Transcript Copyright Litigation and Strategies

10 Steps to Reduce Social Media Risks
Richard B. Biagi
Daniel J. Schaeffer
Jeremy M. Roe
NEAL & MCDEVITT, LLC
Agenda
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What Is Social Media?
What Can You Do To Ensure Your Materials Are
Protected?
Policies and Best Practices
What is Social Media?
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There are various definitions of “social media”:
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“Media designed to be disseminated through social
interaction, created using highly accessible and scalable
publishing techniques”
“Media that is created to be shared freely”
“Works of user-created video, audio, text or multimedia that
are published and shared in a social environment, such as a
blog, wiki or video hosting site”
“Primarily Internet- and mobile-based tools for sharing and
discussing information among human beings”
What is Social Media?
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There are several types of social media:
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Social networking websites: Facebook, Twitter, MySpace
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Professional networking websites: LinkedIn
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Blogging sites: Blogger, WordPress
What is Social Media?
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Types of social media, continued:
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Video and picture content sharing sites:
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YouTube, Picasa, Flickr
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News and Review sites: Digg, Reddit, Yelp*
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User-editable information: Wikipedia
#10: Unique Issues Related to Dynamic Information
Dynamic Information
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Wikipedia is a unique information resource, in that
content may be edited at any time by anyone who
signs up to do so.
Possible problems: Inaccurate information, deletion of
accurate information.
“Flagged revisions” – for entries about living people,
Wikipedia is testing a system requiring approval for
any changes. Not clear if this will apply for corporate
entries.
Wikipedia keeps a record of all changes, meaning the
person (or at least the IP address) making changes can
be identified
Dynamic Information
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Wikipedia’s standard is verifiability, not accuracy; if
there is bad information in an offline source, it may
get picked up and repeated in Wikipedia.
#9: Understand the legal distinction between
defamation/disparagement and fair use/free speech
(gripe sites)
Defamation/Disparagement
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Gripe sites
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Ihatedell.net
Deltareallysucks.com
Review sites
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Epinions.com
Yelp.com
Blogs
Twitter
Facebook Pages
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A Florida HS student was suspended after settnig up a FB page
to criticize her teacher; her lawsuit against the
principal/school survived a motion to dismiss because she
was exercising First Amendment rights
Defamation/Disparagement – Gripe Sites
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Trademark issues with domain names are
overshadowed by First Amendment and fair use
analysis
False claims can be addressed
Defamation/Disparagement – Review Sites
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“Starting in 2007, the plastic surgeon in Maui, Hawaii, who has
practiced medicine for 28 years, began asking his new and
existing patients to sign a legal contract that precludes them
from posting online ratings (either rants or raves) about the
treatment they receive at his office. Any statements they do
post about his services become his property under copyright
law…. In return for their discretion, he grants each patient
additional privacy protection beyond that mandated by HIPAA or
state confidentiality laws.”
-- “Do Online Ratings Matter?”, Physicians Practice,
http://www.physicianspractice.com/display/article/1462168/1590040,
accessed 3/17/11
Defamation/Disparagement – Section 230
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Communications Decency Act (CDA) Section 230
immunizes providers from liability for information
posted by users. (47 U.S.C. 230(c)(1))
RipoffReport.com – they do not create the reports, so
they are completely immune from liability.
47 U.S.C. 230(c)(2) immunizes a provider from liability
for implementing filtering or remediation systems.
Defamation
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Streisand Effect – “a primarily online phenomenon in
which an attempt to hide or remove a piece of
information has the unintended consequence of
publicizing the information more widely”
-- Wikipedia, http://en.wikipedia.org/wiki/Streisand_effect, accessed 3/17/11
#8: Know what you are agreeing to with various social
media providers
Terms and Conditions
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Each social media site has its own terms and
conditions, with different approaches to IP, privacy,
procedures.
Example: Facebook.
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IP: User grants FB a “non-exclusive, transferable, sublicensable, royalty-free, worldwide license to use” any content
posted. The license ends when user deletes the content…
unless it has been shared with others who do not delete it.
Privacy: FB’s privacy policies change often, and each change is
monitored carefully in the media. Generally, FB tracks, uses,
and may disclose a wide variety of information and it is up to
the user to manage privacy settings.
Terms and Conditions
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Compare to LinkedIn:
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IP: User grants LinkedIn a “non-exclusive, irrevocable,
worldwide, perpetual, unlimited assignable, sublicenseable,
fully paid up and royalty-free right” to do pretty much
anything they want to with any content.
