What Are Your Products Doing Online? Presented by Anthony V. Lupo Sarah E. Bruno Arent Fox LLP...
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Transcript of What Are Your Products Doing Online? Presented by Anthony V. Lupo Sarah E. Bruno Arent Fox LLP...
What Are Your Products Doing Online?
Presented by
Anthony V. Lupo
Sarah E. Bruno
Arent Fox LLP
Washington, DC | New York, NY | Los Angeles, CA
August 20, 2008
Overview
What Rights Are Implicated? Copyrights and Protection Strategy
Trademarks and Part Number Protection Strategy
Infringement of These Rights
Enforcement Strategy Practical Strategies for Taking Action
Consider Your Marketing Strategies
Part I:
What Rights Are At Risk?
Your Rights
Copyright Rights
Web Site Designs
Advertisements
Product Packaging
Catalogs and Pricing Sheets
Web Designs
Advertisements
Copyright in Your Product’s “Dress”
Original
Creative
Non-Functional
Protection Strategy for Catalogs
Think Outside of the Box:
What is “Standard” may not be protectable, because its Standard!
Examples….
Catalogs
Must ensure that the Catalog contains original elements that are arranged in a distinct manner.
Consider: Photograph arrangement
Original descriptions
Use of logos
Use of design elements
Consider…
vs
Vs.
Pricing Sheets
Protectable?
Pricing Sheets
Protectable?
Your Rights
Trademark Rights
Logos and product names
Part Numbers
Shape and design of your product
Part Numbers
It must be an original part number that is only used to identify parts from your company
You should avoid developing part numbers that incorporate aspects that are commonly used in the industry
Webb Wheel Examples:
Trade Dress
Trade Dress Rights Extend to the Look and Feel of Your Product or the Package Design
Part II:
Infringement of These Rights
Infringement of these Rights?
Infringement of these Rights?
Counterfeit Goods
These Rights Are At Risk on the Web
Counterfeit goods may be sold via auctions on eBay
Counterfeit?
Deceptive Marketing?
Part III:
Protection Strategies
Enforcement Strategy
Infringement of Trademarks Via the Internet Prioritize your concerns
Determine who is using your mark and contact the owner of the site with a Cease and Desist letter
If ignored, consider contacting the host to have them disable the web site
Filing a lawsuit if egregious enough
Co-Existence or license agreement as an option
Monitor the site for more egregious use
Enforcement Strategy
Protecting Your Copyright Works Make sure you have a “Terms of Use” on your site
Register your copyrights
Password Protection
Determine who is using your content and contact the owner of the site with a Cease and Desist letter
If ignored, consider contacting the host to have them disable the web site.
Filing a lawsuit if egregious enough
Enforcement Strategy
Counterfeit Goods Monitor auction sites and develop a strategy that allows for
shutting down auctions on a weekly or bi-weekly basis (eBay Vero Program)
Make a purchase of the product to determine where the seller is located (establish jurisdiction for lawsuit)
Register your marks with Customs
Federal agency assistance
Factory raid
Bring suit and make a name in the industry
Attempt to settle with smaller infringers and gain publicity
Enforcement Strategy
Deceptive Marketing You must demonstrate that the action was deceptive,
false or misleading
– Expert Opinions
– Consumer Surveys
– Actual Evidence of Confusion
Send a Cease and Desist Letter
Consider contacting the host of the web site if you can assemble a claim based on copyright.
Filing a Law Suit
Other Options
Licensing Strategy
Why Do It? Quality Control
Revenue Stream
Obtaining rights in a foreign market
Ensure the License Protects Your Rights Never allow licensee to register mark
Make licensee acknowledge your rights
Make licensee assist in protecting the mark
Part IV:
The Risk of Viral Marketing
Marketing Campaigns
User Generated Content Campaigns Creates brand loyalty and a community environment
Inexpensive way to create advertisements and viral marketing
Potential liability for allowing users to post third party content.
Better practice to supply elements used
Chevy Tahoe example
Subway v. Quiznos
Promotions and Marketing Campaigns
Chevy Tahoe video
Subway v. Quiznos
Enforcement Strategy
Create a Terms of Use on your site that allows you to remove content that is infringing, disparaging or otherwise objectionable
Prohibit the use of third party logos, trademarks or other comparisons
Take down content asap after receiving notice.
Part V:
What About Gray Market Goods?
What Are Gray Market Goods?
Gray Market Goods are legitimate products that are sold in an unauthorized market.
How Can You Tell it’s Gray Market? Contact the retailer and find out how they got the
product
Anonymous inquiries or just call and ask
Hire an investigator
Make a purchase and see from where it is shipped
Enforcement Strategy
Put the Seller on Notice
Contractual Strategy for Enforcement Ensure you have appropriate protection in end-user
agreements.
– Restriction on territory
– Require contract for resale
Consider your international price points to make it more difficult
Consider having territorial branding
Contemplate a sell-off
Questions?