You’ve probably heard by now about the change that Facebook made to its Terms-of-Service (”TOS”) policy last week regarding the company’s “perpetual use” of a user’s information even after the user terminates his/her Facebook account.  It prompted an outcry, with many users threatening to quit the service.  Facebook has now done a complete about-face and announced, for the time being at least, that the old TOS was going to be reinstituted while the company resolves “the issues that people have raised.”

The change focused upon the license provision of the TOS.  Facebook deleted a sentence from its old policy that the company could not claim any rights to a user’s content once that person’s account was closed.  Instead, the company replaced it with other language giving it the right to store and retain copies of a user’s content indefinitely.  It must have been a slow news day, because this really shouldn’t have created the firestorm that it did.

First, at no time did Facebook exercise any actual ownership claims over its users’ content.  It never did.  Copyright remained with the user, where it’s always been.  So people need to relax.  Some of the articles and blog postings that I’ve seen are trying to read much more into this change then there really is (or was). 

Also, even under its broad license provision—which is hardly unusual—people need to be a bit more realistic about their own content.  Facebook simply has no interest in using the picture of you and your German Shepherd playing together on the lawn or in the song you strummed on your guitar one night for your friends.  To put it bluntly:  Get over yourself.

In many ways, this is a tempest in a teapot.  However, when you’re the biggest social networking site at the moment and are growing by about 4 to 5 million users per week, even small changes to a TOS can take on a life of their own.  Mark Zuckerberg, Facebook’s CEO, characterized the reason for the change this way:

One of the questions about our new terms of use is whether Facebook can use this information forever. When a person shares something like a message with a friend, two copies of that information are created—one in the person’s sent messages box and the other in their friend’s inbox. Even if the person deactivates their account, their friend still has a copy of that message. We think this is the right way for Facebook to work, and it is consistent with how other services like email work. One of the reasons we updated our terms was to make this more clear.

In reality, we wouldn’t share your information in a way you wouldn’t want. The trust you place in us as a safe place to share information is the most important part of what makes Facebook work. Our goal is to build great products and to communicate clearly to help people share more information in this trusted environment.

Facebook’s position is not unreasonable.  While users are perhaps rightly concerned that this seemingly small TOS change could have a far greater impact then intended, let’s not go too crazy with anti-Facebook sentiment just yet.  I’m all for privacy and protecting people’s personal information—it’s a continuing theme throughout this blog.  It’s an important issue and people should be concerned.

But does anyone seriously think that if Facebook did something stupid—such as taking an expired user’s picture or other content and using it in an advertisement—the backlash against it wouldn’t be swift and severe?  While the company would be able to point to its TOS claiming that it had the right to do what it did, it would still become a public relations fiasco, with prominent bloggers leading the “I told you so” charge and the refrain, “just because you have the right to do something doesn’t mean you should.”  Facebook obviously understands that.

While the company has achieved critical mass and its 175 million users gives Facebook considerable muscle at the moment, internet users are a fickle bunch.  The next social networking site is only an e-mail address and password away.  And if that site were to offer comparable or better services and a more user-friendly TOS that gives its users more control over their content, word would spread as only word can on the internet.  Every internet business is acutely aware that its next competitor may be a garage or college dorm room away.  So Facebook will be cautious in what it does, as its reversion back to the old TOS demonstrates.

Zuckerberg also correctly notes that these issues are “difficult terrain to navigate and we’re going to make some missteps.”  As a technology lawyer, I can attest that they are indeed difficult issues to address and require a great deal of thought.  So while this may have been a bit of a misstep from a public relations perspective, it’s also a “sensible” one given some of the concerns that the company has.  While Facebook is going to slow the TOS amendment process down somewhat, it will still move forward.  It will be evolutionary, not revolutionary. 

As an attorney who both drafts and litigates TOS policies, there are some practical lessons to be learned here.  At the very outset of a website’s inception, I often—but not always—tell my clients to go for the broadest possible content license from its users when the TOS is first posted, unless there are reasons against it (which there sometimes are depending upon the type of entity that is collecting the content and the type of content being collected).  Better to have it and not need it, than to need it and not have it.

