Jonathan Pink's Way Too Intelligent Intellectual Property Report

Haven’t written in a while despite some really important rulings on, e.g. finding of personal jurisdiction based on social network activity, but the following has something that even those weighty and intellectually stimulating topics don’t have: Batman.

Cue Batman music. Ok, it was annoying enough then, kill the music (insert sound of needle scraping LP here).

Batman?

Yes, and more particularly, the Batmobile. Quite possibly the coolest car ever invented. Even you Ferrari drivers know it.
Back to our story.

The case is DC Comics v. Mark Towle et al (2:11-cv-03934), before Judge Ronald Lew in the Central District of California.

It seems that a custom carmaker who goes by the name of “Gotham Garage” decided to build replica Batmobiles. Hey, who could blame him? I want one! I like this guy already! Porsche? Who needs a Porsche? I want a Batmobile, too!

(Just a note: Gotham Garage also apparently builds other custom roadsters to look like iconic vehicles from popular TV shows and movies. Thus, if you wanted your ride to be – the beat up old horse drawn wagon from Bonanza, for example – this might be the shop to turn to.)

But alas, not everyone thought his business plan was such a great idea. Enter DC Comics (a hero in their own right, come on, we have to admit it). DC, ahem, owns the copyright to Batman and all his accoutrements. While DC may love the Batmobile as much as the rest of us, they weren’t too hip on Mr. Towle making replicas and selling them to discerning buyers, comme moi.

So they (or was it our Caped Crusaders?) sued. Copyright infringement. And trademark. And trademark counterfeiting. And unfair competition under the Lanham Act, and common law unfair competition. Hey, these guys are not messing around.

The defendant attempted to have the case dismissed on a 12(b)(6) motion (failure to state a claim). A creative argument, he said that useful articles like automobiles are not copyrightable. Judge Lew said no. He sided with the plaintiff which argued that “While automobiles (in their entirety) may be considered useful articles not protected by copyright, defendant’s motion utterly ignores the issue of separability of nonfunctional, artistic elements of plaintiff’s Batmobiles from the underlying vehicle”.

So, point for the Dynamic Duo. The court found the complaint plead sufficient facts, thus allowing it to move forward.

Next Bat-step? Towles will have to answer DC’s allegations that Towles’ full-size, drivable Batmobile replicas — which include both the version from the 60’s TV show (which is the one I want) and the version from the films infringe DC’s rights as the comic book publisher.

I think the time has come for a quote from Rodney King, with a minor addition of my own: “Can’t we all just get along?” And can’t I have one of the Batmobiles after DC takes possession of them? Hey, I was named a Southern California Super Lawyer, but I don’t even have a cape! At the very least, I should get a car!
Stay tuned. Same Bat Channel . . . ok, I’ll spare you that part.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is resident in the Los Angeles and Orange County offices and can be reached at jonathan.pink@bryancave.com. In addition to litigating copyright and trademark issues, he really wants a Batmobile.

Ok, I usually don’t shill for anybody, but this is a worthy event and, if you’re wasting time reading my blog (and yes, George, I know you are), then you might as well know about a really good source of IP information. Namely, the 36th Annual Intellectual Property Institute.

This year the festivities will be held on November 10-12, in Dana Point. It does cost something — but there are no cops at the door, so even if you’re flat broke, super cheap, or both, you could still probably listen from hall — or ask people what was said on their way out from any particular discussion. Will it be annoying if you do so? Yes. Will you be able to nab some free coffee at the same time? Yes? Does that make it worth it? Doesn’t it?

In any event, I am inviting one and all to join me at the 36th Annual Intellectual Property Institute at the Marriott Laguna Cliffs Resort, in Dana Point, California, for excellent continuing legal education programs, networking, meals, fun. On top of all that, you can join in the celebration of the IP Section’s IP Vanguard Award honorees: Jay Monahan @ Zynga, Adrian Pruetz @ Pruetz Law Group, Hon. Judge Kozinski @ 9th Circuit, and Eric Goldman @ Santa Clara University School of Law. (Side note: Eric is the person who first showed me the Internet — so in a way, this entire blog is his fault.)