Privacy: LinkedIn collects more limited information
from/about its users, and explicitly says it does not “sell, rent,
or otherwise provide your [PII] to any third parties for
marketing purposes.”
Terms and Conditions
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Compare to Twitter:
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IP: User grants Twitter a “worldwide, non-exclusive, royaltyfree license” to do pretty much anything they want to with
tweets, including repackaging it for other purposes/media.
“But what’s yours is yours – you own your content.” (E.g.,
tweetshirt/me – make t-shirts from your tweets.) It’s not
certain whether tweets are subject to copyright anyway.
Privacy: Twitter is capable of collecting location information,
but it’s a user-selected option (default: off). Twitter users can
also elect to keep their tweets “protected” – i.e., not
displayed to anyone not expressly granted access by the user.
Key “tip” in Twitters T’s and C’s: “What you say on Twitter
may be viewed all around the world instantly.”
#7: Be aware of the potential securities regulatory
risks in disclosing information
Securities Issues
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The disclosure of securities-related information in
social media carries significant risks, both for an
association and its members.
Regulation FD mandates that publicly traded
companies must disclose “material information” to all
investors at the same time.
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What is “material information”? Earnings, mergers, joint
ventures, new products, customer issues, securities issues,
audit notifications, and bankruptcies.
Regulation FD requires full and fair disclosure to the
public at large.
Securities Issues
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Considerations for social media—does a posting via
the company’s Twitter or Facebook account qualify as
a broad, public disclosure?
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If only “followers” or “fans” of those sites have access to
those announcements, the company could face SEC
disciplinary action.
Companies should consider using social media as an
additional method of information distribution, but not
in place of traditional press releases and the like.
Social media posts should also direct traffic back to
the official announcement.
Securities Issues
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Another aspect is securities implications for online postings.
Example: The CEO of Whole Foods was taken to task for a series
of message board postings he had made under a pseudonym,
talking down his company’s competitor, Wild Oats.
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When Whole Foods later acquired Wild Oats, the SEC investigated to
determine whether his postings had been an illegal attempt to affect
Wild Oats’s stock price.
While the SEC ultimately took no action against him or Whole Foods,
the incident demonstrates how careful companies and their
executives and employees must be.
#6: Understand the employment implications related
to the use of social media
Employment Law Issues
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Potential candidates for positions inevitably have a presence in
social media (Facebook page, LinkedIn profile).
According to a 2009 survey, 45% of employers screen social
media for potential applicants.
Reviewing this information prior to making a hiring decision
could open a company up to liability, as those profiles may
contain protected class information (race, religion, sexual
orientation, ethnicity, age, family status, disabilities, veteran
status).
Firms may wish to avoid reviewing any social media information
prior to making a hiring decision.
Employment Law Issues
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Alternatively, firms could consider only reviewing
professional websites such as LinkedIn, or only
reviewing finalists for a position.
The company should document its pre-hiring review
process via its policies, and maintain documentation
of all on-line information that was reviewed.
Employment Law Issues
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Social media also plays a role in termination decisions.
Employee posts on Facebook or YouTube could raise
grounds for termination.
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There are numerous cases of employees being fired for
Facebook statements about their previous employer.
Employment Law Issues
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Employees could file suit for discrimination, invasion
of privacy
Harassment could also occur via social media.
Example: An interior designer’s employer
impersonated her by authoring Tweets and Posts on
her Twitter and Facebook accounts while she was ill.
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The employee has filed claims for false endorsement, invasion
of privacy, and violation of her right of publicity.
Employers should designate “official” employer
accounts on Facebook and Twitter and clearly define
an employee’s personal account, even if it involves
the business.
#5: Be familiar with advertising and endorsement
rules for social media
Advertising and Endorsement Issues
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Issues relate to advertising claims made by
advertisers in social media.
Bloggers with material connections to advertisers
have disclosure obligations.
Running promotions in social media requires
adherence to policies.
Advertiser’s Claims in Social Media
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An advertiser’s own claims in social media are subject to the
same federal and state regulations as traditional forms of
advertising.
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Claim substantiation remains a key requirement to avoiding false
advertising liability.
The FTC has recently increased enforcement efforts against
false and misleading “green” claims, called “greenwashing.”
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For example, in June 2009, the FTC challenged the use of
“biodegradable” claims by three companies, including K-Mart.
