1. Association Law Online Conference
June 13, 2013
Jefferson C. Glassie, Esq.
Whiteford, Taylor & Preston LLP
Washington, DC
Intellectual Property and Technology
2.
3. Program Overview
• Copyrights
• Trademarks
• Internet Applications
• Social Media
• Association activities (international,
publishing, lists, affinity programs, etc.)
4.
5. Copyright Protection
• “Copyright Protection subsists in original
works of authorship fixed in any tangible
medium of expression…” Section 102 of
Copyright Act
• Rights accrue upon creation; no notice or
registration is required
• Ideas, facts, concepts are not covered
6. Works of Authorship Include:
• Literary works
• Musical works
• Dramatic works
• Pictorial, Graphic, and Sculptural works (includes
graphics, charts, and figures)
• Motion pictures and other audio-visual works
• Sound recordings
• Architectural works
• Yes, electronic docs and websites are included!
7. Copyright Rights
• Copyright includes a “bundle” of rights:
– Reproduce the work (photocopies)
– Prepare derivative works (second editions)
– Distribute the work (sell)
– Perform the work (music)
– Display the work (visual; e.g., websites)
• Can own copyright to the entirety of a work,
even though not the parts
8. Work-for-Hire
• Section 101 of Copyright Act defines as
– “Work prepared by an employee within the scope
of his or her employment;” or
– Specifically ordered or commissioned as a
contribution to collective work, part of audiovisual
work, translation, supplementary work,
compilation, instructional text, test, answers to
test, or atlas, IF expressly agreed in a written
instrument signed by the parties.
9. Fair Use
• The Infamous “Fair Use” Doctrine under Section
107 of Copyright Act:
– Defense to copyright infringement
– Allows use of a copyrighted work without
permission of author
– For criticism, comment, new reporting, scholarship,
or research
– BUT - Vague and Subjective
– Lots of Litigation
– Totality of Circumstances
10. Fair Use Factors
1. Purpose and nature of Use
-- nonprofit or commercial use
1. Nature of copyrighted work
–how creative / original
1. Amount of original work used
–entire work versus minor part
–important versus incidental part
1. Affect on market for original
–will new use displace sales of original?
12. Registration
• Works (including websites) may be registered with
U.S. Copyright Office, Library of Congress, with
deposit of work (Sec. 408)
• Registration is NOT necessary to own copyright
• If work registered prior to infringement or within
three months of publication under Section 412,
copyright owner can sue for copyright infringement
and claim statutory damages of up to $150,000 for
each willful infringement and attorneys’ fees (Sec.
504)
13. Assignment / License
• Copyrights can be assigned (i.e., transferred) only
upon signed written instrument under Section 204 of
Copyright Act
• Permission (i.e., license) to use copyrighted works
can be granted, and can be expansive or limited (only
certain rights); can be written or implied (exclusive
must be in writing)
• Advisable to have written license or assignment for
any association volunteers or vendors contributing or
creating content
14.
15. What is a Trademark?
• A word, phrase, symbol, sound, or design (or combination)
that distinguishes the source of products, programs, or
services
• Service marks are generally the same as trademarks, but they
refer to services, not tangible products
• Certification marks for those certified
• Collective membership marks
• Rights accrue upon USE in commerce; registration not
mandated
• Associations can have rights in name, acronym, design logo,
slogan/tagline, but often weak
16. Screening Proposed Trademarks
• Before use a mark should be screened to ensure that it is:
– Non-infringing
– Sufficiently distinctive
• Screening
– Preliminary and full: USPTO, legal databases, search
engines, domain name availability, etc.
• The infringement test
– Is the mark likely to confuse users as to the source of the
products, programs, or services?
– PTO focuses on similarity of marks and services
17. Distinctiveness of a Mark
• Examples:
– Fanciful (Exxon® gasoline and Xerox® copiers)
– Arbitrary (Apple® computers)
– Suggestive (Igloo® coolers and YAHOO!® search
engine)
– Descriptive (e.g., American Lawyers Association)
– Generic (aspirin, kleenex, elevator)
Strong Weak
Fanciful Arbitrary Suggestive Descriptive Generic
18. How to Protect Trademarks
• Trademark Notice
– Use ™ for an unregistered trademark or combination
trademark/service mark
– Use SM
for an unregistered service mark
– Use ® only for a federally-registered mark
• Use properly, consistently, and constantly
• Registration provides procedural protections (incontestibility
and no innocent infringement, etc.)
