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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Partner

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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Of Counsel

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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Lawrence W. Gallick

Social Links: If the Suit Fits

Social Links: Age Verification, X Appeal, and the Great White North

Social Links: Fake Reviews, Real Rulings, and an Epic Fail

Lawrence W. Gallick on Toth v. Everly Well, Inc.

Social Links: Going Back to Cali

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Popular online marketplace <a href="http://www.cafepress.com/">CafePress.com</a> suffered a legal setback recently when a U.S. District Court in the Southern District of New York denied CafePress’s motion for summary judgment against <a href="http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1141&context=historical">claims of trademark infringement</a>. CafePress operates an online “print on demand” service that allows users to upload designs which CafePress then prints on a variety of items. The users receive a share of the money that CafePress makes when it sells items displaying the users’ designs. These items include everything from coffee mugs and <a href="http://www.cafepress.com/+steins">beer steins</a> to iPhone cases and <a href="http://www.cafepress.com/+flip-flops">flip-flops</a>. In 2009, guitar neck manufacturer Born to Rock Design Incorporated (BTR), which owns a federal registration for the trademark “Born to Rock,” sent a letter to CafePress asking the site to stop selling merchandise displaying the mark. Since 2003, CafePress had produced a number of different items displaying the “Born to Rock” phrase, all based on designs provided by users. These designs included the following:After CafePress refused to remove user designs incorporating the phrase, BTR filed a complaint for, among other things, trademark infringement. Following discovery, CafePress filed a motion for summary judgment, arguing that the “Born to Rock” designs were not used in commerce (an element of trademark infringement) and that, even if they were, CafePress’s use was “fair use”—i.e., a descriptive or ornamental use of the phrase “Born to Rock” in a non-trademark sense.  The court struck down the first argument outright, stating that CafePress was being “facetious” in arguing that it did not use the mark in commerce given that CafePress actually imprints the designs on merchandise and ships that merchandise to customers. In considering the fair use argument, the court acknowledged that certain uses of the “Born to Rock” designs may constitute non-trademark fair use (e.g. “Born to Ride / Born to Rock”), but concluded that CafePress could not rely on fair use as a blanket defense for all of the designs.Legal scholar Eric Goldman has pointed out that CafePress can raise other, stronger arguments in the future, including that the trademark is invalid and that consumers were not likely to be confused by CafePress’s <a href="http://blog.ericgoldman.org/archives/2012/09/cafepress_could.htm">use of the mark</a>. Nonetheless, the district court’s denial of summary judgment does send a message to trademark holders: you can sue online service providers for trademark infringement based on user-generated content and you just might win.  The Digital Millennium Copyright Act (DMCA) creates a safe harbor for online service providers who promptly remove user-generated copyright-infringing content after receiving takedown notices, but there is no equivalent safe harbor for content that infringes trademarks (although chillingeffects.org, a website devoted to the DMCA, does note that “in the absence of any caselaw on the subject, should a trademark holder bring a claim for contributory infringement, an [online service provider] might be able to mount a valid defense by analogy to [DMCA] section 512(c).”).Social media sites in particular may be easy targets for trademark claims based on user-generated content. Such sites often host “community pages” that serve as fan pages for brands without any authorization from the companies involved (for example, compare this <a href="https://www.facebook.com/CinnamonToastCrunch">official Facebook page</a> established by a trademark holder with this <a href="http://www.facebook.com/pages/Cinnamon-Toast-Crunch/62890498529">community page run by a fan</a>). In the wake of the case against CafePress, social media sites and other websites that host user-generated content should be aware of these trademark-related risks and the fact that the DMCA safe harbors do not apply to trademark claims.

