Before Revealing Your Masterpiece On Facebook, Read The Terms Of Use

By Dave Rein

Either this week or next, Facebook will make it official that it will follow its new terms of use -- the legal stuff buried in a link at the bottom of the homepage entitled "Terms".  Who cares?

If you are a writer, photographer, musician or other creative type, you are likely to have a Facebook page and you definitely should care.

But, you don't need to be a writer or other artist to care.  What you post today may be worth something tomorrow -- whether by design or dumb luck.  If you are reading this blog and are under the age of 106, you are likely to be on Facebook or some other social networking site.  Facebook alone claims to have 200 million users and there seem to be enough social networking sites to fill a Costco-sized grocery cart.

Still, many creative people are using the enormous popularity of social networking sites to tap an international audience in hopes of creating a buzz that will promote his or her creations.  It is not uncommon for photographers, for example, to post pictures such as this one -- albeit much cooler -- on their page to generate interest.  Of course, this is not unique to photographers.  Writers, musicians and others who develop creative material regularly post their creations on social networking sites.  

Perhaps because there are so many people who have posted their creative works on Facebook, a mini-revolt took place when Facebook announced that it was changing the terms of use.  As the Consumerist reported, bloggers discovered that Facebook had changed its terms to arguably grant itself significant new rights to the creative works that users posted.  The change led several artists such as photographer, Jim Goldstein of San Francisco, to announce that they were removing their work from Facebook.

Facebook did back off of its broad terms and agreed to allow the Facebook community to chose whether to adopt the old set of terms or a revised set of terms.  Last Friday, Facebook announced that the tenative results (presumably subject to an inspection for hanging chads) showed that its users voted to approve the revised set of terms that are somewhat less broad that the ones that set off the mini-revolt.  I expect that we will hear an official confirmation of the vote soon.

So is it now safe to post your creative work on social networks?  I count myself as one who takes Facebook CEO Mark Zuckerberg at his word when he says that there was no intent to make a mass grab at the intellectual property rights stemming from user generated content.  But, you still need to get the terms of use right else a court may listen sympathetically and then rule:  "So sorry, too bad."

I am still puzzled by the expansive language that has been adopted.  One who posts anything on Facebook still gives Facebook a license to use the work for almost any purpose.  This is in stark contrast to terms on MySpace, Xanga and Bebo for example that more narrowly restrict the purpose for which the social network receives a license to use posted content.  Even better, Twitter expressly states that it does not claim any intellectual property rights over the material provided to Twitter.

For now, I think that someone who posts work that he or she created on Facebook should be cautious.  I don't think that there is anything sinister going on at Facebook, but the legal language still does not match its public statements.  The terms are better at several other social networking sites, but they are still fairly broad so read the terms of any social networking site before posting your work and check periodically to see that the terms have not changed.  Take these precautions before you post and avoid hearing the judge rule:  "So sorry, too bad!"

Can Google Sell Trademarks As Keywords To Trigger Advertising?

By Dave Rein

If I search for "Delta Airlines" on Google so I can book my flight to Washington D.C. to see the cherry blossoms, can Google sell American Airlines the "Delta" trademark as a keyword to ensure that American's advertisement appears with my search results?  It does not appear that American Airlines does this, but other companies do and litigation ensues.

The Second Circuit waited until the American Bar Association's Intellectual Property conference and the bloom of the cherry trees to release its long-awaited decision in Rescuecom Corp. v. Google Inc.  -- the first circuit court to directly address the issue of keyword advertising. 

For the uninitiated, Google sells keywords to advertisers -- including the trademarks of an advertiser's competitors -- which it calls contextual advertising so that when a user types a keyword into a Google search, the advertiser's link will appear in an area above or to the right of the natural search results labeled "Sponsored Links."  So a business could "buy" its competitor's trademark as a keyword to trigger its own advertising in the Sponsor Links section.  

One of Rescuecom's competitors paid Google the right to use the RESCUECOM trademark as a keyword to trigger its advertising. Rescuecom sued Google for trademark infringement, dilution and other claims.  The district court ruled in Google's favor as had every other district court in the Second Circuit.  The court held that there is no cause of action because, in part,  the user never sees the RESCUECOM trademark -- the Google results do not show the trademark in the Sponsored Links section.  But, decisions outside of the Second Circuit held that selling a trademark as a keyword to trigger advertising does state a cause of action for trademark infringement.  For those of you who are a glutton for punishment, you can find the main briefs filed with the circuit court at Professor Eric Goldman's blog, Technology & Marketing Law Blog.