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Misleading “green” trademarks are also subject to scrutiny by the U.S.
Patent and Trademark Office.
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Another example: eBay launched a green hub for promoting and
selling sustainable products.
FTC Blogger Guidelines
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The Federal Trade Commission has adopted revisions to its
Guides Concerning the Use of Enforcements and Testimonials
in Advertising.
A new provision applies to bloggers who have a “material
connection” to an advertiser (via financial ties, freebies, etc.).
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Statement must be an “endorsement,” that the opinion
expressed is independent of the sponsoring advertiser
Statement must be “sponsored”
An advertiser must advise the blogger that it must disclose
the material connection, and it must monitor the conduct of
its bloggers.
Bloggers and brand owners can be filed up to $11,000 for
failing to disclose relationships.
FTC Blogger Guidelines
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The blogger must “clearly and conspicuously disclose” the material
connection.
Endorsements guidelines also require that representations not be
deceptive, be generally achievable, and be substantiated.
The Guidelines do not apply to consumers that buy a product
themselves and write about their experience on their blog.
The Guides are available on the FTC’s website:
http://www.ftc.gov/os/2009/10/091005endorsementguidesfnnotic
e.pdf
FTC Blogger Guidelines
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In 2010, the FTC investigated Ann Taylor Loft’s
blogger launch party for a new LOFT clothing line.
The company invited bloggers to the launch and
promised a free gift, while also entering bloggers
into a gift card draw.
The FTC was concerned that bloggers would not
disclose the gifts.
Ultimately no action was taken by the FTC.
FTC Blogger Guidelines
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In 2011, the FTC reached a settlement with Legacy
Learning, concerning allegations that it used
affiliates to promote its instructional courses while
not requiring affiliates to disclose their affiliation
with Legacy.
Reviewers also failed to disclose their material
connection (some included fine-print disclaimers).
Per the settlement, Legacy agreed to pay $25,000,
monitor and submit monthly reports to the FTC,
and ensure that affiliates disclose their commission
status.
FTC Blogger Guidelines
Promotions Considerations
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Social media providers may have their own promotions
and contest rules and regulations.
Review their terms and conditions closely.
Failure to adhere to those policies could result in action
being taken against the company’s presence on that site
(i.e. suspension or termination of account).
For example, Facebook has rigorous standards for
running a promotion (contest, sweepstakes, or
competition) on a Fan Page.
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While written permission from Facebook is no longer required,
contests must still be administered via a third-party app on the
Facebook platform.
It is also a best practice to disclaim sponsorship or endorsement
from the social media provider.
Promotions Considerations
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Social media providers may have their own promotions
and contest rules and regulations.
Review their terms and conditions closely.
Failure to adhere to those policies could result in action
being taken against the company’s presence on that site
(i.e. suspension or termination of account).
On-line sweepstakes rules vary by state.
Promotions Considerations
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A new consideration is the use of flash-deal websites
such as Groupon.
A class-action was recently filed against Groupon for
allegedly misleading customers by having expiration
dates on their gift certificates.
Federal and state law prohibit the sale and issuance of
gift certificates with expiration dates.
#4: Utilize takedown procedures for misuse of
copyright protected materials
Takedown procedures for misuse of copyright
protected works
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Protecting copyrighted works: use of the Digital Millennium
Copyright Act (DMCA) notice and takedown procedure
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Safe harbor qualifications for online service providers
DMCA case examples
Protecting trademarks: takedown measures for unauthorized
use of trademarks on the internet
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Trademark case examples
Takedown procedures for misuse of copyright
protected works
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The DMCA is a statutory provision in federal copyright law
that provides a legal mechanism for the removal of infringing
materials from a website.
It applies only to infringing uses of copyright protected
works, not other forms of intellectual property such as
trademarks or trade secrets.
Social media providers utilize somewhat similar procedures
for trademark misuse, but there is no statutory requirement.
Notice and takedown procedure
 Under the DMCA, if a copyright owner believes in good faith
that material on a website infringes its rights in a copyrightprotected work, it can send a written “Notice and Takedown”
request to the designated agent for the “online service
provider” (OSP) to request that the material be removed.
 The definition of "online service provider" is quite broad, and
includes anyone who hosts a website where materials can be
posted or stored at a user's direction (for example, email providers,
entertainment providers, and e-shopping sites).