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Jessica’s practice focuses on complex civil litigation, with an emphasis on class action, financial services litigation and enforcement, and commercial disputes. Recent representative matters include the defense of a leading marketplace lender in a putative nationwide class action under state usury laws; a major consumer products company in multidistrict antitrust litigation; a

Jessica Kaufman

Jessica’s practice focuses on complex civil litigation, with an emphasis on class action, financial services litigation and enforcement, and commercial disputes. Recent representative matters include the defense of a leading marketplace lender in a putative nationwide class action under state usury laws; a major consumer products company in multidistrict antitrust litigation; a professional services firm in a malpractice action; a lingerie company facing consumer protection claims, including claims of false advertising; and financial institutions facing claims under the federal and state contract and antitrust laws, RICO Act, Right to Financial Privacy Act, Fair Debt Collection Practices Act, and state unfair and deceptive practices statutes. She also regularly advises and represents clients in complex commercial disputes.What do you like best about your work? Our work is our role as problem solvers. As litigators, we help clients address immediate problems. But when we know our clients and their businesses well, our clients also turn to us for longer term advice, to help identify issues before they arise, and think about how to do things better.What do you enjoy doing in your free time? I try to work with my hands. I started learning wheel-thrown pottery last year and enjoy forcing my family and friends to accept impractically shaped mugs, not just at Christmas, but — lucky for them — all year long.How do you see your practice changing in the next few years? I see my practice including more state AG enforcement work in the years ahead. The regulatory environment for our financial services clients is poised to change dramatically at the federal level; active AGs in New York and California will see that as an opportunity to fill the void.

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Born to Mock: Trademark Holder’s Fight to Remove Mark on Kitsch Merchandise May Have Broad Legal Implications

Born to Mock: Trademark Holder’s Fight to Remove Mark on Kitsch Merchandise May Have Broad Legal Implications

Popular online marketplace CafePress.com suffered a legal setback recently when a U.S. District Court in the Southern District of New York denied CafePress’s mo

Plaintiffs’ attorneys seeking to cash in on grande class action lawsuits against companies that launch text message advertising campaigns suffered a setback in June as the U.S. District Court in the Southern District of California granted Taco Bell summary judgment in a lawsuit for Taco Bell’s alleged violation of the Telephone Consumer Protection Act (TCPA). The case, Thomas v. Taco Bell, was brought on behalf of a number of the 17,000 mobile phone owners in the Chicago area who received a text message in October 2005 encouraging them to purchase an order of delicious <a href="http://www.tacobell.com/food/nachos/Nachos-BellGrande">Nachos Bellgrande</a> from their local Taco Bell franchises.  As unsolicited text message advertisements are often found to violate the TCPA, there may have been a case against the marketing company that actually sent the text messages, but the plaintiffs instead asserted their claim against the local Chicago franchisee association that ordered the advertisement and Taco Bell itself.  The case against the association was dropped for a <a href="http://www.scribd.com/doc/101030295/Thomas-v-Taco-Bell-Dismissal-of-Chicago-Assoc">lack of personal jurisdiction</a>, while the court granted summary judgment to Taco Bell based on a finding that Taco Bell was not vicariously liable for the franchisee association’s texting campaign.Using precedent from the Ninth Circuit, the court stated that vicarious liability for the text message campaign would have existed only if Taco Bell controlled the “manner and means” of the text message campaign.  Although the franchisee association did need to secure Taco Bell’s approval in order to receive reimbursement from Taco Bell for the campaign, the court held that control of the “purse strings” in this case did not constitute Taco Bell’s control of the manner and means of the advertising, particularly because the franchisee association could have launched the campaign with alternative funding without Taco Bell’s permission or any repercussions from the franchisor.  The court also rejected the plaintiffs’ argument that Taco Bell having one member on the franchisee association’s board (out of four) established control, as this minority interest was not controlling, and further stressed that approval by a company of an advertising campaign is not the same as the control required for liability.This decision allows a little more breathing room for large franchisor companies, as it suggests that a franchisor-franchisee relationship does not automatically lead to vicarious liability for violations of the TCPA, which can carry penalties of up to $500 for each violation (a vast increase in cost over the usual five or so cents per text).  However, since the Ninth Circuit declared in Scatterfield v. Simon & Schuster, Inc. that text messages are tantamount to phone calls for the purposes of the TCPA, plaintiffs’ attorneys have been relentless in their attacks on companies that employ text message ad campaigns (as we <a href="https://www.sociallyawareblog.com/2012/07/19/face-off-consumer-sues-hockey-team-over-text-messages/">previously</a> pointed out in this blog, hockey fans are now suing their own beloved team for text-related TCPA violations).  In fact, the Thomas summary judgment was Taco Bell’s second favorable TCPA decision in a month, with a California District Court <a href="http://www.scribd.com/doc/99354515/Ibey-v-Taco-Bell-12-CV-0583-HVG-S-D-Cal-June-18-2012">dismissing a claim</a> that Taco Bell’s confirmatory opt-out messages violated the TCPA just one week earlier.  Despite these two victories for Taco Bell, with hundreds of companies launching thousands of advertising campaigns and promotions leading to the sending of millions of text messages, it seems unlikely that plaintiffs will have a shortage of TCPA claims any time soon.

