Accepting Guest Blog Posts

I have accepted a position that will not allow me to write in 2016. However, I want to continue to provide information on cyber, intellectual property (IP), social media, security, privacy, and technology law and policy to you all.  So…. I am accepting  submissions from guest bloggers!

Please send me your best cyber, IP and tech law and policy posts. Many of this blog’s followers are entrepreneurs, technophiles, tech novices, bloggers, social media user and those intrigued by tech, so please cater your posts to that audience. Please send posts to thedigitalcounselor@gmail.com. I will notify you if your post is selected.

Thank you for your submission, in advance, and more importantly, THANK YOU FOR READING!

I hope the readers find previous posts and any information others are able to provide in my absence helpful! And I look forward to returning in 2017!!

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Should You Trademark Your Website?

It is extremely important for companies to protect their intellectual property. Developing a comprehensive intellectual property plan is essential to protecting your investment and protecting your consumers from confusion.  Trademarking your brand names, slogans and company name as well as copyrighting blog content, original imagery, and other original works of authorship are commonly know areas of focus for companies and entrepreneurs.  You want to be in control of your brand, your content and your creations.

Now, according to one federal court, companies can use trademark law to protect the unique look and feel of their websites from imitators. As a result of this ruling, companies should consider registering their websites as trademarks with the U.S. Patent and Trademark Office (the “USPTO”).

The U.S. District Court for the Northern District of California recently ruled in Ingrid & Isabel, Inc. v. Baby Be Mine, LLC, No. 13-01806 (N.D. Cal. Oct. 1, 2014) that the look and feel of a website used to market and sell products and services can constitute protectable trade dress under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(a) (2012). Trade dress, a derivative of trademark law, protects the total image of a business or product, including the arrangement of identifying features such as graphics, packaging, designs, shapes, colors, textures, and décor.

This is an important development for companies seeking to protect their brand online. Your website is an important part of your brand as a company. It is often a customer’s first impression and point of sale.  Previous case-law suggested that a website could constitute protectable trade dress only if the website itself was the product. See Conference Archives, Inc. v. Sound Images, Inc., No. 06-00076, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010) The Ingrid & Isabel case provides an opportunity to expand those protections. This decision is reminiscent of the USPTO allowing Apple, Inc. to register a trademark for the design and layout of its unique retail stores. Your website is in effect your online store. This is a great example of the law starting to catch up with the times. Companies seeking to take advantage of this protection must make sure their website is 1)distinctive or has acquired secondary meaning and is 2) nonfunctional.RegisteredTM

  1. The court noted that the “Supreme Court has held that ‘design, like color is not inherently distinctive’ [citing a case involving Wal-Mart.]  Given the conceptual similarity between ‘look and feel’ and ‘design,’ Wal-Mart suggests that Plaintiff must show that its website‘s ‘look and feel’ is distinctive through its secondary meaning.” This eludes to the fact that the design of a website is not “inherently” distinct. You want to secure these protections before someone seeks to copy your website. However, per previous case-law  “secondary meaning may be inferred from evidence of deliberate copying of the trade dress…” Therefore, if you can show that your competitor deliberately copied your website, that will help to support your claim for acquired distinctiveness.
  2. Functional elements cannot be protected as trade dress. However, according to the court in Ingrid & Isabel “the placement and arrangement of functional elements can produce a non-functional aesthetic whole.”

This is also an important decision from a cybersecurity perspective. Most consumers are lured into phishing and other fraud scams when malicious actors mimic the look and feel of a brand’s website. Armed with a similar site they can lure unsuspecting consumers to insert personally identifiable information and financial data into their fake site. This can result in identity theft and financial loss. This is another tool in a trademark owner or company’s arsenal to combat fraud and protect their customers.

If your website is distinct, talk to an attorney about protecting it. This is an important consideration and should be part of developing a comprehensive intellectual property plan.

Trade dress protection has existed for decades, but its usefulness for websites and other Internet-based applications has been limited. It will be interesting to see how courts continue to apply the law to websites, mobile apps, and other non-traditional mediums.

Note that the court didn’t determine the ultimate outcome of this case; that’s still in dispute. This ruling merely allowed Ingrid & Isabel’s claim on this point to proceed to trial.

