Fair Use and Infringement:

Pinterest and Other Social Media Policing and Protecting Licenses, Copyright and Trademark Rights

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THURSDAY, JULY 11, 2013

Presenting a live 90-minute webinar with interactive Q&A

Jennifer L. Barry, Partner, Latham & Watkins, San Diego

Ian C. Ballon, Shareholder, Greenberg Traurig, Palo Alto and Los Angeles

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Fair Use and Infringement in Social Media

Ian C. Ballon

Greenberg Traurig, LLP

East Palo Alto and Los Angeles

650.289.7881

310.586.6575

ballon@GTLaw.com

Jennifer L. Barry

Latham & Watkins

San Diego

619.238.3024

Jennifer.Barry@lw.com

6

• Overview of Fair Use

• Common Ways to Infringe

• Privacy and Terms of Use Problems

• Fair Use

• Avoiding Infringement

• Practical Concerns for IP Owners

• What to Do if Others Infringe IP Rights

• Summary

Agenda

7

• Copyright – original and creative expression

• Multipart balancing test

• Trademark – anything the identifies goods or services

• Use “other than as a mark” under 15 U.S.C. 1115(b)(4)

• Dilution defenses

• Nominative fair use

• Rights of publicity – commercial use of a person’s

attributes – federal and state statutes and common law

• Lanham Act fair use

• First Amendment protections

Overview of Fair Use

8

• Copyright – original and creative expression • Multipart balancing test available when a work is used “for

purposes such as criticism, comment, news reporting,

teaching . . . Scholarship or research”

• Courts must consider:

• The purpose and character of the use, including whether it is of a

commercial nature or is for nonprofit educational purposes;

• Commercial

• Transformative

• The nature of the work (creative works are closer to the core of

intended copyright protection than informational or functional

works)

• The amount and substantiality of the portion used in related to

the copyrighted work as a whole

• The effect of the use upon the potential market for or value of the

copyrighted work

• Courts may consider other criteria

Overview of Fair Use

9

• Trademark – anything the identifies goods or services • Use “other than as a mark” under 15 U.S.C. 1115(b)(4)

• KP Permanent Make-Up, Inc. v. Lasting Impressions I, Inc., 543

U.S. 111 (2004)

• Dilution defenses

• Comparative advertising

• Parody, criticism, commentary

• Noncommercial use

• News reporting and commentary

• Nominative fair use

• New Kids on the Block v. News America Publishing, Inc., 971

F.2d 302 (9th Cir. 1992)

• Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211

(3d Cir. 2005)

• Logos vs text

• Consumer criticism/ gripes

Overview of Fair Use

10

• Rights of publicity – commercial use of a person’s

attributes – federal and state statutes and common

law

• Lanham Act Fair Use

• Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003)

• First Amendment protections

• Public interest/ newsworthiness exceptions

• Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977).

• Incidental Use

• Creative uses

• Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387

(2001)

• Winter v. DC Comics, 30 Cal. 4th 881 (2003)

• Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003), cert. denied,

540 U.S. 1106 (2004).

• Communications Decency Act

Overview of Fair Use

11

Social Media Sites*

12

Facebook

13

How Pinterest works (board home page)

14

How Pinterest works (board or gallery)

15

How Pinterest Works (individual image)

16

• From Pinterest:

• Poster owns rights: Ok

through TOS

• Poster does not own rights:

Poster violates TOS

• From a Website:

• If has : Probably ok

• Otherwise: May be ok

because linked

• From a computer:

• If you created it: Ok

• If you saved image onto

hard drive and uploaded:

Be cautious

Posting Sources

Most Least

Level of Caution

17

• Facebook and Pinterest terms of service (TOS) both

allow poster to retain rights to IP

• However, by agreeing to TOS, poster grants a non-

exclusive, transferable, royalty-free license to

Facebook and Pinterest

• Pinterest’s TOS grant licenses also to Pinterest users

(for purposes of operating, developing and using the

Pinterest products)

• You post on Pinterest, you provide all Pinterest users a

license to pin your post

• If you post an unauthorized image, you violate the TOS

Rights of Poster in Social Media

18

• Copyright Infringement

• Trademark Infringement

• Privacy Law Violations

• Violations of Terms of Use

Legal Risks in Social Media

19

• Unauthorized reproduction, derivative work,

distribution of copies, public performance, or public

display of a copyrighted work

• To prevail, the copyright owner must prove

• (1) There was copying

• (2) The copy contained unauthorized copying (elements that

are copyrightable rather than facts, public domain works, etc.)

