MediaTech Law

By MIRSKY & COMPANY, PLLC

Does Demand Media Really “Suck”? Fair Use and Freedom to Bash Your Boss

Posted August 3, 2011 by Kate Tummarello 0

Kate Tummarello is a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly.  Follow Kate on Twitter @ktummarello.  Andrew Mirsky of Mirsky & Company contributed to this post.

Gone are the days of bashing your boss in the breakroom. Now, colleagues gather online to anonymously air their grievances.  A group of disgruntled Demand Media, Inc. employees did just that with their website DemandStudiosSucks.com.  Then Demand Media struck back.

Late last month, attorneys for Demand Media, a content production company whose properties include eHow, LIVESTRONG.com, Cracked.com, typeF.com, Trails.com and GolfLink, sent a letter to DemandStudiosSucks.com asking it to remove content that had been copyrighted by Demand Media.

The media company accused the people behind this censorious website of creating and maintaining “a forum in which users can, and do, post and misuse Demand Media’s trademark, copyrighted material, including confidential and proprietary copy editing tests.”  The letter also referenced “an internal presentation regarding the company’s business plans”, published without permission on DemandStudiosSucks.com.

Immediately, of course, the letter was posted on DemandStudiosSucks.com.

The next day, a user named “Partick O’Doare,” who has posted the majority of the content on the site, published an open letter addressing the claims made by Demand Media’s attorneys.  Although the website removed the content addressed in the letter, O’Doare explained that the site’s creators had not acknowledged any infringement in removing the content.

Instead, those behind the website claimed that their use of the Demand Media content fell under fair use guidelines, specifically protections for commentary and criticism.  “Let’s be honest,” the open letter says, “if ever there was a case of unequivocal fair use, this would be it.”  A statement which should raise flags to anyone who previously felt similarly.

Fair use is a defense to a claim of copyright infringement, but not other claims.  A fair use argument cannot simply succeed on its merits where other legal rights are violated.  Context matters.  So, for example, as seen in some Facebook “suck site” cases, fair use will not protect against a claim of defamation.  Employees who publish company trade secrets and other proprietary information cannot rely on fair use to defend against claims of violations of corporate and employment law.

O’Daire’s letter proudly boasts that the voices behind DemandStudiosSucks.com were fully prepared to defend themselves, citing the fair use cases Lenz v. Universal Music Corp. and Online Policy Group v. Diebold, Inc.

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Forever 21 – WTF? SLAPP Suit? Trademark Dilution?

Posted July 6, 2011 by Andrew Mirsky 0

A blogger publishing under the name “WTForever21.com” recently got threatened with litigation for trademark infringement by the LA-based clothing retailer Forever 21.

WTForever21.com, a parody site published by Rachel Kane, had prominently disclaimed any affiliation or endorsement by Forever 21.  And as indicated, Kane’s purpose was (some would claim clearly) parody.   Kane was the proud recipient of a cease and desist letter from Forever 21 on April 22 (a copy of which can be found here), which alleged trademark and copyright infringement, unfair competition and trademark dilution.

Without testing the merits of her legal position and, according to several initial reports, not willing to expend the resources to do so, Kane announced that she would pull down her site by June 10th.  Kane then reversed course, and issued a statement last month stating “If the company continues to makes threats that have no basis in law, my attorneys are prepared to vigorously defend me and seek all available legal redress against Forever 21.”  The site is currently live.

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Podcast #9: App Development Legal Issues: Open Source, Copyright, API Terms of Use and More

Posted May 6, 2011 by Andrew Mirsky 0


Today, we will discuss the business and, particularly, the legal landscape faced by application (App) developers dealing with mobile platforms (iOS, Android and Blackberry being dominant), including dealing with application interfaces (APIs) when developing based on existing applications, and, of course, client relationships.

I am joined today by Liz Steininger, co-founder of Tapangi Consulting and project manager in the DC Government’s Office of the Chief Technology Officer.  Tapangi Consulting specializes in mobile and HTML5 application development as well as content management.  Liz is also an active member of the DC Tech community and you can find her on Twitter as @liz315.

Some of the issues we discuss today are these:

  • Protecting ideas in early stages of pitching to potential clients.
  • Application developer agreements and API Terms of Use (TOUs).
  • Platform question: As a developer, how do you think about development based on different platform (e.g. Android or iOS or Blackberry) or a specific API?
  • Copyright and “open source” issues, GPL, libraries, use of third-party code.
  • Ownership and Rights Issues
  • Privacy and uses of personal information (PI).

Please click here for the podcast.

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App Developer Legal Issues: API TOUs, Copyright and Trademark

Posted April 21, 2011 by Andrew Mirsky 0

Our Twitter chat last week with technology and entertainment lawyer Joy Butler highlighted legal issues with app development, including contract issues between app developers and clients, on one end, and intellectual property (IP) and API issues between the app and the intended development platform, on the other end.