 Social media providers qualify as OSPs, but an association may also
be an OSP if its website allows user-generated content.
 The notice must include a variety of technical matters to be
properly received and acted upon by the OSP.
Notice and takedown procedure- example
 The Illinois Association of Trauma Surgeons (“IATS”) hosts
its annual meeting in Chicago and hires David Grant as its
official photographer for the event.
 IATS signs a work-for-hire agreement with Grant that vests
ownership of Grant’s photos with IATS.
 IATS posts certain images on its website and via its
electronic newsletter.
Notice and takedown procedure- example
 Tim Evans writes a personal blog on developments in
general surgery, and uploads one of David Grant’s images
to his Blogger account (Blogger is owned by Google).
 IATS becomes aware of Evans’ unauthorized use of the
photo and confirms that Evans does not have permission
to use the materials.
 IATS itself, or through its in-house counsel or outside
counsel, should prepare a notice and takedown request to
have the image deleted from Evans’ account.
Notice and takedown procedure- example
 IATS can file a complaint in multiple ways.
 IATS could attempt to send a cease and desist to Evans.
 IATS could instead use Google’s online web form for
copyright complaints:
Notice and takedown procedure- example
Notice and takedown procedure- example
Notice and takedown procedure- example
 Alternatively, IATS could locate the “designated agent” for
Google in order to send a formal notice and takedown
letter.
 A comprehensive list of online service provider’s
designated agents is located at
www.copyright.gov/onlinesp
 IATS would search for Google and click on its designated
agent form.
Notice and takedown procedure- example
Notice and takedown procedure- example
Notice and takedown procedure- example
 Using the info on the designated agent form, IATS or its agent or
counsel prepares a takedown letter to Google’s designated agent.
 Major components of the takedown letter:
 Copyright owner’s information, including name, address, email.
 Description of the infringing work(s), including specific URL.
 Description of the copyright-protected work, including registration number
(if available), and location of owner’s use online, if any.
 Statement that the complaining party has a good faith belief that use of the
material in the manner complained of is not authorized by the copyright
owner, its agent, or the law.
 Statement that the information in the notification is accurate, and under
penalty of perjury, that the complaining party is authorized to act on behalf
of the owner of an exclusive right that is allegedly infringed.
 A physical or electronic signature from a person authorized to act on behalf
of the copyright owner.
Notice and takedown procedure- example
 Google’s agent receives the takedown letter, determines it was
properly sent, and removes the infringing photo from Evans’ blog.
 Google then notifies Evans that it has removed the image.
 Evans can then send a counter-notice to Google if he has reason to
believe the photo was removed improperly.
 A counter-notice must include similar technical requirements as the
takedown letter, while also describing its basis for its good faith belief that
the material was removed or disabled as a result of mistake or
misidentification of the material to be removed or disabled.
 A party submitting a counter-notice also consents to the jurisdiction of
Federal District Court for the judicial district in which the address is located,
or if the subscriber's address is outside of the United States, for any judicial
district in which the service provider may be found, and that the subscriber
will accept service of process from the person who submitted the takedown
notification or an agent of such person.
Notice and takedown procedure- example
 The final steps regarding the image depend on whether Evans
submits a counter-notice to Google.
 If Evans does not send any counter-notice, the materials
remained removed.
 If Evans sends a valid counter-notice with some evidence that
the photo was not in fact owned by David or that his use was a
fair use, Google must alert IATS.
 Google notifies IATS of the counter-notice and then waits at least 10
business days to determine if IATS will file a lawsuit against Evans
for infringement.
 If IATS files a lawsuit, Google must comply with the outcome.
 If IATS files no lawsuit within 14 business days, Google must
repost the image to Evans’ account.
Key Points
 Unlike filing a federal lawsuit, no copyright registration is
needed to send takedown letter.
 If the takedown letter is properly sent and the claim is
valid, the OSP must act expeditiously to remove the
infringing content to qualify for the safe harbor provision.
 A valid counter notice based on defenses such as fair use
or no valid copyright could open the complaining party to
potential damages in a lawsuit.
Limitations
 There are substantial criticisms to the DMCA as it is currently
utilized.
 Materials are taken down prior to the subscriber being able to
make any formal response. It affirmatively requires the
subscriber to file a counter-notice for materials to be re-posted.
 Anonymous posters are somewhat immune to takedown
procedure—while their initial infringing posts may be deleted,
they can create new dummy accounts and repost infringing
content.
