Monday, September 20, 2010
I am leading an ExecSense webinar this Thursday, September 23rd at 5pm EST
“The Instant Impact of Visa International Service Association v. JSL Corporation (9th Cir. June 28, 2010) on the Application of Federal Anti-Dilution Law to Trademarks That Are Common English Words"
For more information and to register for the webinar visit: http://www.execsense.com/details.asp?id=1793
Tuesday, September 7, 2010
Anonymous Defamation By Internet
My buddy's call was a bundle of nerves. He's a medical doctor at one of the big institutions in town and he was on the receiving end of a nasty rating on a rate-the-doc type website. The kind that everyone has access to and can anonymously post a rating and comments.
I accessed the site while he was on the phone and found him by state and name. Wow! He wasn't kidding. There was a his name, address and affiliations and next to it was a "4 thumbs down" rating. The rater had described him as a "butcher whose incompetency knows no bowndrees [sic]." "Stay away from this doc, he's a killer," the posting warned.
I asked my friend if he had any idea of his protagonist's identity. "No clue," was the terse reply, "but I want you to learn who wrote this and sue the hell out of him or her and that damn website. I haven't even had a cross word with a patient in more than a decade." My buddy had a reputation for being a careful physician. He was always highly rated by his peers, and as an academic, he stayed on top of all new developments. I had no trouble believing that someone was out to get him for something unrelated to medicine.
I reminded him that he had recently finished building a vacation house, and during the process had fired a couple of contractors and refused to pay a landscaper for trees of poor quality. "Any one of them," I suggested, " could be seeking revenge through this website. After all, it is no secret that you are a physician, and it is easy enough to learn the identity of your employer."
"Okay, start the legal process. Get the name of the anonymous poster and sue him or her and the site for defamation."
My friend was beside himself when I responded that it was highly unlikely the site would voluntarily reveal the name of the poster, that it was not a given that he could force the site to do so, and worse, that the website was immune from defamation liability resulting from the posting. His words were not repeatable.
"Look friend," I told him, " The issue of anonymous posting on the Internet is not novel." As late as last year, the Maryland Court of Appeals crafted a standard that Maryland trial courts must apply to balance the First Amendment right to anonymous speech on the Internet with the opportunity of the subject of the speech, here, the doctor, to sue for defamation.
Internet anonymity has always been a part of the culture. From the beginning, chat room users have been permitted to use a screen name and are not required to use their real name. "The right to speak anonymously is protected by the First Amendment," I advised. In this regard, the Supreme Court has held that:
Anonymous pamphlets, leaflets, brochures and even books have played a role in the progress of mankind. Great works of literature have frequently been produced by authors writing under assumed names.But calling my friend a "butcher" and a "killer" when he wasn't even a surgeon would hardly appear to reach the level of "great works of literature." "Clearly," I replied, "anonymity of speech is not absolute and may be limited by defamation considerations, as libelous utterances are not speech protected by the First Amendment." I explained that a libelous utterance is one that tends to expose a person to public scorn, hatred, contempt or ridicule and discourages others from having a decent opinion of the person or associating with him or her.
I told him I thought we could obtain from the website the identity of the writer if we sue and (1) undertake efforts to notify the poster that he or she is the subject of a subpoena or an application for an order of disclosure, and post a message of notification of the identity discovery request on the website; (2) do nothing until the poster has a reasonable opportunity to file and serve an opposition to our application; (3) identify and allege the exact statement the poster purportedly made which we assert is defamatory; and (4) be sure we have properly pled a prima facie case of defamation in our complaint.
"If," I said, "we do each of these the court will then balance the poster's right to remain anonymous against the strength of the prima facie case of defamation we have pled and the necessity of disclosure of the poster's identity so you can pursue your claim."
