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Social Media IP Issues:Herein of Patents, Trademarks, Copyrights, Etc.
Calhoun “Reb” ThomasThomas Law [email protected]@KE2020, @KEventures
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CC BY-NC-SA These materials are provided
under a BY-NC-SA Creative Commons License
Attribution – NonCommercial - ShareAlike
This license lets you remix, tweak, and build upon this work non-commercially, as long as you credit me and you license any derivative works under these same termsSeptember 16,
2011
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Social Media What is it? Google yields 314M
hits Wikipedia: Andreas Kaplan and
Michael Haenlein define social media as "a group of Internet-based applications that build on the ideological and technological foundations of Web 2.0, and that allow the creation and exchange of user-generated content.“
Facebook compared to AmazonSeptember 16, 2011
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IP or Intellectual Property Utility patents – for useful, novel
and non-obvious inventions Design patents – for ornamental
aspects of utilitarian objects Trade secrets Trademarks, service marks, and
trade dress rights for source of origin
CopyrightsSeptember 16, 2011
5September 16, 2011
Copyrights & Patents Article I Section 8 of our
Constitution provides that “The Congress shall have the 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”
www.Copyright.gov www.USPTO.gov
6September 16, 2011
Copyrights In general, Title 17 U.S.C. 106
provides that the author of a work has the exclusive right to use, distribute, modify and display the work
However, the copyright to a work belongs to an employer in the case of a “work made for hire”
Employees vs independent contractors
7September 16, 2011
Copyrights “Work made for hire” and the
independent contractor – get an assignment - not all works are covered
Term of copyright Life of the author plus 70 years Works for hire – lesser of 95 years
after publication or 100 years after creation
8September 16, 2011
Copyrights Protection subsists in original
works … Fixed in any tangible medium of
expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device.
Expression vs idea
9September 16, 2011
Copyrights Sales of copyright protected goods
subject to “First Sale” doctrine Parody and “fair use” can trump
the copyright Fair use factors: for criticism,
comment, news reporting, teaching, scholarship, research - then you look at (1) purpose and character of use, (2) nature of the work, (3) amount copied, and (4) effect on market
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Copyrights Parody (think "Weird Al" Yankovic) Joint authorship – right to
accounting Registration advantages such as
attorney fees, statutory damages, Infringement issues Actual vs statutory damages
11September 16, 2011
Copyrights Digital Millennium Copyright Act
(DMCA) Making or trafficking in software or
devices whose primary purpose is defeating technological measures that control access is illegal.
Copyleft – claims the copyright but permits others to use, modify and redistribute on the same Copyleft terms
Creative Commons Licenses
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Facebook License For content that is covered by intellectual
property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.
Don’t write a book and put it on Facebook September 16, 2011
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Facebook (non-copyright) https://www.facebook.com/legal/co
pyright.php?noncopyright_notice=1
By submitting this notice, you declare under penalty of perjury that all of the information contained in this notice is accurate and that the use of your intellectual property described above, in the manner you have complained of, is not authorized by the rights owner, its agent, or the law.
September 16, 2011
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Facebook (Copyright claim) http://www.facebook.com/legal/cop
yright.php?copyright_notice=1 By submitting this notice, you declare that you
have a good faith belief that use of the copyrighted content described above, in the manner you have complained of, is not authorized by the copyright owner, its agent, or the law. You also declare that the information in this notice is accurate. And finally, you declare under penalty of perjury, that you are the owner or authorized to act on behalf of the owner of an exclusive copyright that is allegedly infringed.September 16,
2011
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Trademarks Trademarks are governed by
Federal law, however states may also have trademark laws so long as they are not inconsistent with Federal law
www.USPTO.gov/trademarks Often interrelated with state law
entity naming statutes and unfair or deceptive business practices statutes
A trademark identifies the source of origin of a good or service
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Trademarks Similarly, a service mark identifies
the source of origin of a service Marks are usually words or
symbols used to identify the “goods and/or services” of the manufacturer or retailer
Label or the packaging should bear the trademark – service marks are usually displayed on advertising materials
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Trademarks
The best way to develop your mark is through use
The best way to protect your mark is by a Federal registration
US vs most foreign countries – earliest usage matters vs first to file
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Trademarks US trademark rights depend on
use of the mark on the goods or in connection with the sale of the services
Use based & intent to use filings Must identify the “class” or
“classes” you are filing in
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Trademarks Arbitrary or fanciful marks are
