In The News

Stephen Zralek to Discuss Laws of Social Media

Bone McAllester Norton attorney Stephen Zralek will discuss the laws of social media for "Digital Citizenship and the First Amendment: The final segment of Leadership and Civility in the Digital Age," a series moderated by former FCC Commissioner Deborah Taylor Tate.


This event features Gene Policinski, senior vice president and executive director of the First Amendment Center as he joins Deborah Taylor Tate for a discussion of the tenets of the First Amendment – religion, speech, press, assembly and petition – and how all have been affected in a digital world. Stephen Zralek will also join the conversation to discuss the evolving laws of social media, including defamation, marketing to children and employment issues.


Tuesday, April 26, 2011, 6 p.m.
Mullican Television Studio, Ezell Center, Lipscomb University
RSVP to Leah Davis at This email address is being protected from spambots. You need JavaScript enabled to view it. or call (615) 966-6155


 

April 2011 Newsletter Features Human Rights Leaders, ATHENA, Top 40, Margaritaville, Real Estate, & Medical Records

Bone McAllester Norton attorneys continue to gain recognition in the Nashville community.  The firm also sponsored "Day on the Hill" Luncheon for the Tennessee Bankers Association Young Lawyers Division, and made sure to keep the theme fun.  To read the rest of our newsletter, click here.

What are the roles of a Trademark Administrator?

By Paul Kruse

Last week we talked about the importance of having a trademark administrator. Here is a detailed list of what you should expect from yours:

A trademark administrator will periodically audit a company’s records  to:

  • Identify all  active trademark registrations currently owned by or assigned to the company  broken down by issuing country or entity.

  • Identify all  pending trademark applications currently owned by or assigned to the company  broken down by issuing country or entity.

  •  Identify all  trademark registrations and applications abandoned, cancelled or expired in the  past twenty-four months broken down by issuing country or entity.

  • Specify whether  the trademarks appearing in such applications or registrations are either still  being used or for which there is an intention to use at any point during the  next twelve months.

  • Provide a copy  of all trademark clearance searches and/or opinions relating to the  availability of a trademark obtained in the past twenty-four months.

  • Identify which  of the searched trademarks are being used or for which there is an intention to  use at any point during the next twelve months.

  • If applicable,  provide examples of all tags, labels, instruction manuals, containers and  product packaging used for any and all of the company’s goods.

  • If applicable,  provide examples of signs, photographs, brochures or advertisements for any and  all of the company’s goods and services.

  • Identify all  trademarks the company has considered adopting in the past twelve months.

  • Identify any  and all of the company trademarks that have been the subject of a potential or  actual trademark dispute being either asserted by or asserted against the  company.

  • Identify any  and all third party trademarks which the company knows or has reason to believe  conflict, or which others have claimed conflict, with those owned or licensed  by the company.

  • Identify any  litigation (including administrative proceedings before a government body)  involving a claim of trademark infringement and/or unfair competition in which  the company was a party.

  • Identify all  agreements and/or licenses (including those terminated or expired within the  past twelve months and those that have not yet begun) whereby the company is  given the right to use a third party’s trademarks.

  • Identify all  agreements and/or licenses (including those terminated or expired within the  past twelve months) whereby the company has given to a third party the right to  use any of the company’s trademarks.

  • Provide any and  all trademark assignments involving trademarks currently being used by the  company including those where use of the trademarks stopped within the  preceding twelve months and those where use of the trademarks is contemplated  to begin at any point during the next twelve months.

  • Identify any  and all domain names currently owned by the company.


Once information about the portfolio of marks is consolidated, active  management can begin.  For example, uniform  use of marks in the marketplace can be assured.   Core marks can be identified and focused upon.  Expansion  of trademarks can be decided based on a company’s strategic interests.  Licensing programs outside a company’s  traditional space can prove surprisingly lucrative.  With a trademark administrator in place, brand  extension opportunities can be easily identified and analyzed.

A trademark administrator also generates company wide awareness of the  value of the company’s marks.  This encourages  the proper use of marks within a company as well as a heightened awareness of  the need to protect marks in the marketplace.