The Institute is a relative bargain according to the people who are trying to get you to buy tickets, and there are steeply discounted resort rates (again, according to . . . .) See http://bit.ly/qHY03s for more information.

And please pass this invitation on to your colleagues and friends. Thanks.

For no good reason, I’m adding still more information for you on Federal Rule of Civil Procedure, Rule 68. Why? What, you’ve got something better to read? The New Yorker perhaps. Relax this will only take a minute. Besides, I mention it because it recently came up (again), and it’s information worth sharing.

Rule 68 can be an excellent tool in copyright cases, especially where you believe your client may have engaged in an act that will lead to a finding of infringement.

In such a situation, where you believe a judgment is likely to be rendered against you anyway, making a Rule 68 Offer of Judgment is a terrific way to keep the otherside’s costs and fees — which you may be expected to pay under Section 505 of the Copyright Act — from accruing.

Make the offer early, and you cap the fees/costs if you make a good bet on: (1) the ultimate damage award and (2) the otherside’s costs and fees to date.

This is because Fed. R. Civ. P. 68 provides that “[i]f the judgment that the offeree finally obtains is not more favorable than the unaccepted offer, the offeree must pay the costs incurred after the offer was made.” In copyright actions, the term “costs” includes a prevailing party’s attorney fees. See, 17 U.S.C. § 505 (“the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”). Thus, a Rule 68 offer will cut off a prevailing plaintiff’s post-offer attorney fees if the judgment he or she receives is less than the defendant’s Rule 68 offer. See, Merek v. Chesney, 473 U.S. 1, 8-10 (1985) (holding that when underlying statute defines “costs” to include attorney’s fees, such fees are to be included as costs for purposes of cost shifting. The court thus concluded that plaintiffs “who reject an offer more favorable than what is thereafter recovered at trial will not recover attorney’s fees for services performed after the offer is rejected.”); see also William F. Patry, Patry on Copyright § 22:217 (“Rule 68 [can] be used as a sword against plaintiff to deny plaintiff his attorney’s fees postoffer.”).

So in a nutshell, it works like this: You think it’s likely you’ll get tagged with infringement, but you think damages are worth no more than — let’s keep it simple and say $10,000. You think the fees and costs to date are minimal. Let’s say $10,000. You therefore make your Rule 68 Offer for a skosh over $20K, call it $23. If plaintiff is foolish enough to reject that offer, and fails to do better than this figure at trial (measuring damages plus costs and fees as of the date the Rule 68 Offer was made), plaintiff’s recovery of fees and costs is capped as of that date.

It’s a neat tactic if it works. But then again, what isn’t?

Does the use of a common law trademake on the Internet convey senior territorial rights to the mark holder throughout the U.S.?

No. Although the Internet is global in scope, the use of a trademark on a website that can theoretically be accessed anywhere in the U.S. (and indeed the rest of the world) does not mean that the trademark is known and established throughout the U.S.

Knowledge among persons in the territories at issue must be proven by evidence and cannot be assumed just because the Internet is national and global. See, Echo Drain v. Newsted, 307 F. Supp. 2d 1116, 1128-129 (C.D. Cal. 2003) (holding that though musical group operated a worldwide accessible website, the trademark rights in the group’s name were limited to the Dallas-Fort Worth area based on the group’s geographically limited actual presence). When the traditional tests for establishing priority of use a trademark are applied, the Internet use should be factored in and weighed along with various other factors, including: (1) the volume of sales in a given area; (2) growth trends in an area; (3) sales in that area as a function of the total market; (4) the distribution of these sales points within a given area; and (5) specific targeting, which would encompass any bricks-and-mortar advertising. See, J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:30.50 (2011); see also Louis Altman & Malla Pollack, Callman on Unfair Competition, Trademarks, and Monopolies § 20:24 (2011) (“But just being available on the Internet may not be enough; the question of whether such availability supports the acquisition of trademark rights in a given territory may depend upon whether the site is actually accessed by many people from that territory, and whether such access is accompanied by actual sales in that territory.”).

