Kent state preso 6 (7 march-11)

Anti-Cybersquatting Consumer Protection Act

Creates a cause of action that is confusingly similar to or dilutes a trademark or name.

Must show a bad faith intent to profit from similar domain.

Anti-Cybersquatting Consumer Protection Act: Evidence of Bad Faith Intent to divert consumers Domain is not used with legitimate

business Offer to sell domain with no intent to

use it Distinctiveness of original mark or

name

Bad Faith: Diverting Customers

Bad Faith: For Sale

Anti-Cybersquatting Consumer Protection Act: No Bad Faith

Consists of same name, e.g. “McDonaldsPlumbing.com”

Prior use in bona fide offering of service

Why is this OK?

http://www.dailynews.com/

http://www.thedailynews.com/

http://www.nydailynews.com/index.html

Advertising KeywordsProblems with Buying Keywords,and selling Keywords

Buying Keywords: Sample Automobiles, Akron, hybrid, fuel-efficient

Keywords: Results Automobiles, Akron, hybrid, fuel-efficient

1-800 Contacts vs. Lens.com

1-800 Contacts

Keywords: “Contact lenses”

1-800-Contacts v. Lenses.com Mark used in commerce, even

though invisible. If link did not incorporate 1-800

Mark, likely no confusion.

1-800-Contacts

Here are the problems: “1-800 Discount Contacts wwwLens.com

Great Prices. Huge selection. Free Delivery.”

“1-800 Contacts Simple online ordering of lenses. Compare our prices and save. www.JustLenses.com. “

1-800 Contacts: Review

Lens purchased 8,016 keywords: 800c Contacts, 800 Lense, 1-800-Lens Agency bought: 1800 contact lenses,

etc. 1800Contacts. Here’s the ad: “Name brand contacts, low prices.

www.justlenses.com.”No use of 1800Contacts in ad!

Buying Keywords

Binder vs. Disability Group

Exception to Copyright Infringement: Fair Use

Exception to Copyright Infringement: Fair Use: the purpose and character of your

use. Is it used for commercial use?

Is it uses for news or criticism? Is it used for education?

Exception to Copyright Infringement: Fair Use: the nature of the copyrighted work.

Are you copying expression? E.g.: Fiction novel? Song?

Are you copying facts fact?

Exception to Copyright Infringement: Fair Use: the amount and substantiality of the

portion taken. Most significant portion?

Only small portion to make a point?

Exception to Copyright Infringement: Fair Use: the effect of the use upon the

potential market. Original author could have monetized it.

Transformative. It doesn’t compete.

Exception to Copyright Infringement:

Is it TRANSFORMATIVE?

Satire is NOT Fair Use

Exception to Trademark Infringement: There is no way to readily identify a

kind of product without using the trademarked name AND

Only as much of the mark is used as is reasonably necessary AND

There is no suggestion of sponsorship or endorsement by the trademark owner.

Summary - ExceptionsTrademark: “Nominative” or “fair Use” of mark a defense

Is reproducing the screen shot OK?

Summary – Exceptions

Summary – Exceptions

Digital Millennium Copyright Act Protects “Internet Service Providers” if:

Involves user generated content No actual knowledge Notice and take down process Prompt take-down Did not have direct commercial benefit

with direct control over activity

Summary – Excceptions

Communications Decency Act Immunity for Tort liability (defamation,

invasion of Privacy, etc.) for: User generated content No actual knowledge It does not apply to copyrights and

trademarks

Conveying Rights

Contracts

Meeting of the Minds Offer and Acceptance Mutual Consideration Performance Note: Action can create contract

Step One: Conveying Rights in Content Three Models:

Assignment: Selling it.

Step One: Conveying Rights in Content Three Models:

Assignment: Selling it. Owners sells copyright to a new owner.

Hybrid: Commission Work (assignment included)

Step One: Conveying Rights in Content Three Models:

Assignment: Selling it. Owners sells copyright to a new owner.

Hybrid: Commission Work (assignment included)

License: Rents the Work, but keeps ownership.

Model 1: Assignment

Exclusive rights – transfer of ownership, or giving an exclusive license, must be in writing.

No writing required for non-exclusive right, but you should do it anyway.

Assignment

When used? A commissioned work, e.g., an artist creates a logo for a company that will be used as a trademark.

Photographer or writer is creating a custom item of content.

Sample Assignment Language FOR GOOD AND VALUABLE CONSIDERATION,

receipt … John Doe ("Assignor"), located at 123 Main Street,

hereby irrevocably transfers and assigns to Jane Doe ("Assignee”) all right (whether now known or hereinafter invented), title, and interest, throughout the world, including any copyrights and renewals or extensions thereto, in the manuscript “It Ain’t Love But It Ain’t Bad”

Work Made for Hire: Idaho Author and College intend this to be a

contract for services and each considers the products and results of the services to be rendered by Author hereunder (the “Work”) to be a work made for hire.

Work Made for Hire

If for any reason the Work would not be considered a work made for hire under applicable law, Author does hereby sell, assign, and transfer to College, all right, title and interest in and to the copyright in the Work …

Model 3: Licenses

License: An agreement that gives a user the right to use copyright work.

In other words, a lease, or rental.

Types of Licenses

Exclusive. Must be in writing.

Non-Exclusive. Can farm out content to multiple users.

Implied (by actions).

Exclusive License

2. GRANT OF LICENSE. Subject to the terms and conditions of this Agreement, LICENSOR hereby grants to LICENSEE the exclusive license to use, market, distribute and sell the EDUCATIONAL MATERIALS in the TERRITORY and the exclusive right to sublicense others to market, distribute and sell the EDUCATIONAL MATERIALS in the TERRITORY. This grant is to the exclusion of others, including the LICENSOR.

