American Conference Institute Advanced IP Forum for Advertising

American Conference Institute Advanced IP Forum for Advertising Counsel Combating Widespread IP Infringement and Abuse On The Internet Lee J. Eulgen Neal, Gerber & Eisenberg LLP (Chicago) Stephen Feingold Kilpatrick Townsend & Stockton LLP (New York) John Slafsky Wilson Sonsini Goodrich & Rosati (Palo Alto) Moderated by: Andrew Berger Tannenbaum Helpern Syracuse & Hirschtritt LLP (New York) April 28, 2011

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION TODAY’S DISCUSSION Emerging platforms for infringement and abuse Examples of new online challenges for IP owners Best defense is a good offense Deciding when and how to respond Self-help via online service providers Responding to search engine advertisements Challenging domain names Dealing with fan sites and pages Partnering with alleged infringers 2

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Emerging Platforms • Microblogs • Social networking sites • Geolocation services • Sponsored links • Photo- and video-sharing sites • Wikis • Crowdsourcing • Auction Sites 3

Examples of New Online Challenges for IP Owners

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An Official Corporate Page:

A Community Page:

2010 TRADEMARK LAW SEMINAR Best Defense Is Good Offense THE FUTURE OF BRAND PROTECTION Use your own marketing strategies proactively ◦ i. Phone and Android apps ◦ Twitter pages ◦ Facebook and other social networking sites ◦ You. Tube ◦ Search engine advertisements ◦ Prophylactically register domain names and use them 10

2010 TRADEMARK LAW SEMINAR Best Defense Is Good Offense THE FUTURE OF BRAND PROTECTION “Official” company page on Facebook Company name as Twitter handle Company profile on Linked. In “Unlocked” business page on Yelp Don’t forget about doing the same with key brands 11

• Foo. Pets – 20 th Century Fox • special edition "Marley & Me" themed puppy available for adoption on the i. Phone • virtual interactive replica of the movie's labrador retriever complete with animation sequences recreated from the film. 12

John Doe and 3 other friends live here. John Doe 5 mutual friends Jane Doe 7 mutual friends 13

You. Tube 14

Geolocation Issues 15

Deciding When & How to Respond

Social Media Has Changed The Relationship Between Brands and Consumers Brands are now becoming conversation factors where academics, celebrities, experts and key opinion formers discuss functional, emotional and, more, interestingly, social concerns. ” Simon Clift, CMO - Unilever

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Avoid the Extremes – Overly Lax Enforcement IP owner’s duty to police Inaction may mean narrowing scope of mark Laches as against a single infringer But Don’t Have to Threaten Everyone: [I]t is entirely reasonable for the [trademark owner] to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks. . . While not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use. ” Mc. Donald’s Corp. v. Mc. Kinley, 13 U. S. P. Q. 2 d 1895 (T. T. A. B. 1989). 18

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Avoid the Extremes – Overly Aggressive Enforcement Overzealous enforcement can mean loss of goodwill and damage to the reputation and image of the IP owner Threats with no lawsuit, or suing and losing, may diminish rights Internal organizational risks Other risks to IP owner: Award of attorney fees Rule 11 sanctions Malicious prosecution liability (e. g. , Lady Di/Franklin Mint case) Waste of corporate resources 19

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION “Trademark Bullies” Study by the USPTO Trademark Technical and Conforming Amendment Act of 2010, Pub. Law No. 111 -146, 124 Stat. 66 (2010). March 17, 2010. Section 4: “Not later than 1 year after the date of enactment of this Act, the Secretary of Commerce, in consultation with the Intellectual Property Enforcement Coordinator, shall study and report to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives on – (1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. . ” 20

2010 TRADEMARK LAW SEMINAR Criteria for Decision Making THE FUTURE OF BRAND PROTECTION Consumer injury and marketing harm Commercial harm and desire for asset in question P. R. risk Equitable consequences Identity of infringer Need for deterring message Budget 21

Spectrum of Online Infringements Fan uses Egrergious Threat Counterfeit product Pre-release content Impersonation Tarnishment Phishing and other fraud Tolerable Use of mark/logo in non-commercial context Review Criticism 22

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Should I respond? Who posted the content? What result are you seeking and why? Is the use damaging to your business/IP? Is the use a violation of the law? Is the use a violation of the TOS of the site? 23

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION How should I respond? Know the sites most prevalent in your arena/industry Develop contacts at sites for speedy takedown and reveal (in the cases of proxies) assistance Have standard DMCA, domain name complaint, and other demands and takedown notices Create spreadsheets to track takedown requests and content that comes down 24

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Setting Procedure for How to Respond Creating internal approval mechanism Determining who should communicate with infringer Have public relations message ready to go Deciding how widely to issue and distribute company’s position 25

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Self-Help? Good Luck! Twitter Rules Facebook Terms of Service Facebook Advertising Guidelines Facebook Platform Principles and Policies You. Tube Ad Guidelines Twitter Trademark Policy Facebook Developer Policy You. Tube Terms of Service Twitter Impersonation Policy Twitter Name Squatting Policy You. Tube Trademark Policy for Promoted Videos You. Tube Homepage Advertisers Guidelines Twitter Guidelines for Contests Facebook User Infringement Policy Facebook Brand Permissions Center Facebook Promotions Guidelines You. Tube Contest Platform Terms and Conditions of Use 26