Privacy issues become pressing later when the app goes public for end users, although the biggest privacy problems tend to arise when app publishers get tripped up by commitments made in their own end user license agreements (EULAs) or privacy policies, more so than from any violations of privacy laws.  More on privacy and the app/API problems in a separate blog post.

Immediate issues are copyright and trademark, both governed by federal laws, but also governed by API terms of use and similar application development agreements with hosting platforms.  Apple’s software developer kits (SDK) for the iPad and iPhone encompass similar purposes as part of broader packages of developer protocols for use of those APIs.

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Twitter Chat: App Development/API Legal Issues with Andrew Mirsky and Joy Butler

Posted April 5, 2011 by Thomas Yarnell 0

The following is our first twitter chat on trending legal issues. This one focused on legal issues involved with app development and APIs and featured thoughts from attorneys Andrew Mirsky and Joy Butler (@joybutler). Be sure to stay tuned to the @MirskyLegal twitter account for more information on the next #lawchat and please tweet in using the provided unique hashtag!

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Podcast #3: Intellectual Property: Protecting Ideas, Concepts, Processes and Plans

Posted January 26, 2011 by Andrew Mirsky 0

 

In today’s podcast, we discuss intellectual property issues, specifically the question of how to protect ideas.  My guest is Neal Seth, a partner in Baker Hostetler’s Washington, DC office. Neal’s practice focuses on patent litigation and appeals.  Neal has handled numerous litigation and appellate matters in a variety of technologies, including the pharmaceutical, chemical, electrical, and mechanical fields in district courts, the ITC, and the Federal Circuit.

This is not meant to be a true “primer” on intellectual property protection.  Instead, we’re going to look at the very practical threshold problems entrepreneurs and small businesses face when developing and pursuing new ideas for businesses.

Our questions: What is the major practical problem with patents from the perspective of someone with an idea?  What can copyrights really do for someone?  For example the software developer: What does it mean to copyright software and what kind of protection does it get you (and not get you)?  We discuss major limitations against “descriptive” trademarks.  We discuss trade secrets and how trade secrets are distinct from patent or copyright.  What about Non-disclosure Agreements (NDAs) or Confidentiality Agreements?  Is it necessary to have all interested parties sign an NDA before reviewing a business plan or even taking a meeting?  What benefits?

Please click play below to hear the podcast.

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Podcast #2: Recent Search Engine Advertising Trademark Rulings in EU and US

Posted January 12, 2011 by Andrew Mirsky 0

Podcast #2: January 6, 2011

 

In today’s podcast, we cover trademark cases from both U.S. and European Union courts involving major search engines such as Google and Yahoo.  In particular, we look at whether and how search engines can be held responsible for trademark infringement when advertisers buy search result advertisements using the trademarked names of their competitors.

My guest is Howard Hogan, a partner in Gibson, Dunn, & Crutcher’s Washington, DC office.  Howard’s practice focuses on intellectual property litigation and counseling, including trademark, copyright, patent, false advertising, licensing, media and entertainment, and trade secret matters.

The trademark issue arises because in many countries, including the US, the search engines allow companies to advertise next to search results using their competitors’ trademarks.  We have seen a major shift in the last year.  Before 2010, it was clear that at least in France and Germany, it was not appropriate for search engines to sell marks, and Google’s policy reflected that.  In the US, there was a divide between the district courts of the Second Circuit and the rest of the country as to whether buying and selling trademarks for search engine advertising constituted a “use in commerce,” but there was very little law on whether that use was likely to cause confusion.

Now, in Europe, the law seems to have shifted against holding search engines liable, but leaving open the potential for trademark holders to go after the advertisers.  In the U.S. the “use in commerce” question has been resolved decisively against the search engines, and the debate has shifted to the “likelihood of confusion” question.  On one hand, we are starting to see more decisions finding that their sale of the marks are not confusing (Rosetta Stone, Boston Duck Tours, College Network) at the same time as other courts are finding that the use of marks by an advertiser are likely to cause confusion (Storus, Skydive Arizona).

Please press play on the audio player to hear the podcast.

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Trademarks: Why Registering Your Design or Logo May Not Protect You

Posted January 7, 2011 by Andrew Mirsky 0

What are the differences between “special form” (stylized, design, logo) trademarks and “standard character” (word) trademarks?

The 2 basic trademark types are these: (1) “special form” trademarks and (2) “standard character” trademarks. A “special form” trademark that consists of stylized words, letters, numbers and/or a design element such as a logo. A “standard character” trademark consists only of words, letters, or numbers, with no stylization, color or design element.

