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!!

New gTLDs Causing Trouble for Twitter

Screen Shot 2015-07-15 at 10.07.30 AMYesterday, a website that looked exactly like Bloomberg posted “news” that there was a $31 billion buyout offer for Twitter. Ummm not true! The website, called http://www.bloomberg.market, featuring a new gTLD, was fake. And so was the report. The fake website was a near-identical replica of Bloomberg’s site, and even used Bloomberg reporter Stephen Morris’s byline. OpenOutcrier, a Twitter account that bills itself as a destination for “Real-time stock & option trading headlines, breaking news, rumors and strategy” was the first to post about the report, although Bloomberg employees were quick to point out it was fake.

Most discussions about new gTLDs causing problems for brand owners is preventative such as with the .SUCKS and .PORN domains. This incident is a good example of a new gTLD causing the damage brand owners are trying to prevent in those other cases. As a brand owner you should make sure to not only use these new gTLDs as a tool for branding but remain aware of the release of new gTLDs to proactively register relevant domains and/or monitor for infringement like this. There are a number of free monitoring tools like Google Alerts or Talkwalker that you can use to monitor use of your brand name.  And you can see which new gTLDs have launched and when so you can remain up to date on gTLDs that you should register from a branding perspective and/or from a brand protection perspective.

As a result of this false story, Twitter shares shot up, only to fall back down when Twitter corrected . It’s not clear who was behind the faux story. With all that’s going on with Twitter, including the CEO being replaced by co-founder Jack Dorsey earlier this month, this incident was believable.  This could have caused more damage to company finances, reputation, and consumer trust. Don’t let your brand be next! Fraudsters are very savvy as you can see.

Should You Trademark Your Website?

It is extremely important for companies to protect their intellectual property. Developing a comprehensive intellectual property plan is essential to protecting your investment and protecting your consumers from confusion.  Trademarking your brand names, slogans and company name as well as copyrighting blog content, original imagery, and other original works of authorship are commonly know areas of focus for companies and entrepreneurs.  You want to be in control of your brand, your content and your creations.

Now, according to one federal court, companies can use trademark law to protect the unique look and feel of their websites from imitators. As a result of this ruling, companies should consider registering their websites as trademarks with the U.S. Patent and Trademark Office (the “USPTO”).

The U.S. District Court for the Northern District of California recently ruled in Ingrid & Isabel, Inc. v. Baby Be Mine, LLC, No. 13-01806 (N.D. Cal. Oct. 1, 2014) that the look and feel of a website used to market and sell products and services can constitute protectable trade dress under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(a) (2012). Trade dress, a derivative of trademark law, protects the total image of a business or product, including the arrangement of identifying features such as graphics, packaging, designs, shapes, colors, textures, and décor.

This is an important development for companies seeking to protect their brand online. Your website is an important part of your brand as a company. It is often a customer’s first impression and point of sale.  Previous case-law suggested that a website could constitute protectable trade dress only if the website itself was the product. See Conference Archives, Inc. v. Sound Images, Inc., No. 06-00076, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010) The Ingrid & Isabel case provides an opportunity to expand those protections. This decision is reminiscent of the USPTO allowing Apple, Inc. to register a trademark for the design and layout of its unique retail stores. Your website is in effect your online store. This is a great example of the law starting to catch up with the times. Companies seeking to take advantage of this protection must make sure their website is 1)distinctive or has acquired secondary meaning and is 2) nonfunctional.RegisteredTM

  1. The court noted that the “Supreme Court has held that ‘design, like color is not inherently distinctive’ [citing a case involving Wal-Mart.]  Given the conceptual similarity between ‘look and feel’ and ‘design,’ Wal-Mart suggests that Plaintiff must show that its website‘s ‘look and feel’ is distinctive through its secondary meaning.” This eludes to the fact that the design of a website is not “inherently” distinct. You want to secure these protections before someone seeks to copy your website. However, per previous case-law  “secondary meaning may be inferred from evidence of deliberate copying of the trade dress…” Therefore, if you can show that your competitor deliberately copied your website, that will help to support your claim for acquired distinctiveness.
  2. Functional elements cannot be protected as trade dress. However, according to the court in Ingrid & Isabel “the placement and arrangement of functional elements can produce a non-functional aesthetic whole.”

This is also an important decision from a cybersecurity perspective. Most consumers are lured into phishing and other fraud scams when malicious actors mimic the look and feel of a brand’s website. Armed with a similar site they can lure unsuspecting consumers to insert personally identifiable information and financial data into their fake site. This can result in identity theft and financial loss. This is another tool in a trademark owner or company’s arsenal to combat fraud and protect their customers.

If your website is distinct, talk to an attorney about protecting it. This is an important consideration and should be part of developing a comprehensive intellectual property plan.

Trade dress protection has existed for decades, but its usefulness for websites and other Internet-based applications has been limited. It will be interesting to see how courts continue to apply the law to websites, mobile apps, and other non-traditional mediums.

