the copyright infringement policy, and Accommodate and not interfere with standard technical measures that copyright owners use to identify or protect copyrighted works. The Act defines 00tandard technical measures00as those technical measures that: Have been developed pursuant to broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process; Are available to any person on reasonable and nondiscriminatory terms; and Do not impose substantial costs on service providers or substantial burdens on their systems or networks.ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Liability for ISPs and Other 00osts00The Online Copyright Infringement Liability Limitation Act provides:
Specific Requirements for Protection from Liability In addition to these general measures, under certain circumstances service providers must take further steps to avoid liability for infringements of copyright that others commit. The Act sets forth specific conditions for avoiding liability associated with the following: Transmissions Temporary storage Storage of materials by subscribers Linking to infringing materials; and Removing or disabling access to materials that someone claims infringes his, her, or its copyright. (iv) Limitations on Liability for Linking to Infringing Materials Copyright Office of the Library of Congress to receive notifications of claims of copyright infringement.ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Liability for ISPs and Other 00osts00The Online Copyright Infringement Liability Limitation Act provides:
The Act also protects service providers from liability for copyright infringement that could result from the service providers00linking to infringing materials, by means of 00nformation location tools,00of which the Act provides several examples: 00irectory, index, reference, pointer, or hypertext link.00nbsp; Presumably, the Act would also include under this term the following Web-based entities and services, because each of them is a tool for locating information: Search engines, All in one search engines, Meta-search engines, Meta-directories, and Meta-indices. The limitations on liability for linking to infringing material by means of 00nformation location tools00are subject to conditions comparable to the conditions a service provider must meet to avoid liability for its subscribers00 storage of copyrighted materials. First, the service provider must not have actual or constructive knowledge that the linked materials infringe someone00 copyright. Additionally, if the service provider learns that the linked materials infringed a copyright, it must act expeditiously to remove or disable access to the infringing materials. Second, the service provider must not receive any financial benefit directly attributable to the alleged infringement, in cases in which the service provider has the right and the ability to control the activity causing the infringement. Third, if the service provider receives proper notice of a claimed copyright infringement (as set forth in Section 512(c)(3) of the act; see the discussion in Section C.2.b(iii) above), it must expeditiously remove or disable access to the allegedly infringing material. Fourth, the service provider must designate an agent in theACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Digital Millennium Copyright Act (DMCA)
1998 federal law providing, among other things, safe harbor to ISP00 that promptly take down infringing content http://www.copyright.gov/legislation/dmca.pdfACC00 2007 Annual Meeting:
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00afe Harbor00Requirements
Conditions: ISP has NO actual knowledge that the material is infringing [搂512(c)(1)(A)(1)] Upon proper notice, must act swiftly to remove - - or block access to - - the material [搂512(c)(1)(A)(2) and 搂512(c)(1)(C)] Does not receive a direct financial benefit Adopts and implements a reasonable policy Designated AgentACC00 2007 Annual Meeting:
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ACC00 2007 Annual Meeting:
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DMCA Notice & Takedown 00Section 512 (OCILLA)
Send written notification of claimed infringement to SP00 agent Include [搂512(c)(3)(A)(i-vi)]: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A 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. (vi) A 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.ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Practical Solutions
Develop procedures to identify and challenge use by others Designate a POC at your company Engage assistance from a tech vendor Monitor the Web Automate 00ease & Desist00lettersACC00 2007 Annual Meeting:
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Cease & Desist
Sent to the infringer 00ISP or registrar Contract with 3rd party to automate 00HOis00search Verifiable delivery method Send 2nd Notice if no response after a few weeks 00then escalate Start out informal and work up UDRP Equitable Relief 00file action in federal or state courtACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
Sample Letter
Dear Sir or Madame:
______, an anti-fraud and security company, is under contract to assist [Your Company] in preventing or terminating online activity that targets, or may potentially target [Your Company00] clients as potential fraud victims.