This way, users know at the very outset (or at least are given the opportunity to know) what licensed rights the company has in their content.  Based upon all of the TOSs that I’ve drafted through the years, I’ve found that in many instances it’s only after a site catches-on and becomes popular that people start to pay really close attention to how they’re content is being used.  And the site may never catch-on so it may never become an issue.  Also, as a general matter, few users read a TOS when it’s first posted anyway.  And since so many sites use them, there tends to be ”TOS fatigue.”  They don’t exactly make for a stimulating read no matter how plainly they’re written.

It’s only later when a company announces its inevitable changes to the TOS that users then pore over the language—which is what happened to Facebook.  If after the site has been up-and-running, a company wants to restrict what it does with a user’s information, i.e., disseminate or use it less broadly than originally intended, few users would raise an eyebrow.  After all, people don’t often complain that a company isn’t using their personal information broadly enough.  How would users even know?  If the TOS is drafted properly, the company would have the right to use as little information as it wants anyway.  It’s the broader uses that get a company into trouble. 

While I realize that this is much easier said than done and that a company may not really know what it needs when it first starts doing business (Facebook, after all, started out as a site while Zuckerberg was at Harvard), I prefer to err on the side of caution and ask for broad user license rights that a company may never need, as opposed to too few rights and then run the very real risk of alienating users if the company needs to ask them for more.  At that point, everyone is paying attention.  But it depends on many factors and can be a bit of a “balancing test.”  So if you’re in the process now of putting together your site, develop the TOS carefully and think it through.

Perhaps that’s the plus side from the Facebook story.  People are indeed paying attention to these issues more and more.  So companies do need to be careful.  All it takes is one blog post and . . . .

Fart.  Fart.  Fart.  It’s not often a lawyer gets to use that word in a courtroom once, let alone repeatedly.  But sometimes the practice of law in these modern times lends itself to some unusual—dare I say fun?—cases that are not your traditional fare.  Or perhaps I should say, “iFart,” which is a bit more apropos here.  

Flatulence—or more specifically, fart noises—is apparently big business in software today, especially for the iPhone.  Who knew?  And this story underscores the lengths that some companies will go to protect their trademarks and brands in this digital age.  It seems that two companies which make competing “flatulence noise simulation software” for the iPhone have gotten themselves into a bit of a, uh, legal stink. 

InfoMedia, which makes “iFart Mobile,” a popular novelty application for the iPhone, has filed for a declaratory judgment in a Colorado district court against Air-O-Matic (”AOM”), which makes “Pull My Finger,” a competing application which was apparently the leading fart simulation software before iFart, uh, exploded onto the scene.  A copy of the complaint can be viewed here.  I, for one, had no idea that digital fart simulation technology had advanced so rapidly.

AOM filed for a trademark on the term “Pull My Finger” at the Patent and Trademark Office (”PTO”) in December of 2008.  The application is pending.  InfoMedia alleges in its complaint that its use of the term “pull my finger” in its advertising and other marketing constitutes a “fair use” under trademark law and does not and will not infringe upon any of AOM’s trademark rights.   It also wants the court to declare that “Pull My Finger” is a “descriptive” phrase and therefore doesn’t qualify for protection.

According to letters and e-mails between the parties, in addition to using “pull my finger” in press releases, AOM has also accused InfoMedia of posting a YouTube video prominently using the term, posting false negative reviews and testimonials of “Pull My Finger” (while extolling the virtues of iFart), and spamming AOM customers on Twitter with ads for iFart.  While I’m not exactly sure what makes one fart application better than another—and my expertise is strictly limited to my own personal experiences with flatulence—these differences are apparently quite significant.

So what did InfoMedia do?  Exactly what it should have.  It beat AOM to the punch and filed for a declaratory judgment in its home state of Colorado.  Even though AOM is located in Florida, it now has to defend itself in a Colorado court.  That’s not necessarily a bad thing, but InfoMedia now has the “home field” advantage and AOM doesn’t have the option of suing in Florida.  It now has to find a Colorado law firm.