 Thus, content owners must continually monitor for repeat
offenders.
 There is also the potential for abuse by copyright owners, who
may file notifications with no good faith basis, or who re-file
against a user who filed a valid counter-notice.
Safe Harbor Provision for OSPs
 Another part of the DMCA creates a "safe harbor" for online
service providers whose users posted materials that were
accused of copyright infringement.
 As long as the OSP does not receive a direct financial benefit
from the infringement and does not have actual knowledge of
the infringement, it can avoid liability by having specific
procedures in place to address infringement claims.
 Today, the most popular social media providers such as YouTube,
Facebook, and Twitter have evolving IP policies that include
compliance with the safe harbor requirements.
Example: YouTube
Safe Harbor Provision for OSPs
 If an association operates or hosts a website where users can
post and upload content and other materials, it should register a
designated agent with the U.S. Copyright Office for the receipt
of DMCA notices.
 The form is available at the website www.copyright.gov/onlinesp/,
and the filing fee is $85.
 Listing a designated agent with the Copyright Office is just one of
the qualifications for the safe harbor, however.
 The OSP also must publicize and enforce its takedown policies,
via its Terms and Conditions, Legal Policies, and Privacy Policies.
 Also, bear in mind that the safe harbor provision does not
preclude potential infringement liability for the OSP’s own acts
of alleged infringement, should they arise.
Recent Cases Involving the DMCA
Viacom v. Google/YouTube, 718 F. Supp. 2d 514 (S.D.N.Y. 2010).
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Viacom/Comedy Central sent several DMCA takedown notices to
YouTube (and its parent Google) requesting that clips of
copyrighted programming from The Daily Show (and other Viacom
programs from Paramount and DreamWorks) be removed from its
website based on Viacom’s ownership of the rights in those clips.
While YouTube complied with the specific DMCA takedown
requests, it did not remove “tens of thousands” of additional
infringing clips, according to Viacom.
Viacom sued YouTube for copyright infringement, seeking damages
in excess of $1 billion.
Viacom claimed that YouTube had actual knowledge of massive
infringement and was responsible for removing infringing content.
Recent Cases Involving the DMCA
Viacom v. Google/YouTube, 07-Civ-3582 (S.D.N.Y. June 24, 2010).
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YouTube moved for summary judgment, stating that it qualified for
the safe harbor because it removed the specific clips.
The court agreed with YouTube, holding that YouTube qualified for
the safe harbor provision of the DMCA.
The court noted that YouTube responded quickly to specific DMCA
takedown notices and was not obligated to make an affirmative
determination of infringement. Instead, that was the copyright
holder’s responsibility.
Mere knowledge of prevalence of infringement is not enough.
Recent Cases Involving the DMCA
Lenz v. Universal Music Group, 572 F. Supp. 2d 1150 (N.D. Cal. 2008).
 In 2007, Lenz, posted a 29-second home video of her toddler-age son dancing
to the Prince song "Let's Go Crazy" and posted on YouTube.
 Universal Music Group, copyright owner for the song, sent a takedown notice
to YouTube to remove the video. This time, YouTube complied.
 Lenz sent a counter-notice to YouTube, stating that her video was within the
scope of fair use.
 YouTube reposted the video after UMG failed to file suit after 14 days.
 Lenz sued UMG for misrepresentation to recover her legal costs, claiming the
music company had acted in bad faith by ordering removal of a video that
represented fair use of the song.
 In August 2008, U.S. District Court held that copyright holders cannot order a
deletion of an online file without determining whether that posting reflected
"fair use" of the copyrighted material.
 The case remains pending.
DMCA Case Example
Facebook Fails to Repost Materials
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Overture Films, producers of an upcoming vampire film Let the
Right One In, issued a takedown notice based on an unofficial fan
page for the movie in September 2010.
Facebook removed the materials, and the fan group filed a counternotice.
While Overture Films never filed suit against the group, Facebook
did not repost the materials in a timely fashion. The DMCA merely
states that the OSP may replace the materials, not that it is
required to do so.
Contrast this with the OSP’s obligations to act “expeditiously” to
delete materials after receipt of a valid takedown notice.
DMCA Case Example
DMCA Case Example
DMCA Case Example
DMCA Case Example
Design Furnishings Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. 2010)
 Zen Path, a furniture manufacturer, sent sixty-three (63) DMCA takedown
notices to eBay, regarding Design Furnishings, Inc.’s (“DFI”) use of certain
photographs and text on the website.