G2G, Yo Quiero TB: Taco Bell Found Not Liable for Franchisee Text Message Campaign

Plaintiffs’ attorneys seeking to cash in on grande class action lawsuits against companies that launch text message advertising campaigns suffered a setback in 

G2G, Yo Quiero TB: Taco Bell Found Not Liable for Franchisee Text Message Campaign

Over the past year, a number of courts across the country have decided cases involving contributory infringement and the application of the <a href="http://www.law.cornell.edu/uscode/text/17/512">Digital Millennium Copyright Act’s § 512(c) safe harbor</a> in the social media context. Unfortunately for those who favor a uniform approach to the law, the precedent being developed is in many ways inconsistent. On one side of the country, the Ninth Circuit solidified § 512(c)’s protections for social media sites in <a href="http://caselaw.findlaw.com/us-9th-circuit/1589029.html">UMG Recordings, Inc. v. Shelter Capital Partners LLC</a> by holding that social media sites are not liable for infringing user-posted material subject to compliance with the DMCA’s notice and takedown procedures.  Several months later on the other side of the country, the Second Circuit addressed similar questions in Viacom Int’l, Inc. v. YouTube, Inc. Judge Cabranes’s opinion introduced the possibility that a social media site-owner’s “willful blindness” to infringing activity may trigger liability, thus raising the specter of (very) expensive litigation. The Seventh Circuit has now held in <a href="http://www.scribd.com/doc/102162833/Flava-Works-Inc-v-Gunter-Opinion-7th-Cir-Aug-2-2012">Flava Works, Inc. v. Gunter</a> that online service providers are protected from contributory infringement liability—and therefore need not depend on the DMCA’s safe harbors at all—where they do not actually host allegedly infringing material or encourage copyright infringement but merely link to such material.In an opinion written by one of <a href="http://abovethelaw.com/2012/07/benchslap-of-the-day-justice-scalia-pulls-rank-on-judge-posner/">the country’s preeminent circuit judges</a> and <a href="http://www.youtube.com/user/mugumogu?feature=results_main">cat</a> fanciers, <a href="http://www.newyorker.com/archive/2001/12/10/011210fa_fact_macfarquhar">Richard Posner</a>, the court addressed whether to uphold a preliminary injunction against <a href="http://en.wikipedia.org/wiki/Social_bookmarking">social bookmarking</a> site myVidster for <a href="http://www.copyright.gov/docs/regstat072204.html">contributory copyright infringement</a>. myVidster allows users to “bookmark” videos they find on the Internet, such as videos from <a href="http://www.youtube.com/user/mugumogu?feature=results_main">YouTube</a> or <a href="http://www.vimeo.com/">Vimeo</a>. myVidster automatically retrieves the “embed code”—code that permits the video to be viewed in a browser window separate from the original website (for example, when you link to a YouTube video on your Facebook page, the site automatically embeds the video so that your friends can view the video on Facebook rather than having to go to YouTube). myVidster then creates a new page for the embedded video, replete with advertisements.Plaintiff Flava Works is an entertainment company that produces and streams adult videos through various websites. Flava allows its customers to download its content solely for personal use. Users are not permitted to upload Flava’s videos to other sites or to create any additional copies of the content. Thus, in Judge Posner’s view, a user who copies Flava’s videos by downloading them and then uploading the copyright-protected video to a third-party website is a direct infringer of Flava’s copyright. Because myVidster didn’t upload the infringing videos, the court found that myVidster did not directly infringe Flava’s copyright.The court next considered whether myVidster should be held liable for contributory infringement based on such copying by Flava’s users. Posner disregarded the oft-cited <a href="http://scholar.google.com/scholar_case?case=13919786496570065695">Gershwin Publishing Corp. v. Columbia Artists Management, Inc.</a> definition of contributory infringement in favor of a more succinct standard from <a href="http://scholar.google.com/scholar_case?case=13557798298967650893">Matthew Bender & Co. v. West Publishing Co.</a>: contributory infringement is “personal conduct that encourages or assists [direct] infringement.” The court ultimately held that myVidster was not liable for contributory infringement for two reasons.First, myVidster does not make any copies of Flava’s videos—whether on its own initiative or at its users’ direction—but instead links to videos on servers controlled by third parties. In bookmarking offending videos, myVidster’s users were not copying such videos. And by embedding those videos on its site, myVidster was not furthering any copying. Rather, the court found that myVidster effectively acts as an exchange, connecting the server hosting the video and myVidster’s users. Posner wrote:[The user’s] bypassing Flava’s <a href="http://en.wikipedia.org/wiki/Pay_wall">pay wall</a> by viewing the uploaded copy is equivalent to stealing a copyrighted book from a bookstore and reading it. That is a bad thing to do (in either case) but it is not copyright infringement. The infringer is the customer of Flava who copied Flava’s copyrighted video by uploading it to the Internet.Second, the court found that myVidster had done nothing to encourage uploaders to upload Flava’s videos. Therefore, myVidster did not “encourag[e]” infringement and was not a contributory infringer. As