Quick Tip: Sign A Pre-Nup With Your Business Partner

Co-founder disputes are common in the business world, whether in television production, restaurants, real estate,or tech start-ups. With the staggering amount of money that can be at stake in today’s tech companies, founders should exercise caution. The best of friends and the most cohesive of partnerships can end in a bitter legal battle unexpectedly. A recent Los Angeles Times article, titled “Co-founder feuds at L.A .tech start-ups show how handshake deals can blow up,” recounts several telling tales of business start-up angst. The article analyzes recent tech-based businesses that began with a handshake and ended with relationship-ending conflict.

Entrepreneurs should consider entering into a prenuptial (“prenup”) agreement to avoid such a dispute. A prenup establishes the property and financial rights of each spouse in the event of a divorce. Figuring out how to divide property and assets should a company or partnership dissolve may be a smart way to start a business. Consult counsel and think through all the potential issues.

Cartier Offers Amazing Opportunity to Women Entrepreneurs!

I had the pleasure of attending Cartier’s Women Entrepreneurs: The Changing Face of Innovation at the French Embassy.  We had the pleasure of hearing past participants speak about their experience in The Cartier Women’s Initiative and their successful businesses. The connections, financing, and networking were invaluable for these budding entrepreneurs and if you have a for-profit business that is 1-3 years old I encourage you to learn more and apply.

The Cartier Women’s Initiative Awards are an international business plan competition created in 2006 by Cartier, the Women’s Forum, McKinsey & Company and INSEAD business school to identify, support and encourage projects by women entrepreneurs.

The mission of the Cartier Women’s Initiative Awards is threefold:
  • To identify and support initial-phase women entrepreneurs through funding
    and coaching
  • To foster the spirit of enterprise by celebrating role models in entrepreneurship
  • To create an international network of women entrepreneurs and encourage
    peer networking

The Cartier Women’s Initiative Awards aim to encourage the most vulnerable category of entrepreneurs in their most vulnerable phase: women entrepreneurs starting up. Since their inception in 2006, they have accompanied over 140 promising female business-owners and recognized 44 Laureates.

Cartier is currently accepting applications!!!

The annual competition involves two rounds:

Round 1 (in June): The Jury selects 18 Finalists*, the top three projects of each region (Latin America, North America, Europe, Sub-Saharan Africa, Middle East & North Africa, Asia-Pacific), on the basis of their short business plans. They receive coaching from experienced businesspeople to move to the next round.

Round 2 (in October): The Finalists are invited to France for the final round of competition which includes submitting a detailed business plan and presenting their projects in front of the Jury. They are also invited to the Annual Global Meeting of the Women’s Forum.

Based on the quality of the plan and the persuasiveness of the verbal presentation, one Laureate for each of the six regions is selected and receives a unique and comprehensive support package: US $ 20 000 of funding, one year of coaching, networking opportunities and media exposure.

Click here for information on how to apply: http://www.cartierwomensinitiative.com/how-to-apply

Will Congress Limit NSA Data Collection?

Do you know when and how the government can access your telephone records? Do you care? Do you worry about your personal privacy? Well, there is major legislation on the horizon that will affect how and when your data is collected and retained.

Image courtesy of cuteomatic.com
Image courtesy of cuteomatic.com

On May 22, 2014, the United States House of Representatives passed bill H.R. 3361, the USA Freedom Act, aimed at limiting the federal government’s ability to collect bulk phone records and also increasing transparency. This bill, supported by the President, received bipartisan support. It restricts the data collected from communications companies by the NSA and other intelligence agencies. One of the goals is to minimize the retention and dissemination of non-public data. The House’s approach to data retention is to have telecoms store the data, to be made available to the government, by request. The bill has no mandated retention period. Finally, the bill also extends certain provisions of the USA Patriot Act, scheduled to expire in 2015.

What will the Senate do? It has been almost a month since they’ve received the bill and it has not yet passed.  Senate Intelligence Committee chair Dianne Feinstein (D-Calif.) said that she wanted to find a way to get the USA Freedom Act (H.R. 3361) passed, though she would prefer that the government, rather than telecom companies, retain the responsibility for storing and analyzing data.

The European Court of Justice recently determined that their data retention law, which is similar to the House’s bill, violates the fundamental rights of citizens. How should this determination play into the U.S.’s data retention law? If its a violation of the fundamental rights–namely privacy–for European citizens, does it violate the fundamental rights of US citizens? How do you want any data collected by your telecom company stored and accessed?  The expiration of portions of the US Patriot Act, as well as the call for data retention, and surveillance reform in the wake of the Snowden leaks raise a lot of questions. Now is the time for the US government to pass legislation that both protects the privacy of citizens and aids in protecting national security.

