Social media sites are transforming not only the daily lives of consumers, but also how companies interact with consumers. Here at Morrison Foerster, across all of our practice groups, we are seeing complex, cutting-edge legal issues arising out of social media. As with the Internet boom during the mid-to-late 1990s, social media is generating new legal questions at a far faster pace than the law’s ability to provide answers to such questions. In an effort to stay on top of these emerging issues, and to keep our clients and friends informed of new developments, Morrison Foerster publishes this blog devoted to the law and business of social media.<h2>ABOUT MORRISON FOERSTER</h2>Morrison Foerster is a leading global law firm that transforms complexity into advantage for its clients. Our clients include some of the largest financial institutions, banks, consulting and accounting firms, and Fortune 100, technology, and life sciences companies. Highlighting the firm’s commitment to client service, leadership in market-changing deals and impact litigation, and values-based culture, Morrison Foerster has been repeatedly recognized as one of the top 10 firms on The American Lawyer’s A-List. Year after year, the firm receives significant recognition from Chambers and The Legal 500 across their various guides, including Global, USA, Asia‑Pacific, Europe, UK, Latin America, and FinTech Legal. Our lawyers passionately care about delivering legal excellence while living our values. Morrison Foerster has a long-standing commitment to creating a culture that respects and celebrates differences, while providing an inclusive environment. The firm has achieved Mansfield Certification Plus since 2018 as a result of successfully reaching at least 30 percent women, communities of color, and LGBTQ+ lawyer representation in a notable number of current leadership roles and committees. The firm also has a long history of commitment to the community and society through providing pro bono legal services, including litigating for civil rights and civil liberties, improving public education and fostering the wellbeing of children, advocating for veterans, promoting international human rights, enforcing the right to asylum, and safeguarding the environment.

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Aaron is the chair of the firm’s Technology Transactions Group and co-chair of the Interactive + Digital Media Group. He advises clients on a wide range of complex transactions involving intellectual property and technology, including structuring and negotiating strategic licensing, development, collaboration, procurement, and distribution deals.Aaron’s practice focuses on advising both established and emerging companies in a variety of data- and technology-intensive sectors, including software, SaaS, cloud-based technology, digital media (social media, AR/VR, gaming, streaming media, AdTech), AI, healthcare, consumer electronics, e-commerce, other online business models, and mobile applications. He also maintains an active practice counseling companies on branding and marketing, trademark licensing, and content-related transactions, as well as the intellectual property aspects of mergers, acquisitions, asset spin-offs, and private equity investments.He has represented clients such as Autodesk, Meta, OpenAI, Splunk, Konami, Kaiser Permanente, SoftBank, Visa, and Yahoo, among others.Aaron has been recognized by numerous publications for his work on market-defining technology transactions. He is currently ranked by Chambers USA for “Technology Transactions.”Aaron also serves as co-editor of Socially Aware, the firm’s award-winning newsletter and blog devoted to the law and business of social media, and regularly publishes on various IP and technology-related topics. Aaron is also a sought-after speaker on new and emerging areas of law, and is a frequent presenter and panelist at conferences and legal services programs. In addition to his active practice, Aaron regularly provides pro bono assistance to various nonprofit and charitable organizations such as Common Sense Media and the Starlight Children’s Foundation. He is a member of the board of directors of California Lawyers for the Arts.While in law school at the University of California, Berkeley, Boalt Hall School of Law, Aaron served as executive editor of the California Law Review and was elected to the Order of the Coif. Following law school, Aaron served as law clerk to the Honorable William H. Orrick and the Honorable Martin J. Jenkins, both United States District Judges for the Northern District of California.

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Aaron is the chair of our Technology Transactions Group. He advises clients on a wide range of complex transactions involving intellectual property and technology, including structuring and negotiating strategic licensing, development, collaboration, procurement, and distribution deals. Aaron’s practice focuses on advising both established and emerging companies in a variety of data– and technology–intensive sectors, including software, SaaS, cloud computing, AR/VR, AI, gaming, healthcare, consumer electronics, social media, e–commerce, other online business models, and mobile applications. He also maintains an active practice counseling companies on the intellectual property aspects of mergers, acquisitions, asset spin–offs, and private equity investments.