For our purposes this means that merely because the user of the mark has an Internet presence does not mean it will be deemed the senior user. An admittedly junior user who obtains a Federal registration gains the presumptive senior user status in all regions where the junior user cannot establish prior territorial use under the traditional priority-test. When you think about it, this makes a lot of sense. A contrary finding would effectively negate the need not obtain a federal registration. In other words, one would be able to claim presumptive constructive use based only on an Internet presence. As the law now stands, such presumptive use requires a registration of the mark. See 15 U.S.C. § 1057(c); see also id. at § 1115(a)(5).

After all this time . . . I had thought that FRCP Rule 68 was an excellent tool to hammer the plaintiff, even where the copyright defendant had in fact copied. This is because an argument exists that the recoverable “costs” under Rule 68 include attorneys fees. Thus, by making a Rule 68 offer early in the game, the defendant could shift the fees burden even if infringement was found (assuming, of course, the offer exceeded what plaintiff was able to recover at trial).

Opps. Turns out I was wrong, at least in part. Turns out there is a split in authority. I’ve been taking one side, while the 9th Circuit has taken the other.

In Ninth Circuit copyright actions, costs awardable pursuant to a Fed. R. Civ. P. 68 offer of judgment that exceeds plaintiff’s recovery at trial do not include a defendant’s post-offer attorney’s fees. This is because the Ninth Circuit has held that Rule 68 “costs” do not include a non-prevailing defendant’s post offer attorney’s fees when the underlying statute only awards attorney’s fees to a prevailing party. See, Champion Produce, Inc. v. Ruby Robinson Co., Inc., 342 F.3d 1016, 1031-32 (9th Cir. 2003). 17 U.S.C. § 505, the copyright provision dealing with attorney’s fees awards, provides that attorney’s fees may be awarded as a component of costs, but only to a prevailing party. 17 U.S.C. § 505 (“[T]he court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”).

Thus, because a defendant who is entitled to post Rule 68 offer costs is necessarily not the prevailing party (as the defendant is consenting to judgment), copyright defendants in this Circuit may not recover attorney’s fees as a component of costs. This view is also held by the First, Third, Fifth, Seventh, Eighth, Ninth, and D.C. Circuits. See, William F. Patry, Patry on Copyright § 22:215 (2011).

Ceux qui me connaissent savent que j’aime n’importe quoi français. En effet, mon hantise pour le pays et la culture est si ridicule que j’ai décidé d’écrire ce “post” en français. Vous pouvez me remercier maintenant.

Comme vous vous rappelez, il y a deux ans de Louis Vuitton Moet Hennessy a obtenu une victoire cuisante sur eBay, recevant un jugement €38.6 million (de $49.6 millions) basé sur de tiers ventes (quoiqu’énuméré sur eBay) des marchandises de luxe de contrefaçon de LVMH.

Spécifiquement, en 2008, la cour a ordonné qui eBay était responsable de l’infraction de marque déposée directe ou indirecte basée sur l’utilisation de son site Web de vendre les produits d’imitation de Louis Vuitton, de Christian Dior, de Guerlain, de Givenchy et de Kenzo. La cour a ordonné qu’eBay a eu une responsabilité intensifiée d’empêcher la fraude sous forme de ventes contrefaites sur son emplacement. (Notez-vous que c’est énormément différent du situation aus Etats-Unis, ou en eBay de Tiffany [2d Cir., Avril 2010], la cour a ordonné presque l’opposé.)

Bonnes nouvelles pour eBay! La semaine dernière, une cour française a ramené cette récompense à €5.7 million ($7.3 millions). Malgré cette reduction, la cour de Paris de l’Appel a confirmé la conclusion que eBay avait violé les marques déposées de LVMH par en listant et ventant des marchandises de contrefaçon.

Dans la mode française quintessencielle, eBay et le LVMH a déclaré l’acte une victoire absolue.

Jonathan Pink is a commercial litigator, and business attorney with a specialty in copyright and trademark infringement. He is also an unabashed Francophile. He can be reached – in French or English – at jonathan.pink@bryancave.com; 949-223-7173.