Get involved in this debate!

For more information about this issue and how the European Court of Justice’s decision factor’s in the debate, read the article I published,  “Does Personal Privacy Matter? Developments in EU and US Data Retention Law” in the American Bar Association’s Information Security & Privacy News.

Will it be Hard to Register My Trademark?

Registered-Trade-mark-symbol
Photo from pinnacletms.com.au/difference-between-trademark-symbols/​

So you have great idea blog, business, product, brand, etc.! Now what?  ​How do you make sure you are protecting your asset?

Well, an important part of protecting your invention, product or business is protecting the name.  Start by​ outlining​ ​a strategic plan for trademarking your intellectual property. ​A very important part of that strategy is determining whether or not your proposed mark can be trademarked.

How can I​ ensure my mark is trademarkable? What is the likelihood for successfully trademarking this name? Should I consider changing the name to make sure that it can be trademarked? These are questions you should ask yourself, preferably while under the consult of an attorney. ​

O​nly the USPTO can make a final decision as to whether or not a mark is eligible for federal trademark registration. However, they have ​provided guidance on what terms can be trademarked and ways to make otherwise untrademarkable names trademarkable. This guidance is a great framework to use when determining if you can successfully trademark your name.


Trademark rights are designed to protect the consumer from confusion. Therefore, the overarching rule is the USPTO will not approve a trademark they think will cause consumer confusion. Here are a few things to consider to help you think about whether or not your mark may cause consumer confusion in the eyes of the USPTO. 


Originality
The first thing to know is the USPTO will not trademark a name that is already trademarked or similar to a mark that is already trademarked, in the same or similar classification. The USPTO wants consumers to be able to associate a specific set of goods or services to a mark so if two marks are confusingly similar and are associated to the same or similar goods or services it is not likely to receive a federal trademark registration.  A trademark clearance search is great tool to ensure that your mark does not infringe on the trademark rights of others. This search should scour federal and state registrations to ensure no one has already secured the same or similar trademark. Internet searches of businesses or brands operating with the mark that have not yet secured federal or state trademark protections are also very important because they may have common law trademark rights. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. It’s imperative to know all potential impediments.  Having a clearance search done by a trademark attorney during the planning stages of your new venture can help you avoid rebranding and the expenses therein, after you’ve already launched.

Also if you are starting a business you should check with your state’s business entity registration office to see if the name you’ve chosen is available for your entity name.

Distinctiveness
Trademark law requires that a mark be distinctive or unique such that it easily distinguishes a product or service from the product or services of others. The distinctiveness of a device can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. From most distinctive to least distinctive, these categories are:

  • Fanciful – marks created for the sole purpose of being used with the product or service. This is the strongest type of mark. E.g., would be XEROX or KODAK,
  • Arbitrary – a common word which is used in connection with products or services unrelated to the dictionary meaning. E.g. APPLE for computers. Arbitrary marks are also immediately eligible for registration.
  • Suggestive – marks that suggest a quality or characteristic of the goods and services but requires imagination on the part of the consumer to identify the characteristic. E.g., MICROSOFT (suggestive of software for microcomputers)
  • Descriptive – ​​marks that merely describe the good or service. The mark likely uses the dictionary meaning of a works in connection with products or services directly related to that meaning. Unlike suggestive marks there is no imagination or creativity needed to identify the product or service. E.g., LEKTRONIIC was famously refused protection by the USPTO on ground of being descriptive for electronic goods.
  • Generic – the common name for the products or services in connection with which it is used, such as “salt” when used in connection with sodium chloride.
TM registration-table
Photo from http://www.patent-usa.com/trademark/


Devices that are fanciful, arbitrary, or suggestive are usually considered distinctive enough to function as trademarks. On the other hand, if a device is descriptive, the device can function as a trademark or service mark only if it has obtained secondary meaning. Generic devices can never be a trademark. A mark can become generic if the trademark becomes the generic name for the good or service. For example Escalator. ​ See my previous post “Trademark Holders Beware of the Generic Curse” for more details.

Figure out where on the spectrum your mark falls. This will help gauge your likelihood for success and how long the application process will take. The closer you are to not distinctive portion of the spectrum the more likely you will need to prove distinctiveness tot he USPTO. If you have not yet selected a name, keep these limits in mind as you create one.

