Accepting Guest Blog Posts

I have accepted a position that will not allow me to write in 2016. However, I want to continue to provide information on cyber, intellectual property (IP), social media, security, privacy, and technology law and policy to you all.  So…. I am accepting  submissions from guest bloggers!

Please send me your best cyber, IP and tech law and policy posts. Many of this blog’s followers are entrepreneurs, technophiles, tech novices, bloggers, social media user and those intrigued by tech, so please cater your posts to that audience. Please send posts to thedigitalcounselor@gmail.com. I will notify you if your post is selected.

Thank you for your submission, in advance, and more importantly, THANK YOU FOR READING!

I hope the readers find previous posts and any information others are able to provide in my absence helpful! And I look forward to returning in 2017!!

Quick Tip: Don’t Make False DMCA Claims

Automattic Inc. v. Steiner, 2014 U.S. Dist. LEXIS 182295 (N.D. Cal. Oct. 6, 2014) is the first time a party which received a DMCA takedown notice with material misrepresentations has been awarded money damages.

What is DMCA?

DMCA is the Digital Millennium Copyright Act, limits the liability of the providers of online services for copyright infringement by their users but created a mechanism for those whose copyrighted works have been infringed to file a complaint to have the content removed. If they do not take appropriate action they may find themselves liable.   It is easy to file a DMCA claim and every site providing online services must have a DMCA policy to remove content that infringes the copyrights of individuals. Many sites like Facebook, Twitter, & WordPress even have forms that you can fill out to stream line the process and make sure you’re providing the information required under the law.

What happened in the case?

Automattic, the owner of WordPress.com and a major developer of the WordPress software, and blogger Oliver Hotham, Plaintiffs, sued the Defendant, Straight Pride UK, for using the notice-and-takedown provision of the Digital Millennium Copyright Act (“DMCA”) to stifle criticism. Automattic alleged that the Defendant abused the provision and are seeking damages under 17 U.S.C. § 512(f) for misrepresentation. The Court agreed.

“[T]he Court finds that Defendant knowingly misrepresented that Hotham violated his copyright because Defendant could not have reasonably believed that the Press Release he sent to Hotham was protected under copyright. Moreover, there can be no dispute that Defendant knew, and indeed, specifically intended, that the takedown notice would result in the disabling of Hotham’s article[,]” Magistrate judge Joseph Spero wrote in the opinion.

Although the court awarded damages for the costs of the suit and for “lost work and time” spent responding to a fraudulent takedown notice for copyright infringement. The Northern District denied monetary relief for Plaintiffs’ alleged reputational harm, Hotham’s alleged emotional distress, and Hotham’s alleged chilled speech.

What does that mean?

Do not file DMCA claims lightly and be prepared for a fight. People do not often fight these cases so vigorously but is does happen. Make sure you have a valid claim for copyright infringement. Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, Web sites, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. Unauthorized reproductions, derivatives and distribution are illegal unless they fall under the fair use exemption. Have a good understanding of your rights and theirs before filing.

Hotham’s original blog post is now available on several other WordPress-hosted sites, including here and here.  And his account of the tale is here.

Enforcing Trademarks on Social Media

As a trademark owner you have an obligation to “police” your trademark. What does that mean? You are responsible for finding and addressing infringement of your trademark rights. (Copyright holders have a similar obligation.)  A major part of policing or enforcing those rights is monitoring and addressing violations on social media.

Platform Content Removal Policies

Each social media platform has their own policies for removal of content whether trademarks or copyrighted work.  It is important to determine the appropriate method and provide all the necessary information to secure timely removal. Social media content changes very quickly so to be effective at protecting brand perception you must be swift and efficient about requesting content removal.

Use this infographic I created as a quick reference guide for Takedown Policy Requirements On Top Social Media Sites.

What Do I Take Down?