[if to ISP] We have been made aware that you appear to be providing Internet Services to a site which is abusing [Your Company00] brand. This site, Provide internet reliability - reduce consumer00 confusion about the source and sponsorship of web pages. Protect trademark owners from loss of goodwill.
ACC00 2007 Annual Meeting:
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October 29-31, Hyatt Regency Chicago
ACPA 00 15 USC 搂1125
Signed into law on November 29, 2000 Provides a civil cause of action under the Lanham Act (搂43(d)) Protects owners of distinctive or famous marks Protects personal names Must file in US district court US has jurisdiction over .com .org & .net (top level domain registry is Network Solutions in VA)ACC00 2007 Annual Meeting:
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ACPA Elements
Defendant Registered, trafficked in or used a domain name (registration is actionable), Identical or 00onfusingly similar00to plaintiff00 trademark (or dilutive if famous mark) Plaintiff00 mark was 00istinctive00at the time of defendant00 registration (or famous or reserved for Red Cross or US Olympics) Defendant had a 00ad faith00intent to profit from the mark.ACC00 2007 Annual Meeting:
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ACPA 00onfusingly similar00factors
Strength of owner00 mark Similarity between owner00 mark & domain name Similarity of Products Alleged infringer00 intent to pass goods off as those of trademark owner Incidents of actual confusion Purchaser care that can eliminate any likelihood of confusion. (Faegre v Purdy)ACC00 2007 Annual Meeting:
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ACPA 00istinctive00 factors (or how to protect your trademark)
00he degree of inherent or acquired distinctiveness of the mark00 The duration and extent of use of the mark The duration and extent of advertising & publicity of the mark (advertise your mark) The geographical extend of the trading area The Channels of trade for goods & servicesACC00 2007 Annual Meeting:
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ACPA 00istinctive00 factors (or how to protect your trademark)
The degree of recognition of the mark in trading areas and commonality in channels of trade (between trademark and domain) The nature & extent of use by same or similar marks by others (police your mark) Whether your mark is registered (this also acts as an absolute defense)ACC00 2007 Annual Meeting:
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ACPA00 nine 00ad Faith00factors
Trademark or other IP rights registrant has in the domain name The extent domain name matches or consists of registrant00 legal name Registrant00 prior use of the domain name for goods & servicesACC00 2007 Annual Meeting:
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ACPA 00ad Faith00factors (cont00)
Fair use, or bona fide non-commercial use of the domain name & underlying mark Intent to divert customers to harm goodwill, tarnish, infringe or harm trademark owner Attempts to sell to the rightful owner or prior conduct indicating a pattern of selling namesACC00 2007 Annual Meeting:
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ACPA 00ad Faith00factors (cont00)
Accuracy of information provided in registration Registration of multiple domain names that are similar to other marks The extent a trademark is distinctive or famousACC00 2007 Annual Meeting:
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Benefits & Burdens of ACPA
Benefits Access to Federal court (usually parties settle) Injunction (take domains off the market fast) Choice of damages Burdens Federal court (expensive, time consuming) Fairly forgiving of legitimate useACC00 2007 Annual Meeting:
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Another choice 00UDRP
Faster Cheaper Limited to: Transfer domain Close it downACC00 2007 Annual Meeting:
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Dispute Resolution using UDRP
Internet Corporation for Assigned Names and Numbers (ICANN) 00Marina Del Rey, CA World Intellectual Property Organization (WIPO) - Geneva Switzerland Uniform Domain Name Dispute Resolution Policy (UDRP) 00drafted by ICANN & WIPO National Arbitration Forum (NAF)ACC00 2007 Annual Meeting:
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Dispute Resolution Providers
World Intellectual Property Organization (WIPO) National Arbitration Forum (NAF) CPR Institute for Dispute Resolution (CPR) Asian Domain Name Dispute Resolution Centre (ADNDRC)ACC00 2007 Annual Meeting:
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UDRP dispute statistics