Aaron P. Rubin

Lawrence Gallick is of counsel in the firm’s Austin office and a member of the Technology Transactions Group.Lawrence focuses his practice on technology transactions and licensing matters. His diverse experience includes advising on SaaS agreements, cross-licensing agreements, research and collaboration agreements, development agreements, and distribution agreements. He counsels a broad range of companies across the software, hardware, life sciences, biotech and FinTech spaces, as well as other entities including universities.He advises clients in connection with general corporate matters including contract negotiations, and leasing and technology placement agreements.Lawrence also serves as co-editor of <a href="https://www.sociallyawareblog.com/" target="_blank">Socially Aware</a>, the firm’s award-winning newsletter and blog devoted to the law and business of social media, and regularly publishes on various IP and technology-related topics.Prior to joining the firm, Lawrence was counsel at another major law firm. Before earning his law degree, Lawrence was a web consultant, project manager, and web developer in Portland, Oregon, where he managed and consulted on projects using industry methodologies and performed custom development and integration of content management systems.Lawrence was named a Super Lawyers “Rising Star” in 2015 and 2018–2022, and is licensed in both California and New York. Lawrence earned his J.D. from the University at Buffalo School of Law, where he was the electronic systems editor for the Buffalo Law Review and awarded the ABA-BNA Award for Excellence in the Study of Intellectual Property Law.

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Lawrence Gallick

Anthony Ramirez is a partner in the Technology Transactions Group in the New York office of Morrison Foerster.Anthony advises clients on general commercial and transactional matters. He regularly advises companies on the IP aspects of their M&A transactions. His clients include technology, digital media and content for television and music, financial services, and communications companies with diverse intellectual property assets and issues.His practice focuses on the legal aspects of developing, licensing, and commercializing technology and intellectual property, as well as negotiating general commercial contracts, including outsourcing transactions, as well as content and data licenses. He regularly assists clients with legal issues relating to licensing and commercialization of digital media and content, digital content that is distributed over the Internet or streamed, mobile applications and social media, as well as the licensing of recorded music for distribution via digital platforms. Anthony is also experienced with issues relating to open-source software, software development, artificial intelligence and machine learning, cloud-based technology, and protection of proprietary information.Anthony has extensive experience working on matters involving disruptive technologies, such as blockchain. He has helped fintech clients with general intellectual property issues in connection with terms of service for online financial products and services.Anthony is an integral part of the outside pro bono legal team for nonprofit organizations based in New York, including advising clients on legal issues regarding entertainment, social media, privacy rights, and the negotiation of outsourcing and service agreements. Anthony received his J.D. from the University of Michigan Law School in 2009. He received his B.S. from Cornell University in 2004.

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Anthony Ramirez is a partner in the Technology Transactions Group in the New York office of Morrison Foerster. He advises clients on general commercial and transactional matters. His clients include technology, media, and communications companies with considerable intellectual property assets. His practice focuses on the legal aspects of licensing and commercializing technology and intellectual property, as well as negotiating general commercial contracts. He also regularly assists clients with legal issues relating to mobile applications and social media.

Anthony M. Ramirez

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Socially Aware is devoted to the law and business of social media, proactively addressing emerging issues and keeping our clients informed of new developments. We cover fields such as artificial intelligence, privacy and data security, Section 230, intellectual property, and much more.

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The pressure on ISPs to take responsibility for the sites accessible through their services has been growing in recent years (e.g., the requirement for certain 

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Counterfeit Goods: Has the War on ISPs Just Gotten Tougher?

