This presentation was a webinar hosted by Association Trends on all aspects of intellectual property for trade associations and other nonprofits.

1. Protecting Your Association's
Intellectual Property
Association Trends Webinar
September 25, 2013
Jefferson C. Glassie, Esq.
Eileen Morgan Johnson, Esq.
Whiteford, Taylor & Preston
Washington, DC

2. Welcome

3. Program Overview
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Copyrights
Trademarks
Internet Applications
Social Media
Association activities (international, publishing, lists,
affinity programs, etc.)

5. Copyright Protection
 “Copyright Protection subsists in original works of
authorship fixed in any tangible medium of
expression…” Section 102 of Copyright Act
 Rights accrue upon creation; no notice or registration is
required
 Ideas, facts, concepts are not covered

6. Works of Authorship Include:
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Literary works
Musical works
Dramatic works
Pictorial, Graphic, and Sculptural works (includes
graphics, charts, and figures)
Motion pictures and other audio-visual works
Sound recordings
Architectural works
Yes, electronic docs and websites are included!

7. Copyright Rights
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Copyright includes a “bundle” of rights:
Reproduce the work (photocopies)
Prepare derivative works (second editions)
Distribute the work (sell)
Perform the work (music)
Display the work (visual; e.g., websites)
Can own copyright to the entirety of a work, even though
not the parts

8. Work-for-Hire
 Section 101 of Copyright Act defines as
 “Work prepared by an employee within the scope of his
or her employment;” or
 Specifically ordered or commissioned as a contribution
to collective work, part of audiovisual work, translation,
supplementary work, compilation, instructional text,
test, answers to test, or atlas, IF expressly agreed in a
written instrument signed by the parties.

9. Fair Use
 The Infamous “Fair Use” Doctrine under Section 107 of
Copyright Act:
 Defense to copyright infringement
 Allows use of a copyrighted work without permission
of author
 For criticism, comment, new reporting, scholarship, or
research
 BUT - Vague and Subjective
 Lots of Litigation
 Totality of Circumstances

10. Fair Use Factors
1. Purpose and nature of Use
 nonprofit or commercial use
1. Nature of copyrighted work
 how creative / original
1. Amount of original work used
 entire work versus minor part
 important versus incidental part
1. Affect on market for original
 will new use displace sales of original?

11. Copyright Notice
 Proper Notice under Section 401 of Copyright Act is:
 Symbol © or “Copyright” or “Copr.”
 Year of first publication of work
 Name of copyright owner
 Notice is NOT required for ownership, but use of notice
prohibits innocent infringement defense

12. Registration
 Works (including websites) may be registered with U.S.
Copyright Office, Library of Congress, with deposit of
work (Sec. 408)
 Registration is NOT necessary to own copyright
 If work registered prior to infringement or within three
months of publication under Section 412, copyright
owner can sue for copyright infringement and claim
statutory damages of up to $150,000 for each willful
infringement and attorneys’ fees (Sec. 504)

13. Assignment / License
 Copyrights can be assigned (i.e., transferred) only upon
signed written instrument under Section 204 of Copyright
Act
 Permission (i.e., license) to use copyrighted works can be
granted, and can be expansive or limited (only certain
rights); can be written or implied (exclusive must be in
writing)

15. What is a Trademark?
 A word, phrase, symbol, sound, or design (or
combination) that distinguishes the source of products,
programs, or services
 Service marks are generally the same as trademarks, but
they refer to services, not tangible products
 Certification marks for those certified
 Collective membership marks
 Rights accrue upon USE in commerce
 Associations can have rights in name, acronym, design
logo, slogan/tagline, but often weak

16. Commonly Litigated Subcontract
Provision: Arbitration Clause
 Before use a mark should be screened to ensure that it is:
 Non-infringing
 Sufficiently distinctive
 Screening
 Preliminary and full: USPTO, legal databases, search
engines, domain name availability, etc.
 The infringement test
 Is the mark likely to confuse users as to the source of
the products, programs, or services?
 PTO focuses on similarity of marks and services

17. Distinctiveness of a Mark
Strong
Fanciful
Weak
Arbitrary
Suggestive
Descriptive
Generic
 Examples:
 Fanciful (Exxon® gasoline and Xerox® copiers)
 Arbitrary (Apple® computers)
 Suggestive (Igloo® coolers and YAHOO!® search
engine)
 Descriptive (e.g., American Lawyers Association)
 Generic (aspirin, kleenex, elevator)

18. How to Protect Trademarks
 Trademark Notice
 Use ™ for an unregistered trademark or combination
trademark/service mark
 Use SM for an unregistered service mark
 Use ® only for a federally-registered mark
 Use properly, consistently, and constantly
 Registration provides procedural protections
(incontestibility and no innocent infringement, etc.)
 Police for infringing uses and take appropriate action
against infringers (e.g., warning letter, opposition, lawsuit)
 Use written license agreements and review licensee use
for compliance

