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Intellectual Property Issues In New Media
Presented by:
Moderator David Enzminger, Litigation Partner, Winston & Strawn LLP Panelists Joe Moschella, VP, Head of Business & Legal Affairs, Jukin Media Rob Turner, Legal Director, Commercial Litigation, Yahoo! Inc. Peter Perkowski, Litigation Partner, Winston & Strawn LLP Erin Ranahan, Litigation Partner, Winston & Strawn LLP
January 28, 2015
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Presenters
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David Enzminger Managing Partner Silicon Valley Winston & Strawn [email protected] Based in LA and Silicon Valley, has 25 years of experience in technology litigation.
Joe Moschella VP, Head of Business & Legal Affairs Jukin Media
Rob Turner Legal Director, Commercial Litigation Yahoo! Inc.
Peter Perkowski Partner, Winston & Strawn [email protected] Based in LA, has 15 years of experience in intellectual property, sports, and entertainment litigation.
Erin Ranahan Partner, Winston & Strawn [email protected] Based in LA and SF, has 10 years of litigation experience in copyright, new media, trademark, right of publicity, and advertising.
Use of Social Media Sites
•Companies are using social media regularly for promotional activities
• Twitter accounts, Facebook pages, LinkedIn accounts, YouTube, Pinterest, Instagram, Tumblr, Flickr…
• Third Party Uses/Employee Uses
•Need to be aware of IP and related issues
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Potential Infringement/Liability Issues
• Trademark
•Copyright
•Right of Publicity/Impersonation
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Trademark
Trademark Issues
• Trademark Infringement
• Fan Sites
• Brandjacking
•Gripe Sites
• Social Media Sites Trademark Policies
•Nominative Fair Use
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Fan Sites
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Brandjacking: BPGlobalPR
•Tweets from this account mocked BP’s oil spill response
•BP demanded account be labeled as parody, which also backfired: “We are not associated with British Petroleum, the company that has been destroying the Gulf of Mexico for 50 days.”
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Gripe Sites
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Nestle/Greenpeace
•Activists used disturbing YouTube video to complain about Nestle’s suppliers of palm oil for Kit Kat bars
•Nestle’s initial response included taking down YouTube video (citing copyright) and threatening to block posts to its Facebook site that included an altered Nestle logo
•This led to a viral outbreak of criticism on social media
•Nestle eventually committed to buy 100% sustainable palm oil and to hire international non-profits to audit its suppliers
•This was a PR issue as much as a legal issue
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Gap Logo Change Became PR Disaster Through Social Media •@GapLogo
• Launch of new Gap logo in October 2010 led to consumer outcry
•Twitter account @GapLogo and other social media attacked the decision, creating a PR problem for Gap
•Gap decided to switch back to the original logo after one week
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Trademark Issues in Social Media
•Compare to crowdsourcing:
• Enlisting fans to help design ads, test new products, etc.
• Doritos “Crash the Super Bowl” ads
• Mastercard “Priceless” user campaign
• 2014 #PricelessNewYear
• Quiznos vs. Subway comparative ads
• “meat/no meat.” False advertising lawsuit ensued and case settled.
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Trademark Owners Bear Burden of Enforcement
•Site must have knowledge of “specific instances” of infringement upon which it fails to act to be liable for contributory trademark infringement.
•Following notice and takedown scheme enough for website to avoid secondary trademark infringement.
•Tiffany Inc. v. eBay Inc., 600 F.3d 93 (2d Cir 2010)
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Copyright
Copyright Issues
• Issues:
• Third parties posting your content
• Employees posting content
•Copyright infringement (statutory damages)
•DMCA notice and takedown provisions
• Social media sites and copyright policies
• Pinterest “Pin Etiquette” controversy
• Fair use considerations
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Copyright Owner Bears Burden of Enforcement •Rights owners generally are expected to police and
enforce their own rights
• 17 U.S.C.A. § 512(c); Viacom International Inc. v. YouTube, Inc., 940 F. Supp. 2d 110 (S.D.N.Y. 2013); UMG Recordings, Inc. v. Shelter, 718 F.3d 1006, 1014 (9th Cir. 2013)
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Copyright Owner Bears Burden of Enforcement • Internet Service Providers should have responsive take-
down programs
•Sites like Yahoo, Google, eBay, YouTube, Twitter, Pinterest, Facebook and Veoh all invite owners of intellectual property rights to notify them of potential infringement
•Courts generally find removal within 1-2 days to comply with reasonable implementation standard of repeat infringer policy
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Fair Use/DMCA
• Lenz v. Universal, 572 F. Supp. 2d 1150 (N.D. Cal. 2008)
• Video of toddler dancing with Universal song in background
• Copyright holders must consider fair use before issuing DMCA
• Appeals remain pending before the Ninth Circuit
• Rosen v. eBay, (C.D. Cal. 2015)
• Just this month, Court found eBay protected by DMCA safe harbor 17 U.S.C. 512(c) and that its uses were protected by fair use
• Reasonable repeat infringer policy as a matter of law
• Protected by Fair Use
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Jukin Media
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Yahoo!
Trend 1: Going Mobile
• Shift from web to mobile
• Focus on apps • Employees on social media
Trend 2: Around the World
•APC v. Yahoo
•RTI v. Yahoo
•VG Media v. Yahoo
Trend 3: Stuck In The Middle
• Expansion of Yahoo’s role as content creator/ distributor
•Continued focus on social and sharing
Right of Publicity
Right of Publicity Issues
• Impersonation accounts
• Stock photos/shared files
• Licensed photos
•Use of celebrity images/product placement
• Likes/tweet-backs/using images of friends and followers
• Social media site policies
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Name, Likeness, Identity?
Commercial Purpose? Permission?
