Andrew Mirsky – Page 8 – Media Tech Law

Copyright and State Law Pre-emption: Part 2

Posted January 18, 2011 by Andrew Mirsky 0

(Thomas Yarnell contributed research and writing to this post.)

In a past post, we wrote about copyright as it relates to how preemption of state law civil causes of action in the same or related cases. In writing about the Perez Hilton and NFL Films cases, we noted that federal copyright law did not preempt applicable state laws (specifically, “hot news” and right of publicity claims) because the rights claimed under the state laws were not equivalent to the rights protected by the Copyright Act.

Put another way, federal copyright preempts state law claims where the rights sought to be enforced under the state claims do not necessarily match those protected by the Copyright Act. In those cases, the rights protected by copyright – reproduction, performance, distribution or display of the work – were distinguishable from the rights protected by the state law claims.

A 2008 North Carolina case offers a counter example, involving failure to show that a state law added some unique element outside of the rights protected by copyright. The case, Rutledge v. High Point Regional Health System, F.Supp.2d –, 2008 WL 2264239 (M.D.N.C.) shows how claims under state law can only avoid copyright preemption if they are “qualitatively different” from copyright law.

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.

Podcast #1: FTC’s recently issued privacy proposals

Posted January 12, 2011 by Andrew Mirsky 0

Podcast #1: December 30, 2010

In today’s podcast, we discuss the Federal Trade Commission’s recently issued privacy proposals. My guest is Karen Neuman, a founding partner of St. Ledger-Roty Neuman & Olson LLP, a Washington, DC law firm that focuses on regulation of information technologies and communications law, including privacy & data security, mobile communications, the Internet, media, telecommunications and related transactional matters.

At the core of the new privacy proposal is the idea that the current system of self-regulation does not provide enough consumer protection. Basically, from the FTC’s perspective, people do not pay enough attention to the data-collecting activities of websites and not enough companies are up-front about the data they do collect from visitors to their sites. The FTC says that while many companies detail their data collection through privacy policies, consumers bear too much of a burden in having to sort through such long, legalistic documents.

Among other proposals, the FTC’s new framework would require a “Do Not Track” option, much like the one we currently have to avoid telemarketers. “Do Not Track” would essentially prevent companies from tracking things like your browsing history and buying habits, making it much more difficult for them to target consumers with personalized ads. The proposal also aims to have companies incorporate more consumer protection into their business practices through simpler, more transparent options and by allowing consumers more access to the data being collected about them. The FTC issued its proposed rules just last week, and requested public comment from both businesses and the public.

Please click play on the audio player below to hear the podcast.

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.

Social Media Policies Violate Federal Labor Law?

Posted December 22, 2010 by Andrew Mirsky 0

A Connecticut company suspended and then fired an employee for making disparaging comments on Facebook about the company and about her supervisor.

Not in dispute is that the employee’s actions violated the company’s social media and other personnel policies, which (among other things) prohibited depicting the company ‘in any way’ on Facebook or other social media sites or from “disparaging” or “discriminatory” “comments when discussing the company or the employee’s superiors” and “co-workers.”

In dispute is whether that social media policy – and the company’s actions in enforcing the policy – violated public policy, in particular Federal labor law. This came into fast relief when the National Labor Relations Board (NLRB) subsequently filed a complaint against the company, charging the company with violations of the employee’s rights under the National Labor Relations Act (NLRA).

Fair Use and Mashups

Posted December 12, 2010 by Andrew Mirsky 0

I was recently asked about “fair use” standards for use of copyrighted video or audio in mashups.

What’s a Mashup?

First: What are mashups? From WiseGeek:

A mash-up is a combination of tools or data from multiple sources. Mash-ups typically collect data from multiple web pages and bring their information into one simplified web application.

Mashups are common in the application development world, but also common in music and videos, and examples are legion (and some notorious). In particular, a music mashup is (according to Squidoo) …

when the vocals from one song are laid over the music of a second song to create a mashed up version that’s both but neither. If a good job is done, it enhances the original music.

Actually, the last part of that definition is most critical to a fair use analysis. I recently wrote about fair use in the context of the republishing of copyrighted photographs or artworks in a magazine, book or electronic publications.

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.

Fair Use Copying of Photographs and Artwork

Posted November 23, 2010 by Andrew Mirsky 0

Question: Under what circumstances can “fair use” support the editorial republishing of copyrighted photographs or other artworks in a magazine, book or electronic publication?

Short answer: When the previously copyrighted works are the subject of the republishing.

Fuller answer: An “editorial” republishing, almost by definition but with important caveats, satisfies the “fair use” test under the Copyright Act in 17 U.S.C. § 107, in particular by meeting the Act’s four-factor (nonexclusive) criteria:

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.

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.

The “Socialprise” Law Firm

Posted November 2, 2010 by Andrew Mirsky 0

I’ve set a monthly goal for November of taking tangible steps to make my company a “Socialprise” law firm. What does that mean?

Let me take inspiration from Dell Computers: “This is not about campaigns or initiatives,” said Richard Binhammer, senior manager, outreach communications and executive initiatives, social media and community, Dell. “It’s about adopting social media as a way to do better business.” Binhammer was quoted this week in Geoff Livingston’s blog spotlighting Dell’s social media efforts.

Livingston lauds Dell’s early efforts (in the bygone days of 2006 and 2007) as an early and enthusiastic adopter of social media as a customer service tool.

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.

MediaTech Law

By MIRSKY & COMPANY, PLLC

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

Fair Use and Mashups

Facebook Trademarks “FACE” – HOW?