a result, myVidster had no need to resort to the § 512(c) safe harbors.One of the most interesting aspects of the Flava Works opinion is its discussion of the various flavors (flavas?) of contributory infringement. Google and Facebook submitted an <a href="http://www.scribd.com/doc/74734810/Flava-Works-vs-Myvidster-Marques-Rondale-Gunter-Salsa-Indy-LLC-Filed-Non-Party-Motion-for-Leave-to-File-Brief-of-Amici-Curiae-Google-Inc-and-Fa">amicus curiae brief</a>  in which they argued that the connections between myVidster’s (and other social bookmarking sites’) activities and any copyright infringement by users are simply too attenuated to constitute either direct or contributory infringement. They argued that myVidster was, at most, “contributing to contributory infringement.” Thus, myVidster’s potential infringement was not “secondary,” but rather, tertiary: the direct infringers are those who uploaded Flava’s copyrighted material, those who bookmarked the videos are arguably “secondary” infringers, while myVidster might be a “tertiary” infringer. Posner dismissed this argument, finding that common law notions of remoteness were sufficient to deal with this “contributing to contributory infringement” situation: “<a href="http://scholar.google.com/scholar_case?case=10670839327799086762">An injury will sometimes have a cascading effect that no potential injurer could calculate in deciding how carefully to act. The effect is clear in hindsight—but only in hindsight</a>.” For Judge Posner, even in social media situations, there’s no need for the direct-secondary-tertiary “layer cake” model; there is simply infringement, contributory infringement, and non-infringement. And regardless of the theoretical “level” of removal of myVidster from the underlying direct infringement, myVidster was not “materially contributing” to that infringing activity—that is, myVidster’s actions were too remote from the uploader’s infringement—and was therefore not liable for contributory infringement by copying.Judge Posner also addressed whether myVidster might be liable for contributory infringement based on public performance of Flava’s videos. The <a href="http://www.law.cornell.edu/uscode/text/17/106">Copyright Act</a> makes it unlawful “to transmit or otherwise communicate a performance . . . of the work . . . to the public . . . whether the members of the public capable of receiving the performance . . . receive it in the same place or in separate places and at the same time or at different times.” Posner identified two ways in which myVidster might infringe Flava’s performance right: “performance by uploading” and “performance by receiving.” On the “uploading” interpretation, “uploading plus bookmarking a video is a public performance because it enables a visitor to the website to receive (watch) the performance at will[.]” On the “receiving” interpretation, the performance occurs (or is, in other words, finalized) when the user clicks on and plays the video.Posner dismissed the “uploading” view, arguing that myVidster is simply “giving web surfers addresses where they can find entertainment[,]” much like <a href="http://www.timeout.com/san-francisco/">TimeOut</a> and the <a href="http://www.newyorker.com/archive/2001/12/10/011210fa_fact_macfarquhar">New Yorker </a> list the details of various social events happening in the real world. According to Posner, the only infringer on the “uploading” view is the uploader himself. myVidster does not interfere with the data streaming directly from the host to the viewer, so myVidster did not contribute to the uploader’s infringement of Flava’s public performance right.On the “receiving view,” the infringing act occurs when the myVidster users click “play” on Flava’s videos. Flava argued that, by providing an exchange that makes Flava’s videos available to myVidster’s users, myVidster provides “‘support services’ without which ‘it would [have been] difficult for the infringing activity to take place in the massive quantities alleged.’” Posner, however, was not persuaded by the “receiving” argument either. First, myVidster was not selling the allegedly infringing videos and thus had no direct pecuniary motive for pushing visitors to view Flava content bookmarked by the site’s users. Second, there was no substantial evidence that the videos were being accessed via myVidster rather than other websites. Thus, in Posner’s view, there was no basis to hold that myVidster was “abet[ting] others’ infringements” of Flava’s public performance right.Judge Posner left open the possibility that myVidster had invited users to post infringing material, in which case it could be liable for <a href="http://scholar.google.com/scholar_case?case=8647956476676426155">inducing infringement</a>. Similarly, he stated that myVidster’s now-discontinued <a href="http://en.wikipedia.org/wiki/Sideloading">sideloading</a> service constituted direct—not secondary—infringement. Sideloading typically involves the transfer of data between two local devices. myVidster’s service allowed premium members to back up bookmarked videos on myVidster’s servers. As at least one <a href="http://blog.ericgoldman.org/archives/2012/08/video_embedding_1.htm">commentator</a> has noted, this raises interesting issues for sites like <a href="http://www.pinterest.com/">Pinterest</a> and other social networks that periodically sideload copyrighted material posted by users on the presumption that such sideloading is authorized by, and therefore done at the direction of, the user. If such actions constitute direct infringement, the §512(c) safe harbors may not be available.