The issue comes up this way: A company or an individual wants to trademark a brand or company name. So far so good. The first question is does this individual or company have a particular design or logo for its name? If not, then the only type of trademark registration available is a “character” or word mark. If a design or logo is in the mix, then the question is whether or not that design or logo has any value to the company. Obviously examples are the Nike “swoosh” and the Coca-Cola script logo. These are good examples of designs or logos that – separate from the names of the companies themselves – have distinct trademark value for their owners.

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Facebook Trademarks “FACE” – HOW?

Posted December 1, 2010 by Andrew Mirsky 0

(Thank you to Thomas Yarnell for contributing to this post.)

It’s one thing for Facebook to claim that a website called “Teachbook” infringes upon the “Facebook” trademark. That seems reasonable. But what about when the social network seeks to trademark both the words “FACE” and “BOOK”?

Last week, Facebook took a big step toward securing the first half of its name, as the company received a Notice of Allowance from the US Patent and Trademark Office for the word “FACE”.  Unless something extraordinary happens between now and the pending issuance, soon Facebook will own a registered United States trademark to the word “FACE”.

To be clear, Facebook’s exclusivity is limited to its defined field, namely:

telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.

So, on the one hand, exclusivity is narrow.  And this is important, because while Apple Computers owns trademarks for “Apple”, those are limited to computer and electronic products.  

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Trademark Registration Trumps Prior Use? Not Entirely

Posted November 15, 2010 by Andrew Mirsky 0

Trademark registration generally trumps an unregistered (i.e. common law) use of the same trademark, so says @cyclaw in speaking about trademark registration in Canada.

I had tweeted this #trademark question:

What happens if you apply for – and get – US federal trademark registration, but later find that someone else has been using the same trademark since before you filed?  Or for that matter, does it even matter whether you discovered this other use prior to your filing for registration.

Thank you to @cyclaw for that quick reply.  In the US, though, the answer is slightly different: it matters only whether you can demonstrate your use prior to the date of first use by the other party.  So while US federal registration generally trumps common law use, first-in-time unregistered users do retain certain – albeit limited – rights which survive and trump another party’s later registration.

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Trademarks: Why Necessary to Police Infringement of Your Marks

Posted November 7, 2010 by Andrew Mirsky 0

A little-appreciated requirement for trademark owners is a duty to monitor and police their trademarks.  This duty applies to owners of unregistered trademarks as much as federal registered marks, since registration is not necessary to claim many trademark rights.

What types of activities must be monitored and policed?  Infringement and dilution.  Or in other words, any third party uses of the same trademark or confusingly similar versions that might cause confusion in the marketplace about the source of the goods or services represented by the trademark.

Trademark Duty to Monitor and Police

2 basic reasons to monitor and police: First, the government won’t do it for you.  The Trademark Office is actually quite explicit about stating this, see here.  Second and more to the point, unchallenged third party uses of a trademark could legally – and actually – weaken the strength of the trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark.

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Trademark: When NOT desirable to register a trademark?

Posted October 29, 2010 by Andrew Mirsky 0

(Thanks to Neal Seth of Baker Hostetler and Michael Steger of Law Offices of Michael Steger for input on this question.)

“Can I register a trademark for my brand?”  That’s typically the first question asked of a trademark lawyer.  The second question – not always asked – might be “Why would I want to?”  Or rather, is it really advisable?

There is little downside to filing a trademark registration, unless you consider cost and time of little worth.  That aside, there may be little or no business benefit from doing so.

Take for example, a professional services business using the names of the partners, say a law firm or accounting firm.  That’s not to say that Richard Sears and Alvah Roebuck had no value in their names and wouldn’t have benefited from trademark protection, but only later when “Sears Roebuck” long-survived and became distinct from the original proprietors.  Until then, there was nothing to stop Ralph Sears and Bob Roebuck from partnering in accounting under the same name, and trademark protection for the mail-order business wouldn’t have stopped the CPAs from doing so.

A trademark may have little value to the business.  A retail business operating in one or few local locations only has nothing to gain from trademark protection, since out-of-town challengers to its name pose no threat to its business.

Similarly, generic or descriptive company names cannot even be registered under trademark in the first place, or at best only under the trademark office’s supplemental register (rather than the Principal Register), with its very limited protection.  An example might be “New York Trucking Company”.  (For a nice comparison of the Supplemental and Principal Registers, see here.

Another example is a case where you might be able to register the mark, but you have no real intent or interest in enforcing.  As Neal Seth pointed out, “You don’t need to register if you are not going to enforce it.  In other words, you might not care if somebody else uses the mark.”  It begs the question of what value you would get in the registration – and why spend the time and money to register – if you’re not going to enforce.

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