Presented By… InternetLitigators: The Internet Attorneys
InternetLitigators is proud to announce the selection of Jeffrey A. Cohen as a speaker at HostingCon 2010. Mr. Cohen will be featured in a panel entitled “3 Easy Strategies to Minimize Litigation in the Cloud”. This seminar will discuss the legal risks to your web hosting company from a cloud strategy whether you are offering cloud based services or providing third party cloud services to your customers.
Registration is not a necessary jurisdictional prerequisite for a copyright infringement action. Merely the filing of a complete application will suffice. Cosmetic Ideas, Inc. v. IAC/InteractiveCorp No. 08-56079
Our Founder Jeffrey A. Cohen was interviewed by WHIR TV on the subject of the establishment of InternetLitigators, Cohen & Richardson, LLP and current events in Internet Law.
It sounds obvious. However, as the economic downturn begins to show signs of a turn around, the frequency of Internet transactions are on the rise. The downturn has created some change in the market. Companies have become more efficient than ever. The market downturn has also restructured the workforce significantly and has, in some instances unwillingly, created thousands of new Internet entrepreneurs either seeking to supplement their income effected by lower raises or bonuses or in many instances replacing jobs that were eliminated as the result of layoffs and restructures.
Increased Complexity in Transactions
The world of Internet content development, marketing, traffic and lead generation is entering its adolescence and as a result deals in these areas are becoming more and more mature and complex. As a result of these changes, our office is seeing a larger than ever increase in the number of unrepresented companies on the opposite side of deals and transactions. This means that these unrepresented parties are being placed at a greater and greater disadvantage.
Read Every Word
We are constantly surprised at how many, thus far, very successful business owners are so willing to simply sign an agreement seemingly without spending the time to have it reviewed by an attorney with their best interests in mind or even apparently reading it themselves. Our advice this month hopefully serves as a reminder more than any earth-shaking new advice. That is that in any business transaction that you enter into, read what you sign carefully before you sign it and ask questions about anything that is not perfectly clear. Where possible, form a relationship with a qualified attorney familiar with the Internet and with your company so that you have efficient and immediate access to someone that can answer your questions and suggest alternatives on a moment’s notice.
Raise only Appropriate Issues
Just as dangerous to themselves is the unrepresented party that makes a far bigger deal out of a term in an agreement than is necessary. Almost as if these individuals feel that they cannot sign a document without making some sort of fuss to make them feel as though they have accomplished something, they argue a point that needs no arguing and wind up signing a document that includes a difference with no distinction from the original. Having business counsel can avoid this situation and the extra expense and delay that arises by wasting everyone’s time – not to mention the actual loss of reputation that is created for these individuals when everyone else realizes what has occurred. The party develops a reputation for being difficult and the changes he or she proposes in the future begin to lack credibility.
At a minimum, read what you are signing and ask questions about the terms that you do not understand. By this we mean read it – not skim it to see if anything jumps out – we mean actually take the time to sit down and read every word. There have been very few agreements that we have ever approved without any change or correction.
Copyright (c) 2009 – InternetLitigators – All Rights Reserved.
Jeffrey A. Cohen is a partner in the El Segundo, California office of Cohen & Richardson, LLP. Mr. Cohen can be reached at JCohen [at] InternetLitigators.com. The reader is cautioned that the information contained herein is not legal advice and is not a substitute for legal advice. There is no attorney client relationship created by this information.
As the year draws to a close, December is our month for annual client reviews. We recommend that all of our clients conduct an annual legal review of their existing policies, procedures and content and, in general, there is no better time then the end of the year.
The following are some of the areas we consider in our review.
1. Review Terms of Service Read your Terms of Service. Look for things that are outdated, that you don’t do any more or which have changed. Look closely at your guarantees, payment terms, and agreement term and termination provisions. If you have one, include your acceptable use policy in your analysis. Mark it up and send your comments to your lawyer for review and incorporation into your TOS or an explanation as to why the change is unnecessary or ill advised. Generally changes that make sense to you will also make sense to your lawyer. There are instances where this is not true so clear anything of substance with experienced Internet counsel.