Counterfeit Goods: Has the War on ISPs Just Gotten Tougher? | Socially Aware

The pressure on ISPs to take responsibility for the sites accessible through their services has been growing in recent years (e.g., the requirement for certain ISPs to block <a href="http://www.theguardian.com/business/2013/oct/29/record-labels-isp-piracy-block-music-filesharing" target="_blank" rel="noopener">filesharing sites</a>). On October 17, 2014, the High Court of England and Wales took this one step further by granting a website-blocking order against certain ISPs in a <a href="http://www.bailii.org/ew/cases/EWHC/Ch/2003/3354.html" target="_blank" rel="noopener">case</a> involving counterfeit goods. This case is notable for the fact that the infringement related to trademarks and not copyright. While English copyright law has a <a href="http://www.legislation.gov.uk/ukpga/1988/48/section/97A" target="_blank" rel="noopener">provision</a> under which blocking injunctions may be sought, there is no statutory equivalent under trademark law, yet an injunction was still granted. Has the war on ISPs just gotten tougher?The ISPs in question were Sky, BT, EE, TalkTalk and Virgin, and the matter centered around six websites that advertise and sell counterfeit goods (such as Cartier and Montblanc). The claimants (trademark owners in the Richemont/Cartier group) sought a blocking injunction from the ISPs for these six sites.In reaching his decision to grant the blocking injunction, Mr. Justice Arnold focused on (a) whether the court had jurisdiction to grant the injunction; (b) whether such an injunction could be granted where no specific statutory legislation was in place relating to this remedy; and (c) whether the threshold conditions were met for granting such an injunction.Having established that the court did indeed have jurisdiction, Mr. Justice Arnold noted that, although there is no specific legislation providing for injunctions in cases of trademark infringement, to grant such an injunction against a non-infringing party would nevertheless be consistent with EU law and UK policy. Further, Mr. Justice Arnold noted that “the 1994 [Trade Mark] Act both confers remedies against persons who are not necessarily infringers . . . and yet does not purport to contain a comprehensive code of the remedies available to a trade mark proprietor . . . More generally, there is nothing inconsistent between granting an injunction against intermediaries . . . and the provisions of the 1994 Act.” Thus, in this instance, the court held that an injunction could be granted even where no specific statutory legislation was in place.Mr. Justice Arnold then focused on whether the threshold conditions for an injunction (in this case a website-blocking order) were met:<ol><li>Is the defendant an intermediary within the meaning of <a href="http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32004L0048R(01):EN:HTML" target="_blank" rel="noopener">Article 11</a> of the Enforcement Directive (Directive 2004/48/EC)? The court determined that ISPs clearly fall into this category.</li><li>Do the users and/or the operators of the website in question infringe the claimant’s trademarks? The court determined that each of the six websites did infringe because each provided goods bearing signs identical to the trademarks in dispute, and sold these goods in response to orders without consent of the claimants.</li><li>Do users and/or the operators of the websites use the ISP’s services to infringe? Mr. Justice Arnold held that the answer to this question was yes. The ISPs have an essential role, as it is via their services that the advertisements and offers for sale are communicated to users in the UK. Even if UK consumers don’t purchase any goods, the first act of infringement is already complete based just on the advertisements.</li><li>Do the ISPs have actual knowledge? Here again, the court held in the affirmative: If the operators of the websites in question use the ISPs’ services to infringe, then the ISPs have actual knowledge of the infringement, based on the fact that the claimants sent notices to the ISPs and the other evidence produced.</li></ol>In considering whether the injunction would unduly interfere with the ISPs’ freedom to carry on business and Internet users’ freedom to receive information, Mr. Justice Arnold considered that no new technology would be required to block the sites in question and, although alternative measures such as takedown and de-indexing were available, these measures would not be as effective as an injunction and would not be less burdensome. However, he did adopt certain points made by the <a href="https://www.openrightsgroup.org/" target="_blank" rel="noopener">Open Rights Group</a>, including requiring that additional information be provided to users when they attempt to access the blocked sites and limiting the order to an initial two-year period.The Internet is increasingly used in the counterfeit goods trade. A study published in 2008 by the Organisation for Economic Co-operation and Development entitled The Economic Impact of Counterfeiting and Piracy estimated that the value of counterfeited and pirated goods moving through international trade alone in 2005 amounted to US$200 billion. In 2014 the European Commission published its Report on EU Customs Enforcement of Intellectual Property Rights: Results at the EU Border, which recorded that, in 2012, customs authorities at the external borders of the EU seized a total of over 39.9 million articles, representing a market value of almost €900 million, with the UK seizing more articles than any other Member State. It remains to be seen, however, whether this case, acknowledged by Mr. Justice Arnold as a test case, will open the floodgates for trademark owners affected by this widespread issue or, given that domain names can be easily purchased and new sites quickly set up, will have little real impact.