TWW Presentation re Law and Websites 20181023

Anything You Say Can Be Used Against You

The Impact of Trademark, Copyright, and other Regulations on Business Websites

Todd Brogowski, JD, CFE, CCEP, Todd's Written Word, LLC, todd@toddswrittenword.com, 253-355-9351.

Agenda

Trademark Copyright Fair Trade International Law

We’re going to cover categories of law that affect business websites, so that you walk away with a basic understanding of what you need to think about when you create digital content. We’ll then transition into a Q&A for your concerns

My background

BA, Boston College JD, Georgetown University Commercial Litigator DIA/JSOC Boeing Todd’s Written Word, LLC

Do I need a lawyer or a law degree to publish a business website?

> Mugshot, Ross Ulbricht, AKA Dread Pirate Roberts, founder, Silk Road dark web site.

No, but...

There are certain issues where you need to know that civil and criminal law are implicated.

For certain types of content, do without legal review and professional writers at your own peril.

As management professionals you will face questions of risk management and compliance in innumerable areas. It’s time to start knowing those red flags where you stop and decide:

I can do this thing without legal guidance. I can do this thing on my own but cost-benefit analysis dictates I should hire a pro.

I need to come to a complete stop and have a lawyer advise me as to the best course of action.

Don’t get me in trouble.

Before we get started, I’m not your lawyer. Nothing in this talk constitutes legal advice and no communication here constitutes an attorney-client relationship.

Trademark Law

> Maker’s Mark, Roman Amphora, Image Courtesy University of Minnesota Anthropology Department.

Trademarks have been around for a very long time.

The concept of a maker’s mark has been around for thousands of years. Roman blacksmiths and potters used trademarks on swords and amphora as far back as the 1st Century AD. There are likely older examples as well from Greece and Phoenicia.

Why? Because you didn’t want someone passing off their inferior clay amphora of wine as yours in a culture that refined the art of torturous execution by crucifixion and brazen bull.

The Lanham Act

In the US, the governing trademark law is: The Lanham Act of 1946 15 USC § 1051 et seq.

We look to England for its laws, and they managed to get a trademark law on the books in 1266. How the hell did we miss this one when we drafted the Constitution?

Arguably, the US Constitution anticipated Trademark laws before then, but the US Supreme Court struck down as unconstitutional the first attempts to regulate trademarks by Congress. See United States v. Steffens; United States v. Wittemean; and United States v. Johnson, 100 US 82 (1879; consolidated decisions frequently referred to as the “Trade-Mark Cases”). These were cases involving counterfeit label bottles of champagne and whiskey. Remember, it was terribly important that brands were not tarnished with bootleg bottles of rotgut. Bootleg whiskey had the potential to be poisonous, sometimes fortified with formaldehyde. These cases struck down Congress’ authority to regulate marks because it attempted to do so through the Copyright Clause of the US Constitution.

It wasn’t until 1881 that Congress was able to pass a new trademark act that was not overturned by the US Supreme Court. Congress did so by relying on the Commerce Clause, which granted it authority over regulation of matters involving interstate commerce. This law was unsuccessful in preventing counterfeiting and piracy, and in 1946, the Lanham Act superseded it, but only for marks created after that date.

What Does it Take For A Name to Become a Mark

registered as a trade or service mark with the USPTO no likelihood of confusion with other marks not generic or merely descriptive

Fanciful marks

Tumblr Exxon

Arbitrary marks

Adobe Turtle Wax

Descriptive marks

Describe a product, service, the maker’s surname, or geographic area unless they acquire secondary meaning

Boeing Seattle’s Best Coffee Lenscrafters Newman's Own

Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired “secondary meaning.” Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage.

Generic terms

sandwich shop pain reliever paper clip

> “The public need not be able to identify the specific producer; only that the product or service comes from a single producer. When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term’s use; (4) results of consumer surveys.”

> > — William Fisher, Berkman Klein Center for Internet & Society, Lecture Series, Intellectual

Property In Cyberspace (2000), citing Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).

Trademarks Can Die

Trademarks can become descriptive and generic, if a brand doesn’t enforce its right in the mark, and the mark culturally becomes a descriptive term:

aspirin cellophane dry ice heroin kerosene

Yes. Heroin was a trademark.

Trademarks dangerously close to becoming generic:

bandaid kleenex xerox q-tips jacuzzi

Future possibilities?

Google? Photoshop?

Infringement

false or misleading representation likely to cause confusion misrepresents the nature or origin of goods likely to cause damage

Lanham Act prevents:

importation of goods that violate the act

dilution by blurring for famous trademarks dilution by "tarnishment" for famous trademarks

Exceptions

fair use comparing products; news and news commentary; noncommercial use; and, parody

Parody will be covered in more detail in the copyright section.

Domain names and Cybersquatting

Domain names are not trademarks Anticybersquatting Consumer Protection Act of 1999 Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)

Obviously, the internet has changed things. One question raised in the early days of the internet was whether domain names were presumptively treated as trademarks.

Congress passed the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d) in 1999 (revised 2012), to address trademark law on the web. The ACPA prevented registering domain names that are designed with a “bad faith intent” to profit from a mark.

