In trademark cases involving keyword advertising, the nominative use defense is often a powerful tool that leads to early success on summary judgment.  We recently had a case where we represented a payment processor review site.  At issue was whether or not a review site is able to advertise by purchasing trademarked terms on Google Adwords.  In this post, we will run through the analysis and ultimate answer.

Where a trademark claim arises from the use of a trademark as a reference to mark owner’s goods or services such as a review site, the case is among a “class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one” and the plaintiff’s claims fall to the doctrine of “nominative use.”  New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992).

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One issue that often faces small to medium sized companies is whether or not to buy cyber liability insurance policies.  The need and market for such policies is developing.  In this post, I will provide an overview of the product and why I recommend that our clients obtain this coverage.

First, with rare exception, today every company is a tech company.  Obviously, social networks and electronic marketplaces are run from an internet platform but the same can be said for the auto body shop that interacts with insurance carriers via web portals.  Just as tech companies have a significant brick and mortar presence, traditional brick and mortar companies transact large amounts of business online.  Because of this simple fact, I advise my clients, large to small, to obtain cyber liability coverage.

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E-tail behemoth Amazon recently filed a lawsuit against Jay Gentile, a California resident offering positive Amazon reviews for a price, otherwise known as “astroturfing”.  Gentile offered his service via the domain name “buyazonreviews.com”, among others.  Here is how the operation worked in a nutshell:  Mom and pop widget company desires four and five star reviews in order to increase consumer confidence and sales; Gentile’s service provides the widget seller with canned 4 and 5 star reviews over a period of months, so that the reviews appear legitimate and avoid Amazon’s review screening filter; and the reviews cost mom and pop about $20 per review.  Gentile’s company even went so far as to allegedly orchestrate phony baloney sales in order to achieve “verified” review status.

Quite naturally, Amazon isn’t too happy about all of this.  Consequently, Amazon deployed one of its go to law firms to attack Gentile in Court.  The problem is, I’m not too sure that Amazon’s lawsuit is legally viable, however, it does have significant strategic and practical value.  Because of this, I think it is likely to serve as an astroturfing deterrent.

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Businesses are constantly in danger of being defamed on the Internet.  Often, this defamation is anonymous.  Typically, it is committed by a competitor or a disgruntled former employee.  Because of this, it can be difficult for a business to combat the defamatory assertions.  Websites like Yelp (and blogging platforms like WordPress provide valuable consumer information, however, they can be misused for nefarious purposes.  For companies harmed by anonymous internet defamation, there is usually one goal – to remove the defamatory material.  In this post, we discuss the proper way to proceed.

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Increasingly, divorcing spouses are using data breach and privacy laws to sue each other in federal and state court.  This leads to “spillover” litigation, as the divorce proceeding spills over into another separate action.  Divorce lawyers would be well served to familiarize themselves and their clients with applicable data breach law.

The case of LaRocca v. LaRocca, 2014 WL 5040720 (E.D. La. Sept. 29, 2014) illustrated this trend in the context of claims under the Electronic Communications Privacy Act (“ECPA”).  This law prohibits unauthorized access to emails, among other things.  In the LaRocca case, Eloisa LaRocca accused her former husband of doing just that in order to gain an upper hand in the divorce.  The ex-husband moved for summary judgment on the grounds that she had no expectation of privacy.  The court denied the summary judgment, ruling that once LaRocca filed for divorce, her emails were off limits and that she had a reasonable expectation that they would not be reviewed by her soon to be ex husband.

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2014 was an interesting year in data breach litigation in California at both the federal and state level.  As always is the case in data breach cases, the requirement of a cognizable harm or “standing” took center stage.  At the state level, data breach defendants scored a huge victory in the case of Sutter Health v. Superior Court.  In contrast, at the federal level, data breach plaintiffs scored big in the case of In re Adobe.

Sutter Health involved the increasingly common situation of a stolen computer from a hospital.  The computer contained millions of patient health records.  Patients filed a class action alleging violations of the Confidentiality of Medical Information Act (“CMIA”).  The Act prohibits the disclosure of patient records and provides for statutory damages of $1,000 per breach.  Doing the math, Sutter’s liability added up to $4 billion of exposure.  The trial court denied Sutter’s demurrer resulting in an immediate appeal.

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As a follow up to my previous post, I now want to get into a liability analysis relating to the type of claims Sony could advance against media companies.  Though not addressed in the letter itself, liability is highly questionable because of robust First Amendment defenses that may be deployed by publishers in this case.  Sony and its executives could deploy a couple of conceivable legal claims in their fight against publishers.  First, there could be claims for violations of California’s Uniform Trade Secrets Act.  This Act ascribes liability to parties that disclose trade secrets information.  This requires that the disclosed Sony information actually constitute a trade secret.  In California, data can qualify as a trade secret if it derives economic value by virtue of being not generally known to the public.  Secondly, the owner of the trade secrets, in this case Sony, must have maintained reasonable efforts to keep the data secret.