Apparently, the Second Circuit put a lot of thought in its decision as it took exactly one year to the day from the time it was argued for the court to release its decision.  The decision reversed the district court and held that Rescuecom did state a cause of action and could proceed with proving the rest of the requirements to establish trademark infringement.  Professor Goldman provides one early analysis of the decision.  As the Wall Street Journal noted, however, the Second Circuit decision only allows the case to go forward. 

Rescuecom still has to prove the rest of its case before it can declare victory which the Progress & Freedom Foundation (which Google appears to be a member of), does not believe is likely.  Regardless, the decision is noteworthy as the first circuit court to weigh in on whether selling a competitor's keyword to trigger advertising can be the basis for a trademark infringement lawsuit.  I suspect it will also initiate a new round of litigation against Google in an effort to claim some of the advertising revenue Google receives under this program.

One curious part of the thirty-four page decision is that on page fifteen, the Second Circuit concludes its analysis.   To what do we owe these extra nineteen pages?  An Appendix.  Usually, an appendix is the place to dump graphs, pictures and incomprehensible data.  But in this case, the court examines the real nut of the advertising keyword debate. After an exhaustive examination of the statute and legislative history, the court concludes that it can't reach a conclusion because the statute, the Lanham Act, and its history are just too ambiguous to reach a conclusion! 

The court, in the Appendix, then calls on Congress to fix the problem.  Given that Congress is preoccupied with the economic crisis, two wars and a handful of other social issues, I wouldn't hold my breath while waiting for that to happen.  Perhaps someone at the court decided that the research that they did on the issue should not be buried somewhere never to be seen again, but the Appendix still strikes me as odd.

While we wait for Congress, I suspect that someone in Las Vegas would be willing to take a bet as to which circuit court will be the next one to weigh in on this issue.  My money is on the Ninth Circuit.  What's your bet?

How Far Do You Go To Enforce Your Trademarks?

By Dave Rein

George Carlin's list of words you could not say on television is among the classics.  Although the list has evolved over time, the NCAA has another list of words that is vying for attention when you talk about men's college basketball. This list applies, not just on television, but everywhere.  

The Kansas City Star, in covering the two rounds of games held here in Kansas City, noted the great lengths that the NCAA goes to in protecting its trademarks --  from the NCAA bringing in its own basketball court (stripped of any logos other than its own), to warning area businesses not to use any of the 67 trademarks it has registered, to hiring scouts to spot potential infringers, and to keeping cups out of the Sprint Center other than those emblazoned with the official beverage sponsor's logo.

The cup sensitivity is apparently not a new thing as it even had someone replace basketball coach Roy William's cup during a press conference after his team advanced in the tournament several years ago. Apparently, his cup did not have the proper logos on it.

I don't have a problem with the NCAA enforcing its trademarks or limiting the exposure of marks of other companies who are not paying for the right to show their marks during the tournament.  

If CBS paid you $6 Billion over eleven years, you would protect your tournament as well.  And one of the best ways of protecting it is to brand the heck out of it.  For those of you who saw Eddie Murphy in the movie, "Coming to America", don't think that McDonald's won't clobber you on the head with a team of litigators if you opened up your own real-life version of McDowell's fast-food burger joint.  I would even help.

I was, however, interested in some of the trademarks on the list sent to area businesses.  Nobody should be surprised that "March Madness" is on the list.  Actually, you may want to read the Miller Small Business IP blog on who actually owns the mark and the interesting history of the "March Madness" mark.  Also not surprisingly, you cannot lure customers into your restaurant, hotel or shop using these trademarks:

  • NCAA;
  • Sweet 16;
  • Elite 8;
  • Final Four;
  • The Big Dance; or
  • The Road to the Final Four

But, there were other marks such as the "YES" mark that were not immediately obvious that a business should steer away from using.  You do hear commentators say "Yes!" through the course of a game when a player makes an incredible move that usually ends in a monster dunk.  But, "Yes" in that context doesn't strike me as a source indicator.  Nor am I aware that the YES mark was emphasized in advertising or said anymore often than in the broadcast of other sports events.

The YES trademark registration with the U.S. Patent and Trademark Office is limited to goods or services involving "organizing and conducting sports clinics for students, grades 6-12."  So can a restaurant hang a banner that simply says:  "YES!"? I doubt that anyone is claiming that the YES mark is famous so the normal trademark analysis would likely apply.  Will restaurant goers seeing the banner believe that the restaurant is somehow affiliated with a sports clinic put on by the NCAA?  

There may be some great arguments for why YES is on the list that restaurants and hotels need to avoid, but it got me thinking:  "What if there is no plausible argument of confusion?"  Would the NCAA have gone too far if it sent warning letters to businesses in host cities not to use marks that really don't apply?  What do you think?