FORTIFY YOUR BRAND: SOCIAL MEDIA IDENTITY...Trademark- Brand • Ex. Atomic or Atomic Skis • Includes any word, name, symbol, or device, or any combination • Used in commerce •

1

FORTIFY YOUR BRAND: PROTECTING YOUR ONLINE PRESENCE AND SOCIAL MEDIA IDENTITY Kathleen A. Brown Lisel M. Ferguson

SIA SNOW SHOW January 26, 2017

2

© 2017 Procopio, Cory, Hargreaves & Savitch LLP

GET YOUR DUCKS IN A ROW BEFORE LAUNCHING AN ONLINE PRESENCE

• Where to Start: – Trademark/Trade dress – Patent – Copyright – Domains

3


Company Name - Trade Name

• Ex. Atomic Austria GmbH • Protection:

– dba – corporate name registration – trademark

4


Trademark- Brand

• Ex. Atomic or Atomic Skis • Includes any word, name, symbol, or device, or any

combination • Used in commerce • Identifies and distinguishes goods of one manufacturer or

seller from the goods manufactured or sold by others • Trade Name verses Brand

5


Trademarks

• Meier Skis

6


Choosing Your Trademark and Company Name

• Protectable Marks • House Marks • Trademark Searches

7


Importance of Trademark Registration in the U.S.

• Discourages others from using confusingly similar marks in trade, business, and commerce because they are publically available in a search

• Protects against registration of confusingly similar marks, as the Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks

8


Importance of Trademark Registration in the U.S.

• Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, with heightened protection after five years

9


Foreign Trademark Registration

• U.S. registration does not protect your trademark in foreign countries

• First to File • Enforcement • Customs

10


Trade Dress

• Overall commercial image (look and feel) that identifies the source of the product and distinguishes it from others

• Trade Dress can be a product shape, design, configuration or product packaging

• Trade Dress can be registered with the United States Patent and Trademark Office

11


Trade Dress

• Advantage Over Design Patent Protection • Through trademark registration, trade dress can be

protected indefinitely • Disadvantage is that you must prove inherent distinctiveness

for a product configuration

12


Patents

• Patents cover how a device works or the design elements of a product

• Patents can protect such items as ski and snowboard equipment and apparel

13


Patents

Design Patent Utility Patent

14


Copyrights

• Artistic Works – Photography – Drawings – Paintings – Sculpture – Graphic Arts – Design – Websites

• Literary Works • Music

15


Website Protection

• Creation of website- copyright ownership • Use of independent contractors; ownership issues • Clip Art • Copyright Notice • Copyright Registration

16


Domains

• Protected by trademark • Valuable for branding • Domain Registration- best practice strategy • Enforcement through ICANN Proceedings

17


Uniform Domain Name Dispute Resolution Policy adopted by Internet Corporation for Assigned Names and Numbers (ICANN) • Domain name is identical or confusingly similar to a

trademark or service mark • The Defendant has no rights or legitimate interests in the

domain name • The Domain name has been registered in bad faith

18


Legal Pitfalls in Utilizing IP in Social Media

• Traditional IP and Right of Privacy Laws which apply in Advertising apply equally to Social Media

• Commonly used Social Media includes Twitter, Facebook, Instagram, LinkedIn, online blogs

19


Common Mistakes on Social Media

• Reposting photos on social media – Images or photographs on the Internet are not necessarily in the

“public domain” • Don’t Repost without permission

• Don’t Use Other Companies trademarks/logos on Social Media – Fair Use Allowed

20


Common Mistakes on Social Media

• Don’t Use Images or Names of Celebrities without Express Authorization – Ex. Duane Reade posted a photo of Katherine Heigl from Grey’s

Anatomy on Twitter and Facebook and tweeted “Love a quick #DuaneReade run? Even @KatieHeigl can’t resist shopping at #NYC’s favorite drugstore.” • A suit resulted with a $6 million demand

21


Ways to Avoid Mistakes on Social Media

• Obtain Written Permission – To use Images and Photographs – To use the Names and Likenesses of Celebrities

• Don’t Make False Statements – Verify all facts before you post

22



• Protect Your Rights – Insure that your client’s business owns the IP or has a license to

use • Licensing Agreement • Assignment • Filing for Protection • For all Websites, Advertising Media, Information Brochures, Products

23


Develop a Written Strategy That Covers IP Protection Plans, Internal and Social Media Policies

• An IP Strategy is a creative, flexible plan aimed at building and maintaining your intellectual property assets, deciding and implementing internal and external social media plans and policies

• The strategic utilization of your plan substantially enhances your company’s competiveness

• A well thought-out, but flexible IP Strategy results in cost savings

24



• Create and Adhere to a Social Media Use Policy – Understandable by Employees – Confirm the terms don’t violate the National Labor Relations Act – Require avoidance of defamatory postings – Disclose any paid advertisements (FTC Requirement)

25


Website “Terms & Conditions” and “Privacy Policy”

• Terms & Conditions – Sets the rules that users must agree to in order to use your website – This is a legally binding contract between the company and the users – Highly recommended for the reasons below but not required

• Privacy Policy – Required by law if you collect personal data from your users: email

address, first and last names, shipping address, etc.

26


5 Reasons You Need Website Terms & Conditions

• Prevent Abuses of Your Website • Include terms to prohibit spamming of other users, posting of

defamatory content, unauthorized use of trademarks and images

• Ownership of Content • Puts the users on notice that the content is owned by the company

• Termination Clause • Enables the company to terminate users who abuse the website

27


5 Reasons You Need Website Terms & Conditions

• Limits Liability • Notifies users that the owner can’t be held liable for inaccurate or

illegal content uploaded by users

• Set the Governing Law • Establishes the jurisdiction that applies to the website use

28


Hope you are still awake!

29


Questions?

30


Thank you!

Kathleen A. Brown, Esq. Partner and Co-Leader, Sports & Active Lifestyle [email protected] 619.525.3827

Lisel M. Ferguson, Esq. Partner and Co-Leader, Sports & Active Lifestyle [email protected] 619.515.3207

Questions? Please feel free to contact us any time for guidance.

Documents

FORTIFY YOUR BRAND: SOCIAL MEDIA IDENTITY...Trademark- Brand • Ex. Atomic or Atomic Skis • Includes any word, name, symbol, or device, or any combination • Used in commerce •