• Police for infringing uses and take appropriate action against
infringers (e.g., warning letter, opposition, lawsuit)
• Use written license agreements and review licensee use for
compliance
19. Registration Requirements
• Must file to renew registrations in 5-6th
year
and 9-10th
year thereafter
• PTO does not send notices
• Failure to file will result in abandonment
• Could still use mark, but not ®
• If do not use, can not maintain/renew
registration
• Can’t make material changes to registered
mark
20. Use of Trademarks of Others
• As a general rule, you should not use
another’s trademark without permission
• Limited ‘fair use’ exceptions:
– Comparative advertising
– Descriptive use
– Nominative use (where name is critical)
– Parody
• License from others is advisable
21.
22. Domain Names
• Associations generally secure domain names
• Good idea to secure .com, .org., .info, .biz, etc.
and misspellings, common words
• Basic protection for your association’s domain
name(s)
• Police the marketplace
– Watch services, Google alerts, etc.
• Registered mark can help enhance domain
name protection
23. Cyber Squatters
• Bad faith registration, sale or use of a domain name that is
confusingly similar to another’s trademark
• Anti-Cybersquatting Consumer Protection Act
• What to do when a squatter shows up
– Cease and desist letter
– File a domain name dispute proceeding
• ICANN’s Uniform Domain Name Dispute Resolution
• Faster and less expensive than litigation
• Cancellation of squatter’s registration
• No monetary damages or attorney fees
– File a lawsuit
24. Some Laws that Apply
• Communications Decency Act, includes
Section 230, which protects providers of
interactive computer service (may include
associations) from defamation/tort claims
based on third party content
• FTC Guidelines on Endorsements and
Testimonials – added social media in recent
rules – disclosure of any compensation
25. Digital Millennium Copyright Act
• Limits liability of online service providers for
copyright infringement
• Can protect associations
• Also protects unauthorized uses of association
copyrighted material
• Notice and take down provisions
• Must meet specific requirements
• But effective for copyright infringement
26. Cybersecurity
• Associations have been hacked, targeted by
phishing schemes, and had privacy/data breaches
• Crucial to have privacy policies and follow them
• State laws mandate Written Information Security
Plans (WISPS) for security breaches
• Costs of compliance can be high
• Insurance for privacy breaches available, as well
as First Party costs of public response
27.
28. Potential Legal Problems
• Law is evolving, but potential liability:
– Antitrust
– Defamation
– Copyright
– Trademark
– Privacy
– Breach of confidentiality
• Overall not a significant risk, if prudent
29. Association Uses
• Blogs, list-servs, chat rooms, virtual trade shows, etc.
• Always advisable to have terms of use/social media
policy/disclaimers
• Terms include obtain right to use posts, require
proper decorum, and suspend privileges for
inappropriate conduct
• Don’t need specific approval from each poster
(unless changing purpose or intent)
• ASAE has a good sample
30. Sample Terms of Use
• Require adherence to code of conduct
• No slurs, demeaning jokes, sexist terms, offensive
photos, etc.
• No posting of photos or other IP without permission or
ownership
• No postings that could be antitrust violations
• Right to monitor posts
• Right to remove inappropriate posts
31. Third Party Sites
• Facebook, LinkedIn, etc.
• Have their own rules
• Association pages – have your own rules,
include rights to monitor and remove
inappropriate posts, and should not need
specific approval to use posts
32.
33. International
• Copyright treaties applicable
• Trademark laws vary between ‘first use’ (U.S.)
and ‘first to file’ (most other countries)
• Best course, file in each country to protect
association marks
• European Community Mark
• Madrid Protocol
34. Publishing
• Differences in print and electronic publishing
• First sale doctrine doesn’t hold for e-pub
• Law is similar, but problems more accute
• Infringement by association and of association
materials
• Distribution channels different
• Pricing models – wholesale vs. agency
35. Use of lists and databases
• Lists are facts unless creatively organized
• Slim copyright protection for association lists
• Can rent lists with license agreement
• Privacy issues for European contact
information
• Note automated databases are protectable,
including screen shots (by software)
36. Sponsorships/Affinity Programs
• General rules apply
• Corporate sponsorship – use of corporate name and
logo - recognition versus taxable advertising
• Affinity programs – involve use of association name,
logo, and lists by vendor to members for license
fee/royalty to association – passive royalties not
taxable
• Cause related marketing – similar, but to public
37. Chapters/Affiliates
• Invariably use association name and marks, so
should have written license and trademark
use policy
• No modifications without approval
• Consistent use strengthens brand for all!