A few additional tips…
​Claim Your Mark
Until you have secured a federal registration you cannot use the ® symbol, which indicates that the trademark is registered with the U.S. Patent and Trademark Office (“PTO”). However,  you can use the ™ symbol with the mark to identify it as a trademark, whether or not a federal trademark application has been filed. The ™ symbol can be used with marks for both goods and services, although some companies use SM (referring to a service mark) with a mark that is used for services as opposed to goods. These symbols put people on notice that you claim rights in the mark, although common law (a trademark mark rights acquired merely by using the mark) doesn’t give you all the rights and benefits of federal registration.
Get Help!
Consult an attorney when determining whether or not to file a trademark. This is a brief overview and does not shed light on all of the intricacies of the process. Registration of a trademark is a very fact specific process and your mark must be analyzed on the merits. This article is just designed to help you frame your thought process. Attorney’s are uniquely equipped to position a mark to be successful and know how to fight a denial using case-law and previous registrations to get a seemingly untrademarkable mark trademarked.
Good luck!!

 

How Much of Your Data can Apple Hand to Law Enforcement?

We are all aware (or at least we should be) that our telecom providers are handing over our data to the police when necessary. Well have you ever wondered just how much and what it takes to get that data? iphone-privacy-2011-04-06-1302104043Apple posted their new guidelines describing what data the company can provide to law enforcement and the processes for requesting that data.

The document breaks it down into two basic types of data: information stored on Apple’s servers and information stored locally on iOS devices.  I have outlined the kinds of data and how they can be obtained in a chart below.

Essentially anything you’ve backed up to or stored on iCloud is available for Apple to provide to law enforcement, including connection logs and IP addresses you’ve used. Additionally a lot of the data associated with your Apple ID is available as well. Therefore, any information you’re providing Apple is available for them to pass along. This is something to consider when deciding if or what to back up on iCloud.  You may want to avoid backing up sensitive company data or private information on iCloud. Some information cannot be avoided, such as anything associated with your Apple ID.

Can they access data on my iOS device???

Yes. Apple can bypass security passcodes on our iOS devices to extract “certain categories of active data,” though it apparently cannot bypass that protection entirely. If provided with a valid search warrant, Apple can hand over SMS messages, pictures and videos, contacts, audio recordings, and your phone’s call history, but it can’t access e-mails, calendar entries, or information from third-party applications. Devices must be running iOS 4 or newer, must be “in good working order,” and must be provided directly to Apple’s headquarters along with an external storage drive twice the size of the iOS device’s internal storage.

Will I know if this is happening?

Maybe. The guidelines state that Apple will “notify its customers when their personal information is being sought in response to legal process except where providing notice is prohibited by the legal process itself.” Apple will also avoid notifying users if the company “believes that providing notice could create a risk of injury or death to an identifiable individual or group of individuals or in situations where the case relates to child endangerment,” though this is entirely up to Apple and not to the law enforcement agencies involved. These notification requirement will help prevent random and unfounded searches.

What is missing?

The policies and capabilities surrounding iCloud Keychain, iMessages and FaceTime calls are unclear and disputed. Apple claims iMessage & Facetime are encrypted but there is some speculation otherwise.

Is this unusual?

No, other tech companies have similar policies. For example, Google provides a similar “Transparency Report” outlining the types of data available to law enforcement. The notification policy is new and several other tech giants, including Facebook and Microsoft, have already indicated that they plan to expand their policies on notifying customers whose data has been requested by law enforcement

 

Where is the Data? Type of Data Means to Obtain Data Restrictions
Information stored on Apple Servers Data Associated with your Apple ID contact inormation obtainable with a subpoena or greater legal process
customer service records
transaction history both in store & online
iTunes gift card information
Data Associated with your iCloud Account connection logs & IP address used Any iCloud information that the user deletes cannot be accessed.
60 days of iCloud mail logs that “include records of incoming and outgoing communications such as time, date, sender e-mail addresses, and recipient e-mail addresses” e-mail logs require a court order or search warrant
any e-mail messages that the user has not deleted requires a search warrant
any other information that can be backed up to iCloud – As of this writing, this list includes contacts, calendars, browser bookmarks, Photo Stream photos, anything that uses the “documents and data” feature (which can include not just word processors but also photo and video apps, games, and data from other applications), and full device backups
Information stored locally on iOS devices SMS messages requires a search warrant – Devices must be running iOS 4 or newer, must be “in good working order,” and must be provided directly to Apple’s headquarters along with an external storage drive twice the size of the iOS device’s internal storage. Cannot access e-mails, calendar entries, or information from third-party applications
pictures and videos
contacts
audio recordings
phone’s call history

US to Relinquish Control of the Internet?