 The takedown notices were sent in response to DFI’s online sales of outdoor
wicker patio furniture, which Zen Path argued infringed its own furniture
design. DFI refused to stop selling the furniture.
 eBay promptly responded to the DMCA notices and took down DFI’s posts.
 This action resulted in negative feedback on DFI’s account and lost sales, as well
as potential harm to future business.
 Design Furnishings, Inc. (“DFI”) sought an injunction against Zen Path LLC to
stop them from filing additional DMCA takedown notices.
 DFI argued that eBay could suspend or terminate its account in the future if
Zen Path could continue filing notices.
DMCA Case Example
Design Furnishings Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. 2010)
 DFI argued that Zen Path acted in bad faith by sending the takedown notices to
eBay, because Zen Path did not own a copyright registration and did not have a
reasonable basis for believe that it had copyright protectable works.
 Under the DMCA, a party that “knowingly materially misrepresents” that
material or activity is infringing shall be liable damages incurred by the alleged
infringer who is injured by such misrepresentation, as the result of the service
provider removing or disabling access to the material or activity claimed to be
infringing.”
 Courts have held that under this standard mistake is not enough, instead
there must be a demonstration of actual knowledge when asserting a
misrepresentation.
DMCA Case Example
Design Furnishings Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. 2010)
 The court found that Zen Path’s furniture would be unlikely to obtain
copyright protection, because of the industrial design of the furniture.
 The court held that “a purely utilitarian article–such as bedroom furniture–
receives no protection.”
 Because Zen Path’s furniture was utilitarian, it was, in fact, not
registrable. Thus, Zen Path had no standing to assert claims of
copyright infringement against DFI.
 Because Zen Path knew it had a pending registration for an
unregistrable work, the court found that DFI was likely to succeed on its
DMCA bad faith claim.
 The court granted injunctive relief to DFI, precluding Zen Path from
filing any additional DMCA notices with eBay based on the furniture
design.
Copyright Considerations
 Any company that operates a website where users can
contribute or upload content should promptly register a
designated agent with the Copyright Office, and should also
develop and implement a plan to respond to any takedown
notifications that agent receives. Also consider repeat offender
penalties.
 Without a designated agent and appropriate takedown
procedures in place, an OSP is vulnerable to claims of copyright
litigation and potential liability.
 Copyright owners must actively monitor and police
unauthorized uses of their works via takedown procedures, and
if necessary, via litigation.
#3: Monitor misuse of trademarks and proactively
register marks on social media websites
Protecting Trademarks
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Remember, the DMCA applies to copyright protected material only,
not trademarks.
Unauthorized use of trademarks online is a hot topic, including
keyword advertising issues, false designations of origin in social
media, and false username accounts on sites such as Facebook and
Twitter.
There is no statutory provision in the Lanham Act (the federal
trademark act) at this time.
The standard procedures are infringement and contributory
infringement, as well as unfair competition, such as false
designation of origin.
OSPs may voluntarily provide mirror procedures for trademark
abuses, but practices differ greatly.
Enforcing your trademark rights
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In order to have an actionable claim against someone
for use of your trademark, such use must be in
interstate commerce
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Twitter example

Fair use or nominative fair use is a defense to a claim of
trademark infringement

Marks need not be registered in order to sue for
infringement or unfair competition

Most providers have some type of policy in place to
protect trademark owners and/or provide for a
mechanism to address misuse of marks
GoDaddy
eBay
Facebook
Twitter
Recent Trademark Case
Tiffany, Inc. v. eBay, Inc., 600 F. 3d 93 (2d Cir. 2010)
 Tiffany brought claims of direct and contributory
trademark infringement, direct and contributory dilution,
unfair competition, and false advertising against eBay.
 Tiffany asserted that eBay facilitated and allowed
counterfeit Tiffany items—specifically silver jewelry—to be
sold on its website bearing the famous TIFFANY marks.
 eBay’s defense was that it had taken affirmative steps to
remove counterfeit products, suspended seller accounts,
invested more than $20 million and nearly 4,000
employees in trust and safety issues.
 eBay also implemented a “fraud engine” and Verified
Rights Owner programs.
Tiffany v. eBay
 The district court ruled in favor of eBay on each of Tiffany’s
claims, and the Second Circuit affirmed.