Judge Posner Kicks that Flava in Ya Ear: New Guidance on Contributory Infringement from the Seventh Circuit

Over the past year, a number of courts across the country have decided cases involving contributory infringement and the application of the Digital Millennium C

Judge Posner Kicks that Flava in Ya Ear: New Guidance on Contributory Infringement from the Seventh Circuit

In today’s information economy, content owners are faced with a challenging decision regarding digital content. On the one hand, the viral nature of social media can mean unprecedented exposure as digital content is shared. On the other, that opportunity can come with significant legal risk if companies take an insufficiently careful approach to intellectual property clearance issues. One luxury clothing brand, Burberry Ltd., recently discovered just how substantial that legal risk can be.Burberry approached social media with an innovative concept: “historical timelines” on its various social media pages, including <a href="http://www.facebook.com/burberry">Facebook</a>, <a href="http://www.twitter.com/Burberry">Twitter</a>, and Instagram. These timelines featured photos of celebrities wearing Burberry’s iconic trench coats, scarves, and other products. Among Burberry’s chosen photos was a shot of Humphrey Bogart from the final scene of <a href="http://www.imdb.com/title/tt0034583/">Casablanca</a>, in which Bogart’s Rick, clad in a timeless Burberry trench, sends Ingrid Bergman’s Ilsa off to Brazzaville. While Burberry acquired permission to use the photo from photo agency <a href="http://www.corbisimages.com/">Corbis</a>, which manages the rights to various stock photos from Casablanca, Burberry failed to clear its use with Bogart LLC, which owns the actor’s publicity rights. <a href="http://www.law.cornell.edu/uscode/text/15/1125">Applicable law</a> allows a celebrity to object to use of his or her name or likeness in a commercial context, particularly if the use is likely to cause members of the intended market to believe that the celebrity endorses the product. Bogart LLC <a href="http://www.scribd.com/doc/92146247/Burberry-v-Bogart">alleged</a> that Burberry’s use of the photo falsely implied that Bogart had endorsed the brand, thereby violating Bogart LLC’s publicity rights. Burberry countered, arguing that its timelines constituted “a historical positioning of the image within an educational project along with numerous other photographs of people wearing Burberry apparel over the last century.”Although Burberry and Bogart LLC settled their pending state and federal cases for an undisclosed amount, this case provides a good example of the unexpected issues that can arise when brand managers fail to consider the full spectrum of rights that may be implicated by the use of photographs and other content. While the content industries have spent the last decade educating the public on copyright law’s effects in the digital media world, less attention has been paid to other areas of potential liability, such as trademark infringement and privacy and publicity rights violations, and their respective effects on the social media experience.For example, in 2007, Virgin Mobile Australia (VMA) launched an advertising campaign using amateur photography culled from the social photo-sharing site, <a href="http://www.flickr.com/">Flickr</a>. The photos used by VMA were licensed under a Creative Commons “<a href="http://creativecommons.org/licenses/by/2.0/">Attribution</a>” license, which requires only that the original creator—that is, the copyright holder—be given credit. VMA chose for its campaign a photo of then-15-year-old Alison Chang, taken by her church youth