How Associations Can Protect their Intellectual Property
1. Protecting Your Association's
Intellectual Property
Association Trends Webinar
September 25, 2013
Jefferson C. Glassie, Esq.
Eileen Morgan Johnson, Esq.
Whiteford, Taylor & Preston
Washington, DC
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)
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
Associations can have rights in name, acronym, design
logo, slogan/tagline, but often weak
16. Commonly Litigated Subcontract
Provision: Arbitration Clause
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
Strong
Fanciful
Weak
Arbitrary
Suggestive
Descriptive
Generic
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)
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, cannot 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
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. Insurance
Cyber liability insurance
Claims made policies
Typically provide both first party and third party
coverage
Coverage available
Privacy notification expenses
Crisis management expenses
Extortion expenses
Copyright infringement
28.
29. Potential Legal Problems
Law is evolving, but potential liability:
Antitrust
Defamation
Copyright
Trademark
Privacy
Breach of confidentiality
Overall not a significant risk, if prudent
30. 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
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!
38. Contact Information
Jefferson C. Glassie, Esq.
Partner
Whiteford, Taylor & Preston
202-689-3156
jglassie@wtplaw.com
www.wtplaw.com
Eileen Morgan Johnson, Esq.
Partner
Whiteford Taylor & Preston
703-280-9271
emjohnson@wtplaw.com
www.wtplaw.com