"Okay, what about the website? Why can't we sue it for defamation?" my bud asked. I had to explain that suing the website operator for defamation in this case would not be successful. This is because a website operator is immune from tort-like claims that do not involve infringement of intellectual property under the Communications Decency Act if the defamatory statements were provided by a person separate from the operator and the operator engaged in no editing. This is because immunity is granted by the Act to a prospective defendant who serves merely as an interactive computer service, as this rate-the-doc site appears to do. Courts generally apply a three part test to determine immunity under the Act: (1) Is the defendant a provider of interactive computer services; (2) are the postings at issue information provided by another information content provider; and (3) does the plaintiff's claim seek to treat the defendant as a publisher or speaker of third party content?
Clearly, the effort to reach the poster and correct the contents was going to be difficult, time consuming, expensive and uncertain. And in the end, it would be unlikely that any judgment awarded against the poster would be collected.
My friend was not pleased. "Tell it to your U.S. Representative," I replied.
What a Strange Trip It Will Be
The phone rang and it was my bud on the other end of the line. He sounded down and confirmed his mental state when I inquired. "Let's meet for a drink, and I'll buy," I offered. Even that invite failed to elicit a change of tone.
We met at one of those funky Fells Point bars, taking a back booth to get out of the din so we could talk. We waited for someone to take our orders over small chit chat for a while until I realized the only way to get a drink would be to get it myself. I returned shortly to the table with two ales and put them down. "Okay, what's got you down?" I asked.
"Well, you know that for decades I have been fascinated by the work of an artist known for illustrating magazine covers and movie posters with gory monsters," he responded. "I've researched this guy from head to foot, and have followed the maturity of his art from his teens to his untimely death at age 53. He has a cult following, and there is very little I don't know about this guy. Call me obsessive, but I have spent a lot of time researching and writing a book about him and his work. I think I may have mentioned that to you last year."
"You did," I told him. "You said you were in the throes of an outline of something you wanted to put together and maybe publish."
He confessed that this was the work he had mentioned, and that over the years no one had really seen much of him because all his time was spent on research and the manuscript. Now, he told me the manuscript was done, and he had found an enthusiastic publisher.
"And this is what has made you bummed out?" I asked. "Seems to me you should be celebrating your good fortune."
A problem had arisen, he explained, and it was a problem he could not over come. It appears someone at the publisher had contacted the owner of one of the magazines that the deceased artist had worked for. The idea behind the contact was to see whether the publisher could get a quote to endorse the book. The magazine's former owner asked the publisher's rep a series of questions that ended with "What art work is being used to illustrate the book?"
The response included identification of some of the art that had graced the covers of his magazine. The conversation went bad as he told the publisher's rep that he owned the art that was created for his covers and that if just one of his cover art was used without his permission, "He would own the publisher."
My friend added that the publisher had become frightened and told him that he could not use the art to illustrate the book. "With that admonishment, my project went out the window," he said. "I even spoke to my nephew, who as you know is a third year law student at an accredited law school, and he told me, 'the publisher was right in not letting me use the art. He'd get sued for copyright infringement.'"
"Feh", I replied.
"Feh? My life's in shambles and that's all you can say. Feh?"
"Look chum. As good lawyer as your nephew the law student is not, he missed the boat on this one. Ever hear of a little thing called fair use?"
I explained patiently that since the dawn of U.S. Copyright law there has been opportunity for a person like my bud to use the copyrighted work of another. This is because the purpose of expressed granting copyright to an author is to promote the progress of science and the useful arts. This doctrine was not codified in the later part of the 18th century, but was recognized as a judicial doctrine by the courts. Fair use was codified as a defense to copyright infringement in 1976. The idea behind fair use is to allow limited use of another's work for the benefit of the citizenry, often by transforming the original work into something new, or by using the work for comment or scholarship. The 1976 Act establishes 4 non-exclusive factors for courts to consider when deciding if a use is fair. I explained there are no bright line tests, and each case must be considered, the factors explored and he results analyzed.
"Okay," he replied. "Does that mean I have to get sued and go all the way through trial in order to establish my rights to use this art?"
