Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

My latest IP for Your Business column has been published in the Southeast Texas Record, and its sister publications the West Virginia Record and the Madison (Illinois) Record, focused upon crafting an effective social media policy for your business.  With the Record's permission I am reposting the article on the Blog.  Click here to read the column at the Record.  And if you are an executive or business owner that is reading this and thinking that you do not need to worry about social media because you do not allow, read the article.  It will give you some pause and may change your mind.   Here is the article:

Social media is a terrifying unknown for many businesses. There are countless opportunities to lose control of your corporate message. And as I have discussed before, there are new and varied ways to have your trademarks and brands stolen or diluted.

But an equally serious concern is what your employees are saying about your company. Every employee is now potentially an unsupervised spokesperson for your company twenty-four hours per day, 365 days per year. And each of your employee's unapproved statements is being categorized by search engines and forever identified with your company on Twitter, Facebook, personal employee blogs and other third party sites.

How does a reasonable company react to each employee being turned into an unregulated source of public information? Some are paralyzed. Others ban all use of social media related to the company. This is a facially reasonable approach.

You no longer have to worry about your employees' intentional statements about the company. But there are two significant problems with this approach.

First, you will drive some users underground. They will continue generating public content, but will attempt to do it anonymously. Of course, you can generally find them, but that can backfire as a public strategy, and you may not find them before damage is done, intentionally or accidentally.

Second, your employees likely see a distinction between their personal and work lives that may be far less clear than they realize. For example, an employee might post the following on Facebook and Twitter:

"@EngineerJim is sick as a dog and not thinking clearly, but working through it so that I have enough personal days for Orlando next month."

It is an innocent post by a good employee who is making a common mistake. But if a customer that has a big deadline that day is part of Engineer Jim's social network, your customer may see things differently. And the results could be even worse if an employee accidentally tweets a detail of a confidential project on the date of a key product launch.

The safest approach to social media is to allow your employees to use social media as part of a broader corporate social media policy. Working with counsel to develop a comprehensive social media policy will protect your company and allow you to harness the value of employees spreading the message of your company's value and benefits. Here are the broad outlines of such a social media policy:

1. Make it Clear

The policy must be clear to be effective. So, write in plain English. Whenever possible, use examples of acceptable and unacceptable postings. Examples help guide your employees, sometimes more than the written policies. But make it clear that the examples are not comprehensive.

2. Allow for Questions

Social media changes quickly, and your policy cannot keep up with it in real time. So, provide a contact for questions. And because social media is fast-paced, commit to getting answers to most questions within a few days or at least a week.

3. Identify What is Allowed

Make the rules as clear as possible, and, again, use examples. Identify whether postings may occur at work, on breaks, or never doing work hours. Lay out what types of posts are off-limits as work-related, such as the Engineer Jim example above.

Determine whether an employee can have a blog about the company or within the employee's job area. On one hand, it is easiest to exclude these blogs. But before doing that, look at other companies like Sun Microsystems and Microsoft that have successfully allowed employee blogs. If you do allow blogs about the company, consider requiring that employees register the blogs. A registration requirement makes sure you know which employees are blogging and allows you to follow what they write. In addition to being a valuable marketing tool, following employee blogs can be an excellent indicator of employee issues and concerns.

4. Develop a Review Process

As with all things, mistakes happen. So, prepare a plan for dealing with any objectionable or harmful content posted by employees. Identify how quickly content must be removed upon your request, and outline any appeal process. Also, make any consequences for publishing objectionable or harmful content clear.

5. Give Someone Oversight Responsibility

Identify someone, perhaps a General Counsel or even someone in Human Resources, to administer and oversee the policy. Giving an individual ownership and responsibility insures that the program does not become a forgotten section of the employee handbook. That person should also be responsible for setting up a variety of searches to identify any internet or social media mentions of the company and its brands.

Developing this policy takes some work, but it will pay dividends in terms of employee satisfaction, message management, and preventing social media accidents. And it will allow your company to harness more of the value of social media and the internet at a relatively low cost.

• Email This
• Print
• Trackbacks
• Share Link

My latest IP for Your Business column, published in the Southeast Texas Record, and its sister publications the West Virginia Record and the Madison (Illinois) Record, focused upon protecting your company from the often overlooked danger of copyright infringement.  With the Record's permission I am reposting the article on the Blog.  Click here to read the column at the Record.  And if you are an executive or in-house counsel that is reading this and wondering how to protect your company from copyright infringement issues, the article provides a framework for doing just that:

You likely spend significant resources making sure you do not infringe your competitors' patents, trademarks and copyrights. No legitimate business would intentionally copy its competitor's manuals, or confidential business plans.

But despite that, many businesses are unknowingly infringing a wide range of copyrights each week as a part of their employees' normal corporate activities.

A media relations associate may photocopy news articles about the company or its competitors and distribute them to key executives who require the information. Another may add key articles to board books in preparation for a board of directors meeting.

A sales director may make a company-focused parody of a popular song to rally the sales force and boost sales. Or an engineer may copy a chapter or two of a useful engineering text.

