Legal Issues in Counter Brand W

ork:

A Critical Update for Activists

Speakers:

Corynne McSherry, Electronic Frontier Foundation

Melissa Gough, Business Ethics Network, Facilitator

A Business Ethics Network Webinar

9 May 2013

For screen sharing, go to:

ben.glance.net

Session code: 1024

Call / Skype into the conference line:

1-218-548-0782

Pass-code: 298305#

If you have any questions please email them to:

benquestions@corpethics.org

This webinar will be recorded.

1

Legal Issues In Brand Activism:

A Critical Update

2

Copyright

Trademark

Publicity Rights

Defamation

3

Copyright Basics

What is a copyright?

•Exclusive rights granted to auth

ors in

original expression:

–To reproduce a w

ork

–To create derivatives

–To distribute copies of the w

ork

–To publicly display or perform

the w

ork

How do you infringe a copyright?

•By doing any of th

e above w

ithout th

e

perm

ission of th

e copyright holder

4

But there are limits, e.g., fair use

The Four Factors (17 U

.S.C

. §107):

1.

the purpose and character of the use, including

whether such use is of a commercial natu

re or

is for nonprofit educational purp

oses;

2.

the nature of the copyrighted work;

3.

the amount and substantiality of the portion

usedin relation to the original work

as a

whole; and

4.

the effect of the use upon the potential market

for the original work

(e.g. licensing).

Courts can consider other factors, esp. public

interest

5

Challenge for Activists:

Online speech depends on

intermediaries

6

7

DMCA “Safe Harbors”

17 U

.S.C

. 512

Eliminate M

onetary D

amages

Lim

it Injunctions

8

To stay in safe harbors, ISP must:

•Be the right kind of service provider

•“E

xpeditiously”take down m

aterial if

compliant notice

•Restore only after counter-notice and

•10-14 days to file suit

•(plus some other things)

9

After Takedown: User Options

•Counter Notice (back up in 10-14 days)

•Sue under 17 U

.S.C

. 512(f):

“Any person w

ho knowingly m

aterially

misrepresents under this section (1) that

material or activity is infringing . . .shall be

liable for damages, including costs and

attorn

eys’fees, incurred by the alleged

infringer”

10

Stephen

Colbert on Truthiness:

http://w

ww.youtube.co

m/w

atch

?v=

sNHqX27hlz8

11

Trademark:

The Other Fair Use Front

•What is protected: word

s, symbols, colors, etc.

used in commerce to designate the source of

goods and services

•Infringement: using a m

ark

so as to cause

likelihood of confusion as to source

•Dilution: blurring or tarn

ishing nationally

famous m

ark

12

Noncommercial Use

“[T]rademark

infringement law prevents only

unauthorized uses of a trademark

in connection

with a commercial transaction in w

hich the

trademark

is being use to confuse potential

customers”Bosely Med. Inst. v. Kremer

“The Lanham Act regulates only economic, not

ideological or political, competition...

Competition in the “mark

etplace of ideas”is

precisely w

hat the First Amendment is designed

to protect.”–Koch v. Does

“The Lanham Act . . .only regulates commercial

speech . . .”Taubman v. WebFeats

13

Nominative Fair Use

•The m

ark

holder’s product or service in question

is not readily identifiable w

ithout use of the

trademark

;

•Only so m

uch of the m

ark

or mark

s w

as used

as w

as reasonably necessary to identify the

product or service; and

•The user did nothing that would, in conjunction

with the m

ark

, suggest sponsorship or

endorsement by the trademark

holder.

14

First Amendment Balancing

•Lanham Act applies “to artistic w

ork

s only

where public interest in avoiding consumer

confusion outw

eighs public interest in free

expression.”

Mattel v. Walking Mountain Prods.

=>

•Trademark

relevant to m

essage?

•Misleading as to source or content of work

?

15

16

17

For an O

SP,

Any trademark

claim

=

time + m

oney + risk

18

19

20

http://w

ww.nytimes-

se.com/nytse/wp-

content/upload

s/diamon

ds-ban

ner-336-

anim

ated

.gif

Publicity Rights

•Potential violation if: you have used

someone’s name or likeness to

yourcommercial advantage,

without consent (broader in C

A)

•Defenses vary a bit, but basically

same as trademark

(e.g. First

Amendment, noncommercial)

21

22

Defamation

•Defamation: false and unprivileged

statement of fact that hurts

someone’s reputation, and is

published as a result of negligence

or malice.

•Trade Libel: intentional + direct

negative effect

•Libel is a w

ritten defamation;

slander is a spoken defamation

23

If you are the speaker:

Principal defenses

•Tru

th

•Opinion/hyperb

ole

•Public Figure

•No $$ damage (trade libel)

24

Not defamatory:

•Calling a political foe a "thief" and

"liar" in chance encounter

•Calling a TV show participant a

"local loser," "chicken butt" and "big

skank"

•Calling someone a "son of a bitch”

25

Defamatory

•Charging someone w

ith being a

communist (in 1959)

•Calling an attorn

ey a "crook"

•Describing a w

oman as a call girl

•Accusing a m

inister of unethical

conduct

26

But what if you don’t have a lawyer to

lay out your defense?

Some practical advice.

(Note: IAAL, but IANYL)

27

•Be noncommercial.

•Don't use m

ark

alone in a domain

name.

•Have a prominent disclaim

er.

•Find a service provider with

backbone.

•Be ready w

ith altern

ative site

•Take only w

hat you need.

•Show your work

: link/cite sources

28

And if that

doesn’t work

29

Contact EFF!

30

Corynne McSherry

IP D

irector

415-436-9333 x122

corynne@eff.org

31

Legal Issues in Counter Brand W

ork:

A Critical Update for Activists

Corynne McSherry, Electronic Frontier Foundation

Melissa Gough, Business Ethics Network, Facilitator

A Business Ethics Network W

ebinar

9 May 2013

www.businessethicsnetwork.org

32