Ping® by Adlerlaw January 2024 – A Brief Comparison of NY and IL NIL laws.

This month’s issue of Ping® highlights some trends in digital advertising. On June 29th, 2021, Illinois passed a Name, Image, Likeness (NIL) law for their colleges and institutions allowing a student-athlete to earn compensation commensurate with market value while enrolled at a postsecondary educational institution, and obtain and retain a certified agent for any matter or activity relating to such compensation.  This has prompted some discussions around different states treatment of right of publicity laws. This month’s issue of Ping® briefly compares NY and IL NIL laws.

Illinois vs New York Right of Publicity Acts: Key Differences and Protections

A Brief Comparison of the Illinois & New York Right of Publicity Acts

The Illinois Right of Publicity Act

The Illinois Right of Publicity Act is a state law that protects the commercial value of an individual’s identity. It prohibits the unauthorized use of an individual’s “Identity,” which means any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener, including but not limited to (i) name, (ii) signature, (iii) photograph, (iv) image, (v) likeness, or (vi) voice. The act also allows individuals to transfer their right of publicity to their heirs after death. However, the Illinois law is unique in that it provides for a broad definition of “commercial purpose,” which includes any use that is “primarily intended for commercial advantage or monetary gain.” This means that even non-commercial uses of an individual’s identity could be considered a violation of the law if they are intended to promote a product or service.

Learn More About Illinois Right of Publicity Act

The New York Right of Publicity Act

The New York Right of Publicity Act is another state law that protects an individual’s right to control the commercial use of their name, image, or likeness. However, unlike the Illinois law, New York’s law only applies to uses for advertising or trade purposes. This means that individuals in New York may have less protection against non-commercial uses of their identity. Additionally, the New York law does not provide for the transfer of an individual’s right of publicity after death, meaning that the right to control the commercial use of their identity ends when they pass away.

However, the New York Act provides some post-mortem protection for certain commercial exploitations of individuals’ rights of publicity for 40 years after death for those persons whose publicity rights had commercial value, at the time of or due to, their death. There are a number of other limitations, exceptions and nuances, including that protections only arise from deaths after May 29, 2021.

Learn More About New York Right of Publicity Act

Ping® By Adlerlaw – FTC Notices Concerning Product Claims In Advertising

Advertisers delight in activating values and hidden desires of consumers using the language of the advertising claim. The “claim” is the part of an ad that makes some claim of superiority for the product being advertised. These days it is difficult to recognize those that are misleading and even downright lies, because most fit into the category of neither bold lies nor helpful consumer information. When consumers see or hear an advertisement, whether it’s on the Internet, radio or television, or anywhere else, federal law says that ad must be truthful, not misleading, and, when appropriate, backed by scientific evidence. 

Read the key take away from the Notice HERE.

Ping® By Adlerlaw – The Importance of Trademarks for Lighting Designers.

A recent Trademark Trial and Appeal Board (TTAB) decision is noteworthy for the lighting-design industry. This trademark application rejection sheds light on strategies for lighting designers seeking to protect their trademarks. This begins with the approach to the application process itself. 

In In re B-K Lighting, Inc., Serial No. 88769422 (January 27, 2023) [not precedential], the USPTO refused to register “AGI2” for “lighting fixtures,” finding confusion likely with the registered mark “AGI & Design” for lights, lighting assemblies, and light fixtures for architectural signage. As is often the case, applicant B-K Lighting was left scrambling to distinguish its trademark from the cited “AGI & Design” registration. The TTAB’s analysis of nature and relatedness of the goods, the trade channels, and the classes of purchasers, may be helpful to other brands in the lighting industry when trying to protect their trademarks.

Read the full article here.

Ping® June 2022 – FTC Updates Endorsement Guides 2022 Part I

The Federal Trade Commission (“FTC”) approved a request for public comment related to updating its Guides Concerning the Use of Endorsements and Testimonials in Advertising. These are better known as the “Endorsement Guides” or just the “Guides.” The current version of the Guides can be found at 16 CFR part 255. These updates were released in May 2022.