Impersonation/Parody: Twitter
• Tony La Russa
• La Russa sued Twitter after someone registered an account with his name and wrote disparaging tweets
• The suit requested significant damages, but was dropped without compensation when Twitter suspended the account
• The suit backfired, made the tweets more well known
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Impersonation/Parody Case: “Twittergate”
• Jon Daniel sets up spoof twitter account to impersonate Mayor of Peoria, Illinois, Jim Ardis, @peoriamayor • When people he didn’t know began following, he labeled it as a
“parody” to avoid misunderstanding
• Police raided Daniel’s home under criminal statute for impersonating federal official • After multiple complaints, Twitter suspended account
(contrary to its own policy allowing parody accounts) •Caused flood of new parody accounts of Mayor Ardis and
wide criticism •Daniel filed lawsuit for violation of First and Fourth
Amendment rights 29
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Celebrities
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Celebrities = litigious
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• Sues for use of name in connection with Acai Berries Oprah
• Sues for use of name/face on greeting card Paris Hilton
• Sues for a "congrats" ad Michael Jordan
• Sues and wins for use of name in press release Chuck Yeager
• Sues and asks for $100M for use of "Lindsay" Lindsay Lohan
• Sues for retailer’s “Don a henley and take it easy” ad Don Henley
The Streisand Effect
•Government-sponsored aerial photo program to document coastal erosion
• Barbra Streisand sues photographer and website for invasion of privacy after her house is photographed
•Her attempt to suppress the photo actually spread it more widely, generating new public interest
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Celebrity-in-Chief
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Product Placement
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Burberry Sues Bogart
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Original Movie Shot Burberry Facebook Page
Borderline Endorsement
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Using Friends and Followers
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Risk Spectrum
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Low • “Following” a celebrity page • Tweeting back one time • Linking to an article about a celebrity without
using their name or photo • Responding to a message from the celebrity
High • Unsolicited tweet to celebrity • Posting picture w/out permission • Multiple tweets to/about a celebrity without them
engaging • Taking a poll about celebrity • Using a celebrity’s social media posts outside of
social media • Re-publishing articles/content about celebrities
TIPS • Don’t panic! • Avoid overreacting, or getting defensive or argumentative
• Be proactive/implement a reasonable monitoring program • Monitor key social media and other channels (e.g. Radian6, Lithium,
Webtrends) before crisis
• Don’t go guns blazing against the website itself • Likely not liable for user-generated content
• Use the tools provided by the site • Create a discussion area on your page, with threads by topic, to channel
commentary off your wall and promote coherent interaction
• Use notice and infringement complaint tools – site may disable access
• Implement Guidelines for employee use of social media • Beware of heavy-handed cease and desist letter • Only as a last resort, and considering significant PR risks
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Questions?
© 2011 Winston & Strawn LLP 42
Trademark Complaint Process Platform Trademark Policy –
*All Have Online Forms For Complaints* Facebook Do not post content or take any action that violates someone else’s rights
Only authorized representative may administer a page for a brand, entity (place or organization) or public figure Users can create fan pages if it is not likely to be confused with an official page or violate other’s rights
Pinterest Accounts with usernames, Pin Board names, or any other content that misleads others or violates another’s trademark may be updated, transferred or permanently suspended.
Twitter/ Vine
Using a company or business name, logo other trademark in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation Using another’s trademark in a way that has nothing to do with the products or services for which it was granted is not a violation Users allowed to create parody, commentary, or fan accounts, including role-playing
Linkedin If you in good faith believe that content posted by a member on our website infringes your intellectual property rights or is inaccurate or unlawful, you may complete the Notice of Content and Intellectual Property Violations form.
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Copyright Complaint Processes Platform Copyright Policy
*All Have Online Forms For Complaints* Facebook/ Pinterest
Do not post content or take any action that violates someone else’s rights
Twitter/ Vine
Will respond to clear and complete notices of alleged infringement Allowed to create parody, commentary, or fan-accounts, including role-playing Guidelines for parody, commentary & fan accounts: • Username and profile name should not be exact name of the subject of parody (use
“fan,” “fake” or “not”) • Biography should include a distinguishing statement (“this is a parody…”; “this is not
affiliated with…”; “fan account”) • Do not, through public or private communications, attempt to mislead as to identity
Linkedin Requires information posted by Members be accurate, lawful and not in violation of the rights of third parties. Pursuant to the DMCA, LinkedIn has implemented procedures for receiving written notification of claimed infringements, and counter-notices to those notices.
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Impersonation Complaint Process Platform Impersonation Policy Impersonation
Complaints Facebook Users provide real name and information; not false information or an account
for anyone else Only authorized representatives may administer a Page for a brand, entity (place or organization) or public figure
Online form
Twitter You may not impersonate others through Twitter in a manner that does or is intended to mislead, confuse or deceive others, but are allowed to create parody, commentary, or fan accounts (including role-playing) Accounts with similar usernames or that are similar in appearance (i.e., same background or avatar) are not automatically in violation; in order to be impersonation, they must pretend to be the other person in order to mislead or deceive An account will not be removed if: • The user shares names but has no other commonalities; or • The profile states it is not affiliated or connected to similarly named
individuals
Online form Apply for “Verified Account” status: celebrities, musicians, athletes, actors, public officials and public agencies on the service can now display a "verified account" button on their Twitter pages.
Pinterest Does not allow accounts that mislead or deceive others and may update, transfer or permanently suspend accounts that do so. Accounts that share a username or display name with another aren't necessarily impersonating. In evaluating reports, will consider the profile information, Pin descriptions, comments and board titles as well.
No online form/need to make separate report
Linkedin Impersonation not permitted Follow form for reporting “inappropriate accounts” or “report the profile” for investigation
Thank you.
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