much better than descriptive or generic marks
Examples (good & bad): KODAK for photographic equipment JAVA for software STARBUCKS for coffee BED & BATH for selling bed & bath
items QUIK-PRINT for copying services
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Trademarks Merely registering a mark as a
domain name does not provide trademark rights
Registering domain name involves entering into a contract
“The registrant... represents that ... the selected domain name, to the best of the registrant's knowledge, does not interfere with or infringe upon the rights of any third party”
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Trademarks Start the trademark search process
with several Internet searches using the major search engine sites
What if you discover another company is already using and/or registered the XYZ mark for its product
Dilution of a “famous” mark
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Trademarks For a next stage preliminary
screen, go to the US Trademark Office website at http://trademarks.uspto.gov
Unidym & CNI
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Trademarks Some famous examples of marks
that had troubles are: Internet Explorer Dreamworks Amazon.com vs Amazon Bookstore,
Inc. Victoria’s Secret vs Victor’s Little
Secret
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Lamebook Lamebook vs Facebook –
preemptive strike just happens to garner more publicity, then settlement with promise not to register (would that have even been likely, maybe just the Facebook fig leaf attempt to justify their infringement assertions)
September 16, 2011
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Twitter According to a recent Mashable article, the
name Twitter was picked out of a hat. A small group of employees from Odeo, the San Francisco podcasting startup where Twitter initially began, had a brainstorming session. They were trying to come up with names that fit with the theme of a mobile phone buzzing an update in your pocket. After narrowing down the options (which included Jitter and Twitter), they wrote them down, put them in a hat, and let fate decide. Fate decided on Twitter (because clearly asking someone if they saw your latest "jeep" is just weird).
September 16, 2011
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Twitter Goods & Services IC 38 G & S: Telecommunication services, namely, providing
online and telecommunication facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; enabling individuals to send and receive messages via email, instant messaging or a website on the internet in the field of general interest; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing an online community forum for registered users to share information, photos, audio and video content [ abut ] * about * themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking.
IC 41 G & S: Providing on-line journals, namely, blogs featuring user-defined content in the field of social-networking.
IC 45 G & S: Providing a website on the internet for the purpose of social networking.
FIRST USE IN COMMERCE: 20060831
September 16, 2011
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Patents Similar to Copyright law in that
Patent law is Federal law, states may not legislate in this area
A patent is an intangible form of personal property
Patents for “Social Media” inventions? Google.com/patents = 2,210 hits
Patents only have national effect
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Patents Statistics Over 8 million utility patents have
been issued by the US Patent Office
The Patent Office issues approximately 4,000 utility patents
The Patent Office receives about 500K patent applications every year
The average patent takes about 3 years to go from non-provisional application to issuance
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Patents Granted to an individual or
individuals who invents or discovers a process (method), machine, article of manufacture, composition of matter, or improvement thereof
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Patents That is new, useful and non-
obvious to one of ordinary skill in the art
Must be an “invention” – not just an idea – you have an invention when you have complete conception and reduction to practice
A patent is the opposite of trade secret in a sense – must disclose the invention
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Patents Most focus on “utility” patents, but design
patents may be relevant for ornament aspects in a fashion similar to trademarks
The term of a utility patent ends 20 years after the date of application but design patents are still good for only 14 years from issuance
A patent provides the holder with the right to exclude others from making, using, offering for sale, or selling the patented invention – it is an offensive weapon that the owner must assert – too many clients think government will enforce their patent
32September 16, 2011
Patents Employee and independent
contractor assignment issues Patent searches and prior art –
anything that an examining agent can rely on to reject a claim in a pending application
The inventor(s) must file the patent application – can be a provisional, non-provisional or PCT application
33September 16, 2011
Patents - AIA The Leahy-Smith America Invents
Act or AIA (previously known as the Patent Reform Act of 2011) is scheduled to be signed today. It is 152 pages. No, I have not read the whole act yet. Probably the most notable change to our law is the move from “first to invent” to “first to file” – thus becoming more like the rest of the world.
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Patents - AIA Best Mode: On the date of enactment of the AIA,
failure of best mode will no longer be a basis for adjudging a patent invalid or unenforceable.