Not only is knowing the policy requirements important you need to determine when a post/content warrants removal. This is a strategic decision your company should make while engaging all necessary stakeholders including but not limited to management, legal and marketing/PR. Below are a few things to consider when determining when to take down a post:

  1. As an organization develop a policy for what types of brand use or content use are important to the company. Use that as a guide to addressing infringement.
  2. Embrace positive uses of your mark. There are positive uses that can promote your brand. Coca Cola illustrates a great example of embracing what could have been trademark infringement when two fans created a Facebook page for them.  Coca cola just dedicated a few members of their team to monitor the content.
  3. Know the social media platform rules and policies on content removal. See the infographic for some help but visit the policies on the platform.
  4. Figure out who is likely to comply with your request for content removal. It is usually easier to make a request through the platform. It can be hard to determine who posted content and their contact information. Additionally, it is unlikely that they will cooperate. Remember that the social media content provider is not likely liable for anything unless you can prove a partnership or joint ownership and control over the account.
  5. Reviews & other commentary about your brand, positive or negative, are allowed. Most social media sites will not take down content of this nature and this can cause backlash that will outweigh the potential benefit. This is a great opportunity to engage consumers and either address concerns or reinforce positive perceptions.
  6. Consider the public relations implications of requesting removal. Will attempting to remove the content cause backlash that will be more detrimental? There have been a number of instances of brands garnering greater negative media attention for trying to take something down justified or not. If infringer’s presence is significant enough to cause concern consider joining the conversation.
  7. Include all the requested information. Incomplete requests for content removal may cause unnecessary delays.
  8. Include trademark registration numbers for all jurisdictions. Some social media platforms will only block content in the applicable jurisdiction or country if you only provide proof of one registration. Provide all registrations so the social media platform is aware of the extent of your protection.
  9. List exactly where infringements are located on the site. Platforms are not required to search for infringements.
  10. Submit evidence of current use. This information only serves to strengthen your claim and is as easy as providing the url to your website.

Remember your objective when policing your mark is to make sure consumers will not be confused. Your trademark is your calling card, do not let anyone use it in a way that dilutes your reputation or capitalizes on the goodwill or value created in that trademark. If you do not have in-house legal counsel consult with an attorney to develop a comprehensive plan to address trademark infringement.

A Victory for Twitter Users!

We all enjoy when our tweets become popular and travel the globe through retweets. Have you ever wondered what happens to your ownership rights after the tweet is retweeted. Does it now belong to the retweeter? Do you still have a protectable interest? Is it now public?

Well you now have an answer!

Daniel Morel, a Haitian-born photojournalist, was in Port-au-Prince when the big earthquake occurred in 2010. He was one of very few journalists on the ground and was able to take some really powerful pictures of the devastation.  He uploaded and disseminated his photos using his Twitter account and a third-party app called Twitpic. The Twitpic terms of service provide that owners of images retain copyright in them. Twitter’s, like Twitpic’s, terms of service allow users to “retain your rights to any content you… post on or through the services.” Although there were no copyright notices on the images, Morel’s twitter page did include the attributions “Morel” and “by photo morel” next to the images, as well as the copyright notice (c)2010 Twitpic, Inc. All Rights Reserved.”

A Twitter user in neighboring Dominican Republic re-tweeted them and they spread over the internet, without any credit being given to Morel, though the Twitter trail could have been followed if anyone was really interested in seeing who originally posted the pictures. Getty then disseminated them to news outlets including the Washington Post without any accreditation or attempt to find the photographer responsible for the breathtaking images.  Agence France-Presse also downloaded the images, but credited them to its own stringer and sold them to third parties (including Getty Images). AFP, with a certain amount of chutzpah, sought a declaration that it had not infringed Morel’s copyright; he counterclaimed: Agence France Presse v Morel, US Dist LEXIS 5636.

Morel later got credit for his work, winning two World Press Photo awards. The district court in Manhattan found for Morel with respect to his claims of direct infringement. AFP could not establish that it was a third-party beneficiary of Morel’s agreement with Twitpic or that a sub-licence was somehow granted through retweeting, given the clarity of the Twitpic terms of service, which stated that retransmission of images merely granted a licence to use someone else’s images on Twitpic.com or an affiliated site. The judge did think, however, that damages should be limited to a figure based on the number of works infringed, not the number of infringements (which would be much larger, given the number of retweets involved). Issues related to Getty’s knowledge and intent, wilful infringement by AFP and Getty, and contributory or vicarious liability were left for another day, as they turned on questions of fact which could not be decided summarily.

The copyright law governing this case is pretty clear. The person who takes the photo has the copyright and anyone making a commercial use, even a derivative use, of the image is liable for copyright infringement. Any other decision would have severely cripple copyrights and discouraged the use of social media to disseminate work. This curtailment would severely limit innovation because artists and innovators would not have this means of advertising and might slow innovation because of renewed barriers to entry and access. Merely Tweeting your picture does not allow others to use it for commercial gain. The terms of service on sites like Facebook and Twitter allow for their use, they do not provide an opportunity for third parties to capitalize on the works of users.