I’ve only seen InfoMedia’s complaint and attachments and not AOM’s response, so I’ll reserve my opinion on the case’s merits.  Trademark law can be quite complex anyway, and intellectual property cases in general can turn on factual or legal nuances.  If, however, this case was only about InfoMedia using “pull my finger” descriptively in some of its press releases, then it would probably have a strong case that it didn’t infringe. 

But if InfoMedia kept using “Pull My Finger” in fake testimonials and reviews and ran a deceptive ad campaign on Twitter, than AOM’s claim could be stronger.   As noted by AOM’s counsel:  “InfoMedia’s efforts have been directing at merging Pull My Finger and iFart in the consumers’ minds, so that searches for Pull My Finger pull up the iFart application.”

Of course, all of this depends upon whether or not the court finds “Pull My Finger” to be protectable.  InfoMedia has alleged that the term is “descriptive” and doesn’t qualify for registration.  So what does descriptive mean?  According to the PTO’s Trademark Manual of Examining Procedure:  “A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

InfoMedia correctly notes in its complaint—and cites that most revered of internet sources, Wikipedia—that the term “pull my finger” is synonymous with flatulence.  The company is essentially alleging, among other things, that the term merely describes the function or feature of AOM’s software. 

So is “Pull My Finger” descriptive?  It’s hard to say.  The PTO notes that the ”great variation in facts from case to case prevents the formulation of specific rules for specific fact situations.  Each case must be decided on its own merits.”  Translation:  The court will have to make the call after carefully considering all of the flatulence-related evidence.

If the term is found to be descriptive, AOM would then have to show that the phrase has acquired “secondary meaning” in order to get it registered.  Secondary meaning is defined as “proof that [the mark] has become distinctive as applied to the applicant’s goods or services in commerce.”  In other words, ”it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.” 

Thus, AOM would have to show that customers primarily associate the term, “Pull My Finger,” with AOM and not just with the application itself.  This isn’t easy to do, especially if a product just entered the marketplace and hasn’t been in use for a long period of time, and been extensively marketed and advertised. 

So we’ll have to wait and see what happens.  The parties may very well settle and not take the risk that litigation often entails—somebody’s got to lose, after all.  I hope they don’t settle, though.  I would love to read a court opining on flatulence and fart noises.  It would be quite entertaining.  You know, a real gas.

I’m not sure whether to be amused or upset by this story, but I thought it was worth a quick post.  It seems that a petulant 19 year-old in Florida took the law into his own hands when he was told by a Starbucks customer that he couldn’t use the customer’s laptop to check his Facebook account. 

So what did this genius do?  What anyone would do, of course.  Wait a little while and check his account from home, you ask?  No, that would take too long.  And since we live in a society of instant gratification, he decided to snatch the laptop and run out of Starbucks.  Needless to say, he was apprehended in the parking lot and arrested.  Now he’s been charged with robbery (which is a felony). 

I guess when you need your hit, you need your hit.  And you won’t let something as trivial as the law stand in your way.  Just ask any drug addict.  Is Facebook really that addictive?  I haven’t yet experienced any tremors or nightmares from failing to check my various e-mail accounts, but maybe I’m just not hip enough.

While this guy is clearly an idiot, it does portend ominous things for the future.  Facebook junkies.  Social networking lifers.  Will they have entire wings in drug rehab centers or prisons for people like this?  I know it sounds ridiculous, but with social networking sites like Facebook growing by 4 to 5 million users a week, the power of the medium can’t be underestimated. 

Some people will obviously take it to the extreme.  Some always do, but it does make me wonder.  And I wonder what this guy will do when he can’t check Facebook from his prison cell.  The withdrawal pains may be incapacitating.

When I first heard about the Associated Press (”AP”) accusing Shepard Fairey, the artist who created the ubiquitous red and blue Obama poster emblazened with the word “HOPE,” for copyright infringement, the first thing I thought of was “fair use,” most notably the concept called “transformative use.”  The AP alleged that Fairey infringed its photograph of Obama when he developed his poster.