• Fair use is an affirmative defense

Copyright Infringement

20

• What if this

picture wasn’t

posted by

copyright owner?

• Or suppose this

picture was

copied and

posted by an

unauthorized

user?

Examples - Copyright

21

• Actual dollar amount of damages and profits

• Fines from $200 to $150,000 for each work infringed*

• Attorneys fees and court costs

• Injunction to stop the infringing acts

• Impound the illegal works

• Jail*

*Works must be registered

Penalties

22

• Unauthorized use in

commerce of a mark in

connection with the sale

or advertising of goods

or services without the

trademark owner’s

consent

Trademark Infringement

NO!!!

23

• Remember that images of people require permission

of the copyright owner (usually the photographer) and

the person being photographed

• Example of Right of Publicity Statute:

• Any person who knowingly uses another's name, voice,

signature, photograph, or likeness, in any manner, on or in

products, merchandise, or goods, or for purposes of

advertising or selling, or soliciting purchases of, products,

merchandise, goods or services, without such person's prior

consent, or, in the case of a minor, the prior consent of his

parent or legal guardian, shall be liable for any damages

sustained by the person or persons injured as a result thereof.

CA CIVIL 3344.1

Privacy Concerns

24

• Copyright - Notice and Take Down (DMCA) • Direct, contributory, vicarious and inducing infringement

• Sony safe harbor

• Trademark – De Facto Notice and Take Down • Direct, contributory and Inducing infringement and vicarious in some circuits

• No DMTA or Sony safe harbor but increasing de facto recognition for notice and takedown • Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir.), cert. denied, 131 S. Ct. 647 (2010)

• Publishers exemption - 15 U.S.C. § 1114(2)(B)-(C)

• Patent law • Direct, contributory and inducing patent infringement

• U.S. Supreme Court decision in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011): willful blindness is inducement

• Potential Preemption of Right of Publicity or other State IP claims under 47 U.S.C. § 230 (the Communications Decency Act)

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

• Preempts inconsistent state laws (including defamation, privacy)

• Excludes: federal criminal claims, claims under the ECPA or “any similar state law” and “any law pertaining to intellectual property.”

• Perfect 10, Inc. v. Ccbill, 488 F.3d 1102 (9th Cir.), cert. denied, 552 U.S. 1062 (2007) (rights of publicity)

• But see: Doe v. Friendfinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H. 2008) (rights of publicity)

• Atlantic Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690 (S.D.N.Y. 2009) (Judge Denny Chin) (common law copyrights)

• Fraley v. Facebook, 830 F. Supp. 2d 735 (N.D. Cal. 2011)

• Better practices – • Use online complaint procedures

• Address disputes directly with other users

Secondary Liability and Limitations on Suing Intermediaries

25

• Most social media

websites prohibit

infringement on third

party IP and privacy

rights

• Violation of terms of use

may prevent future use

of the website

Violations of Terms of Use

26

• For Copyright • Purposes such as

criticism, comment, news reporting, teaching, scholarship, or research

• Transformative works

• Non-commercial uses

• For Trademarks • Not likely to cause

confusion

• Ordinary words to describe own goods or services

Fair Use

27

Fair Use in Pinterest (individual image)

28

Pinterest: The Mosaic Argument

Fair Use at Board and Homepage Levels

29

• Use material that you possess the IP rights for

• Make a fair use

• Attribute content to its authors

• Use copyrighted material from a cite that authorization

is given in terms and conditions of the site

• If necessary, seek a license

Considerations to avoid infringement

30

• Pin from an original

source or permalink

• Give credit to the content

owner

• Include a thoughtful

comment on the pin

What Pinterest recommends

31

• While attribution is not a defense to infringement, it will

help against infringement

• Uploading a URL to the original web location of an image may

not be copying and not copyright infringement (Caution: This

area of law is unsettled).