2. Review Privacy Policy Read your Privacy Policy. Make sure that it still reflects your privacy practices. Be certain that you are doing what you promise that you are doing. Speak with your tech people directly if you are uncertain. Be sure they are familiar with your policy. Make any changes that seem to make sense to you and have them reviewed by your lawyer.
3. Evaluate Trademarks Verify your trademark status with the USPTO. Search the Internet for your company name and domain names to see if anyone is improperly using your marks or anything confusingly similar. Examine your own site for any use of trademarks that you do not own or have the right to use.
4. Evaluate Domain Name Portfolio You may own your domain name but not the right to use it. Take a look at last month’s column for the specifics of this one but the idea is that you should consider whether your use of any domain name is violating someone else’s right to the exclusive use of the name. Consider registering your domain name as a trademark and other things that you can do to protect your mark.
While it is generally not necessary to register domain names in all top level domains, collecting the most common ones is an easy way to make sure that you don’t get stuck in a legal battle to get it away from someone that tries to use it. Review your Domain name portfolio from a legal standpoint. Pay attention to your expiring domain names. Strongly consider automatic renewal options. Consider options such as private registration available from your web hosting company.
5. Update Copyright Designations Update your copyright designations throughout your website. Update the year and if you have changed the name of your company or changed your corporate structure be certain to include the proper designation. Is there an aspect of your website that is subject to copyright protection? Consider whether registration would offer you any protection.
6. Update Trademark DesignationsIf you have achieved formal registration for any of your trademarks during the year make sure that your registration is properly designated with the ® symbol. If you claim the right to a mark that is not yet registered you may be able to use the TM symbol depending upon the requirements of your particular State.
7. Review UDRP Agent DesignationsVerify your agent for notification of claims with the United States Copyright Office at http://www.copyright.gov/onlinesp/list/index.html. Registration in addition to strict adherence to your DMCA notice policy is necessary to take advantage of the Safe Harbor Provisions of the DMCA. If you do not have a policy in place, contact your lawyer to determine whether such a policy and registration is necessary.
8. Review Marketing Creative Consider your current marketing activities. Have you added or changed your campaigns since your last legal review? Has your current creative been approved by legal? Are you in compliance with all existing State and Federal laws concerning E-Mail, text messaging, telephone marketing, affiliate programs, lead generation, contests and sweepstakes.
9. Review Website for IP violationsTake a look at your own website with an eye towards the use of any material that belongs to anyone other than you which you have not secured the legal right to use. Consider text, photographs, logos, company names, artwork, music, and video. If you have questions about your use of any items seek the advice of your Internet lawyer.
10. Update your Business PlanWe often assist our clients in a consulting role to develop a comprehensive business plan at the commencement of a new business. Significant time, effort, thought and energy is put into the process. Our most successful clients take the time now and then to refer back to their business plan and update it to reflect the current status of the company from several important perspectives. It is an opportunity to take stock of the past year and determine what goals have been met and evaluate those that have not. It is an opportunity as the year closes to think about the coming year ahead, set new goals for yourself and your company and those around you.
Copyright (c) 2010 – InternetLitigators – All Rights Reserved.
Jeffrey A. Cohen is a partner in the El Segundo, California office of Cohen & Richardson, LLP. Mr. Cohen can be reached at JCohen [at] InternetLitigators.com. The reader is cautioned that the information contained herein is not legal advice and is not a substitute for legal advice. There is no attorney client relationship created by this information.
What is a Trademark? Think of a trademark (or servicemark for services) as a word, phrase, symbol or design the identifies and distinguishes one source of goods or services from another. It is not necessarily the name of your company but the mark that you use to identify your goods or services.
