I'll be presenting "Representing the Web-based Business" at the 4th Annual Information Technology Law Seminar next week on Wednesday, September 21, at the Inn at St. John's, Plymouth. The seminar is geared toward lawyers and law students. More information can be found here. A seminar overview and schedule follow. OVERVIEW Global connections and technology have transformed the world for all businesses. Companies need lawyers who understand online business and technology deals and the legal issues connected with them. Navigate key legal issues and learn drafting strategies from a faculty of security experts, a law professor, plus IP and IT law specialists. Build your knowledge to increase your business development opportunities. Attend and Learn to: Avoid costly mistakes when you draft and negotiate technology license agreements Implement best practices in data security and privacy to help your clients guard customer information Effectively advise your clients on the key issues relating to operating a Web-based business Safeguard your clients' domain names and trademark rights on the Web Take a multimedia exploration into copyright protection for Web sites Understand social media in the workplace and how companies are using it themselves SCHEDULE 9:00am-9:15am Welcome and Introductions 9:15am-10:05am The Keys to Technology Licensing understanding the basics critical mistakes to avoid handling the negotiations Mark G. Malven, Dykema, Bloomfield Hills 10:05am-10:55am Trademarks on the Web selecting and enforcing domain names keyword advertising implications on the Internet Mary Margaret L. O'Donnell, Blue Filament Intellectual Property LLC, Birmingham 11:10am-12:00pm Current Trends in Data Security and Privacy dissecting ...


CBS Interactive Inc. v. National Football League Players Association is the most recent case permitting the commercial use of professional athlete's names and statistics without permission. CBS Interactive operates the website  The NFL Player's Association acts as the exclusive collective bargaining representative for active players in the NFL.  Among other things, the NFLPA has the right to license the use of the individual players' names, signatures, facsimile, voices, pictures, photographs, likenesses, and biographical information in connection with "group licensing programs" involving six or more players (e.g., fantasy sports, video games, etc.).  NFLPA assigned this right to Players, Inc. in exchange for royalties.  Players, Inc. in turn licenses this right to companies like CBS to use in programs such as fantasy sports.  In fact, for several years CBS did just that, running both free and "pay for play" versions of its fantasy league under a license agreement with Player, Inc. However, in 2008, CBS refused to renew its license after the Eighth Circuit in C.B.C Distribution and Marketing Inc v. Major Leage Baseball Advanced Media determined that use of baseball players' names and statistics did not violate any right of publicity, but that even if it did, persons enjoyed a First Amendment right to use the players' names and statistics that prevailed over any right of publicity.  When Players, Inc. threatened to sue, CBS brought an action for declaratory judgment that its use of player information was permissible under the CBC case.  The Minnesota District Court in the CBS case agreed. The NFLPA and Players, ...


On Saturday, June 13, at 12:01 a.m. (EDT), Facebook, the venerable social networking site, started allowing users to create personalized usernames, otherwise known as "vanity URLs".  Facebook has been announcing this feature for the last week or so, stating that it will make it easier for people to find users on the site.  Before, the URL for a user might read "" but now can be personalized to read ""  Twitter and YouTube have been offering this feature for some time. As has been the case over at Twitter and YouTube, vanity URLs can cause problems for trademark owners when users "personalize" their URLs with famous brands (e.g., "[brand name here]").  Some have suggested that this use of a trademark may not be actionable under federal law, since the use is not "in commerce" as required under the Lanham Act. Facebook has, however, created some safeguards for trademark owners.  Prior to June 13, trademark owners could have enrolled their trademarks with Facebook to block users from submitting those trademarks as a personalized URL.  Now that username registration is open, trademark owners may still protect their rights by using Facebook's existing infringement reporting process.  Facebook also reserves the right to reclaim any vanity URL for any reason. If you are a trademark owner and missed your opportunity to block use of your brand as a URL, it may not be too late to register the URL yourself (new users may do so starting on Sunday, June 28).  Otherwise, you can still play defense by using Facebook's IP infringement ...