Finally, by placing responsibility for a portfolio of marks with a  trademark administrator, a company will be able to easily grant security  interests in its marks if desired or ready them for sale in the event of an  asset purchase, merger or acquisition.

Paul Kruse is Best Lawyers 2012 Trademark Lawyer of the Year and  creator of CoreFour, a Trademark Vigilance Program.

Want to Limit Liability Against Copyright Infringement Claims when Hosting User Content on your Website?

If you host a website that invites the public to submit content, often called UGC (or User Generated Content), you may want to read the recent summary judgment decision in Arista Records LLC v. Myxer Inc. and stay tuned to the final outcome at trial.  Website hosts that allow UGC run the risk of being sued for copyright infringement, among other claims, because users sometimes submit material whose copyright belongs to someone else.  If a copyright owner sues you for copyright infringement in your role as a website host, one of the most common defenses asserted is that the web hosting is protected under the DMCA (Digital Millennium Copyright Act). 

On April 1, 2011, a federal court in California issued the above decision in a case pitting content owners against website hosts.  UMG Records and other music companies sued Myxer and its principals for copyright infringement because Myxer hosts a website that invites the public to upload music and then download it as ring tones on cell phones.  Myxer doesn't pay UMG anything, and UMG argues that it loses money every time a ring tone is downloaded through Myxer.

Myxer asserted two primary defenses: that its use was fair use and that it was protected by the DMCA's "safe harbors."  On summary judgment, the court rejected Myxer's fair use defense, finding that converting the songs into ring tones did not qualify as a "transformative" use and finding that Myxer's business model likely cut into UMG's market. 

But the court kept alive Myxer's DMCA defense.  It found that genuine issues of fact existed regarding Myxer's implementation of a DMCA policy and regarding the speed with which it removed allegedly infringing material.  Now it will be up to Myxer to prevail on this defense at trial.

Just like Myxer is hoping to do, businesses that allow the public to post content on their websites may limit their liability against copyright infringement lawsuits by following some steps under the DMCA.  As a ground rule, if you create or direct content on your website that infringes on another's copyright, you can't turn to the DMCA for help.  But if all you do is host content created by others, to get the benefits of DMCA protection you need to (1) adopt a  DMCA policy and communicate it to your users, (2) appoint a DMCA agent, (3) follow the DMCA steps of quickly responding to accusations of hosting material that infringes another's copyright, (4) permanently remove repeat infringers, and (5) receive no financial benefit directly attributable to any infringing activity on your site. 

To read more about how to protect your business under the DMCA, check out this great resource from the EFF (Electronic Frontier Foundation), or contact an attorney with experience in copyrights and intellectual property law.

Change at the TABC

In March we saw a change in the  composition of the Tennessee Alcoholic Beverage Commission.  Governor Haslam appointed two new members,  and in an unusual political move, reappointed longtime TABC member John  Jones.  Given his historical ties to the  Democratic party, Jones was likely reappointed to provide continuity and  historical perspective to the three person commission and bring consistent  application of the complicated and often arcane laws that regulate liquor in Tennessee.  Jones’ father served on the original TABC  when it was established in the 1960’s, and a Jones family member has always  served as a TABC Commissioner.  We see the appointment of Jones as being consistent with the Governor’s broad vision  of enhancing Tennessee's  reputation as a business-friendly state.

The two new Commissioners are  Mary McDaniel and Bryan Kaegi.

Commissioner Kaegi, the Middle  Tennessee representative, has a long history of support for prominent  Republican campaigns.  He currently works  with Persuasion Partners, a high-profile political campaign service.  Commissioner Kaegi served on the 2010  Tennessee Victory Leadership Team that led and funded the successful TNGOP get  out the vote campaign, was Finance Director for Senator Lamar Alexander and  also the former Finance Director for the Tennessee Republican Party. He served  as Finance Director for the Tennessee Victory program for President Bush in  2000 and 2004.  His sister, Kim Kaegi,  was Governor Haslam’s finance director.

Commissioner McDaniel, the West Tennessee representative, is recently retired FedEx  Vice President of Aircraft Materiel.  Her  career with FedEx spanned 30 years and she managed aircraft parts inventory and  technical support for the FedEx global fleet.   She is President of the Board of Trustees for Southwest Tennessee   Community College, her  alma mater, and leads fundraising efforts for the college.