The proposed updates are fairly sweeping and touch many aspects of the Guides. I recently discussed these updates at AM Days as part of Affiliate Summit East in New York. Here are the highlights from responses to the questions I get most frequently.

Read the article HERE.

Ping® May 2022 – Improving Affiliate Engagement

Affiliate Marketers: Want to learn best practices, strategies, and tactics from a seasoned legal professional who works with businesses and regulators at the federal and state levels? 

David Adler takes clients through the ins-and-outs of providing advertisers, merchants, agencies and affiliates the tools they need for running a trustworthy and successful business.

On May 25, 2022 David Adler is presenting Trafficking in Trust: How to Enhance Affiliate Engagement an AMDays Workshop at Affiliate Summit East 22. In case you can’t make the presentation, here’s an excerpt of one of the topics covered:

The 3 C’s of Affiliate Marketing Disclosures: Clear Conspicuous Content. 

Clients often seek my counsel on issues related to Affiliate Marketing legal disclaimers and disclosures. For example, this might require guidance on the substance and placement of legal disclaimers for a consumer-oriented, product review and ratings website. This type of website needs to include at least two different, but related, disclosures. First, it must disclose that it is compensated when a user clicks on a link. Second, it must disclose certain material connections. 

Affiliate Disclosure Content

There are several factors to the affiliate commission disclosure. Appropriate disclosures have both the necessary content and the correct placement within a specified context.

What needs to be in your affiliate commission disclosure? 

The disclosure must make clear that you earn a commission if a user buys something after clicking on a link on your site.

Affiliate Disclosure Context

Where is the optimal location for the disclosure?

Although there is a general practice of putting disclosures on the bottom of the website pages, it can be somewhat obscured and less effective. A location at the bottom of the page, in the same font style, font color, size, and placement as the rest of the text on the bottom of the page, does not help it “stand out.”   

The key to proper affiliate link disclosures is making sure the disclosure is “clear and conspicuous.” This depends on both context (placement and proximity to the relevant content) as well as the content of the disclosure itself.  The general rule is that the closer the disclosure is placed next to the relevant message, the better.

Although not required, it is recommended to add the affiliate link disclosure on the home page, above the fold. While there is no explicit requirement, FTC disclosure cases and guidelines suggest that, in their view, this is required for adequate disclosures. 

What should I do now? Always seek experienced counsel. A seasoned lawyer will help you address other considerations including prominence, distractions, industry vertical (i.e. healthcare, financial services) requirements, and language. 

Ping® – Arts, Entertainment, Media and Advertising Law News – Protecting Furniture Design Keeps Getting Harder

Herman Miller, Inc. – a leading furniture brand and purveyor of the iconic Eames Chair Design – suffered a loss at US Trademark Trial and Appeal Board (TTAB) in its bid to protect as “trade dress” the design of the chair. The case involves a well-known chair design dating from the 1940’s, by designers Ray and Charles Eames. The chair ultimately was recognized by Time Magazine as the Best Design of the 20th Century, and now is in the design collections of numerous museums. Herman Miller sought registration of most of the chair’s configuration as a mark, depicted in more than one view, for “furniture, namely, chairs.”

The court weighed each of the Morton-Norwich factors, concluding that the proposed three-dimensional product configuration as a whole indicates that it is functional. The court found that patent evidence, the advertisements touting utilitarian advantages of the design, and the limited availability of alternative designs that would work equally well, proved functionality.

Key Take Aways:

1. Beware of patent evidence in trade dress protection due to risk that distinctive design elements be treated as de jure functional. In general, examining attorneys no longer make this distinction in Office actions that refuse registration based on functionality. De facto functionality is not a ground for refusal. In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1282 (TTAB 2000); In re Parkway Mach. Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB 1999).
2. Ensure that advertising promotes the nonfunctional design elements, such “look for” advertising. Examples include evidence, including SEO data, that connected the applicant’s efforts to promote the applied-for mark as a trademark and consumers’ ability to conceive of the applied-for mark as such, and examples of unsolicited media coverage

Social Media Advertising Tools And User Consent: What Are The Requirements?