counselor and uploaded by him to Flickr. Although VMA had appropriate copyright clearance to use the counselor’s picture under the Creative Commons license, Chang’s parents <a href="http://www.smh.com.au/news/technology/virgin-sued-for-using-teens-photo/2007/09/21/1189881735928.html">sued</a> VMA for failing to get permission from Chang or her parents to use Chang’s name or likeness. Although the case was <a href="http://www.citmedialaw.org/sites/citmedialaw.org/files/2009-01-16-%20Dismissal%20Opinion%20%28Chang%29.pdf">dismissed</a> on procedural grounds, the incident illustrates how easily (and often) clearance procedures are overlooked when it comes to Internet-based content.Similar cases have raised complex issues relating to federal preemption of state law claims. For example, in <a href="http://scholar.google.com/scholar_case?case=16156934007444564709">Laws v. Sony Music Entertainment, Inc.</a>, the plaintiff sued Jennifer Lopez and LL Cool J, alleging misappropriation of her name and voice through use of a sound recording on which the plaintiff’s voice was featured. The defendants had obtained a license to use the sound recording on which the plaintiff’s voice was featured, but had not obtained from the plaintiff the right to use her voice. Nonetheless, the Ninth Circuit held that, on this set of facts, the federal Copyright Act preempted the plaintiff’s state law right-of-publicity claim. Thus, her permission was not required for the defendants to use the validly licensed sound recording. By contrast, a different Ninth Circuit panel in <a href="http://scholar.google.com/scholar_case?case=13816450651302557386">Downing v. Abercrombie & Fitch, Inc.</a>, held that the Copyright Act did not preempt the plaintiffs’ state law publicity claims based on Abercrombie’s advertising use of a photo of the plaintiffs taken after the 1965 Makaha International Surf Championship in Hawaii. Thus, Abercrombie should have sought the plaintiffs’ permission in the first instance. The preemption inquiry is fact-bound—the Copyright Act preempts state law publicity claims in some circumstances, but not others.While the details of these preemption cases exceed the scope of this article, suffice it to say that a company’s social media marketing personnel may not have the expertise to wade through such complex clearance issues. A clearance system that focuses narrowly on copyright issues and doesn’t consider other forms of intellectual property may therefore result in unexpected claims. It is also worth noting that the safe harbors provided by the <a href="http://scholar.google.com/scholar_case?case=13644579048975596329">Digital Millennium Copyright Act</a> apply only to copyright claims, not other types of claims such as those mentioned above, and in any event, provide protection only with respect to <a href="http://www.youtube.com/user/mugumogu?feature=watch">user-generated content</a>, not content posted by a company’s own employees. Therefore, companies should not assume that the DMCA will shield them from all liability for content posted on their social media pages.Social media is an exciting new channel for reaching both current and prospective customers. But from a rights-clearance perspective, the old rules largely remain in force. Accordingly, companies’ review procedures for company-driven social media content should, to the extent possible, mirror the process they undertake for print ads and other traditional media. And where that may not be feasible (given the speed and flexibility often required on social media platforms), companies should institute rigorous policies and train marketing associates on how to avoid potential liability.