Eric Goldman (http://blog.ericgoldman.org), whom I respect a great deal, suggested I consider whether the “first sale” doctrine would apply to Ansel Adams’ alleged long lost negatives dispute. (See post of 8/27/2010 — http://www.jonathanpinkesq.com/ansel-adams-or-not-the-story-of-a-trademark-dispute.) I now have, and don’t believe it does.

While trademark law prohibits some uses of another’s trademark, that prohibition is not unlimited. Under the first sale doctrine, when a trademarked product lawfully enters the stream of commerce, typically there is no right to claim infringement against a lawful reseller of the product if the mark is used to identify the goods. See Storz Endoscopy-America, Inc. v. Surgical Technologies, Inc., 285 F.3d 848 (9th Cir. 2002). This is similar to the fair use concept mentioned in my previous, related post, but not identical.

Here, if the photo negatives Rick Norsigian bought truly were the work of Ansel Adams, there is an argument that the Ansel Adams Trust could not prohibit him from selling prints made from those negatives while using the Adams trademark (assuming he uses the mark for purposes of advertising and identifying the goods he’s peddling).

The problem is that, from the Trust’s perspective, the goods aren’t Adams’ even if the prints were made from his negatives. The Trust claims Ansel worked his magic in the darkroom (haven’t we all?), and that his finished images consisted of more than merely the image photographed, its composition, captured moment, etc.. According to the Trust (and many casual viewers of AA’s work), the art comes equally from how Mr. Adams’ developed those images, selected the tones of lights and darks, etc.. Accordingly to the Trust, without that component, the “work” (e.g. any print made from the found negatives) simply is not the work of Ansel Adams, even if the negatives were created by him. To this end, the Trust will likely argue that the first sale rule does not apply, and Norsigian is not entitled to use the Adams’ mark pursuant to that doctrine.

The Trust’s argument should carry some punch. While the first sale rule may immunize a traditional reseller from infringement liability, it loses its effect where the goods have been altered, or are materially different from those created by the trademark owner. See Storz, supra, 285 F.3d 848. Also, I am not sure the negatives ever lawfully came onto the market when Norsigian bought them at that garage sale 10 years ago. You will recall that Norsigian claims the glass photographic plates were saved from a fire at AA’s studio 70 years ago, but even if this is so, did the garage sale seller gain legal right to their possession, and the concomitant right to resell them? I don’t know. In any event, given the foregoing, I suspect Norsigian won’t find much safety in the first sale “port” from this legal storm.

On a related, but totally non-legal note: I had a funny and similar experience this weekend. While visiting some friends who were in town at a beach house that had been in their family since the 1930s (which is mostly used as a rental when the family/cousins, etc. aren’t there in the summers), I noticed an oil painting on the wall that was rather nice. Now this place is your typical rental, with mostly your typical rental artwork (stained and tattered reproductions that you’d mostly overlook). But this work was an original oil, and quite nice. My friend said he’d never paid much attention to it; it had been hanging there his entire life, and he assumed that it had been placed there by his grandfather in the 1930s.
As I was taking a close look at it (my mom’s an art dealer, and somehow this is how I learned to closely examine art – plus, my vision is abysmal), I asked “Who did it?”
My friend, now at least a little curious – or very polite – looked for the signature and said “Edgar . . . .” I interjected: “Don’t say Payne.”
“Payne,” he said.
I couldn’t believe it. An Edgar Payne? I told him a little about the artist and suggested that the painting had to be worth at least $45K. “No!” He couldn’t believe it. I told him I was guessing, but suggested we call my mom to see what she thought.

I phoned. She was cooking dinner. I described the work. She asked if was a landscape, I told her no, it had boats, and looked like Newport Harbor. “Oh, it’s one of his seascapes!” Now she is a longtime L.A. art dealer, and has sold Payne’s work to some very well off collectors. I told her the size, a few more details, and said I had guessed its value at at least $45,000. No, she said, “It’s worth at least $150,000.”