Number of disputes filed with WIPO increased 25% between 2005 and 2006 (1456 to 1824) and 15% in first half of 2007 (1035 to 1226) Disputes filed first seven months of 2007 total more than the number of disputes filed for the years 2002, 2003, or 2004. (1226) At the current filing rate, the number of disputes filed in 2007 will exceed those filed in any other year since UDRP began. (est. 2100).ACC00 2007 Annual Meeting:
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WIPO00 Major Concerns for the future
Automatic registration Tasting period (five day free registration) New registrars New generic Top Level DomainsACC00 2007 Annual Meeting:
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UDRP 4(a) Elements
Domain name is identical or confusingly similar to a trademark, and Registrant has no rights or legitimate interests in the domain name, and Registrant registered name and is using it in 00ad faith00/font>ACC00 2007 Annual Meeting:
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UDRP 4(b) Bad Faith
Circumstances that evidence 00egistration and use of a domain in bad faith - domain registered: primarily for the purpose of selling to prevent mark owner from using it to disrupt a competitor00 business to create confusionACC00 2007 Annual Meeting:
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ACPA vs. UDRP
Results Elements Benefits & LimitationsACC00 2007 Annual Meeting:
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Result comparison
ACPA Choice between actual or statutory damages Transfer the name UDRP Transfer ownership Delete namesACC00 2007 Annual Meeting:
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Element comparison
ACPA Identical, confusingly similar or dilutive Used in commerce Bad Faith 00nine factors UDRP Identical, confusingly similar No legitimate interest Bad Faith 00four factorsACC00 2007 Annual Meeting:
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ACPA Benefits & Limitations
Injunction Possible damage awards 00plaintiff may elect at any time before final judgment: Actual (court00 discretion) 00 Defendant00 profits (defendant need only show revenue, plaintiff must prove expenses) Up to three times actual damages Costs (court may award reasonable fees in exceptional cases) Statutory (court00 discretion) 00award ranges from $1,000 - $100,000 per domain nameACC00 2007 Annual Meeting:
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ACPA Benefits & Limitations (cont00)
Most squatters settle early in the lawsuit Either party may initiate ACPA action anytime during a UDRP proceeding Limitations Slow ExpensiveACC00 2007 Annual Meeting:
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UDRP Benefits & Limitations
Fast (approximately three months) Inexpensive (compared to lawsuit) Limitations No injunctions No damages No discovery Not binding on courtsACC00 2007 Annual Meeting:
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Conclusion 00protect your online IP
Create unique marks (BOLO trac) Register all trademarks with the USPTO Use marks consistently and often Maintain records and examples of all advertising, press releases, and web sites that use your name, trademark or slogan Actively protect marks from infringement.ACC00 2007 Annual Meeting:
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Conclusion 00protect your online IP
Register all domain names Trademarks 0000and 0000 variations 00ucks00sites Singular & plural Common misspellings Name + product type (bankmortgage.com)ACC00 2007 Annual Meeting:
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Conclusion 00protect your online IP
register important domains prior to: Launch of new product Merger Name changes Pay attention to new gTLDs .jobs. 00employment related sites .mobi 00mobile devices .travel 00travel related services .post 00postal services .tel 00telephone to internetACC00 2007 Annual Meeting:
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Conclusion 00protect your online IP
Register all relevant Country Code Top Level Domains (ccTLD) .tv (Tuvalu) - used for tv & entertainment .in (India) 00 used for internet .la (Laos) 00used for Los Angeles .ws (Western Samoa) 00used for website .fm (Federated States of Micronesia) 00used for FM radio stationsACC00 2007 Annual Meeting:
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Conclusion 00protect your online IP
Use long-term, tamper-resistant registration to lock in domain names Register dangerous and near-names Monitor registrations for improper use of your trademark, brand, and slogans. Watch for traffic diversion sites Know when ownership changes.ACC00 2007 Annual Meeting:
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Conclusion 00protect your online IP
Detect fraud & investigate immediately Use of company name Plays or profits on consumer trust or lack of technical knowledge. Collect evidence (screen captures, logging sitesdownload 801 Doing Business on the Web: Internet Trademark & Copyright ...