The Potential Perils of Posting Pictures (on Social Media)

In today’s information economy, content owners are faced with a challenging decision regarding digital content. On the one hand, the viral nature of social medi

The Potential Perils of Posting Pictures (on Social Media)

<a href="https://www.sociallyawareblog.com/2012/05/21/whats-not-to-like/">As we reported earlier this year,</a> the Federal District Court for the Eastern District of Virginia held in <a href="https://law.justia.com/cases/federal/appellate-courts/ca4/12-1671/12-1671-2013-09-18.html">Bland v. Roberts</a> that merely “liking” a Facebook page is insufficient speech to merit constitutional protection.In the case, former employees of the Hampton Sheriff’s Office brought a lawsuit against Sheriff B.J. Roberts, in his individual and official capacities, alleging that he violated their First Amendment rights to freedom of speech when he fired them, allegedly for having supported an opposing candidate, Jim Adams, in the local election for Sheriff.  Two of the plaintiffs had done nothing more than “like” Adams’s Facebook page.Shortly after the district court ruled in favor of the defendants, the plaintiffs filed a <a href="http://www.citmedialaw.org/sites/citmedialaw.org/files/05-22-2012-Notice%20of%20Appeal.pdf">notice of appeal</a>.  Now <a href="http://www.facebook.com/">Facebook</a> and the <a href="http://www.aclu.org/">American Civil Liberties Union</a> (ACLU) have filed amicus briefs on behalf of the plaintiffs, arguing that “liking” something on Facebook is speech—or at the very least, expression—under the First Amendment, and thus should be entitled to constitutional protection.In its amicus brief, <a href="http://www.scribd.com/doc/102260753/Bland-v-Roberts">Facebook argues</a> that when the plaintiffs clicked the “like” button on Jim Adams’s campaign page, it was “the 21st-century equivalent of a front-yard campaign sign.”  Facebook also notes, <a href="https://www.sociallyawareblog.com/2012/06/05/interview-with-debbie-rosenbaum-regarding-bland-v-roberts/">as we did in our video interview with LexBlog</a>, that clicking “like” is more than a passive signal of approval because it has real effects on Facebook’s algorithm, including “notices and statements on a Facebook user’s profile page, in his or her friends’ news feeds, and in other places around the site.”The <a href="http://www.aclu.org/files/assets/bland_v._roberts_appeal_-__amicus_brief_.pdf">ACLU amicus brief</a> takes issue with the district court’s ruling that “liking” is not entitled to protection because it involves no actual statements.  In response, the ACLU argues that even if “liking” something is not “pure speech,” courts have long recognized that First Amendment protection is not limited to actual words.  The brief goes on to cite almost a dozen cases where conduct or expression has been held to be protected under the First Amendment.  Further, the ACLU argues, whether someone presses a “like” button to express his thoughts or presses the buttons on a keyboard to write out those words, “the end result is the same:  one is telling the world about one’s personal beliefs, interests, and opinions.  That is exactly what the First Amendment protects, however that information is conveyed.”This case is a prime example of the courts’ challenge of interpreting traditional legal regimes in dynamic, Internet contexts and one that we will continue to follow as it progresses.

Update: What’s Not to Like?

As we reported earlier this year, the Federal District Court for the Eastern District of Virginia held in Bland v. Roberts that merely “liking” a Facebook page 

Update: What’s Not to Like?