Why Register a mark? In general terms, if you have such a mark and you have used the mark in commerce you already own it. Trademark rights come into being upon use in commerce – not upon registration as many people believe. However, registration with the United States Patent and Trademark Office (USPTO) provides protection in many ways that most people feel are worth the comparatively reasonable expense. The benefits of Federal Registration are:
· constructive notice to the public of the registrant’s claim of ownership of the mark;
Essentially, this means that while you may own the mark in advance of registration, it becomes somewhat difficult to enforce the ownership of your mark against another person if you do not have access to Federal courts to enforce the mark – or at least so that you have the threat that you may do so if necessary. Also, given that registering the mark affords you the “legal presumption” of the ownership of your mark and that your mark becomes publicly searchable by all those that are interested in such things, the likelihood of an unintentional infringement is reduced significantly.
What does it cost to Register a
Can I register a mark before I start using it? Recognize that you may file an application even before you start using the mark. This is called an “Intent to Use” application and is quite common. Once approved you have 6 months to prove your use of the mark. This way, when you have that sudden spark of inspiration for a new product or service name, you can immediately protect the mark so that when you finally start using it your claim will pre-date anyone that came up with the same idea in the meantime. The process typically takes about 8 months so filing an Intent to Use application is not a bad idea if you are just getting started.
Do I need a Lawyer? You do not need an attorney to register your mark. However, we have had many clients come to us after having their application rejected by the Examining Attorney. This can significantly delay and/or complicate your registration. In addition, if you represent yourself, be certain that you comply with all requirements of the trademark statute and procedural rules.
May I use the TM, SM, ® Symbol? Prior to your successful registration you may NOT use the ® symbol. This is a designation for marks that have achieved a Federal Registration only. Up to that point in time you may label marks in which you claim ownership with either TM or SM as long as the use of those designations is not otherwise prohibited in your State.
By Jeffrey A. Cohen, Esq.
We receive inquiries quite often from prospective clients wanting form documents to use as Terms of Service to govern the use of their website or inquiring as to whether a set of Terms drafted for one operator site, or worse, simply found on an unrelated website, can be used instead of having terms drafted for the particular site involved. For purposes of this article, Terms of Service include Terms of Service, Terms and Conditions, Privacy Policy, Acceptable Use Policies, Subpoena Policies, UDRP policies, Child User Policy, Copyright Claim Policies, and any other policy or procedure that you have in place for users of your website or the operation of your online business.
While there is no law that requires a website operator to post Terms of Service (other than a Privacy Policy in some instances) your Terms give you the opportunity to set forth the conditions under which you allow the users of your website to purchase your products or services, post content or use and depend upon the information and materials that you provide them. Your Terms are your opportunity to set the expectations of your users in order to avoid, as much as possible, any disagreement about your user’s rights to use your site, your user’s right to depend upon the availability of your site, your user’s need to pay for your site, your user’s right to post content to your site, your right to remove content, and the terms under which you offer any product or service for purchase from your site and the your applicable limitations among many other things.
A website without such terms leaves the agreement between the operator and the user to be gleaned from the nature of the site or kind of transaction which may ultimately be determined to be significantly different than intended by the operator.
In general, posting such terms alone is insufficient. In many instances, securing some evidence of agreement by the user or customer to the Terms is required to successfully enforce them. This is often accomplished by a simple check box next to a statement of agreement to the terms.
Another general rule is that the closer the user is to the actual text of the Terms the greater the likelihood of enforceability. For example, if your user checks a box saying they agree to your Terms of Service but you do not provide a conspicuous, direct link to those terms, any enforcement of the best Terms could be difficult. Where agreement to certain terms is crucial to operations some require not only a link to the terms but they require the user to scroll to the end of the terms before allowing them to indicate their agreement. Other operators require a user to type their “signature” to evidence their agreement to the terms. A signature in that instance can usually be any electronic representation the user intends to bind them to the agreement but typically takes the form of the users name surrounded by slash marks (eg: /User First and Last Name/) This makes it that much more unlikely that a user could argue that they did not understand that they are agreeing to Terms or to exactly which Terms they are agreeing.
For InternetLitigators attorneys, the process of drafting terms of service for any website involves three stages.
1. Interview Preferably in person but often by telephone we spend the time to get to know the personality of the operator and their attitude toward customers, users, privacy, returns, payment, and other issues relevant to the site.
