FORTIFY YOUR BRAND: PROTECTING YOUR ONLINE PRESENCE AND SOCIAL MEDIA IDENTITY Kathleen A. Brown Lisel M. Ferguson SIA SNOW SHOW January 26, 2017 1
GET YOUR DUCKS IN A ROW BEFORE LAUNCHING AN ONLINE PRESENCE Where to Start: Trademark/Trade dress Patent Copyright Domains 2
Company Name - Trade Name Ex. Atomic Austria GmbH Protection: dba corporate name registration trademark 3
Trademark- Brand Ex. Atomic or Atomic Skis Includes any word, name, symbol, or device, or any combination Used in commerce Identifies and distinguishes goods of one manufacturer or seller from the goods manufactured or sold by others Trade Name verses Brand 4
Trademarks Meier Skis 5
Choosing Your Trademark and Company Name Protectable Marks House Marks Trademark Searches 6
Importance of Trademark Registration in the U.S. Discourages others from using confusingly similar marks in trade, business, and commerce because they are publically available in a search Protects against registration of confusingly similar marks, as the Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks 7
Importance of Trademark Registration in the U.S. Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, with heightened protection after five years 8
Foreign Trademark Registration U.S. registration does not protect your trademark in foreign countries First to File Enforcement Customs 9
Trade Dress Overall commercial image (look and feel) that identifies the source of the product and distinguishes it from others Trade Dress can be a product shape, design, configuration or product packaging Trade Dress can be registered with the United States Patent and Trademark Office 10
Trade Dress Advantage Over Design Patent Protection Through trademark registration, trade dress can be protected indefinitely Disadvantage is that you must prove inherent distinctiveness for a product configuration 11
Patents Patents cover how a device works or the design elements of a product Patents can protect such items as ski and snowboard equipment and apparel 12
Patents Design Patent Utility Patent 13
Copyrights Artistic Works Photography Drawings Paintings Sculpture Graphic Arts Design Websites Literary Works Music 14
Website Protection Creation of website- copyright ownership Use of independent contractors; ownership issues Clip Art Copyright Notice Copyright Registration 15
Domains Protected by trademark Valuable for branding Domain Registration- best practice strategy Enforcement through ICANN Proceedings 16
Uniform Domain Name Dispute Resolution Policy adopted by Internet Corporation for Assigned Names and Numbers (ICANN) Domain name is identical or confusingly similar to a trademark or service mark The Defendant has no rights or legitimate interests in the domain name The Domain name has been registered in bad faith 17
Legal Pitfalls in Utilizing IP in Social Media Traditional IP and Right of Privacy Laws which apply in Advertising apply equally to Social Media Commonly used Social Media includes Twitter, Facebook, Instagram, LinkedIn, online blogs 18
Common Mistakes on Social Media Reposting photos on social media Images or photographs on the Internet are not necessarily in the public domain Don t Repost without permission Don t Use Other Companies trademarks/logos on Social Media Fair Use Allowed 19
Common Mistakes on Social Media Don t Use Images or Names of Celebrities without Express Authorization Ex. Duane Reade posted a photo of Katherine Heigl from Grey s Anatomy on Twitter and Facebook and tweeted Love a quick #DuaneReade run? Even @KatieHeigl can t resist shopping at #NYC s favorite drugstore. A suit resulted with a $6 million demand 20
Ways to Avoid Mistakes on Social Media Obtain Written Permission To use Images and Photographs To use the Names and Likenesses of Celebrities Don t Make False Statements Verify all facts before you post 21
Ways to Avoid Mistakes on Social Media Protect Your Rights Insure that your client s business owns the IP or has a license to use Licensing Agreement Assignment Filing for Protection For all Websites, Advertising Media, Information Brochures, Products 22
Develop a Written Strategy That Covers IP Protection Plans, Internal and Social Media Policies An IP Strategy is a creative, flexible plan aimed at building and maintaining your intellectual property assets, deciding and implementing internal and external social media plans and policies The strategic utilization of your plan substantially enhances your company s competiveness A well thought-out, but flexible IP Strategy results in cost savings 23
Ways to Avoid Mistakes on Social Media Create and Adhere to a Social Media Use Policy Understandable by Employees Confirm the terms don t violate the National Labor Relations Act Require avoidance of defamatory postings Disclose any paid advertisements (FTC Requirement) 24
Website Terms & Conditions and Privacy Policy Terms & Conditions Sets the rules that users must agree to in order to use your website This is a legally binding contract between the company and the users Highly recommended for the reasons below but not required Privacy Policy Required by law if you collect personal data from your users: email address, first and last names, shipping address, etc. 25
5 Reasons You Need Website Terms & Conditions Prevent Abuses of Your Website Include terms to prohibit spamming of other users, posting of defamatory content, unauthorized use of trademarks and images Ownership of Content Puts the users on notice that the content is owned by the company Termination Clause Enables the company to terminate users who abuse the website 26
5 Reasons You Need Website Terms & Conditions Limits Liability Notifies users that the owner can t be held liable for inaccurate or illegal content uploaded by users Set the Governing Law Establishes the jurisdiction that applies to the website use 27
Hope you are still awake! 28
Questions? 29
Thank you! Questions? Please feel free to contact us any time for guidance. Kathleen A. Brown, Esq. Partner and Co-Leader, Sports & Active Lifestyle kathleen.brown@procopio.com 619.525.3827 Lisel M. Ferguson, Esq. Partner and Co-Leader, Sports & Active Lifestyle lisel.ferguson@procopio.com 619.515.3207 30