We say farewell to Senator Harlan  Matthews and Cynthia Bond, who served the state as Commissioners for the past  eight years, and welcome Commissioners Kaegi and McDaniel to our insane little  world.  We are glad to see the return of  Commissioner Jones for another term.

At the conclusion of April's  regular TABC meeting, Commissioner Jones announced that he was stepping down as  chair. Commissioner Jones has chaired the Tennessee ABC for longer than we  recall.  Commissioner McDaniel was  appointed the new Chair and promised to spend a lot of time with the staff  helping out with TABC functions.  For  example, Commissioner McDaniel attended the National Conference of State Liquor  Administrators and spoke to the group.

Commissioner McDaniel’s  assistance could not come at a better time.  The staff at the TABC is pretty thin and seems to be getting thinner all  the time.  There are numerous high level  vacancies.  Acting Assistant Director  Melinda Arrington departed in May. Former Assistant Director Carolyn Smith  departed late last year. Senior ABC agents Mike Cawthon and Al Watson have  retired.  Hiring freezes have left a  number of key positions vacant.

The ABC was already a thinly staffed agency charged with overseeing several thousand licenses.  Director Danielle Elks is now filling the role of three staff attorneys and also leading the agency. ABC agents are  sparse.  Although licensees do not look  forward to stings, ABC agents are vital to conducting inspections necessary for  issuance of licenses to new businesses and changes of ownership.  In addition, the General Assembly is passing laws that create more classes of licenses and opening up the number of eligible  locations and entities that can obtain licenses; thus, further increasing the workload of a diminished staff.

So far, the ABC has done an admirable  job of working through this tough time. We hope that help is on the way, as  backlogs are certain to build up and morale can easily suffer.

Griffin Technology Hosts WaterCooler

WaterCooler is a monthly networking event for "young" entrepreneurs.  (I take liberty with use of the word "young" since my co-founder and I are pushing 40, and since we'd like to stay involved for a while.  With that in mind, we include anyone in their 20s, 30s and 40s.)  We started this fun venture in September 2009 and highlight a different local business or expert each time.  Lately we've been enjoying the field trips, visiting Yazoo Brewery, Olive & Sinclair Chocolate Co., and (coming up on April 18) Corsair Distillery.  It's a casual way to meet others who are active in the business, cultural and philanthropic worlds of Nashville.  Hopefully connections will be made at WaterCooler that spur new entrepreneurial and community collaborations. Griffin Technology graciously hosted us on April 23.  Jackie Ballinger, its Marketing and PR guru, welcomed each guest and provided us with an incredible array of food and drink.  Also greeting guests as they arrived was this VW bus, which employees use for impromptu meetings, and which Griffin has traveled in for marketing at SXSW and Bonnaroo, to name a few:
Photo courtesy of Griffin Technology

Mark Rowan, Griffin's President, spoke about its background, its international reach and its commitment to Nashville.
Photo courtesy of Griffin Technology

It was clear that Griffin is a dominant player in the global tech scene, and we're lucky to have it right here in our own backyard.

After, Jackie led us on a tour of their new work space.  We saw the wall of awesome accessory covers, the vending machine stocked with beer, and the work station decked out in action figures -- none of which is a regular feature where most of us work:



In the highest form of flattery (jealousy), everyone decided to ditch their current job and apply to work at Griffin.

Here are some photos of the event:









Two Easy Ways Social Media Experts can Improve Philanthropy

Many people are ashamed of their birthdays, ashamed of growing older.  Not my mom -- she's lived a rich life and dedicated it to serving others.  We're having a birthday party for her soon, and 40 or 50 friends will be there to help her celebrate.  That's because she's given of herself and made deep connections in her community.  Happy birthday, Mom!  My mother,  my father and countless others are examples of how selfless acts of community involvement provide unbelievable personal returns. I had lunch yesterday with the Head of Cabedge himself, Chris Blanz.  (That's the best job title I've ever seen!)  We had a lot of fun and let a ton of ideas fly all around the room.  One of the best issues we discussed was: "How can social media experts/users get involved in the philanthropy of our city?"  Here's two easy ways:1.  Use social media to spread the word about non-profits.  You do this all day every day about other topics, any way.  For many of you, social media is your job.  Find those non-profits in town that interest you, follow them, and help spread the word about their events and needs.  Big fundraiser coming up?  Think of how many extra people might attend all because you tweet about it.  Cool People Care has a great resource that lets you follow and friend your favorite non-profits.  Facebook has a Causes app to raise funds and awareness of your favorite charities, and SixDegrees.org lets you place donation links on your social networks that directs funds to the charity of your choice.  Easy stuff.  Big results.

2.  Join the board/volunteer your skills with a non-profit.  This is where face-to-face human interaction is invaluable.  Here in Nashville I'm on the board of an organization that I love, where the time I spend feels like sheer fun: Conexion Americas, which serves as a bridge between the recently arriving Latino community and the community of people who have been here a while.  Every non-profit needs help from social media experts to help build bridges to the people they serve and to funders, friends and decision-makers.  These boards need your expertise.  Choose one that interests you.  Don't have any experience on a board?  Then call the CEO and say you want to volunteer for a year.  I promise they'll plug you in.  If you're under 40, apply for the Young Leaders program, which trains you how to sit on a board.  Or contact Hands On Nashville, which offers similar classes.

Two Easy Ways Social Media Experts can Improve Philanthropy

Many people are ashamed of their birthdays, ashamed of growing older.  Not my mom -- she's lived a rich life and dedicated it to serving others.  We're having a birthday party for her soon, and 40 or 50 friends will be there to help her celebrate.  That's because she's given of herself and made deep connections in her community.  Happy birthday, Mom!  My mother,  my father and countless others are examples of how selfless acts of community involvement provide unbelievable personal returns. I had lunch yesterday with the Head of Cabedge himself, Chris Blanz.  (That's the best job title I've ever seen!)  We had a lot of fun and let a ton of ideas fly all around the room.  One of the best issues we discussed was: "How can social media experts/users get involved in the philanthropy of our city?"  Here's two easy ways:1.  Use social media to spread the word about non-profits.  You do this all day every day about other topics, any way.  For many of you, social media is your job.  Find those non-profits in town that interest you, follow them, and help spread the word about their events and needs.  Big fundraiser coming up?  Think of how many extra people might attend all because you tweet about it.  Cool People Care has a great resource that lets you follow and friend your favorite non-profits.  Facebook has a Causes app to raise funds and awareness of your favorite charities, and SixDegrees.org lets you place donation links on your social networks that directs funds to the charity of your choice.  Easy stuff.  Big results.

2.  Join the board/volunteer your skills with a non-profit.  This is where face-to-face human interaction is invaluable.  Here in Nashville I'm on the board of an organization that I love, where the time I spend feels like sheer fun: Conexion Americas, which serves as a bridge between the recently arriving Latino community and the community of people who have been here a while.  Every non-profit needs help from social media experts to help build bridges to the people they serve and to funders, friends and decision-makers.  These boards need your expertise.  Choose one that interests you.  Don't have any experience on a board?  Then call the CEO and say you want to volunteer for a year.  I promise they'll plug you in.  If you're under 40, apply for the Young Leaders program, which trains you how to sit on a board.  Or contact Hands On Nashville, which offers similar classes.

James A. Crumlin, Jr. to Present at TBA’s Introduction to Trial Practice

Bone McAllester Norton attorney James A. Crumlin, Jr. is one of twelve speakers presenting at the Tennessee Bar Association’s Introduction to Trial Practice program on March 31, 2011.


 This CLE is designed to recreate a “real” trial experience with seasoned lawyers. Attendees will observe key aspects of a basic trial including voir dire, direct and cross examination of an expert, and other areas often left out of law school curriculum.


Click here for more details and to register for this program.


 

"Online Physician Review Sites: Fighting Back to Protect Your Reputation" by Stephen J. Zralek

With the explosion of social media, physicians, dentists and other medical professionals (collectively “physicians”) are becoming daily victims of anonymous online defamation.