I would still advise photographers, poets, writers, and anyone posting material they want protected, to include a copyright notice in their bios and each individual photograph or work, if possible. 

Copyright Owners Beware!! Are You Accurately Protecting Your Copyrights??

Personal Keepsakes, Inc. v. PersonalizationMall, No. 11 C 5177, Slip Op. (N.D. Ill. May 24, 2012) (Kendall, J.) is a great cautionary tale for small businesses and other copyright owners. Make sure you sufficiently protect your investment. Make sure your copyright notices are clear and that you are smart about what names you use when copyrighting your works. The details matter.

In this case, Judge Kendall denied plaintiff Personal Keepsakes’ (“PKI”) motion to reconsider in this copyright and Digital Millenium Copyright Act (“DMCA”) case.  The Court previously held that, a copyright notice on a separate page of a website from the allegedly copied work does not constitute the copyright management information (“CMI”) required by the DMCA.  Which means

The DMCA seeks to hamper copyright infringement in the digital age by protecting “copyright management information” (CMI) in various ways.17 U.S.C. § 1202. Specifically, the DMCA forbids distributing false CMI, removing or altering CMI, or distributing works knowing the CMI has been removed or altered. See id. CMI, is defined as the information about the copyright that is “conveyed in connection with copies” of the work, including the title of the work, the author of the work, the name of the copyright owner, and identifying numbers or symbols referring to copyright information. See17 U.S.C. § 1202(c).

PKI’s DMCA claim boils down two allegations: (1) that Defendants removed the CMI conveyed with the poems when it copied the poems, and (2) Defendants provided false CMI on the pages selling the infringing products and in their general website terms and conditions, which make various statements about copyrights on the website.

However all relevant CMI was not on the page where the poems and other works at issue were. The company name used to register the marks was PKI, however, the site only displays poetrygift.com. “Similarly, the titles cannot be CMI because the copyright registrations do not list the titles of the works as they appear on PKI’s website, but rather refers to them as ‘Personal Keepsakes VI’ and ‘Personal Keepsakes X.”‘ Pers. Keepsakes, Inc. v. Personalizationmall.com, Inc., 11 C 5177, 2012 WL 414803 (N.D. Ill. Feb. 8, 2012).  A general “Web Site and Original Verses—© (1991–2012)” on each page of PKI’s websitedid not make it clear that the poems were the “original verses” mentioned.

PKI also pointed to their terms of service which stated, “Our Site and all its content, including but not limited to its text, photographs including those of product, graphics, logos button icons, images, audio clips, and software, is owned by or licensed to ‘Abernook, LLC and may be protected by United States and international patent, trademark, and copyright laws and other intellectual property laws.” They claimed this general notice covered the entire site.

Put simply, these website terms are not close to the poem; rather, per PKI’s allegations, they appear on another page on the website. Some courts have held, persuasively, that a defendant must remove the CMI from the “body” or the “area around” the work to violate DMCA. See Schiffer Publishing, Ltd. v. Chronicle Books, LLC, No. 03 C 4962, 2004 WL 2583817, at *4, 14 (E.D.Pa. Nov.12, 2004) (finding no DMCA violation where a book contained 118 copyrighted photos with no CMI near them and the defendant had a general copyright notice on the whole book). That rule is consistent with the text of the statute, which requires the CMI to be “conveyed” with the copyrighted work. See 17U.S.C. § 1202(c).

This case teaches important lessons to copyright owners.

  1. Be consistent. The name used when you register copyrighted material should be the name used when distributing or using copyrights material.under. The same is true for all CMI.
  2. Be clear. Make sure your website makes clear the owner of copyrighted work and that your CMI is clearly linked to each work.
  3. CMI is extremely important. Items considered CMI should be carefully chosen and used are registered to protect works.
  4. CMI should be on the same page as each work. As a matter of law, if a general copyright notice appears on an entirely different webpage than the work at issue, then that CMI is not “conveyed” with the work and no claim will lie under the DMCA.  One copyright notice on an entire website is not sufficient!!

Do not lose rights to your copyrighted works because of small preventable errors. Consult a copyright attorney if you are unsure if your works are accurately and sufficiently protected. Remember the details matter, be strategic!