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Copyright may come your way: beware

Digital technology has made it easy to infringe copyright. As a trademark practitioner, in-house or private practice, you are likely to come across a copyright matter at some point in your career

Panelists at yesterday’s session titled “What Do You Do When a Copyright Issue Lands On Your Desk?” warned registrants about the risks of using freely available content on the Internet, how to minimize the chance of getting into a copyright infringement situation and what to do if it comes your way. The session was moderated by Christopher Kenneally of the Copyright Clearance Center.

Maury Tepper of Tepper & Eyster provided an overview of copyright law, noting that there are several works and rights, such as the distribution right, which are protected under the law. “You need permission to use each,” he said. He also said copyright is territorial in nature, so the rules vary by jurisdiction. Failure to obtain permission exposes you to an infringement claim but there are defenses available. The defense often cited is fair use, applicable in the U.S., or fair dealing in common law jurisdictions where certain actions, such as referencing the work, are expected to be able to rely on it. Ultimately, only a court can decide if you qualify for any of the defenses or infringe.

In-house counsel should take care regarding what is included in the company’s marketing documents as it could be infringing, and it is difficult to claim fair use if the use is in commerce. “It is a subjective examination and some factors may be considered more important than others,” Tepper said. “That it is freely available online doesn’t mean it’s free to use,” warned Gretchen Klebasko of Legg Mason. This was in reference to legitimate sites which may display infringing content.

Public perception can also influence the outcome of a case, according to Tepper. Make sure you can genuinely argue fair use if you are going for it. “It’s best to get permission. That is the easy way to avoid problems,” he said. Panelists agreed that in-house counsel should educate employees to respect copyright in whatever they do. “Make it part of your corporate culture, include it in your policies,” Klebasko said.

If you are the copyright owner, you can take a soft or hard approach, depending on who is on the other side. Cease and desist letters should be drafted wisely as they could end up online and cause reputational damage. “You don’t want to be seen as a copyright bully. Word it in a way that you can defend it, and spell the names correctly,” Klebasko said. “Also make sure you don’t have a business relationship with the company you’re sending the letter to,” she added.

Randi Singer of Weil, Gotshal & Manges explained that copyright and brand owners can use the Digital Millennium Copyright Act (DMCA) to take down infringing material online. Singer said there are steps involved, including a deadline for responding to the alleged infringer, so you should be careful when submitting a notice. “You have to consider fair use before you send a DMCA notice,” Singer said. Copyright enforcement rules and processes are different in the EU, she added.

With the proliferation of both ­legitimate and infringing content online it can be difficult to trace the owner. Use common sense, said Singer. For example, a link to an image may lead you to a professional photographer’s website—which should get you thinking that you need permission from him or her. Creative Commons is a source for images, but there are terms and conditions depending on how you want to use them. There are ­different industry licensing bodies, such as the Motion Picture Licensing Corporation, to approach for licenses. Using GIFs on social media could land you in trouble too. “You don’t know if someone will assert his or her copyright in it. Also there is a chance it is licensed and you’re more likely to be a target of a lawsuit than a 13-year old,” warned Tepper.

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