"No," I told him. "First, suit is not a guaranty despite what has been threatened. And second, even though fair use is a mixed bag of fact and law, some of the circuits, including the one that the putative owner lives in recognizes that the issue of fair use can be resolved by summary judgment."
"Well, what about my ignoring his demands that I stop? Won't that hurt my cause?"
"No, the U.S. Supreme Court has implicitly said that copying in the face of denial of a license is not a factor."
I spoke of a couple of cases where art was used to illustrate texts, including one brought by the Archives of rock and roll impresario Bill Graham over the use of Grateful Dead posters he owned in a third party's book about the Grateful Dead. In that case, I told my friend, the use was considered a fair use for a few reasons, perhaps the most important being that the illustrations in the book did not replace the need for the posters as display items, or expressions, and the chronological ordering of the posters in the book was transformative. My bud began to perk up.
"And this is not the only case," I told him. "Recently, the same Circuit Court dealt with an issue similar to your case and the Graham Archives case and again found fair use when cover art was used to illustrate a book about the artist." In that case the court quoted with approval a seminal law review authored by a member of its bench in which Judge Leval wrote that to be a fair use, the use must be productive and the work used in a manner different than the original. I explained to my friend that he would have no defense if he merely took the cover art and created posters or used the art to illustrate a new magazine. His intended use was so much different. In essence, he was writing a scholarly and transformative work that would not reduce the demand for the original art by anyone who wanted to display it or illustrate fiction. His work would be far different than the magazines on whose covers the work first appeared.
"So for this noble cause you will represent me for free?" he inquired. "Oy," I thought. "I can see where this will end up".
We met at one of those funky Fells Point bars, taking a back booth to get out of the din so we could talk. We waited for someone to take our orders over small chit chat for a while until I realized the only way to get a drink would be to get it myself. I returned shortly to the table with two ales and put them down. "Okay, what's got you down?" I asked.
"Well, you know that for decades I have been fascinated by the work of an artist known for illustrating magazine covers and movie posters with gory monsters," he responded. "I've researched this guy from head to foot, and have followed the maturity of his art from his teens to his untimely death at age 53. He has a cult following, and there is very little I don't know about this guy. Call me obsessive, but I have spent a lot of time researching and writing a book about him and his work. I think I may have mentioned that to you last year."
"You did," I told him. "You said you were in the throes of an outline of something you wanted to put together and maybe publish."
He confessed that this was the work he had mentioned, and that over the years no one had really seen much of him because all his time was spent on research and the manuscript. Now, he told me the manuscript was done, and he had found an enthusiastic publisher.
"And this is what has made you bummed out?" I asked. "Seems to me you should be celebrating your good fortune."
A problem had arisen, he explained, and it was a problem he could not over come. It appears someone at the publisher had contacted the owner of one of the magazines that the deceased artist had worked for. The idea behind the contact was to see whether the publisher could get a quote to endorse the book. The magazine's former owner asked the publisher's rep a series of questions that ended with "What art work is being used to illustrate the book?"
The response included identification of some of the art that had graced the covers of his magazine. The conversation went bad as he told the publisher's rep that he owned the art that was created for his covers and that if just one of his cover art was used without his permission, "He would own the publisher."
My friend added that the publisher had become frightened and told him that he could not use the art to illustrate the book. "With that admonishment, my project went out the window," he said. "I even spoke to my nephew, who as you know is a third year law student at an accredited law school, and he told me, 'the publisher was right in not letting me use the art. He'd get sued for copyright infringement.'"
"Feh", I replied.
"Feh? My life's in shambles and that's all you can say. Feh?"
"Look chum. As good lawyer as your nephew the law student is not, he missed the boat on this one. Ever hear of a little thing called fair use?"
