I swore that I wouldn’t put off CLEs again…

October 19, 2009

…but I did.  I’m now catching up on CLE requirements (due end of this year). Some notes to keep my mind working while I watch hours of video. There is actually a lot of interesting stuff (but, then again, I’m a lawyer).

Here is my first one:

A Lawyer’s Guide to Navigating Intellectual Property in Cyberspace (Original date: August 5, 2009)

  • I’m very tired of the overused and tired term Cyberspace
  • Not illegal to own URL that infringes on trademark.  It’s illegal to do anything with it.  (Is this an accurate statement of the law?)More exciting notes from the CLE :)
  • Law firms hiring web design firm for building firm’s site should require irrevocable, perpetual license to use the design/code for the site.  If something unique is created, law firm should own it
  • Law firm should require indemnification for situation where web design firm infringes on IP rights in building the firm’s marketing site (unfortunately, deep pockets are unlikely).  Get representations and warranties about IP ownership from the design firm.
  • People love to steal IP on the web.  Really? :)
  • If practical, can require insurance of the design firm to cover IP liability
  • All companies (law firms included) should register name as trademark.  This is a bigger deal now that law firm marketing is national/international because of the Internet.  There are plenty of law firms with very similar names.  Smith, Jones and Brown…
  • Principal trademark registry covers marks registered in all 50 states and territories.  Supplemental trademark registry means that there is some issue preventing it from being included in the principal registry
  • Descriptive names (e.g., TV Guide) can achieve secondary meaning and can be protected.  Generic terms can generally not be protected.  Law firm names, are generally “fanciful” (unique) and achieve secondary meaning and can be protected
  • International summary: Canada is not a party to the Madrid Accord.  Therefore, a Canadian lawyer is needed to apply for a trademark there.  Countries that are party to the Madrid Accord publish filing fees (available online; and can change).  A separate European Community registration is available (expensive, only EC coverage).  No treaty relationship with China in terms of IP – lots of issues there
  • ICANN has an arbitration procedure (can apply online) where there is a dispute over a URL.  Very efficient process.  URL can be awarded.
  • Google Adwords.  When can one company use the name of another when keyword advertising on Google?  The case law is still not settled.  Google still sells names; but several cases against Google are working their way through the court system.
  • Linking versus framing content.  There is case law holding that framing constitutes an unlawful infringement.  Linking is unclear.  Metatags are unclear.
  • Copyright applies to original work put in tangible form.  Copyright is automatically created (in the US)
  • Copyright is good for life of creator + 50 years.  Disney lobbied for an extension (Micky Mouse issue).  Period has been extended for 20 additional years (by act of Congress). Extension was upheld by US Supreme Court, but no additional extension periods may be granted
  • It is well established that copyright applies to publication on the Internet (Scientology case)
  • If there is a copyright infringement, and copyright was registered before the infringement, statutory damages and attorneys fees are available.  Once registration is completed, registration reaches back to date of first publication
  • Fair Use exception.  Four factors: nature of work, nature of use, extent of copying, impact on holder of the copyright.  Fair use has been held to encompass extended copying presented as long form quotes in a published book (book applied to different audience).  Can’t provide holder of a sale (e.g., cannot copy a consumable workbook).  All four factors must be considered in determining whether an infringement falls under the fair use exception
  • The only interesting part of the music discussion was mention of Boy Scout merit badge on “copyright.”  This badge was rolled out to educate students regarding music downloads
  • Review of “work for hire” rules.  If a work (e.g., article, software code) are within scope of work, it is owned by the firm.  If, for example, a lawyer is working for a firm and wants to retain ownership of an article, the ownership rights should be explicitly delineated
  • Review of Digital Millennium Copyright Act.  Provides safe harbor for web publishers with response to take down notice
  • Unauthorized practice of law issue.  Law firm websites need to make it clear which jurisdictions attorneys are licensed to practice in
  • Contact via a website (e.g., comment thread) needs to be handled carefully because of unauthorized practice rules and inadvertent formation of attorney-client relationship
  • “Social networks are really neat things.” ?
  • More caveats for lawyers.  Make certain that inadvertent client disclosures aren’t being made via participation on social network sites.  Firms need to create explicit rules.
  • Beware the Wayback Machine.  Internet archive.
  • Discussion of need to obtain a “model release” when using an individual’s photo on the web, book, etc.
  • Extensive discussion about pitfalls of email (“reply to all”).  Discussion of metadata in documents (e.g., history of edits)

Running tally: only 36.5 more credits needed before the end of the year…

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