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Online Advertising & Branding Issueson the Evolving Internet

2012 World Technology Law Conference

by Erik M. Pelton

© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

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Online Advertising Issues in the United States

Recent developments in internet law affecting:

• Copyrights• Trademarks• Social Media Accounts• Keywords• Legislation

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Copyright

Viacom International, Inc. v YouTube, Inc.,

10-3270-cv, 2012 WL 1130851 (2d Cir. April 5, 2012)

• Litigation revived: Viacom won appeal which overturned District Court finding that YouTube was protected under DMCA

• Issues are somewhat moot: case began 5 yrs ago; copyright owners now have access to “Content ID” system

• Opens some potential holes in DMCA §512(c) safe harbors, which court says would protect YouTube from both direct and secondary infringement

• YouTube satisfied most of the 512(c) elements, but if found to have failed on one, the defense fails

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Copyright continued

Pinterest

• Fast growing social media network• Already number 3, after Facebook and Twitter?• Dealing with complaints from copyright owners that the site/service makes it

too simple for users to misuse or share copyrighted works– Quickly created a tool to allow a site to block users from sharing on

Pinterest– Quickly updated the “Terms of Use” and policies

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Trademarks

As the types of media grow…

so too do the ways in which trademarks are affected

• Social media user names• Mobile application names

» see Justin Bieber v. Joustin’ Beaver (RC3, Inc.)

Domain names• 2011: .XXX• 2012: “.brand” and “brand.TLD”• How will brand owners enforce their trademarks?

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Social Media Accounts

• Who owns an account when an employee leaves?– Social media network? Employer? Employee?– Employment law?– Terms of Use?– Many potential causes of action

• PhoneDog v. Kravitz, No. C 11-03474 MEJ (N.D. Cal.) – Former employer sued employee for keeping Twitter account

after the employee left– Claims that survived Defendant’s motions to dismiss:

• intentional interference with prospective economic advantage• negligent interference with prospective economic advantage • conversion• misappropriation of trade secrets

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Keyword Advertising

Rosetta Stone Ltd. v. Google, Inc., No. 10-2007 (4th Cir. April 9, 2012)– Appeals court overturned denial of Rosetta Stone’s claims of direct trademark

infringement, contributory infringement, and dilution– Remanded to district court for further proceedings regarding these claims– Likely to create a new wave of actions against Google– Though many experts still believe it is very unlikely that

Google will be found liable for trademark infringement– Key question in keyword cases: is it a “use in commerce”?

Network Automation, Inc. v. Advanced System Concepts, Inc.,

2011 WL 815806 (9th Cir. March 8, 2011)– Network Automation sought Declaratory Judgment of non-infringement– Defendant counterclaimed and rec’d injunction preventing purchase of keyword

advertising for “Active Batch”– Court said that buying keywords is a trademark “use in commerce”– Ninth Circuit reversed preliminary injunction and remanded to District Court, noting

that keyword purchase was not inherently a trademark infringement

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Legislative Issues

After SOPA & PIPA (PROTECT IP ACT), what is next?

Congress was truly surprised by the attention and resistance received

Congress likely to re-visit issue: helping brand and website owners combat infringements and counterfeits in a quicker, cheaper manner than litigation

New bill: CISPA

However, election year in US

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• Expansion and growth of online media continues to bring new challenges intellectual property law

• 2012 will continue be another active year for developments related to online advertising

www.ErikPelton.com

NOT INTENDED AS LEGAL ADVICE© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

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