As with all things legal, certain exceptions apply. These come from things like having the same name - which you then use as a domain name - as a famous mark. So, for example, if your name is Miller, it wouldn’t be bad faith to incorporate that name in a domain name.

However, the law has been used to prevent someone from registering the domain name of panavision.com for their images of the city of Pana, Illinois, because it was shown that they intended to hold the domain hostage for a payout from film camera company Panavision. See Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).

In Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), the defendant registered the domain name Panavision.com. Panavision, the trademark owner, learned that Toeppen had registered its trademark when it attempted to register the trademark “Panavision” as a

domain name.

Toeppen was using the domain panavision.com to display photographs of Pana , Illinois, and, when asked to cease, he offered to sell the domain name to Panavision for $13,000. After Panavision refused to buy the domain name from Toeppen, he registered its other trademark, Panaflex, as a domain name.

The Court held that the FTDA could be violated without the traditional tarnishing or blurring the courts had required. Rulings like this extended the FTDA substantially.

What does this mean for your business and website?

make sure you police the use of your marks be careful not to infringe on the marks of others Domain names are not marks but can be protected

Copyright Law

> The Congress shall have power to… promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries....

> — US Constitution, Art. 1, S.8

Copyright protection making its way into the Constitution makes sense when you think about the fact that the Constitutional Convention of 1787 was a who’s who of writers, philosophers, and inventors. Dickinson Franklin Madison Hamilton Mason

Laws Governing Copyright

The Copyright Act of 1976, 17 U.S.C. §§ 101-810 Copyright Renewal Act of 1992, Pub.L. 102–307

Sonny Bono Copyright Extension Act of 1998, AKA “The Mickey Mouse Protection Act”, Pub.L. 105–298

What is protected by copyright?

Copyright law includes the following types of works: literature, music, drama, choreography, pictures, graphics, sculptures, audio-visual works, sound recordings, derivative works, compilations and anthologies, and architectural works.

Copyright protection does not protect ideas. It only covers the expression of ideas.

See Peter Pan Fabrics, Inc. v. Martin Weiner Corp, 274 F.2d 487 (2d Cir. 1960) (Learned Hand deciding).

> Itchy and Scratchy, from The Simpsons

The most common explanation of this, created because of the amendment to copyright laws to protect Disney’s IP, is that Mickey Mouse is protected as drawn, animated, and voiced, but the concept of a talking mouse cartoon is not protected (and for this reason - and the parody exception - Matt Groening gets away with Itchy & Scratchy).

Copyright only protects content made by humans. For now.

> Selfie by Naruto, a macaque monkey.

> This case arises out of allegations that Naruto, a six-year-old crested macaque, took multiple photographs of himself (the “Monkey Selfies”) using defendant David John Slater’s camera. The complaint, filed by the People for the Ethical Treatment of Animals (“PETA”) and Antje Engelhardt as “Next Friends,” alleges that defendants Slater, Blurb, Inc. (the “publisher” of a book by Slater containing the Monkey Selfies), and Wildlife

Personalities, Ltd. (a United Kingdom company that, along with Slater, “falsely” claims authorship of the Monkey Selfies) violated Naruto’s copyright by displaying, advertising, and selling copies of the Monkey Selfies.

> > Naruto, et al. v. Slater, et al., no. 15-CV-04324 (N.D. Cal. 28 January 2016)( Order Granting

Motions To Dismiss ). Retrieved 30 January 2016.

Exceptions to Copyright Protections

libraries public broadcasters braille versions of content software backup copies mandatory licensing for cover songs and jukeboxes Fair Use and Parody First Sale Doctrine

First Sale Doctrine - 17 USC 109, limits the rights of copyright holders to control the further distribution and display of copies of their works after the first sale by the copyright owner. The owner of a particular copy is entitled to “sell or otherwise dispose of the possession of that copy” and to “display the copy publicly … to viewers present at the place where the copy is located.”

Fair Use and Parody

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)

2 Live Crew’s use of Roy Orbison’s Pretty Woman Justice Souter: The four factors judges consider when determining whether something is fair use are:

the purpose and character of your use the nature of the copyrighted work the amount and substantiality of the portion taken, and the effect of the use upon the potential market.

Duration of Protection

Created after 1978: 70 years after the death of the author Work for hire created after 1978: 120 years after creation or 95 years after publication, whichever is shorter Published between 1923-1978: 95 years from the date of publication 1923 and before: Public Domain

Discussion: Politics of Fair Use, Copyright, and Public Domain

Do our copyright laws really protect artistic creativity if they extend almost a century after the death of the author or over a century for corporate works? Or do they protect the power of established corporations?

What do we think of a Twitch streamer broadcasting game comment along with his or her commentary? Is that infringement?