In each of these cases, if you asked, the employee would be surprised to learn they were infringing a copyright.

But it is not just the infringement; they are also exposing themselves and the business to significant liability. And your employees would be shocked to learn that no matter how slight the infringement, the maximum statutory damages for infringing a single copyrighted work is $150,000. That's $150,000 for copying a single article.

Even more shocking to most people is that forwarding a newspaper article via the Internet for business purposes is also generally an act of copyright infringement.

It is easy to imagine the all-too-common scenario. You, as your company's president or general counsel, receive a letter demanding that the company cease and desist its infringement, in this case the alleged forwarding of an e-mail newsletter for which the company had only purchased a single use license.

After some digging, you learn that the forwarding was done by Jim in sales, at the direction of his immediate supervisor Sue.

Both Jim and Sue are floored. All they did was forward copies of an e-mail newsletter that they had legitimately purchased, and that their entire team needed.

Unfortunately, neither Jim nor Sue appreciated that forwarding the publication was only allowed if they purchased a group license.

Because they had forwarded one copy a week for 20 weeks, the company's potential infringement was $150,000/weekly copy or $3 million.

Most of all, the entire incident could have been avoided if the company had implemented a copyright compliance program. When I put on copyright compliance programs for clients, they are routinely amazed at how inexpensively and quickly we are able to both fix current issues like these and prevent future problems before they happen.

While you should consult a qualified lawyer to make sure your copyright compliance program is comprehensive and correct, here are the basic steps that are required:

1. Audit copyright use & policies

Start by auditing your corporate use of copyrighted materials.

Depending upon your company's size, you can do one company-wide audit or do audits by division or product line. Consider how you internally and externally use third party publications like trade magazines and newspapers.

Are you routinely photocopying copyrighted material to distribution lists? Do you pdf and forward copyrighted materials?

Do you have a corporate policy in the employee handbook explaining how you expect employees to handle copyrighted materials? If you do, when was the last time you reminded your employees of it?

Do you have reminders posted at copy machines and pdf stations?

Also, look at how your employees use the Internet. Forwarding links is generally fine, but copying and pasting Internet content can get you in trouble.

2. Educate

Once you have a realistic understanding of your corporate copyright use and any areas of concern, you need to educate your employees about copyrights.

In my experience, a presentation made directly to your employees in small groups of no more than 20 is exceptionally effective.

By laying out the copyright laws and the consequences of breaking them for the employees themselves and the company, you will accomplish two things: 1) you quickly stop some unintentional copyright infringement; and 2) copyright issues that you may not have identified in your audit rise to the surface.

It is critical that as part of your employee education you give employees a way to raise private questions about potential copyright issues.

When I give copyright compliance seminars, I have found that one series of 90 minute client-to-employee presentations can lead to two to three days of identifying and resolving potential copyright issues with the employees. But it is three days that can remove millions of dollars in future corporate liability.

3. Ask permission

Ask permission. This is the simplest step of a copyright compliance program and perhaps the least followed. When you need to use copyrighted material, ask permission first.

If you ask the copyright holder for permission to use, forward or reprint their material they often agree. More often than not they are so happy that their content is useful to you that there will be only a moderate charge or none at all.

The simple act of seeking permission will significantly reduce your copyright risk footprint.

4. Consider a Copyright Clearance Center License

If you find that your business requires employees to internally copy, distribute or forward copyrighted content like newspaper and magazine articles or textbooks, consider a Copyright Clearance Center ("CCC") license.

The CCC was created by a group of copyright holders to license "incidental" use of their copyrighted content.

Those copyright holders that join the CCC are paid a portion of license fees from the CCC licenses. In return, the licensees are free - depending on the particular license chosen - to copy and forward content that is part of the CCC.

The license is priced based upon the size of your organization and gives access to a significant amount of copyrighted content.

5. Rinse, lather & repeat

Finally, do not just set up your copyright compliance program and forget it. Continue to watch for copyright issues. Make sure to continue employee education.

At least every year, remind employees of your corporate copyright policy by memo or e-mail. Offer all new employees your copyright compliance program, as well as offering a periodic refresher for current employees. Post reminders of your copyright policy at copy machines and pdf stations where accidental infringements can be prevented.

The more you incorporate copyright compliance into the fabric of your company, the safer the company will be from the expensive threat of copyright infringement.

R. David Donoghue is an intellectual property litigation partner with Holland & Knight LLP in Chicago. He can be reached at (312)578-6553 or david.donoghue@hklaw.com.
 

• Email This
• Print
• Trackbacks
• Share Link

My latest IP for Your Business column, published in the Southeast Texas Record, and its sister publications the West Virginia Record and the Madison (Illinois) Record, focused upon protecting your brand on Twitter and stopping Twitter squatters.  With the Record's permission I am reposting the article on the Blog.  Click here and here to read the column at the Record.  And if you are an executive or business owner that is reading this and thinking that you do not need to worry about Twitter, at least skim the article and then do a search for your company name on Twitter.  You will likely change your mind.   Here are five steps for leveraging and protecting your brand on Twitter:

More and more frequently, longtime clients call me with desperation and frustration in their voices.