 It held that eBay was not liable for direct or contributory
infringement or dilution, based on its proactive monitoring
and VeRO programs.
 Contributory infringement required specific knowledge,
not merely general knowledge that some listings may be
counterfeit
 The court did remand on the issue of whether
advertisements were false by implication and misleading
to consumers.
Tiffany v. eBay
 Implications for brand owners:
 It is the mark owner’s responsibility to monitor
counterfeit usage and potential infringement based on
its superior ability and cost advantages
 The mark owner ultimately bears the burden of
monitoring unauthorized use of its IP and prosecuting
would-be infringers
 The mark owner must be vigilant and proactive in
finding would-be counterfeit sellers and enforcing rights
via litigation or using protections such as eBay’s abuse
reporting system
Fair use of trademarks on social media sites
 Gripe sites
 Protected free speech unless it is false and/or crosses the line
into commercial speech
 Barbra Streisand effect
 Review sites
 Nominative fair use under trademark law protects such use of
trademarks
 News or biographical sites
 Generally projected under the First Amendment
Summary- Trademark
 Associations and their members own valuable trademarks
and should actively police and monitor for potentially
infringing uses in social media, both with regard to
usernames and unauthorized use of trademarks and logos.
 Trademark owners have much less certainty with regard to
takedown measures than copyright owners.
 Associations and their members should proactively seek to
register their marks as usernames on the most popular
social media sites to avoid potential infringement.
 Trademark owners may have little recourse against gripe
sites or review sites that use their marks.
#2: Be aware of the legal ramifications of the potential
discoverability of information on social media sites in
the context of litigation
Discovery of electronically stored information




In litigation, the Federal Rules of Civil Procedure
provide for the discovery of electronically stored
information (“ESI”) that is under the possession,
custody, or control of the responding party.
The Rules also impose a duty to preserve such
information when litigation is reasonably anticipated
(“litigation hold”)
Courts have found social media sites to fall under the
definition of ESI
How do companies control and preserve information
stored on third party social media sites?
ESI on Social Media Sites
 e.g., Blogs, Facebook, Twitter, Wikipedia sites maintained
by the company are all discoverable
 Information about your company posted by an employee
on their personal social media site is also likely
discoverable
 Facebook and other such profiles are discoverable even if
they are set as private
 Guest v. Leis, 255 F.3d 325 (6th Cir. 2001)
 EEOC v. Simply Storage Mgmt., LLC, No. 1:09-cv-1223-WTL-DML
(S.D. Ind. 2010)
 Romano v. Steelcase Inc., 2010 WL 3703242 (N.Y. Sup. Ct. 2010)
 The court ordered disclosure of all public and private information
found on party’s social media site
Tips for dealing with ESI discovery issues
 Have policies and guidelines in place for use of social
media sites by the company and by individual employees
 Make use of software tools to store/archive social media
sites maintained by the company
 Educate your employees on the use of social media when
referencing your business
#1: Develop and implement a
comprehensive social media policy
Developing a social media policy

Creating and enforcing a social media policy is of
utmost importance.
A social media policy may take various forms (a wholly
separate policy, a section of an employee handbook
or confidentiality policy, etc.).



If the policy is separate, it should reference other relevant
policies, such as confidentiality agreements.
The policy should set forth a statement of purpose,
that social media is supported but with certain
conditions and understandings.
Developing a social media policy




Describe all content subject to pre-approval or
forbidden to be shared (financial disclosures,
acquisitions, new product lines).
List appropriate disclaimers
Include contacts in legal department or other
departments (marketing) with any questions
Include provisions regarding repercussions for failure
to comply.
Developing a social media policy

Basic “do’s” and “don’ts”






Don’t impersonate someone else
Don’t make false statements
Don’t disparage your employer or competitors
Don’t mislead consumers
Have all employees read and sign the policy.
Offer training for employees, additional specialized
training for senior management, investor relations,
and communications and marketing personnel that
have specific involvement in social media.
Developing a social media policy





Consider inclusion of enforcement measures.
If you are monitoring employees’ use of social media,
disclose it.
Include reporting violations procedure.
Be flexible, as the use of social media will continue to
evolve.
Any type of policy change to include social media will
grab the attention of employees.
10 Steps to Reduce Social Media Risks
Richard B. Biagi
[email protected]
Daniel J. Schaeffer
[email protected]
Jeremy M. Roe
[email protected]
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