I explained patiently that since the dawn of U.S. Copyright law there has been opportunity for a person like my bud to use the copyrighted work of another. This is because the purpose of expressed granting copyright to an author is to promote the progress of science and the useful arts. This doctrine was not codified in the later part of the 18th century, but was recognized as a judicial doctrine by the courts. Fair use was codified as a defense to copyright infringement in 1976. The idea behind fair use is to allow limited use of another's work for the benefit of the citizenry, often by transforming the original work into something new, or by using the work for comment or scholarship. The 1976 Act establishes 4 non-exclusive factors for courts to consider when deciding if a use is fair. I explained there are no bright line tests, and each case must be considered, the factors explored and he results analyzed.
"Okay," he replied. "Does that mean I have to get sued and go all the way through trial in order to establish my rights to use this art?"
"No," I told him. "First, suit is not a guaranty despite what has been threatened. And second, even though fair use is a mixed bag of fact and law, some of the circuits, including the one that the putative owner lives in recognizes that the issue of fair use can be resolved by summary judgment."
"Well, what about my ignoring his demands that I stop? Won't that hurt my cause?"
"No, the U.S. Supreme Court has implicitly said that copying in the face of denial of a license is not a factor."
I spoke of a couple of cases where art was used to illustrate texts, including one brought by the Archives of rock and roll impresario Bill Graham over the use of Grateful Dead posters he owned in a third party's book about the Grateful Dead. In that case, I told my friend, the use was considered a fair use for a few reasons, perhaps the most important being that the illustrations in the book did not replace the need for the posters as display items, or expressions, and the chronological ordering of the posters in the book was transformative. My bud began to perk up.
"And this is not the only case," I told him. "Recently, the same Circuit Court dealt with an issue similar to your case and the Graham Archives case and again found fair use when cover art was used to illustrate a book about the artist." In that case the court quoted with approval a seminal law review authored by a member of its bench in which Judge Leval wrote that to be a fair use, the use must be productive and the work used in a manner different than the original. I explained to my friend that he would have no defense if he merely took the cover art and created posters or used the art to illustrate a new magazine. His intended use was so much different. In essence, he was writing a scholarly and transformative work that would not reduce the demand for the original art by anyone who wanted to display it or illustrate fiction. His work would be far different than the magazines on whose covers the work first appeared.
"So for this noble cause you will represent me for free?" he inquired. "Oy," I thought. "I can see where this will end up".
Celebrity Endorsements: An Eagle’s Eye
I read with one eye closed that California Congressman Joe Baca was dropping his effort to honor Tiger Woods with the Congressional Gold Medal. This followed revelations that Mr. Woods has engaged in seriatim in extra marital affairs.
Baca’s statement regarding his initial support of the award of the Medal highlights the reasons Tiger has endeared himself to advertisers and consumers.
Woods has broken barriers with grace and dignity by showing that golf is a sport for all people, regardless of race, color or creed…Woods has inspired countless people of all ages, impressing upon them that their hopes, dreams, and prayers may be achieved through hard work, persistence, education and good sportsmanship.
The Congressman is absolutely correct; Woods has done all of these things and more. But his recently revealed conduct, and his failure to refute numerous public statements made by numerous alleged paramours – likely because he is unable to – have substantially eroded the selling power of his once solid image.
It is reported that approximately 93 percent of Tiger’s $100 million annual earnings are derived from off-course activities – primarily his role as a celebrity endorser. Nike alone pays him $30 million per year, and he has, or had, endorsement deals with the likes of Gatorade, Gillette, Accenture, Tag Heuer and others. But following the revelations of at least 11 women that Tiger was a naughty young man, and the circulation of nude pictures of Tiger by one them, Gatorade has dropped Tiger or at least a product branded with his name and photo. Perhaps Gatorade’s slogan, Is it in you? became a tad too controversial given the goings on. Big stars get dropped. McDonald’s, Coke, Nutella and Spalding canned Kobe Bryant following his sexual assault scandal.
Tiger was a gust of fresh air for golf, and sports in general, and likely he has several, if not more, decades to play the game. Many advertisers whose products he pitched invested heavily for the long term, hoping to ride on the tails of his success for many years. They are at a crossroads as to their plans, and I am certain there is a lot of handwringing going on in the marketing departments of Nike, Accenture and Tiger’s other sponsors. I suspect they would like to try to ride out this mess.