My friends were amazed. I felt like we were living an episode of The Antique Road Show. Now they need to get that thing out of the rental! So, just to make a point, . . . these things do happen.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is also a member of the firm’s Art Law Team. He can be reached at 949-223-7173, or at jonathan.pink@bryancave.com

Yes, it’s been a while since I’ve written. Yes, when I extol the virtues of a blog, I always say write often. I’ll save the excuses. (OK, fine; twist my arm: in a nutshell, I became despondent when I took a friend’s offer to jazz up my site and saw my ranking plummet, plummet! From showing up on the first page of a search result to something like the 1,000,000th page! Sheesh!)

In any event, here I am. Surprise!

So where was I? Yes, new case that I just love. God knows why, just one of those cases. It’s styled The Ansel Adams Publishing Rights Trust v. PRS Media Partners, LLC, et. al. (ND CA, Case No. CV 103740 EDL – link should be here, but it isn’t, so stop looking). The complaint runs like 180 pages if you print it (thanks Latham & Watkins; helping out the environment, are we?), asserts ten causes of action: four under the Lanham Act, the same four – drafted as 5 — under California law, and a claim for violation of publicity under Cal Civ. Code Section 3344.1. Over kill? No, I like it.

So the facts of this one are what I really love. Ten years ago, a resident of Fresno, CA (ouch!) claims to have purchased at a garage sale what he insists are the long lost negatives of pix shot by famed photographer Ansel Adams. Cool. If it’s true. Rick Norsigian says he paid $45 for the box of negs, and is now seeking to sell prints of these “long lost” photos for what could ultimately amount to millions (up to $200 million, according to a July 27, 2010 press conference convened by Norsigian’s team). Gotta admire that.

Well, my friends, the Ansel Adams Publishing Rights Trust does not admire this. No one bit. Not one little bit. Not even a little bit. They claim that none of the 65 negatives that Norsigian claims will make him a mint – uh, I mean are AA originals – are indeed Mr. Adams’ early work. The Trust claims that the photos belong to a photographer of lesser talent, or at least lesser financial worth. In any event, according to them, Mr. Adams (“an American icon,” “America’s best-known photographer,” recipient of “the Presidential Medal of Freedom, our nation’s highest civilian honor,”) did not take them. According to the Trust “Plaintiff believes the evidence will ultimately show that Ansel Adams was not the photographer who created the negatives Norsigian claims to have purchased at the garage sale.” At least they hope so! $200 million times!

Covering their basis, the Trust goes on to say, well, ahem, “even if Mr. Adams created the negatives, the prints and posters Defendants are selling are, at most, derivative works – made without authority, direction, control, or permission of the Ansel Adams Trust.” To this end, the Trust asserts that the defendants’ use of Mr. Adams’ name and likeness and the Ansel Adams trade mark “are likely to cause confusion, mistake, and/or deception as to the source, origin, endorsement and approval of Defendants’ products. This is really where the rubber hits the road, or photographic image hits the plate, in this case. That is, if the works weren’t done by the master, fair enough, game over, no $200 mil (except maybe for the lawyers). But if they were, then it would seem that Norsigian and company have a pretty good defense based on fair use, at least as to the TM claims.

The fair use defense is available to one who, in good faith, fairly uses a descriptive term that has acquired a secondary meaning and is now protected by trademark, in a descriptive sense rather than its trademark sense. See e.g. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir., 1995); United States She Corp. v. Broucn Group Inc., 740 F. Supp. 196 (S.D.N.Y.), aff’d 923 F.2d 844 (2d Cir. 1990); Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (“classic fair use” concerns the defendant’s use of the plaintiff’s mark to describe the defendant’s own product); Playboy v. Welles, 279 F.3d 796 (9th Cir. 2002) (House-of-Hef sued its former top bunny, Terri Welles, for using the words “Playboy” and “Playmate of the Year” in her website’s metatags; Welles won, arguing that these terms were necessary to describe her as “Playboy Playmate of the Year 1981.”)