Perhaps you’ve seen them, those television and radio ads that talk about the “creepy” nature of some adverting on the Internet that follows consumers across their social media. According to Pew Research, most Americans believe their online activities are being tracked and monitored. 

The fact is, most companies can and do share data with social media platforms to ensure targeted advertising reaches receptive audiences. As more tools become available and the variety of data sources grows globally, platforms and advertisers are re-examining their rights and obligations when it comes to something as simple as matching customers’ email addresses with their Facebook accounts. 

Facebook’s Customer List Custom Audiences (“Custom Audiences”) tool is one such tool that has the potential to expand an advertiser’s liability for unauthorized use of customer data. For EU customers, a German Data Protection Authority ruling requires a individual’s explicit consent to such sharing.

The Facebook Custom Audiences tool enables advertisers to create targeted advertisements to Facebook users by combining Facebook data with the advertiser’s data such as email addresses and phone numbers. To use marketing tool the advertiser must comply with the consent and privacy expectations of individuals who have provided email addresses.

Consent to Use Email Addresses

While the use and disclosure of email addresses is regulated in some countries, the U.S. does not have a uniform data privacy protection scheme. U.S. privacy rights are protected through a patchwork of laws addressed to specific types of harm, such as unauthorized access and disclosure of financial (Fair Credit Reporting Act (FCRA), 15 U.S.C. § 1681) or healthcare-related (Health Insurance Portability and Accountability Act of 1996 (HIPAA) 42 U.S.C. § 1320d–2) data. While the CAN SPAM Act (15. U.S.C. § 7701 et seq.) specifically regulates email, the Act excludes communications based on a previously existing relationship. 

Importantly, for most purposes, permission of the e-mail recipient is not required. However, messages MUST contain a mechanism to request to opt-out of future email messages. If email addresses are acquired from third-party sources, such as marketing databases or social media, ensure users are given reasonable notice and choice about the use of such data.

The Federal Trade Commission endorses a market-style model of ensuring the fair use of information that allows individuals to participate in decisions on the disclosure and use of their personal information. As articulated by the FTC, the elements of this approach are notice, choice, access, security and enforcement.

Contractual Requirements of Facebook Custom Audiences 

In order to use the Custom Audiences tool, the advertiser must agree to additional terms and conditions. Facebook’s Custom Audiences terms require that the advertiser have both “all necessary rights and permissions” as well as a lawful basis to disclose and use the email addresses “in compliance with all applicable laws, regulations, and industry guidelines.” 

Recommendations

Review your Privacy Policy, Website Terms & Conditions, and membership/subscription applications to confirm the existence of a clear mechanism to opt-out of future email messages. If email addresses are acquired from third-party sources, such as marketing databases or social media, review data gathering practices, review scope of permissions granted to the sources of data and ensure users are given reasonable notice and choice about the use of such data.

What Is Cyberlaw?

On November 13, I had the honor of providing a lecture on Cyberlaw to students at the Boston College Law School. Virtually, of course. I had been asked to talk about trends in Cyberlaw with a specific focus on issues related to intellectual property.

So what is Cyberlaw? Simply put, it is the “Rules of the Road” for the “information superhighway.” Cyber law is the law that governs rights, obligations and remedies of people and transactions conducted over global computer networks.

In a year that has seen hyperbolic growth in technology, commerce, and communications, this topic couldn’t be more timely. In order to frame the discussion, the scope featured a discussion of the Three Cs of Cyberlaw: Connections, Content and Commerce.

The first part of the discussion centered around Content, or issues related to Copyright, such as Free Speech/First Amendment CDA Sec. 230, Creative Works, Media and Entertainment, UGC and the DMCA.

The Second part of the discussion centered around Commerce or issues related to Trademarks, marketing and branding, such as: Marketing/Advertising, Domain Names – Cyberpiracy prevention, Keyword Advertising and Social Advertising.