19. Registration Requirements
 Must file to renew registrations in 5-6th year and 9-10th
year thereafter
 PTO does not send notices
 Failure to file will result in abandonment
 Could still use mark, but not ®
 If do not use, cannot maintain/renew registration
 Can’t make material changes to registered mark

20. Use of Trademarks of Others
 As a general rule, you should not use another’s
trademark without permission
 Limited ‘fair use’ exceptions:
 Comparative advertising
 Descriptive use
 Nominative use (where name is critical)
 Parody
 License from others is advisable

22. Domain Names
 Associations generally secure domain names
 Good idea to secure .com, .org., .info, .biz, etc. and
misspellings, common words
 Basic protection for your association’s domain
name(s)
 Police the marketplace
 Watch services, Google alerts, etc.
 Registered mark can help enhance domain name
protection

23. Cyber Squatters
 Bad faith registration, sale or use of a domain name that is
confusingly similar to another’s trademark
 Anti-Cybersquatting Consumer Protection Act
 What to do when a squatter shows up
 Cease and desist letter
 File a domain name dispute proceeding
 ICANN’s Uniform Domain Name Dispute Resolution
 Faster and less expensive than litigation
 Cancellation of squatter’s registration
 No monetary damages or attorney fees
 File a lawsuit

24. Some Laws that Apply
 Communications Decency Act, includes Section 230,
which protects providers of interactive computer
service (may include associations) from defamation
claims based on third party content
 FTC Guidelines on Endorsements and Testimonials –
added social media in recent rules – disclosure of any
compensation

25. Digital Millennium Copyright Act
 Limits liability of online service providers for
copyright infringement
 Can protect associations
 Also protects unauthorized uses of association
copyrighted material
 Notice and take down provisions
 Must meet specific requirements
 But effective for copyright infringement

26. Cybersecurity
 Associations have been hacked, targeted by phishing
schemes, and had privacy/data breaches
 Crucial to have privacy policies and follow them
 State laws mandate Written Information Security
Plans (WISPS) for security breaches
 Costs of compliance can be high
 Insurance for privacy breaches available, as well as
First Party costs of public response

27. Insurance
 Cyber liability insurance
 Claims made policies
 Typically provide both first party and third party
coverage
 Coverage available
 Privacy notification expenses
 Crisis management expenses
 Extortion expenses
 Copyright infringement

29. Potential Legal Problems
 Law is evolving, but potential liability:
 Antitrust
 Defamation
 Copyright
 Trademark
 Privacy
 Breach of confidentiality
 Overall not a significant risk, if prudent

30. Association Uses
 Blogs, list-servs, chat rooms, virtual trade shows, etc.
 Always advisable to have terms of use/social media
policy/disclaimers
 Terms include obtain right to use posts, require proper
decorum, and suspend privileges for inappropriate
conduct
 Don’t need specific approval from each poster (unless
changing purpose or intent)
 ASAE has a good sample

31. Third Party Sites
 Facebook, LinkedIn, etc.
 Have their own rules
 Association pages – have your own rules, include
rights to monitor and remove inappropriate posts, and
should not need specific approval to use posts

33. International
 Copyright treaties applicable
 Trademark laws vary between ‘first use’ (U.S.) and
‘first to file’ (most other countries)
 Best course, file in each country to protect association
marks
 European Community Mark
 Madrid Protocol

34. Publishing
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Differences in print and electronic publishing
First sale doctrine doesn’t hold for e-pub
Law is similar, but problems more accute
Infringement by association and of association
materials
 Distribution channels different
 Pricing models – wholesale vs. agency

35. Use of Lists and Databases
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Lists are facts unless creatively organized
Slim copyright protection for association lists
Can rent lists with license agreement
Privacy issues for European contact information
Note automated databases are protectable, including
screen shots (by software)

36. Sponsorships / Affinity Programs
 General rules apply
 Corporate sponsorship – use of corporate name and
logo - recognition versus taxable advertising
 Affinity programs – involve use of association name,
logo, and lists by vendor to members for license
fee/royalty to association – passive royalties not
taxable
 Cause related marketing – similar, but to public

37. Chapters / Affiliates
 Invariably use association name and marks, so should
have written license and trademark use policy
 No modifications without approval
 Consistent use strengthens brand for all!

38. Contact Information
Jefferson C. Glassie, Esq.
Partner
Whiteford, Taylor & Preston
202-689-3156
jglassie@wtplaw.com
www.wtplaw.com
Eileen Morgan Johnson, Esq.
Partner
Whiteford Taylor & Preston
703-280-9271
emjohnson@wtplaw.com
www.wtplaw.com