Note that the court didn’t determine the ultimate outcome of this case; that’s still in dispute. This ruling merely allowed Ingrid & Isabel’s claim on this point to proceed to trial.

Quick Tip: Trademark Protection In Cuba

Cuba is now an open market for US businesses. President Obama announced in December 2014 that US is taking steps towards increased travel and improved relations with Cuba. This will mean a new frontier for many businesses as commerce restrictions are lifted.

One exception to the long-standing US embargo on trade with Cuba permits US companies to file for and obtain trademark registrations in Cuba. Many companies did not consider obtaining a Cuban trademark a high priority but it is now something to consider. Cuba is a “first to file” jurisdiction – in other words, a Cuban registration for a trademark will be awarded to the first applicant, even if that applicant has no legitimate claim to the mark. An applicant does not have to use the mark in Cuba, or even plan to expand its business into that country, before filing an application for trademark registration. Proactively seeking a Cuban trademark registration now will help ensure that the mark is available when the embargo with Cuba is lifted.

There are two ways to apply for a Cuban trademark registration: (1) if a US company owns a current US trademark registration, a Cuban application can be based on the US registration and filed through the international Madrid Protocol treaty; or (2) a national Cuban trademark application can be filed through local trademark agents with the Oficina Cubana de la Propiedad Industrial (OCPI), the Cuban equivalent of the US Patent and Trademark Office. Seek advice of counsel as you expand your trademark portfolio.

Being proactive about foreign registrations is an important part of a strong intellectual property portfolio.

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.

Advertising Services Is Not Use In Commerce

Your website for your new service has gone live! You are building momentum for you launch in a few weeks by advertising your services. You know you need to protect your intellectual property so you seek federal registration of your new trademark. Is that new website or other adverting materials sufficient to show “use in commerce” as required to secure a federal registration for use?

Seems like it could, right? Unfortunately, the answer is NO.

In Couture v. Playdom, Inc., the Federal Circuit held that the use of a mark on a website to offer services is not use in commerce sufficient to support an actual-use service mark application. As a result, the Court affirmed the Trademark Trial and Appeals Board’s (“TTAB”) cancellation of the mark.  The PTO granted the petition because, at the time of Playdom’s service mark registration, it had not rendered any services under the mark, but merely advertised those services on a website.

This case is a great example of the unnecessary risk in prematurely applying for an actual use mark, rather than an intent-to-use mark.

To apply for registration under Lanham Act § 1(a), a mark must be “used in commerce,” which requires – as to services – that, as of the filing date, the mark (1) is used or displayed in the sale or advertising of services and (2) the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. 15 U.S.C. § 1127; Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009).

The Federal Circuit, in this case, explained the fundamental proposition that “[w]ithout question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration;” the advertising must instead “relate to an existing service which has already been offered to the public.” Id. at 1358 (internal quotation marks and citations omitted) (emphasis added).

So what does all of that mean? Advertising for a service you have not yet begun to offer to the public is not enough. To successfully register a service mark, services associated with the mark must have been provided prior to registration. Do not use advertising for a service set to launch in 3 weeks or a month. The mark is not in use in commerce as necessary to secure federal trademark registration. It may not be obvious when filing but if there is ever a challenge you could lose your protections as Couture did.

Any doubt about actual use should lead to the filing of an intent-to-use application; it’s not worth the risk of losing your mark. An intent-to-use application would have given Couture the benefit of the earlier filing date when the mark was actually used in commerce and issued as an actual use mark. See 15 U.S.C. § 1057(c).

Quick Tip: Fast Track Your Community Trade Mark Application

The Office for Harmonization in the Internal Market (OHIM), the European Union trade mark office, has announced the introduction of a new accelerated procedure for handling Community Trade Mark (CTM) applications.  ‘Fast Track’ guarantees that the early stages of the Community Trade Mark (CTM)  application process will be dealt with quickly by providing for the expedited examination and publication of applications (in just half the time of regular applications, according to OHIM).

Fast Track is free of charge.  An application will be automatically allocated to the track provided it meets certain conditions listed on OHIM’s website. Fast Track came into operation on November 24, 2014. Overall, it is good news for trade mark applicants who could benefit from obtaining EU-wide trade mark protection more quickly.  Fast Track is, however, unlikely to make a difference in the case of more complex, opposed applications.

Screen Shot 2014-12-08 at 12.25.56 PMScreen Shot 2014-12-08 at 12.29.34 PM

What is a Community Trade Mark?

The Community Trade Mark (CTM) system offers trademark owners a unified system of protection throughout the European Union (EU) with the filing of a single application. If successful, this one application results in a CTM registration that is recognized in all countries of the EU. The countries covered by a CTM registration are Austria, Benelux (Belgium, the Netherlands and Luxembourg), Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

Quick Tip: Consider Foreign Trademark Rights Early

  1. U.S. trademark owners should conduct trademark searches both domestic and international markets that are of potential significance, even if the foreign search is merely a “knock-out” search for identical marks; and
  2. U.S. trademark owners should develop and implement strategies for global trademark protection sooner, rather than later.