The third and final part of the discussion focused on Connections and Communications and issues related to Personal Data, Stalking, Harassment, Surveillance and Sovereignty, issues around Social Media Freedom of Speech v. Freedom of Reach, and the latest developments around Political speech online.

The lecture closed with a Q&A focused primarily on Navigating Law School and Professional Practice.

COVID-19 is changing consumer behavior in important and probably permanent ways.

COVID-19 is changing consumer behavior in important and probably permanent ways. This is why marketers should take notice.

Sparked by the coronavirus pandemic, consumer and business e-commerce transactions accelerated the ongoing shift toward online commerce. This enables even more marketing opportunities that create real time connections with customers. From pink ribbons to Product Red, social feeds are full of calls to support those in need. In this way, online cause marketing can drive “consumption philanthropy” replacing mindless buying with virtuous action. Tying cause-worthy buying with the latest ecommerce boom creates new opportunities for marketers.

However, before turning your blog, social media accounts, or website into a funnel to raise money for First Responders, it is important to understand that all states have laws that govern charitable solicitations. Running promotions and undertaking solicitations for charities means that unless the business itself is set up as a tax exempt charitable entity, these activities are considered “Commercial co-ventures.” Generally this is a person (or business) who, for profit, is primarily engaged in commerce other than in connection with soliciting for charities and who conducts a charitable sales promotion.

In Illinois, Sec.3. (b) of the Solicitation for Charity Act provides the following persons shall not be required to register with the Attorney General: 3. “Persons requesting any contributions for the … benefit of any individual, specified by name at the time of the solicitation, if the contributions collected are turned over to the named beneficiary, first deducting reasonable expenses for costs of banquets, or social gatherings, if any, provided all fund raising functions are carried on by persons who are unpaid, directly or indirectly, for such services.” Emphasis mine.

Even if you are not raising money for a good cause, consider using disclaimer s to let your audience know product and company names are trademarks of the respective owners and does not imply any affiliation with or endorsement by them.

Is It Necessary To Register A Design Copyright?

A client was asking “is it necessary to fill out all the paperwork to register a design even though the law says you already own it?”

It’s a good question. Technically, under the Copyright Act as amended in 1976, the author (creator) of a work owns the copyright. The 1976 Act states that copyright protection extends to original works that are fixed in a tangible medium of expression. This wording broadens the scope of federal statutory copyright protection from the previous “publication” standard to a “fixation” standard. No further action is necessary. Under previous versions of the law, there were publication requirements to perfect ownership.

Under section 102 of the Act, copyright protection extends to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”

Until the ’76 statutory revision to U.S. copyright law the Copyright Act of 1909 governed, under which federal copyright protection attached only when those works were 1) published and 2) had a notice of copyright affixed. In addition, state copyright law governed protection for unpublished works creating inconsistencies.

Despite the successful streamlining and efficiency of rights creation and enforcement, some challenges and inconsistencies remained. Most noticeably, there had been spit in the federal courts. Some courts required the certificate to litigate, some courts only required proof that an application had been filed.

Last year, the US Supreme Court ruled that in order for a copyright owner to enforce its rights against infringers, the copyright owner must have a registration certificate for the works that are being infringed.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ___ (2019) (PDF here) decided March 4, 2019, the US Supreme Court resolved this split among courts around the country by holding that the mere filing of a copyright application is not sufficient to allow a copyright owner to file suit – actual approval of a copyright application by the United States Copyright Office is required before suit can be filed. Approval comes only in the form of a Registration Certificate.

Returning to the client’s question, while it is true that the Copyright Act says  one owns the copyright in a work when it is fixed, it is no longer true that one can ignore the registration requirements. Yes, one does not have to do anything formal to own a copyright in a work one creates. However, one cannot enforce those rights without the registration certificate in hand. For all practical purposes, there is no reason not to register the copyright in any design, pattern or other distinctive element you create. The fees are relatively low ($65.00) and completing/filing the form can be done electronically.

A word to the wise, like all areas of Intellectual Property, there are nuances that are easily overlooked by the uninitiated. You should always consult with an experienced copyright lawyer when evaluating any individual situation.