• Reduces likelihood and tone of complaints from image

creators

• Being fully upfront about nature of images reduces likelihood

of complaints from Pinterest users about violating terms of

service

• Supports fair use argument

Why attribute?

32

• COPYRIGHT STILL EXISTS! • Good faith searches eliminate

contributory infringement

• Remember fair use

• Replace work with another work if possible

• Alter your planned use

• Conduct a risk benefit analysis

Used under a Creative Commons BY-NC license from the Copyright Advisory Office of Columbia University, Kenneth D. Crews, director

Can’t find the author?

33

• (1) Adjust social media

settings

• (2) Provide notice of IP

ownership

• (3) Consider whether

posting content online is

necessary

Prevention

34

• Research the extent of the infringement

• Determine if you want to enforce the IP

• If you want to enforce IP, prepare a cease and desist

letter or solicit a license

• If there is no response, file a complaint with the social

media website host

• Repeated offenses may warrant a lawsuit

• Remember, if the infringement is of a trademark,

you must police your rights or risk losing the

trademark

Others infringing your IP?

35

• Publicity is often a good

thing

• Do not want to lose fans

• Enforcement costs

• Possible consumer backlash

vs.

• False information

• Loss of control

• Brand damage

Things to Consider (for IP owners)

36

• You have a sound legal basis for objecting to the third party use;

• The third party use has the genuine potential for doing harm to your company's reputation, brand, or IP; and

• The costs and expenses of taking action are justifiable based on the potential harm

Feras Mousilli & Barry M. Benjamin, Social Media Game Plan: IP and Marketing Law Playbook, ACC Docket, September 2010, at 104, 111

You might consider enforcement if . . .

37

• Some of the most objectionable uses may be fair uses,

even if inflammatory and untrue • DeVere Group GmbH v. Opinion Corp., 877 F. Supp. 2d 67 (E.D.N.Y. 2012) (dismissing claims

based on use of DeVere’s trade name in text on PissedConsumer.com and in the DeVere.PissedConsumer.com subdomain)

• Related claims such as defamation will be preempted by

the CDA if asserted against intermediaries • Levitt v. Yelp! Inc., Nos. C-10-1321 EMC, 2011 WL 5079526 (N.D. Cal. Oct. 26, 2011)

• You may need to seek to compel the disclosure of the

identity of pseudonymous infringers or tortfeasors • First Amendment and procedural limitations may restrict your

ability to do so in potential fair use cases

• ECPA (18 U.S.C. 2500 et seq.) prohibits the disclosure of the

contents of communications from social networks in response to

civil subpoenas (as opposed to non-content data): • Suzlon Energy Ltd. v. Microsoft Corp., 671 F.3d 726 (9th Cir. 2011) • Bower v. Bower, 808 F. Supp. 2d 348, 349-50 (D. Mass. 2011) (“Faced with this statutory

language, courts have repeatedly held that providers such as Yahoo! and Google may not produce emails in response to civil discovery subpoenas.”)

• Crispin v. Christian Audigier, Inc., 717 F. Supp. 2d 965 (C.D. Cal. 2010)

A word about criticism….

38

• Copyright and trademark infringement are common

problems when dealing with social media

• Ways to avoid infringement

• Fair Use

• Use your own image

• Attribute

• Practical concerns with enforcement

• Reputation and free advertising v. brand control

Summary – Jennifer Barry

39

• Social media sites and services present unparalleled opportunity to promote a company’s products, services and brands

• Fair use is a defense in litigation and therefore a risky as a business model

• At the same time, unauthorized third party uses of a work, brand or celebrity attribute may not be actionable and may generate ill will online if pursued

• Carefully consider if a use causes any real harm

• Suits against intermediaries are usually futile, but online complaint procedures can be an effective means for resolving disputes directly with users

• The risk of adverse publicity for suing over a potential fair use • Traditional press • Twitter, Facebook, blogs

• More information? See handouts or contact me via email (ballon@gtlaw.com) or social media (Facebook, LinkedIn, Twitter, Google+: IanBallon)

Summary – Ian Ballon