Dis-Joinder: A second litigation-focused issue that goes into force on the date of enactment is the new dis-joinder provision. Section 19 of the AIA bars a plaintiff from suing multiple defendants in a single lawsuit if the only justification for the joinder is that all defendants are alleged to have infringed the same patent. The law would also bar a court from consolidating cases for the same purpose absent waiver from the multiple defendants. The idea behind the provision is simply to raise the litigation costs of non-practicing entities who allege that their patents are being infringed by a broad spectrum of corporate defendants.
September 16, 2011
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Patents - AIA USPTO has set up a website
describing the implementation procedures they will use in preparing and circulating the new rules.
http://www.uspto.gov/patents/init_events/aia_implementation.jsp#heading-2
This site has a lot of information including a copy of the Act and a section-by-section summary.
September 16, 2011
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Interesting Cases Bilski – The Supreme Court changed Federal
Circuit’s formulation of the legal test for patentability from being exclusively “machine-or-transformation” to a broader analysis with greater flexibility for the courts to deny a business method patent when appropriate
Microsoft v. i4i – Microsoft could not convince the court to lower the standard of review on appeal to a preponderance of the evidence. The Supreme Court was straight to the point - “We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does."
September 16, 2011
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Social Media Marketing ABA “Law Firm Marketing
Strategies Conference November 8-9 in Philadelphia
Three big name technology lawyers—Dennis Kennedy, Tom Mighell and Tim Stanley—discuss the impact and use of social media.
Also, check out Dennis Crouch at www.PatentlyO.com (great IP blog)September 16,
2011
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Links to recent articles, etc Get Your Social Media Under Control
http://www.americanbar.org/newsletter/publications/law_practice_today_home/law_practice_today_archive/august11/get_your_social_media_under_control.html
Real Networking In A Virtual World http://www.totalattorneys.com/power-chat/real-networking-in-a-virtual-world/
Great quote – a Facebook page is not a social media strategy
September 16, 2011
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Aditional resources Michelle Golden recently authored Social
Media Strategies for Professionals and Their Firms: The Guide to Establishing Credibility and Accelerating Relationships (Wiley, 2011) and she maintains a blog at www.goldenpractices.com.
Kevin O'Keefe, CEO of LexBlog, Inc. and author of Real Lawyers Have Blogs, speaks with callers and attendees from the Get a Life conference on his session, 'Effective Blogging and Social Media‘ http://www.totalattorneys.com/total-expert-radio/social-media/?source=facebook-drip September 16,
2011
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Google+ Google+ Hangouts (public
performance of a copyrighted work for 9 others??)
Hosting a cooking show for small specialized audience??
Live mini-concerts (date, time zone & country), “electronics show and tell” sessions, interconnections with YouTube, a G+ cooking school ??September 16,
2011
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More Uses For Google+ Collaborative coding Customer service tweetified, facebookized, Google
plussed Data Liberation Front (supported
by Google, fighting with Facebook) Your complete guide to Google+
http://howto.cnet.com/8301-11310_39-20084975-285/your-complete-guide-to-google/
September 16, 2011
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Recent ABA articles Why Lawyers Should Plus the Google+
Project http://
www.americanbar.org/content/newsletter/publications/law_practice_today_home/law_practice_today_archive/september11/why_lawyers_should_plus_the_google_project.html
Also Not Your Marketer's Social Media: Ten Ways Lawyers Can Benefit from Non-Marketing Uses of Social Media http://www.americanbar.org/content/newsletter/publications/law_practice_today_home/law_practice_today_archive/september11/not_your_marketers_social_media.html
September 16, 2011
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Cloud What is the cloud? Think of it as
on-demand computing power – like the electricity grid, it is there when you need it (in theory)
Basically large companies control the cloud through large data centers and the large networks that provide the interconnections (public utilities idea)
Early thinkers envisioned in 1960’sSeptember 16, 2011
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Cloud The use of the “cloud” symbol was
an abstraction for complicated (an typically as yet undefined) networks of computers and their interconnections
Kind of like the cartoon blackboard with the long, complicated formulas leading ultimately to the “miracle occurs here” joke that indicates no one knows how it works
September 16, 2011
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Cloud and SaaS Famous quote from Thomas
Watson, first IBM CEO, as to the worldwide market for computers
SaaS = Software as a Service New buzz phrase for something
that has been around for a long time – outsourcing the operations of a data center to a shared facility with the software license embeddedSeptember 16,
2011