Two questions arise. Should the sponsors can Tiger, as did Gatorade, and are they legally able to do so if they want to? Several years ago, or maybe longer, we were negotiating a contract with the bad guy of basketball, Dennis Rodman. Our client asked whether we were intending to place a morals clause in the contract – a clause that would allow the client’s client, the sponsor, to can Mr. Rodman if he did anything repugnant to sensibilities or morality. “Dennis Rodman,” I stammered. “You want him to do something bad. Having a morals clause in his contract would be like putting a speed governor on Michael Schumacher’s Ferrari.”
Tiger is a lot different than Dennis Rodman, and not just because we don’t know that he isn’t dating Madonna. He’s a golfer, and golf is a gentleperson’s sport. The fans are very reserved and the TV announcers whisper their commentary. The bad boy persona simply will not work for Woods.
I don’t know whether Woods’ reps agreed to the inclusion of morals clauses in his contracts. The sponsors would have asked for it, but given Woods’ selling power he may have made inclusion of a morals clause a deal breaker. And the advertisers may have agreed to take a chance on his then squeaky-clean image. With one, his conduct will allow termination.
In the absence of a moral’s clause, Tiger’s team might have insisted on a clause that requires airing of the ads so as to keep Tiger in the public eye. However, there have been no Tiger ads seen on broadcast from late November to at least mid December when this column was written. Regardless of the terms of the contracts, the sponsors and Tiger could have agreed it made sense to suspend the ads for a while, even if by contract they are required to run the ads. And Gatorade, which discontinued the sale of its Tiger Focus sports drink, is reported to have decided to drop the brand on November 25, before the scandal grew wings. Gatorade says its partnership with Tiger will continue. We’ll see about that, but it’s hard to be a skeptic given Tiger’s pre-scandal career and the likelihood he will recover his grace, or much of it, and again be a mega endorser. A man who makes $100 million a year can buy a lot of PR crisis counsel.
In the meantime, perhaps there are advertisers who might benefit from the bad boy, out of control, image that the scandal has bestowed on Tiger, and I suspect more than one has made its pitch. Given that the status of Tiger’s relationships with his blue chip advertisers are not clear, even if ads have been pulled, Tiger will not move to endorse any of these potential sponsors. I doubt, also, his people will allow the current sponsors to modify their ads to have his image closer to reality, even slightly. Eventually, that may place sponsor and spokesperson at an impasse in cases where no morals clause exists, and may result in termination of contracts where moral clauses do exist. Right now, a lot of money has been spent on Tiger’s contracts and ads just are not airing. There will be very tough calls to make.
Bottom line is, who would have even guessed that Tiger Woods would be at the center of a scandal of this magnitude? Certainly not his conservative sponsors. I am certain they are agonizing as is Tiger. Four things are for certain, however. One, he will develop new sponsors, maintain existing sponsors or both, and he will return as a spokesperson. Two, his value has been substantially damaged, but that may create a long-term opportunity for his sponsors who may take advantage. Three, all his future contracts will contain a strong morals clause. And four, he will reign in his behavior.
Baca’s statement regarding his initial support of the award of the Medal highlights the reasons Tiger has endeared himself to advertisers and consumers.
Woods has broken barriers with grace and dignity by showing that golf is a sport for all people, regardless of race, color or creed…Woods has inspired countless people of all ages, impressing upon them that their hopes, dreams, and prayers may be achieved through hard work, persistence, education and good sportsmanship.
The Congressman is absolutely correct; Woods has done all of these things and more. But his recently revealed conduct, and his failure to refute numerous public statements made by numerous alleged paramours – likely because he is unable to – have substantially eroded the selling power of his once solid image.