Copyright Registration

> Reading Room, US Library of Congress, CC0 1.0 Universal (CC0 1.0)

Copyright protection is automatic upon publication Registration and delivery of a “deposit work” to the Library of Congress, US Copyright

Office is required before an enforcement action can be litigated

Fair Trade and US Privacy Laws

The Fair Trade Commission Act of 1914 protects US Consumers based on the US Constitution’s Interstate Commerce Clause

The FTC act, along with other commerce acts (i.e., the Sherman Act) requires the following:

Advertising must be truthful and non-deceptive; Advertisers must have evidence to back up their claims; and Advertisements cannot be unfair.See Federal Trade Commission, Advertising FAQs: A Guide for Small Business

The FTC has taken an aggressive approach concerning regulating content on websites, rather than letting the courts dictate the law. Here is a non-exhaustive set of things to be aware of.

Websites must include effective disclosures regarding their product claims, product pricing and availability, and the use of influencer marketing. Special rules apply for advertising alcoholic beverages, tobacco products and their synthetic substitutes, and firearms that are enforced by both the FTC and ATF special rules apply for advertising related to a publicly-traded company, to advertising related to stock offerings, and to commodities futures that are regulated by the SEC and the CFTC Special rules apply for advertising and labeling OTC drugs and supplements that are enforced by the FTC and FDA special rules apply for advertising and labeling prescription drugs that are enforced primarily by the FDA and DEA Special rules apply for the advertising to and collecting data from minors under the Children’s Online Privacy Protection Act

Special Laws Applicable to Email Marketing

The CAN-SPAM Act of 2003

An easy to see and working unsubscribe mechanism is present in all emails. Consumer opt-out requests are honored within 10 business days. Opt-out lists are used only for compliance purposes (i.e., can’t sell them as verified email address lists, even though you can find these sold online) * Accurate “From” lines Relevant subject lines (relative to offer in body content and not deceptive) A legitimate physical address of the publisher and/or advertiser is present. A label is present if the content is adult. can’t be sent through an open relay (anonymous, anything goes SMTP relays) can’t have false email headers can’t be sent to email addresses obtained via web crawling

Federal Data Privacy Laws

The Federal Trade Commission enforces numerous laws and regulations pertaining to data privacy and online marketing , including (but not limited to): The Children’s Online Privacy Protection Act (COPPA); The Federal Trade Commission Act (FTC Act); The Health Insurance Portability & Accountability Act (HIPAA); The American Recovery and Reinvestment Act of 2009 ; The Health Breach Notification Rule , 16 CFR §318 (2009); The Fair Credit Reporting Act: Disposal Rule , 16 CFR §682 (2005); The Fair Credit Reporting Act: Identity Theft Rule , 16 CFR §681 (2009); and, The Red Flags Rule , 12 CFR §41 (2007).

Between the FTC Act and HIPAA, along with the common law tort of invasion of privacy, businesses can be held liable civilly and criminally for inadvertent disclosures of personally identifiable information. Protect your client data.

State Laws

For those going into regulated professions, there are special laws governing advertising and what claims can be made, either on a website or any other format lawyers doctors chiropractors realtors

auctions appraisers financial services etc.

International Laws

Applicable to US Businesses due to treaties member of World Intellectual Property Organization (WIPO) and other treaties (WTO)

Applicable to US Businesses due to overseas jurisdiction based on the business’ acts

The General Data Protection Regulation (GDPR)

The GDPR applies to all businesses worldwide that deal in the information of EU member citizens.

EU General Data Protection Regulation (GDPR) Businesses should conduct an audit under the command and control of a CISSP -certified professional (or other properly trained and certified network security professional) to identify what personally identifiable information they are collecting; Businesses should consider how they process that personally identifiable information, for what purpose, and for how long do they keep it; Businesses should consider whether the way they process and store data would be considered reasonably secure by a professional (or by a jury), and, if not, what steps they should take to make their data secure; Businesses should consider the processes they have in place to address requests under the GDPR’s “right to be forgotten” requirements; Businesses should consider the processes they have in place to address data breaches, including whether they can notify EU consumers of breaches within 72 hours; and, Businesses should be considering whether their outsourced cloud storage providers (if they have any) are in compliance with the GDPR and FTC regulations.

Conclusion

When businesses are setting up presences on websites and social media, they need to be aware of

best practices to ensure they are afforded full trademark, copyright, and unfair

competition protections best practices to avoid infringing on the trademark and copyright protections afforded to other intellectual property holders best practices to ensure compliance with Federal laws and administrative regulations concerning advertising, particularly when addressing securities, minors, alcohol, drugs, and email marketing

disclosures concerning data mining and tracking opt-out provisions false, misleading, or otherwise deceptive statements or omissions

best practices concerning data storage, esp. when dealing with HSPII data/HIPAA data best practices to ensure compliance with state and professional limitations of advertising best practices to ensure compliance with the GDPR (similar ones exist for privacy in the US, but not as stringent).

As a general rule all this can be summed up as: trademarks and copyrights are protected insofar as they don’t infringe on the freedoms of the First Amendment advertising should be based on truth consumer data should be kept private consumers should not be harassed by spam or robocalls businesses should ensure that they have a mind for compliance or hire the appropriate consultant (CFE, CCEP, CISSP, attorney) to deal with it

#business/presentations#2018/10