For this defense to work for Norsigian et Co, they’ll have to establish three elements. First, that the Ansel Adams name is used in its descriptive sense; second that it used the mark in good faith; and third that it has not used the mark as a trademark. See Car-Freshner Corp. v. S.C. Johnson & Son, Inc. 70 F.3d 267 (2d Cir. 1995); Packman v. Chicago Tribune, Co., 267 F.3d 628, 641 (newspaper’s use of “ The joy of six” as headline to describe the happiness associated with basketball team’s sixth championship held to be descriptive use); EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66 (2d Cir. 2000); TCPIP Holding, Co., Inc. v. Haar Communications, Inc., 244 F.3d 88, 104 (2d Cir. 2001) (use of term as name of portal website precluded finding of fair use).

Courts have also found that nominative fair use exists where the defendant used the plaintiff’s mark simply to describe the plaintiff’s own product. Cairns, supra, 292 F.3d at 1150; Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir., 1969) (defendant permitted to advertise that he repaired Volkswagen vehicles as long as he indicated his independent nature and did not use logo or script of plaintiff); Wells, supra, 279 f. 3d 796 (defendant’s title “Playmate of the Year 1981” could be used to identify herself on her website and to index the content of his website, but stylized use of “PMOY ’81” abbreviation held not a nominative use because it was not necessary to describe defendant).

Based on this, and assuming arguendo the photos are legitimately the work of Ansel Adams, it would seem to me that Norsigian has a right to use the Ansel Adams mark to describe the product he’s shilling. See Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749, 756 (6th Cir. 1998) (use of the words “Rock N’ Roll Hall of Fame – Cleveland” underneath photo of museum on poster may constitute fair use of Museum’s registered mark). I mean, how else are they going to describe the work? “They’re by that guy, the one with the beard, the broad brimmed hat, who used to take photos of Yosemite. You know who I mean? Think the first letter of the alphabet . . . times two!” I don’t think so. If they were taken by Adams, I think the trademark and unfair competition claims fail. Nice try.

As to the name and likeness claim, I like that one a bit more. California Civil Code section 3344.1 provides for recovery of damages for the unauthorized use of a “deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent. . . .” It appears for the advertising or promotional material that plaintiffs attached to the complaint in this matter that the defendants did indeed use Ansel Adam’s photo in promoting what they claim are his photographs. Notably, this statute allows for a recovery of “the greater of seven hundred fifty dollars ($750) or the actual damages suffered . . and any profits for the unauthorized use.” It also allows for a recovery of attorneys fees, which may drive this claim in a big, bad way. That is, I doubt plaintiff can establish that Norsigian’s reprints of the negatives at issue sold because the defendants’ used Ansel Adams’ mug on their promo material. That brings the damage number for this claim down to $750, plus attorneys fees. Did I mention that Latham is handling this matter?

So by my score keeping, the game goes like this: if works are proved to be legit, the plaintiff loses on everything but name and likeness, and then gets only a fraction of its legal fees for that portion. Big win for defendants. If the works are shown not to be those of Ansel Adams, it’s a big win for plaintiff, a big, big loss for the defendant. In any event, it should be fun to see if these really are Ansel Adams’ works (frankly, I’m betting against it, but then I thought Star Wars was going to bomb when I first saw the trailer), and to see whether the fair use defense comes to defendants’ rescue if the works are legit.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

Fighting over the “nurdle”: Colgate and Aqua-Fresh are in a pitched trademark battle over the nurdle, that curvy swirl of toothpaste that is a marketing icon on toothpaste tubes, boxes and media ads. Thanks to my eagle-eyed wife, Andrea, who spotted this gem in Friday’s Wall Street Journal.

I’ve given my “SOCIAL MEDIA Barriers, Benefits and Bombshells” talk quite a lot lately. In light of this, I’ve decided to simply post it here.

This talk usually lasts about an hour, so read this post s-l-o-w-l-y.

Also, the talk is punctuated by cartoons of my own creation. So laugh heartily every 5 minutes or so.

First slide: Title.

Second slide: “But First”: The big points: (1) With nearly limitless boundaries, social media gives consumers unprecedented engagement with the brand; (2) historically this engagement was controlled by the brand owners, but social media has changed that, giving consumers even-increasing control over how a brand is perceived; (3) smart and forward-looking companies are adopting social media policies in light of this; (4) every company should develop a social media plan; (5) the basic rules of the road are: engage, participate, influence and monitor.

