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 V s.

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?

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?