Why Exclusive? Right to control use and misuse of works. Could be for limited time, get all rights back. Get paid more for exclusive right.

Non-Exclusive License

Owner hereby grants Organization a non-exclusive right to copy certain materials described in Attachment A (the “Material”), in whole or in part, and to incorporate the Material, in whole or in part, into other works (the “Derivative Works”) for Organization’s internal use only.

Why Non-Exclusive? Useful for republishing rights; content may already

have appeared elsewhere. Pay less for non-exclusive use.

Implied License

Tribune Freelance Agreement

Tribune Freelance Agreement Step 1: The Recital BACKGROUND

Tribune Freelance Agreement1. PROVISION AND PUBLICATION

OF THE WORK. The Photographer shall provide the Work to KRT via email, FTP, or any agreed-upon electronic method by the deadline set forth above.

Tribune Freelance Agreement2. GRANT OF LICENSE. . . . You agree that your works

are “works for hire,” and you hereby assign and transfer to the Publisher an undivided, one-half ownership interest to your works that you submit to the Publisher from time to time…..

Tribune License Agreement The Publisher will not be obligated in

any way to pay or otherwise account to you for any royalties, fees or other payments received by the Publisher in connection with the Publisher’s use, sale, license, distribution or other transfer of the works covered by this letter. (Hmm..Joint Author language??)

Tribune Freelance Agreement Similarly, you will not be obligated in

any way to pay or otherwise account to the Publisher for any royalties, fees or other payments received by you in connection with your use, sale, license, distribution or other transfer of the works covered by this letter that are permitted by the terms of this letter.

Tribute License Agreement You agree not to assert any “moral

rights” or similar rights against the Publisher with respect to such works.

Tribune Freelance AgreementThe Photographer grants KRT a worldwide non-exclusive,

perpetual, royalty-free license to

(i) reproduce, distribute, publicly perform and publicly display the Work, in any media, whether now known or hereafter created (including, without limitation, electronic distribution and inclusion in archival databases); etc.

Tribune Freelance Agreement Section 3: In every copy of the Work,

KRT agrees to give credit to the Photographer, in the same manner as it accords credit to all other artists and copyright owners whose works are included in KRT services.

Tribune Freelance Agreement4. PHOTOGRAPHER’S REPRESENTATIONS

AND WARRANTIES. The Photographer represents and warrants that:

(i) he or she has the right and authority to enter into this Agreement … (Legal capacity)

(ii) . . . the Work . . . will not infringe upon or misappropriate the intellectual property or other proprietary rights of any third party;

Tribune Freelance Agreement4. PHOTOGRAPHER’S REPRESENTATIONS

AND WARRANTIES. The Photographer represents and warrants that:

(iii) the Work does not contain any matter that is defamatory or that otherwise violates the privacy or publicity rights of any person;

(iv) the Photographer will use his or her best efforts to ensure that the Work is true and accurate; and

(iv) the Photographer is not now, nor will he or she be during the term of this Agreement, under any obligation to a third party that prohibits, limits or otherwise adversely affects his or her ability to perform his or her obligations under this Agreement.

Tribune Freelance Agreement 5. INDEMNITY. Each party will

defend, at each party’s expense, any claim, suit, or proceeding brought against the other based on a claim that arises out of or is related to its breach of any warranty or representation under this Agreement, and will pay all damages, costs, and expenses incurred by the other party in connection with such claim.

Tribune Freelance Agreement6. PAYMENT TO PHOTOGRAPHER

AND EXPENSES. In full and final consideration of the rights granted to KRT in this Agreement, KRT will pay the Photographer the fees, if any, set forth in Exhibit A on the terms set forth therein.

Tribune Freelance Agreement 7. TERM AND TERMINATION. This

Agreement shall remain in effect for one year from the effective date, and shall renew for additional one-year periods, unless terminated by either party upon 30 days written

notice prior to the end of the then-current term. Either party may terminate this Agreement with or

without cause, upon 30 days prior written notice. Note: short, 30-day cut means there’s no need to

have breach of contract provision.

Tribune Freelance Agreement “Boilerplate Terms”: Choice of law8. MISCELLANEOUS. This Agreement

shall be governed by and construed in accordance with the substantive laws of the United States and the State of California, without regard to or application of California’s conflicts of law principles.

Note: Parties can agree to venue.

Tribune Freelance Agreement Merger Clause This Agreement constitutes the

entire agreement between the parties with respect to the subject matter of this Agreement . . .

Tribune Freelance Agreement Amendment Clause Any . . .amendment or other

modification . . . of this Agreement shall be effective only if in writing and signed by both parties.

Tribune Freelance Agreement Independent Contractor This Agreement shall not be

construed as creating an agency, partnership, joint venture or any other form of legal association between the parties and each party is an independent contractor.

Why? No vicarious liability; right to control.

Tribune Freelance Agreement Successor clause This Agreement shall be binding upon

and inure to the benefit of the parties and their respective successors . . .

(Assignment Clause) that Photographer may not assign any of its rights, obligations, or privileges under this Agreement without the prior written consent of KRT.

Tribune Freelance Agreement Severability Clause. If any court of law, having the

jurisdiction to decide on this matter, rules that any provision of these Terms is invalid, then that provision will be removed from the Terms without affecting the rest of the Terms. The remaining provisions of the Terms will continue to be valid and enforceable.