In each case, we have a conversation that goes very much like this:

Client:  Dave, I just learned that someone is using my company's identity on Twitter [Twitter squatting]. They have thousands of followers and growing everyday. They have been tweeting for weeks [or even months], and we had no idea until someone told us.

Me:  We can take care of this.

Client:  But I already tried to contact them and they are anonymous.

Me:  They are not as anonymous as you, or they, think they are. I have a plan to resolve this, protect your brand and we can even build your business in the process.

Client:  Thank you. [Sigh of relief.]

Unfortunately, instead of my plan, too many lawyers and business owners throw up their hands, unsure how to proceed because Twitter issues have not been around long enough to be fully crystallized by law schools, case law or legal treatises.

And worst of all, many lawyers counsel their clients not to worry about Twitter because it does not matter and no one is paying attention to it.

In fact, Twitter has a massive user base - many estimates suggest 5 to 10 million users and growing quickly. Businesses that ignore Twitter are walking away from one of the most powerful marketing/referral systems in existence.

Here are five steps for protecting your brand on Twitter and stopping Twitter squatters:

1. Claim Your Names

Before you do anything else - in fact, today as soon as you finish reading this article - secure your names, trademarks and brands on Twitter.

Then strongly consider using one or all of the Twitter monikers to find and engage your customers. You can also use those accounts to warn people that a stolen Twitter moniker is not you or your company. This both locks in your Twitter identity and gives a place for your customers to communicate with and about you.

When your customers tweet praise or complaints using your Twitter name they are automatically added to a "Replies" list that you can access through your Twitter account. That allows you to know when anyone mentions you on Twitter, and to respond to them as appropriate.

2. Play Sherlock Holmes

Use the squatting account's description and website links to identify the squatter's address and identity.

If the account does not list a name, use a service like www.whois.com or www.godaddy.com to determine the registered owner of any listed websites. Often, the registrar will provide a real name, address, phone number or email.

If they do not, try using whatever information is provided to track down the individual's other identifying and contact information using any of various internet background checking and identity services, such as www.intelius.com.

If that does not work, review the squatter's tweets to see if they provide identifying information. The squatter will often disclose their geographic location by discussing favorite sports teams, regional news stories or favorite restaurants.

3. Get Your Name Back

If you think the squatting is unintentional, email, call or direct message (via Twitter) the squatter and ask them to drop the name. If they drop it, you can immediately register it as yours. This can be easily accomplished by having the squatter change its Twitter moniker.

Twitter will automatically change the squatter's moniker with all of its followers and on all of the squatter's past tweets. So there is minimal, if any, cost to the squatter and you can claim the name as soon as the squatter drops it.

In addition to changing the name, have the squatter tweet something like the following:

I have changed my name from @TRADEMARK to @squatter to avoid confusion with TRADEMARK.

If the squatting is intentional, asking does not work or if you just do not want to take the time to find out if it will work, send a strongly worded cease and desist letter backed with the threat of legal action.

The power of a stern letter from legal counsel threatening a lawsuit should not be underestimated. Just the letter will often get the Twitter moniker returned to you and the explanatory tweet sent.

Remember that just as you may be uncertain about the value and return on investment of Twitter, the squatter likely has similar questions and is not interested in an expensive legal battle.

4. Take Action

If asking and letters do not work, take action. If the squatter's moniker is a clear and direct infringement of a registered trademark, the action can be as simple as sending abuse@twitter.com an email explaining the infringement and asking that the account be suspended.

The only downside is that Twitter suspends infringing monikers rather than transferring them and they only do it for very straightforward infringements, they do not make judgment calls.

If the infringement is direct or if you want the moniker back, file a lawsuit. Depending on your particular circumstances, you can file claims for trademark infringement, passing off or various tortious interferences. This is the most drastic option, but it will show the squatter you are serious, protect your brand and act as a deterrent to future squatters.

5. Use Your New Twitter Identity

This is the step that can generate new business, increased customer satisfaction and even cash flow. Begin following your customers, potential customers, ideal customers and competitors. And run regular searches either on Twitter (where you can save searches to rerun periodically) or at sites such as search.twitter.com for your trademarks, your products, important customers and your competitors.

Use those searches to build followers and to begin engaging your customers, potential customers and even competitors.

Your searches will allow you to identify when a customer praises or complains about your products and services and respond to them. You can explain or resolve complaints or amplify praise be retweeting it in.

These five steps may seem simple in hindsight, but they make up a powerful and important program that is critical for most modern businesses. Too many business people underestimate the power and importance of social media tools like Twitter.

Businesses need to monitor Twitter just like they do other trademark use and media channels. And you must enforce your marks on Twitter just like you do in every other channel of commerce.

R. David Donoghue is a partner in the Intellectual Property Group of Holland & Knight in Chicago, Ill. He may be contacted at (312) 578-6553 or david.donoghue@hklaw.com.

• Email This
• Print
• Trackbacks
• Share Link