 Websites like vitals.com, physicianreports.com, ratemds.com, bookofdoctors.com and drscore.com now provide every patient with a megaphone to say whatever they want to the widest possible audience.


Giving patients the ability to review physicians has many upsides, but it also has downsides, as well.  Online reviews, at their best, have replaced word-of-mouth feedback from prior patients, providing patients with multiple reviews in mere minutes, unlike before.  When the reviews are honest and accurate, they help patients quickly distinguish between providers.  The downside for patients who turn to online physician reviews is that often they are no more reliable than many healthcare websites, which can scare patients into thinking that appearance of blood in their stool is colon cancer when the real culprit is the beets they had for lunch.


Similarly, online physician reviews provide both pros and cons for physicians.  Online reviews allow really good physicians to garner more wide-spread recognition.  But what about when a review is dishonest or inaccurate?  Opinion does not constitute defamation, but reviews that contain untrue facts likely could serve as the basis of a defamation claim.  What about when the reviewer is not a former patient, but rather a competitor?  How does a physician fight back?


Sometimes the negative comments are minor and the best advice is to brush them off.  But other times the comments are serious and deserve a stronger response, such as when they are tantamount to suggesting malpractice, or that your nurse practitioner has a terrible bedside manner.  These comments can damage your reputation and harm you economically if they steer business away from you.  When that happens, especially if it happens more than once from the same person, you may have grounds to assert a claim of business interference, and not just defamation.


One of the biggest challenges with the Web 2.0 is the fact that most online review websites provide no quality assurance – many of them the posting of any comment without regard to its truth, as long as it does not contain profanity.  Even worse, most online review comments are made anonymously.  If that’s the case, how can you protect yourself?  How can you even find out the identity of the poster?


Fortunately, victims are not without recourse.  Most people think that they can say whatever they want online and that no one will ever know who said it.  This is incorrect.  There are ways to find out the identity of online posters, but you need to act quickly since Internet service providers (ISPs) often destroy records of online activity after 180 days.


If you find that you are the victim of disparaging comments made online, you won’t get very far suing the website that hosts the comments (known as user generated content or “UGC”).  Websites that host UGC are immune from liability related to comments made by third parties under Section 230 of the Communications Decency Act.


The first step is to examine the website’s Terms of Usage or Terms of Service.  Each website that invites UGC should have its own rules of conduct.  Most sites have rules that allow those parties who have been reviewed to notify them if a comment is untrue.  Some sites, like vitals.com, have rules that allow physicians to remove up to two negative reviews within a certain time period.  If you can resolve the issue by contacting the host website, this is the fastest and most economic route.


If you cannot resolve the issue by informally contacting the physician review site, ask your attorney to send a cease and desist letter to the website demanding that the comments be removed.  Sometimes websites comply; other times their terms and conditions do not allow them to comply without a court order.


When you want to find the identity of the anonymous poster, and not just have the comments removed, you can also file a “John Doe” lawsuit against unknown defendants, empowering you to subpoena the host website for the IP address of the person posting the comments.  From there, you can determine the ISP.  Because the Cable Communications Policy Act of 1984 prohibits ISPs from disclosing personally identifying information about Internet users to non-governmental entities without a court order, the next step is to obtain a court order allowing you to subpoena the ISP for the identity of the poster.  Recently, a court in Nashville refused to allow an anonymous poster to hide his identity, and allowed the victim to move forward with its subpoena of the ISP.


Keep in mind that filing suit for defamation requires a plaintiff to provide details in the complaint about the allegedly defamatory statements.  Sometimes filing suit is the best option.  Other times, publicly amplifying the negative comments only adds fuel to the fire.


Finally, responding to anonymous online defamation often requires a multi-faceted approach.  Recently, one of my business clients found several comments online that accused its employee of criminal and scandalous conduct.  These comments harmed both the business and the employee.  Given the context, the client needed legal advice on not just the social media issues above, but also with employment law issues.  If the comments had been true, the employer may have needed to terminate the employee, since the comments reflected poorly upon the business.


If defamatory comments are made that threaten to damage your reputation as a physician, don’t just sit back and take it.  Instead, consider your options in fighting back.


© Stephen J. Zralek 2011.  All rights reserved.