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION The recent case of Agence France Presse v. Morel is illustrative. Daniel Morel is a professional photographer who was in Haiti during the earthquake on January 12, 2010, and photographed its aftermath. Morel managed to access the internet that day opening accounts on Twitter and Twit. Pic, and Morel immediately posted on his Twit. Pic page a number of first-hand photographs of the Haiti devastation. A feeding frenzy of infringement followed. Morel then demanded payment from Agence France Presse and others alleging infringement. In response, AFP sued for declaratory judgment in the S. D. N. Y. , alleging that, when Morel uploaded his photos to Twitter, Morel agreed to be bound by Twitter’s TOS which gave it a non-exclusive royalty-free license. The court agreed with AFP that the terms of service governed but construed them to favor Morel. In reaching this result, the court relied on the following term of service: You agree that this license includes the right for Twitter to make such Content available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such Content on other media and services. The court held this term required Twitter users to sublicense “only to Twitter and its partners. ” In other words, although Twitter users were free to share and display Morel’s photos on that site, once a user attempted to distribute those photos via a sublicense, the sublicensee had to be a Twitter partner. Would the court’s holding apply to retweets? Why has Twitter not revised its Terms of Use to clarify this situation? 27

Misuse of User Names 28

User Names 29

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2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Challenges to Search Engine Advertising Make sure your own house is in order, and make sure you’re on the same page with the Marketing Department Manner of use (e. g. , in text of ad or not) matters Utilize search engine trademark policies Contractually restrict affiliates from competitive bidding Consider “negative matching” competitive brands 33

2010 TRADEMARK LAW SEMINAR What About Cybersquatting? THE FUTURE OF BRAND PROTECTION WIPO reports 20% increase in UDRP proceedings in 2010 over 2009. Introduction of Many New TLDs in 2012 will exacerbate problem. The Dilemma: Balancing Protection of Brand Economic Reality 34

Expanded Nominative Fair Use Lesson One: Chose Your Venue Carefully! Toyota Motor Sales USA, Inc. v. Farzad Tabari, 2010 WL 2680891 (9 th Cir. July 8, 2010) Defendants allowed to use: • buy-a-lexus. com • buyorleaselexus. com 35

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Lesson Two: Create A Rationale Consistent Approach to Enforcement Filing Fee for ICANN complaint is $1, 500. Even with flat fees, cost of attacking every infringing domain name is too large. Prioritize based on evidence of market injury: ◦ Traffic, links, placement in search engines ◦ Tarnishment or fraudulent activity ◦ Independent business reason for domain name 36

2010 TRADEMARK LAW SEMINAR A Review Of Recent WIPO Complaints Illustrates The Lack Of Rationality In Many Cases THE FUTURE OF BRAND PROTECTION Every quarter there is a new set of companies filing dozens of UDRPs, typically against domain names getting no traffic or causing any injury. In contrast, certain companies file one or two URDP every quarter, almost invariably against sites attracting large traffic or using name for pornography or the like. 37

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Lesson Three: Creative Enforcement Create victory page Warning not demand letters Experience suggests that domainers stay clear of brands that consistently and aggressively enforce 38

FAN SITES 40

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Fan Sites and Pages Fan sites should be encouraged not discouraged Control by incentives not with stick ◦ Free tickets ◦ Access to unique content ◦ Access to a membership mark ◦ Access to a web network 41

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Fan Sites and Pages Brand owners risk alienating fans by exerting level of control commonly exercised before internet Brand success in the future will be result of marshalling public perception; not controlling it 42

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Managing Infringements Via Business Deals The Way To Beat Scrabulous Is Not With Lawsuits Or Crappy Versions Of Scrabble from the keep-trying dept In the ongoing saga of Scrabulous, the unauthorized online version of Scrabble that has found many fans on Facebook but has upset Mattel and Hasbro (who own the rights to Scrabble), it appears that Real. Networks and Mattel have finally put out an official version of Scrabble for Facebook -- but the problem is that it's terrible. As the NY Times reports, "Facebook Scrabble takes a long time to load, does not always quickly update to show recent moves, and the words the game will accept do not reflect standard Scrabble dictionaries, or even the English language. " While it's nice to see that Scrabulous still hasn't been forced offline, it seems odd that the authorized version is so terrible. It still probably would have made the most sense to just do a deal with the brothers who created Scrabulous (and there are still rumors that a deal has been discussed, but without a decent resolution), but if that doesn't work, the way to compete is with a better product. Putting out a product that's not very good isn't likely to win over many fans. FROM TECHDIRT. COM 44

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION Managing Infringements Via Business Deals Setting appropriate terms for online partnerships Be careful about signing clients up for too much rigorous oversight 45

2010 TRADEMARK LAW SEMINAR THE FUTURE OF BRAND PROTECTION WIKIPEDIA 46

2010 TRADEMARK LAW SEMINAR Responding to Wikipedia Issues THE FUTURE OF BRAND PROTECTION Edit pages only as is necessary to make information accurate Be aware of Wikipedia guidelines re: neutrality Corroborate items with references Explain your edits to Wikipedia community Register an account with Wikipedia for editing 47

Questions?

2010 TRADEMARK LAW SEMINAR Contact Us… THE FUTURE OF BRAND PROTECTION Lee J. Eulgen Neal, Gerber & Eisenberg LLP (Chicago) LEULGEN@NGELAW. COM Stephen Feingold Kilpatrick Townsend & Stockton LLP (New York) SFEINGOLD@KILPATRICKTOWNSEND. COM John Slafsky Wilson Sonsini Goodrich & Rosati (Palo Alto) JSLAFSKY@WSGR. COM Andrew Berger Tannenbaum Helpern Syracuse & Hirschtritt LLP (New York) BERGER@THSH. COM 50