2. Investigation By this we mean a thorough investigation and examination of the bsite including any information collected from users or customers, eCommerce, user content, third party content, graphical content, video content, musical content and all services provided. If there is a membership process we actually register for the site and work through the entire membership script from beginning to end.
3. Drafting The information obtained in the first two stages is brought together into one (or more) documents that reflect the specific business of the website, the philosophy of the operator, and the specifics of the day to day operations of the website and business.
There is a fourth stage, annual review, where the website policies are updated to reflect changes in policies or procedures as well as any applicable changes in the law.Any process that fails to include each of these stages risks inappropriate, incomplete, inaccurate or outdated terms of service and consequences including customer complaints, returns and chargebacks, copyright infringement claims, and even lawsuits and customer complaints, to lawsuits by customers or users and even third party liability.
Some online services offer form agreements for sale and market them as being for use on websites however in our experience each such services are without fail careful to point out that they are not offering legal advice and cannot guarantee the applicability of any form agreement to any particular situation causing one to wonder exactly what value such an agreement provides.
InternetLitigators has written a great many sets of Terms for clients. About half of our assignments in this regard are from clients that already have Terms posted which are either written by the client or adopted from a collection of sources. The other half is from clients that have no posted Terms at all. Either option is perfectly acceptable.
Generally, a set of Terms for a website will take the same amount of time to draft from scratch as it will to prepare from a document created by the client. This is because re-writing is, in general, a slower process. Often, fixing problematic or internally inconstant, inapplicable or ineffective language is more time consuming that simply drafting an agreement from the beginning.
In some instances, the setting and posting of certain terms are required by law. California, for example, requires any website collecting personally identifiable information from California residents to post a privacy policy containing at least the following information:
• An identification of the categories of personally identifiable information that the operator collects from consumers.
• An identification of the categories of third-party persons or entities with which the operator may share that personally identifiable information.
• A description of any process in place for consumers to review and make changes to the information collected.
• A description of the process by which the operator will notify users of any material changes to the policy.
• Identify the effective date of the policy. Conclusion The effect of any policy that you post can have significant consequences. The failure to post a policy can create significant ambiguities with Users and Customers and in some instances can be a violation of law. The thought of buying an “off the shelf” policy or simply posting a policy without some legal review by and Internet Attorney is cause for concern and appears, based upon our experience, to be a strategy that is now seldom adopted for serious business websites.
Mr. Cohen is a Partner in the Law offices of Cohen & Richardson LLP in El Segundo, California. He chairs the firm’s Internet & Technology Practice Group and represents Internet companies Worldwide on all business law issues. He is also the director of InternetLitigators. This Blog neither constitutes legal advice nor creates an attorney client privilege with the reader. Do not post comments concerning specific legal situations. Mr. Cohen can be reached at jcohen [@] InternetLitigators.com.
This month we have seen several issues arise concerning the use of domain names with respect to the rights of registered trademark owners. Registering a domain name is not the same as registering a trademark and I thought some information as to the difference and how they might interrelate would be helpful. Understanding the difference and taking steps to protect the trademarks that you have some claim to can save you significant aggravation and expense down the line and help you avoid the risk of possibly losing your domain name or your marks.
According to the United States Trademark Act which is also known as the Lanham Act 15 U.S.C. §1127 defines a trademark as follows:
Servicemark is the correct term used for services as opposed to products.
One key to the ability to register a mark is that there must be either an actual use or an intent to use the purported mark in commerce or trade in a manner that indicates the source of the goods and distinguish them from the goods of others. Registering a domain name is most certainly insufficient by itself to qualify for trademark registration or protection.
Furthermore, registering a domain name does very little to secure your trademark rights under the Lanham Act. While you own a trademark upon your use of the mark in commerce, in order to secure your right to protection under federal trademark law you must register your mark with the United States Patent and Trademark Office. This process involves the submission of an application, payment of the appropriate fees which is based upon the number of International Classes of products or services that you offer under the mark. Approximately 6 months from the submission of the application you will receive your first contact from your assigned trademark examiner.