International searching and registration are costly and often forgotten when small businesses develop and intellectual property strategy. Being proactive and paying for this search early can prevent the cost to either defend an infringement suit or change branding in an entire geographic region.  With some forethought it is possible to spread the costs of searching and registration over several months or years.  Do not underestimate the growth potential of your brand.

 

Two recent cases illustrate the importance of this kind of forethought:

The Glee Case and the Pintrest Case.

Before You Start Crowdfunding, Know the IP Concerns!

http://www.hongkiat.com/blog/crowdfunding-sites/
http://www.hongkiat.com/blog/crowdfunding-sites/

Crowdfunding has become a major financing tool for small businesses from tech start ups to small services companies. This source of funding, made available by The 2012 Jumpstart Our Business Startup Act (JOBS Act) which enables small businesses to raise funds from non-accredited investors.  An accredited investor must meet a personal net worth or income test that excludes the majority of the population. There are still rules about how much each person can invest for equity crowdfunding but Title III truly opens up the ability for the average American to invest.

If you are considering a crowdfunding platform for your new venture, or if you are contemplating investing in a crowd-funded project, attention to intellectual property protection is critical.  Often, companies considering crowdfunding are in the early stages of development and owners may not have the appropriate intellectual property (IP) protections in place yet. Here are a few things to consider about each of the major types of intellectual property:

Trademarks:
Securing federal and/or international trademark protection is an important early step to establishing a company and launching a brand.  This, however, can be hard to do or forgotten prior to using the mark in commerce, the standard set by the USPTO. Therefore, posting a project with a proposed trademarkcould serves as an open invitation for trademark infringers in the U.S. and abroad to file for registration first.  The same is true with respect to domain name registrations.  Additionally, without the proper research you could inadvertently launch a brand with a trademark already in use. This is not only bad PR but could open you up to suit before you’ve even begun.Action Items: Do a thorough search on potential marks and make sure it does not conflict with state, federal or international trademarks. Consider filing an Intent to Use trademark application if you are not at the place to file a trademark application based on use. Consult an attorney to make an informed decision based on a thorough search and knowledge of requirements for proving use such that you can file a trademark based on use.

Copyrights:
Although filing is not required to benefit from copyright protection, it is a prerequisite for a U.S. copyright owner who wishes to file suit for infringement in the U.S. If you are going to post copyrighted works in connection with your project disclosure or business plan, and if those works integral to the success of the project or business make sure you protect them. Additionally, make sure if you use the copyrighted work of others in your proposal you have the proper permissions to avoid copyright infringement.

Action Items: Review your copyrighted work and consider filing for copyright registration if any of the work you will loose is integral to the business.  If you plan to use images, music, or other content from third-party sources in your proposal, be sure to obtain appropriate licensing/permission prior to posting such works publicly.

Patents:
Disclosing the details of an invention before filing a patent application may bar patent protection due to required disclosures or missing the first to file window.  Some crowdfunding sites require projects that involve the manufacture and distribution of “gadgets” to “show as much as they can about how they’re going to make their project, including things like a production plan, an estimated schedule, and any details you can provide for backers.”

Action Items: Preserve your rights, patent applications should be filed as early as possible as required by the America Invents Act, under “first to file”. By filing a patent application prior to disclosing a project, the inventor can preserve patent rights and potentially avoid problems with both the statutory bar and potentially conflicting applications.  While U.S. patent law gives the inventor a year after disclosure in which to file, the same is not true in most of the rest of the world where a prefiling disclosure bars patent protection.  Keep this in mind for projects that will rely on foreign marketing and revenue for their success.

General considerations:

  1. Think about your IP on a local and global scale. Develop a state, federal and international IP development plan. As your brand grows, depending on industry and target market you want to make sure your protections are as robust as possible.
  2. Consult an attorney early and often to help you develop your IP strategy and think through the hurdles associated with crowdfunding.
  3. Investigate services like U.K.-based Creative Barcode. that are designed to provide a provide protection for early stage intellectual property. This is NOT an endorsement of these services but this is an option to consider.

Conclusion
Your intellectual property is one of your biggest assets and the last thing you want to do is damage your IP rights while trying to secure funding through crowdfunding. This is just a high level view of the general issues associated with crowdfunding. Depending on the project, the IP issues could be substantially more complex.

Additionally, potential investors should be worried about these intellectual property issues as well. Potential Investors must conduct a due diligence assessment of any venture they seek to invest in as the success or failure of the idea may hinge, at least in part, on the strength and protection of those IP rights.

My Appearance on Chat with a Lawyer

I recently appeared on a local television show “Chat with a Lawyer.” I sat with the host Wala Blegay to discuss Intellectual Property law and protecting your business.  Please watch and enjoy!

 

 

 

If you are in the DC metro area the episode will continue to air on Channel 25 Verizon and Channel 71 Comcast twice a day starting this week!

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