Then I read the story shortly thereafter about Fairey filing a “declaratory judgment” lawsuit in New York asking a federal court in Manhattan to “declare” that he was not infringing the AP’s photograph.  Fairey doesn’t deny that he based the painting on the photograph, but claims that it was a fair use, which is a defense against copyright infringement. 

Although I haven’t had a chance to read the complaint yet, transformative use is the principal part of Fairey’s defense.  And it’s a meritorious one that will make for an interesting legal analysis—assuming the case gets that far.  So what is “transformative use” exactly?  The Supreme Court addressed this issue most recently in Campbell v. Acuff-Rose Music, Inc. in 1994.  The Court described a transformative use as follows:

The enquiry here may be guided by . . . looking to whether the use is for criticism, or comment, or news reporting, and the like. The central purpose of this investigation is to see . . . whether the new work merely “supersede[s] the objects” of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”  Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. . . . and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.  (emphasis added)

So the court will be focusing on to what extent Fairey’s painting adds something new to the original AP photograph, i.e., its “expression, meaning, or message” and thereby “transforms” it.  While a fair use analysis can be quite lengthy and complicated (and is very fact-specific), Fairey will certainly be able to make a credible argument that his colorful and abstract painting combined with the word “HOPE” alters and transforms the photograph’s meaning or message. 

In fact, it’s unclear to me exactly what message the original photograph would be communicating by itself.  Is Obama looking confident?  Reflective?  Poised?  Attentive?  Presidential?  It’s somewhat subjective and it will be interesting to see how the AP characterizes the picture’s message.  It’s really more a question of opinion, which works strongly in Fairey’s favor.  (And what does “hope” consist of anyway?)  So Fairey has a strong defense in this regard.  But one thing that I learned about litigation over the past 15 years or so is that it’s a very fluid and dynamic environment and can change rapidly.  Unforeseen things happen.

So in practical terms, what’s the lesson to be learned here?  Here’s the basic one:  Contacting a party or sending a cease and desist letter can be risky business sometimes.  In any type of infringement action—whether it’s patent, trademark, or copyright—notifying the other side that you believe it’s infringing on your intellectual property rights gives them the ability to go running into federal court and seek declaratory relief.  After all, you’ve just told them that a problem exists.

Your notification to them of possible infringement creates what’s called a “justiciable controversy” and can give them the ability and standing to go into court to seek a declaration that they’re not infringing, just as Fairey has done.  Of course, each federal circuit has its own rules as to what creates a justiciable controversy, so Massachusetts may use a different standard than another state—although the standards will usually not differ all that much.

So why is this a problem?  If you’re located in Boston, Massachusetts and the possible infringer is located in California, that party can now go into a federal court in California and file its action and get the “home field” advantage.  The court would very likely have jurisdiction over you.  So in addition to now having to hire counsel in California to defend yourself, you would also be forced to go there to give and take depositions and engage in other forms of “discovery.”  It can be very incovenient and expensive.  That’s the point.

This is why whenever somebody contacts me about either sending a cease and desist letter or is the recipient of one, it’s crucial to really sit down and strategize as to what your next move should be.  If litigation is a probable outcome and you’re dealing with a well-financed adversary, then it may be best to strike first and file an action in your home state where it would be most convenient for you.  (It’s been my experience, however, that many clients—especially those who have never been through the litigation process before—are somewhat leery of filing litigation first given its potential expense and duration.) 

Of course, these are general guidelines only and each situation will have its own facts and nuances that will dictate how best to proceed.  The practice of law doesn’t usually lend itself to easy answers, particularly where issues of infringement are concerned.  Many factors need to be taken into consideration.

So, Fairey did the smart thing.  Rather than wait and let the AP sue him—especially given the meritoriousness of his case—he struck first.  It will be interesting to see how things develop.  And it’s always possible that the case will settle before the court has a chance to rule.  In many instances, filing an action such as this is simply designed to show the other side that a person is serious about protecting his/her rights and that a compromise might be in everyone’s best interest.  But Fairey has a strong case.  We’ll have to wait and see.