Sony would likely have major difficulty qualifying much of the released data as trade secrets.  Thus far, the published data does not contain information that derives independent economic value by virtue of being a secret.  Much of the reported disclosed data is in the category of industry gossip and insults.  Similarly, data such as executive salaries lacks economic value.  Movie release date information and production expenses like actor salaries and profit participation likely would hold economic value by virtue of its secrecy.  However, Sony’s knowingly deficient data protection efforts may ensure that it fails to satisfy the element of reasonable efforts to maintain secrecy.  As a trade secrets litigator, I think Sony would be fighting an uphill battle on such claims.

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After serving as an industry punching bag for the last month, Sony recently decided to punch back regarding its recent data breach and attendant publicity surrounding the incident.  The method chosen by Sony was to hire one of the country’s best known and expensive lawyers to send an aggressive cease and desist letter to various media companies reporting on the incident.  David Boies became famous, by among other things, representing Al Gore in the 2000 election case.  Among his media company targets, many internet companies such as Twitter feature prominently.  Not surprising given the SOPA battles waged between Silicon Valley tech companies like Google and old guard Hollywood and its mouth piece, the MPAA.

This action by Sony raises three questions.  First, as a practical matter, is the letter a wise strategic decision?  Second, is the letter effectively drafted to accomplish Sony’s strategic goals.   Third, do digital media publishers face a legitimate risk of liability if they do not comply with the letter’s demands?  For the last question, First Amendment doctrine plays a prominent role.

As a digital media attorney, I think the letter was probably a wise strategic decision in concept.  An offensive response was long overdue given that Sony’s brand has been so badly damaged because of its handling of employee private data.  Sony had to take some action to protect employee data beyond the formality of providing a data breach notice.  California law, and forty-six other states, requires prompt notice to victims of a data breach regarding disclosure of personally identifiable information.  See  California Civil Code s. 1798.29(a) and California Civ. Code s. 1798.82(a).

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World Wrestling Entertainment (“WWE”) has serious problems at many of its events.  It seems that purveyors of WWE counterfeit merchandise set up shop at or near event locations. As such, the WWE loses a number of lucrative merchandise sales at events.  The problem facing the WWE has been how to stop such nameless, faceless counterfeiters who typically evade detection or enforcement consequences.  With scant resources, many local police departments are not willing or able to provide the type of “boots on the ground” enforcement required to stamp out sidewalk counterfeits.

So how does a brand owner succeed against shadowy, anonymous wrongdoers?  The WWE took the novel approach of seeking an ex parte temporary restraining order and seizure order against future, unnamed counterfeiters.  This is highly unusual in that most trademark enforcement actions are reactive and backward looking in that they seek to redress wrongs already committed.  Certainly, in the online trademark infringement context, relief is routinely granted against anonymous “John Doe” defendants. In such cases, however, there is existing admissible evidence of the infringements.  And typically such infringement is rectified easily via a seizure of the very domain names used to perpetrate the anonymous counterfeiting.

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Copyrights protect individuals from having their work used by others without permission. The copyrighted work must be fixed in a tangible medium and be original. California residents who have intellectual property protected by a copyright may wonder how long the copyright lasts. It lasts for the creator’s lifetime plus a period after their death.

The work is protected from copyright infringement from the time of creation, whether or not it was published or registered with the U.S. Copyright Office. If the work was created after 1978, the copyright lasts for a creator’s lifetime plus 70 years. Co-authored works last for the lifetime of both authors. If one author predeceases the other, the copyright lasts for the lifetime of the remaining author plus 70 years. The copyright for hired work will last for 95 years from the date that it was published or 120 years from the date that it was created. Works created before 1978 have copyright protection until at least Dec. 31, 2002. If the work was published before 2002, the copyright is extended until the end of 2047.

Copyrights are considered personal property, and they may be transferred to another person or to a company. The transfer, governed by applicable state laws, may be accomplished by contract or stipulated in a will, and recording the transfer may be beneficial. An author wishing to reacquire a copyright may be able to terminate the transfer in some cases.

Each case is different, and the information offered in this piece should only be used for education purposes. However, an attorney may be able to help a person learn about his or her rights to intellectual property. In order to protect one’s intellectual property, an attorney may assist in the registration of a copyright with the U.S. Copyright Office. If a copyright is infringed upon, the attorney may assist in helping an individual protect their rights.

Source: United States Copyright Office, “Copyright Basics“, September 19, 2014