On Friday, the U.S. Commerce Department’s National Telecommunications and Information Administration (NTIA) announced it is giving up control of a system that directs Internet traffic and Web addresses. As a result, Internet Corporation for Assigned Names and Numbers (ICANN), the nonprofit organization charged with managing the Internet, is tasked to convene global stakeholders to develop a proposal to transition the current role played by NTIA in the coordination of the Internet’s domain name system (DNS). This announcement came as a surprise to many but a coalition of nations has been calling for the US to relinquish control of the Internet for at least the last nine months. Politically this takes the US out of the line of fire but practically what does this do for the culture of the Internet?

Why is this important to you? Because it may change the Internet as you know it….

What exactly was the US Doing?

NTIA is the Executive Branch agency that advises the President on telecommunications and information policy issues. NTIA’s programs and policymaking focus largely on expanding broadband Internet access and adoption in America. NTIA controls the DNS which essentially converts the web addresses (URLs) we type in to the search bar into the correct IP address to retrieve the website you requested. Whether you are accessing a Web site or sending e-mail, your computer uses DNS to look up the domain name you’re trying to access. This system is essential to the functionality and security of the Internet.

If not the US, then who?
This contract to control DNS has allowed the U.S. government to exert what some claim is too much influence over the Internet. technology that plays such a pivotal role in society and the economy. So if not the US, then who with the world feel comfortable wielding that power and influence?

There’s a meeting, ICANN 49, March 23 in Singapore and the future of the Internet is at the top of the agenda.

According to Lawrence Strickling, assistant secretary at the Commerce Department, “[The department] will not accept a proposal that replaces the NTIA’s role with a government-led or intergovernmental solution.” Does that leave ICANN or a similar organization to maintain the DNS?

Why should you care?
Because this could mean a very different Internet…

While companies like Verizon applaud the moveITIF and other organizations have argued before that U.S. government oversight has played an essential role in maintaining the security, stability, and openness of the Internet and in ensuring that ICANN satisfies its responsibilities in effectively managing the Internet’s DNS. Without the U.S. government’s presence some lawmakers and members of the tech industry have expressed concern that relinquishing control of IANA will open up the Internet to threats from other governments that seek to censor it.  This could mean a very different Internet.

Are their concerns justified? No one really knows right now but what we can surmise is that the Internet is in for some changes in the years to follow the change of control. Many countries have dealt with privacy and censorship in ways different from that of the US. How will ICANN deal with these conflicting views democratically and ensure Internet users from all economies and sovereign nations will be represented and heard? Will the standards of openness and free flow of information embraced today remain the baseline? Does the “global multistakeholder community” NTIA is referring to exist? What is the legal jurisdiction for both ICANN and this new multistakeholder body?

There are no answers to these questions because so little is known about whats to come. I look forward to the information and ideas that flow from the ICANN meeting next week.  The questions need to be among those at the top of the list.

March Madness: Don’t let the fun harm your business…

March Madness is one of the biggest social events of the spring. We all create brackets and compete against our peers to see who can pick the winner! We attend a number of happy hours and parties to watch games while touting each point scored by your team of the evening.  

Well like the Super Bowl or the Olympics March Madness is a trademarked term and everyone needs to exercise care when using it. The mark is owned by a company partially owned by the NCAA. They are not extremely aggressive in protecting their rights, like the Olympic Committee, but when promoting an event, product or promotion it is a very important consideration.
 
This is not to say you cannot say or write the term March Madness but there is a right way and a wrong way to use it especially in conjunction with events and other promotions. This is a very nuanced distinction one that I will not venture to delineate. However, I will make the suggestion that it would be safer to stick to something  generic – like “it is tournament time again, and you can watch all the action at our Happy Hour this Thursday” – avoids any of the issues that might arise if you use the trademarked term in your commercial or advertisement.
 

Using March Madness in passing in your news, talk or entertainment programming is not going to get you into trouble. Trademark owners want the brand used and associated with the tournament. Trouble arises when using it as a branding term – trying to pass your station off as your “official March Madness station” or an advertiser suggesting that they were “the March Madness restaurant/Happy Hour” are much more likely to cause harm by trying to suggest an official connection between the product or service being sold and the trademarked term.

The issue is one of trademarks or service marks, not copyright. There is a copyright in the telecast itself, but the limitations on the right to use the name comes from trademark law.