If the evidence that you have submitted in support of your mark is appropriate for the information in your application and your mark is otherwise the type of mark that is able to be registered and there is no prior conflicting use of your mark and there is no opposition to your application then you may be granted publication in the Principal register. Only then can you be said to have registered your trademark. The process takes approximately one year from start to finish.
An attorney is not required for this process. An applicant is responsible, however, to observe and comply with all substantive and procedural issues and requirements whether or not they are represented by an attorney. In many instances even where you feel comfortable making our own filing it may be desirable to employ the services of an attorney who is familiar with trademark matters to greatly simplify the procedure.
Only federally registered trademarks may be designated by the federal registration designation ®. The SM and TM marks are used to designate a claimed trademark right however their use may be governed by the law of your particular state. The federal registration symbol should only be used on goods or services which have been identified in the applicable federal registration.
Federal trademark registration has the following benefits.
With that understood, because of the large and always increasing number of top level domain names and the ease with which they may be registered, the owner of a trademark can often learn that another has either intentionally or unintentionally registered a domain name consisting of the trademark owner’s mark. In general, the owner of a federally registered mark has the luxury of a choice between (1) proceeding to Federal court to secure an order allowing the recovery of the domain name together with monetary or other damages according to proof or (2) proceeding under the Uniform Dispute Resolution Policy (UDRP) developed by ICANN.
Although it is helpful, trademark registration is not necessary to proceed under the UDRP however there can be no award of any damages other than an order to transfer the domain name in question. Under the UDRP an arbitrator or panel of arbitrators can issue a binding order to a registrar to transfer a particular domain name. There are some registrars that do not subscribe to the UDRP which can present certain difficulties when attempting to recover a domain name registered in bad faith.
The proof necessary to prevail in Federal Court for trademark infringement under the Lanham Act is not the same as the proof necessary to prevail under the UDRP. The specific proof necessary is dependant upon the nature of the cause of action which is beyond the scope of this entry. In general, however where you have registered a trademark for certain services (such as web hosting) and another company is offering the same or similar services under a domain name that is the same or confusingly similar you are likely well within your right to not only demand that the company stop the use of your mark but that they may be responsible to pay damages resulting from their use of your mark and that they must turn over the domain name to your control as well.
Often we are contacted by individuals that have received a cease and desist letter from a lawyer representing a trademark owner claiming a violation of trademark law. These individuals often express frustration based upon the misunderstanding that because the trademark owner left the domain name open by failing to register it that they are somehow entitled to some right simply because they have successfully registered the domain name. This is simply not the case. There are many domain names available for registration which are essentially useless to anyone but the owner of the mark.
Before you register a domain name, it would be prudent to examine whether the domain is registered as a trademark, is the type that is subject to registration, or is otherwise in use in commerce by others before you spend too much time and effort getting used to your new domain.
Copyright (c) 2007 – InternetLitigators
InternetLitigators has attended the premier web hosting event in the Country for the third year in a row. This year, HostingCon was at the beautiful Navy Pier in
The merging of Media was an obvious theme and several examples were offered. We even got to see an iPhone obliterated in a blender to illustrate the point of thinking creatively in your marketing strategy.
Viewing Web Hosting as a somewhat ubiquitous commodity necessary only to provide the true products and services in demand by consumers was a common thread in many presentations. This was highlighted succinctly by Richard Rosenblatt of Demand Media in his presentation entitled Next Generation Web: What Lies Ahead for Hosting. What is Web Hosting? asked Rosenblatt rhetorically. Lou Honick of HostMySite prophetically added a footnote to his own comments in the keynote panel discussion reminding the audience that dismissing the entrance of some larger companies into the web hosting market is unwise. Honick suggested that maybe it is the rest of us that should learn something about the products and services that these entities have chosen to offer to the public.
Overall HostingCon 2007 was a valuable opportunity to connect with the Web Hosting industry for educational and business opportunities alike.