"A 12-person jury deliberated six hours over two days in January before awarding [the plaintiff] $50,000 in compensatory damages.  The verdict made him the first plaintiff awarded damages in a libel suit against a blogger....The case is one of at least 50 similar suits filed in the past several years." -- Kansas City Daily News, October 26, 2006 "Social media - always fun until someone gets sued." -- FP Legal Post, March 16, 2009 What are blogs, wikis, and online forums? Blogs, wikis, and online forums are part of the Web 2.0 social media explosion that are changing the way we do business and work with each other. Web 2.0 represents one of the greatest opportunities of our lifetime to share ideas and work collaboratively. However, Web 2.0 also represents one of the newest legal threats to people and companies utilizing these tools.  Whether you are new to Web 2.0 or a relative old-timer, you have probably witnessed more and more stories every day about people and companies getting in trouble for what they or their users have posted online. What legal liability issues can arise from my blog, wiki, or online forum? Generally, you face the same liability issues as anyone making a publication available to the public. The main legal liability issues include: Defamation Intellectual Property (Copyright/Trademark) Trade Secret Right of Publicity Invasion of Privacy Whenever you open the Web 2.0 door, inevitably someone will publish information or post content that others don't want published.  Someone might, for example, publish something that someone considers defamatory or private, republish someone's copyrighted content without permission, or misuse or ...


Intellectual property is divided into four generally accepted categories: copyrights, trademarks, patents, and trade secrets.  Given the ephemeral nature of intellectual property, many people (including some attorneys) often confuse these terms.  Here are thumbnail explanations of these terms, as defined by statutes and our court system: Copyright:  A copyright is a form of protection granted by law for original works of authorship (including literary, dramatic, musical, and artistic works; such as poetry, novels, movies, songs, computer software, and architecture) fixed in a tangible medium of expression.  A copyright generally gives the copyright holder the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.  Copyright does not protect facts, ideas, systems, or methods of operation; although it can protect the way these things are expressed.  A work is under copyright protection the moment it is created and fixed in a tangible form, and lasts for the life of the author plus 70 years (or, in the case of a corporation, 100 years).  Although the registration of a copyright with the U.S. Copyright Office is not required, it can provide the copyright holder with additional rights and protections. Trademark:  A trademark is a word, name, symbol or device which is used in trade with goods to identify the source of the goods and to distinguish them from the goods of others.  A servicemark is the same as a trademark except that it identifies and distinguishes the ...


Do you have to register your trademark?

  At Safford & Baker we do not file trademark applications.  We prefer to outsource that rather mechanical task to people dedicated to cost-effectively churning out such applications.  We do, however, advise clients on trademark issues affecting their businesses and, on occasion, engage in trademark litigation on their behalf.  Since we advise a lot of start-up businesses, we are invariably asked if a company must register its trademark. The short answer: no.  You do not have to federally register your trademark to enjoy a minimum level of protection.  You begin establishing rights in your mark simply by using it in commerce.  You can even use the trademark symbols TM or SM with your mark to alert the public to your claim.  (The ® symbol, on the other hand, is reserve for registered marks only.) Owning a federal trademark registration provides several advantages though.  The most important advantages are (1) a legal presumption that you, in fact, own the mark and (2) the exclusive right to use the mark nationwide in connection with the goods and/or services listed in the registration.  Absent a federal registration, your use of a mark may be limited geographically or limited to use with only certain goods. The more difficult question then is if you should register your trademark and, if so, when.  I'll attempt to address these questions in a later post.


Trademark law and the First Amendment

  Rockstar Games, Inc. is the maker of the highly successful series of Grand Theft Auto video games known for their adult nature and violent themes.  One incarnation of the series, Grand Theft Auto: San Andreas, released in 2004, includes a city modeled after Los Angeles known as "Los Santos."  Los Santos was created by the video game artists by taking reference photographs of Los Angeles to create variations on the actual businesses and architecture for their fictional city.  One neighborhood in the fictional city contains a virtual strip club called the "Pig Pen."  ESS Entertainment 2000, Inc., the owner and operator of an East L.A. strip club called the "Play Pen," took offense and sued Rockstar for federal and state trademark infringement, claiming that Rockstar is confusing consumers into thinking that the Play Pen has endorsed, or is otherwise associated with, the game.  Rockstar asserted two defenses: nominative fair use and First Amendment protection. Under a nominative fair use defense, the defendant essentially claims that its use of the plaintiff's mark is not a trademark use at all; that is, the defendant is not using the mark to designate source or sponsorship but merely for purposes of comparison, criticism, or point of reference.  The court held that the nominative fair use defense did not apply in this case because Rockstar did not use the actual mark "Play Pen" and Rockstar's aim was not to comment on the Play Pen per se. The court did find for Rockstar, however, on its First Amendment defense.  Under a First Amendment defense, ...