The Federal Trade Commission (FTC) recently reached an $800,000 <a href="http://ftc.gov/os/caselist/1023163/120612spokeoorder.pdf">settlement</a> with the data broker Spokeo, Inc. (“Spokeo”).  The FTC’s complaint alleged violations not normally seen together:  First, that Spokeo distributed personal information for background checks by employers in ways that failed to comply with the Fair Credit Reporting Act (FCRA) and, second, that Spokeo’s employees posted Spokeo product endorsements without revealing their connection to the company, in violation of <a href="http://www.law.cornell.edu/uscode/text/15/45">Section 5</a> of the <a href="http://www.law.cornell.edu/uscode/text/15/chapter-2/subchapter-I">FTC Act</a>, which prohibits “unfair or deceptive acts or practices in or affecting commerce.”The Alleged FCRA ViolationsThe FCRA imposes certain obligations on “consumer reporting agencies,” which are generally defined as businesses that assemble or evaluate certain information about a consumer and furnish it to third parties for their use in determining the consumer’s eligibility for credit, insurance, or employment.  The FCRA requires a consumer reporting agency to follow specified procedures to help protect consumers’ rights, including steps to ensure that each report it sells is used for a purpose specifically permitted by the law and that the information contained in the report is accurate.  The law also requires a consumer reporting agency to inform each recipient of a consumer report of its obligations under the Act, including that it notify a consumer in the event that it takes adverse action against him or her based on information in the report (such as a decision to deny him or her credit or not to hire him or her).Spokeo collects personal information about consumers from hundreds of online and offline sources—including social networks and marketing databases—and combines this information to create profiles on those consumers.  Spokeo then sells access to these profiles.  The FTC alleged that, because Spokeo marketed the profiles to human resources departments and others for use in the hiring process, it was a consumer reporting agency subject to the FCRA.  According to the FTC, Spokeo did not, however, comply with the Act’s requirements.  Moreover, even though Spokeo had changed its website terms of service to state that it was not a consumer reporting agency and to prohibit clients from using its information for purposes protected by the FCRA, Spokeo did not actually enforce those terms, such as by revoking the access of companies that it knew—or should have known—were using its consumer reports for employment purposes.Although this is the FTC’s first FCRA case involving the sale of data collected for employment purposes from social media and other online sources, it should not have come as a complete surprise, as this was not the first time that the agency had weighed in on the subject.  In May 2011, FTC staff <a href="http://ftc.gov/os/closings/110509socialintelligenceletter.pdf">wrote</a> to a company described as “an Internet and social media background screening service used by employers in pre-employment background screening,” reminding it of the FCRA’s applicability.  Even in light of these FTC activities, however, businesses may not appreciate just how broad the law’s definition of a “consumer reporting agency” is.  Companies that compile or evaluate and then distribute consumer data should seek to determine whether they need to comply with the FCRA’s requirements.  Further, companies that receive consumer reports from consumer reporting agencies—whether to make employment decisions or otherwise—are also bound by certain obligations under the FCRA and, potentially, state laws.The Allegedly Deceptive EndorsementsJust a few years ago, the FTC updated its Endorsement Guides (“Guides”) to address issues specific to social media marketing.  Although the Guides do not have the force of law, they provide marketers with guidance from the FTC on avoiding potentially deceptive practices under Section 5 of the FTC Act.  Even prior to this update, however, the Guides made clear that any connection between an endorser and the seller of the advertised product—such as an employment relationship—must be disclosed, as such a connection affects the weight that consumers give to the endorsement.  The message to companies:  Create and enforce a social media policy that requires your employees to disclose the fact of their employment when talking about your products or services.Spokeo allegedly did just the opposite:  The FTC asserted in its <a href="http://ftc.gov/os/caselist/1023163/120612spokeocmpt.pdf">complaint</a> that Spokeo directed its employees to pose as ordinary consumers and post endorsements praising the company’s products.  What’s more, Spokeo managers actually reviewed the endorsements and supplied the accounts that were used to make them—all to give the public the misleading impression that Spokeo had numerous happy customers.  In the FTC’s view, this practice was deceptive because, had consumers known that the endorsements were posted by the seller’s own employees, they would have known that they should probably take the endorsements with a grain of salt.  In its settlement with the FTC, Spokeo agreed not only to comply with the Guides going forward but to also remove all of the fake endorsements already posted.A myth has developed among many companies seeking to exploit social media that the old rules do not apply in this new age.  The Spokeo settlement is a stark reminder that the old rules do in fact apply, and that companies ignore those rules at their peril.

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Clients seek out Julie because of her practical advice on cutting-edge issues at the intersection of privacy and consumer protection laws. She provides clients with practical solutions to compliance c

Julie O'Neill

Clients seek out Julie because of her practical advice on cutting-edge issues at the intersection of privacy and consumer protection laws. She provides clients with practical solutions to compliance challenges around a wide variety of both online and offline privacy issues, including tracking, interest-based advertising, geo-targeting and other mobile tracking, personalization, and cross-device tracking. Recognized in The Legal 500 US 2014, 2016, 2019, and 2020 and Chambers USA 2021 for her exceptional legal work, her clients praise her saying, “She is really good at giving practical, targeted advice and taking stock of what the risk profile of the client is, so that the advice is holistic.” (Chambers USA 2021).

The FTC’s Spokeo Settlement Highlights Social Media-Related Legal Risks