It is reported that approximately 93 percent of Tiger’s $100 million annual earnings are derived from off-course activities – primarily his role as a celebrity endorser. Nike alone pays him $30 million per year, and he has, or had, endorsement deals with the likes of Gatorade, Gillette, Accenture, Tag Heuer and others. But following the revelations of at least 11 women that Tiger was a naughty young man, and the circulation of nude pictures of Tiger by one them, Gatorade has dropped Tiger or at least a product branded with his name and photo. Perhaps Gatorade’s slogan, Is it in you? became a tad too controversial given the goings on. Big stars get dropped. McDonald’s, Coke, Nutella and Spalding canned Kobe Bryant following his sexual assault scandal.
Tiger was a gust of fresh air for golf, and sports in general, and likely he has several, if not more, decades to play the game. Many advertisers whose products he pitched invested heavily for the long term, hoping to ride on the tails of his success for many years. They are at a crossroads as to their plans, and I am certain there is a lot of handwringing going on in the marketing departments of Nike, Accenture and Tiger’s other sponsors. I suspect they would like to try to ride out this mess.
Two questions arise. Should the sponsors can Tiger, as did Gatorade, and are they legally able to do so if they want to? Several years ago, or maybe longer, we were negotiating a contract with the bad guy of basketball, Dennis Rodman. Our client asked whether we were intending to place a morals clause in the contract – a clause that would allow the client’s client, the sponsor, to can Mr. Rodman if he did anything repugnant to sensibilities or morality. “Dennis Rodman,” I stammered. “You want him to do something bad. Having a morals clause in his contract would be like putting a speed governor on Michael Schumacher’s Ferrari.”
Tiger is a lot different than Dennis Rodman, and not just because we don’t know that he isn’t dating Madonna. He’s a golfer, and golf is a gentleperson’s sport. The fans are very reserved and the TV announcers whisper their commentary. The bad boy persona simply will not work for Woods.
I don’t know whether Woods’ reps agreed to the inclusion of morals clauses in his contracts. The sponsors would have asked for it, but given Woods’ selling power he may have made inclusion of a morals clause a deal breaker. And the advertisers may have agreed to take a chance on his then squeaky-clean image. With one, his conduct will allow termination.
In the absence of a moral’s clause, Tiger’s team might have insisted on a clause that requires airing of the ads so as to keep Tiger in the public eye. However, there have been no Tiger ads seen on broadcast from late November to at least mid December when this column was written. Regardless of the terms of the contracts, the sponsors and Tiger could have agreed it made sense to suspend the ads for a while, even if by contract they are required to run the ads. And Gatorade, which discontinued the sale of its Tiger Focus sports drink, is reported to have decided to drop the brand on November 25, before the scandal grew wings. Gatorade says its partnership with Tiger will continue. We’ll see about that, but it’s hard to be a skeptic given Tiger’s pre-scandal career and the likelihood he will recover his grace, or much of it, and again be a mega endorser. A man who makes $100 million a year can buy a lot of PR crisis counsel.
In the meantime, perhaps there are advertisers who might benefit from the bad boy, out of control, image that the scandal has bestowed on Tiger, and I suspect more than one has made its pitch. Given that the status of Tiger’s relationships with his blue chip advertisers are not clear, even if ads have been pulled, Tiger will not move to endorse any of these potential sponsors. I doubt, also, his people will allow the current sponsors to modify their ads to have his image closer to reality, even slightly. Eventually, that may place sponsor and spokesperson at an impasse in cases where no morals clause exists, and may result in termination of contracts where moral clauses do exist. Right now, a lot of money has been spent on Tiger’s contracts and ads just are not airing. There will be very tough calls to make.
Bottom line is, who would have even guessed that Tiger Woods would be at the center of a scandal of this magnitude? Certainly not his conservative sponsors. I am certain they are agonizing as is Tiger. Four things are for certain, however. One, he will develop new sponsors, maintain existing sponsors or both, and he will return as a spokesperson. Two, his value has been substantially damaged, but that may create a long-term opportunity for his sponsors who may take advantage. Three, all his future contracts will contain a strong morals clause. And four, he will reign in his behavior.
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