Third: The Road Map. What we’re going to talk about: what is Social Media; barriers; benefits; bombshells (e.g. issue spotting); creating a policy.

Fourth: Social Media. Everyone thinks of Facebook, LinkedIn, Twitter, MySpace, and YouTube, but there are actually thousands of social media sites including blogs, Google Groups, Chatroulette, haul sites, review sites, etc.

Fifth: Facts and Opinions. Because it is so inexpensive and accessible, social medial enables anyone to publish, provides a fast, scalable and cost-efficient way of connecting worldwide. But this global conversation can cut both ways: marketing goldmine and minefield of liability. Participation in social media sites now accounts for 11 percent of all time spent online in the US.

Sixth: Useless (But Interesting) Statistics. Facebook has 400 Million users (at 350 million it would have constituted the 4th largest country in the world); LinkedIn has 60 Million users, but just announced its IPO (with a pre-money valuation of $1.3 billion); Twitter has 105 million registered users; 50 million tweets/day; Yelp (a great place to gripe!) has 30+ million visitors a month; YouTube is the 6th largest site on the Internet, with 71 million unique users per day (meaning that more people watch its content on a daily basis than they do network and cable TV combined). Add to all of this more than 200,000,000 blogs, and you get the “tip” of the social media “iceberg.”

Seventh: Barriers. First hilarious cartoon, but other than that, not much. There are no barriers, so move along.

Eighth: Benefits. Next cartoon (more belly laughs), and a list of the benefits. Basically, psychological research shows that feelings of connection to other people lead to longer, healthier, happier lives. Also, employees seem to like the ability to use it while at work, and a recent Wired article suggests that it makes them happier and more productive. Add to this, the ability to build brand awareness, monitor what customers are saying, respond to their needs, wants and comments. All in all, social media = good. Next slide, please.

Ninth through Twenty-Ninth: Bombshells: Cartoon and parade of horribles. Copyright infringement, trademark infringement, disclosure of trade secrets, SEC violations, defamation and business, libel, not to mention the various employment-centric pitfalls. It’s a wonder anyone uses social media without being sued.

Also: How to keep from being sued in light of the bombshells – Don’t engage in copyright infringement, trademark infringement, disclosure of trade secrets, SEC violations, defamation and business, libel, or the various employment-centric pitfalls. It’s a wonder anyone uses social media and gets sued.

Thirtieth Slide: Funny cartoon and “Embrace it.” This slide suggest that social media isn’t going away, so you need to engage it using all levels of your organization. This means, first and foremost, and in all seriousness, having a social media policy.

Next slide (who’s counting?): The Social Media Policy. There is no one-side fits all, but this should include:

• Employees cannot do anything online that they cannot do offline

• Personal use of SM cannot interfere with work. No different than reading magazines all day.

• Employees should use common sense about what they post.

• Employees identify themselves and must not purport to be posting on behalf of the company.

• If employees make personal comments about any aspect of the organization’s business, their profiles must carry a disclaimer that the views expressed are their own, and not the organizations.

• Posts may not contain confidential or proprietary information of the company or third parties.

• Any use of the organization’s name, trademarks, logos or other intellectual property must be approved.

• Employees must get company approval to use SM to conduct business.

• Delineate privacy rights…no expectation of privacy while at work.

• Posts should not violate any federal or state laws.

• Posts should not harass or attack anyone, especially based on inclusion in protected category.

• Posts should not violate any other applicable policy of the Company.

Which slide are we on?: Rolling out the policy: Be fair. Explain it clearly. Have it apply to all, from CEO to the person who waters the plants.

Final slide: Remember that the FTC passed new guidelines in 2009 that create possible liability for those who make endorsements and testimonials, and for the companies on whose behalf these are made. Social media is a tool that should be used wisely. Being wise starts with having a policy. So go, now – yes now – and work on getting a policy in place.

That’s it. Show’s over. Back to work.

Jonathan Pink is an intellectual property and business litigator resident in the Irvine (Orange County) office of Bryan Cave, LLP. He is Chair of the firm’s Internet and New Media Team, and a really funny cartoonist. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.