Blogging: A Joint IP And Employment Primer1

Wednesday, February 1, 2006 - 00:00

Introduction

Blogging has exponentially grown in popularity as a medium where individuals can voice their opinions and ideas in real time. The opinions and ideas posted usually take the form of text. However, they can also be expressed in the form of video, audio and photographs. Blogging has gone largely unnoticed as a medium of expression used by a few to one used by many. Given its rise in popularity, it is not surprising that blogging raises several significant Intellectual Property (IP) and Employment law issues.

The first section of this article will discuss briefly what blogging is and how it originated. We follow by an examination of the IP issues arising from the blogging phenomena. We then turn to the employment law issues affected by blogging and conclude by outlining practical steps a business should consider to protect its IP and itself from liability.

What Is Blogging

In the early days of the Internet, a website primarily used for personal diaries and journals was known as a weblog. Visitors to the weblog could post a response to the journal entries or even to the comments of other visitors. This voyeuristic medium gained early attention because of the extremely personal nature of the material posted. Some weblogs went so far as to place live streaming video from the residence of the weblogger, making their lives a form of reality television.

The medium "took off" in the 1990's when hosted weblog tools became available making it easy and inexpensive for anyone to create a "blog," the nickname given to this genre. Today, blogs cover everything from political commentary to venting about former love interests. Law firm associates created their own blogs to share information on salaries and work conditions at their law firms.

The "edgy" quality of the comments posted to blogs is important to this discussion because by their very nature blogs encourage entries that are over the top. For instance, as found at the greedy associates.com blog, (law firm X is identified by name in the blog) "[w]hat I understand from people who have worked for [X], is that the current Office Managing Partner is so emotionally unstable, volatile, hostile and unreasonable, that people would rather be unemployed and hungry than lose their minds working in the same office with her."

The popularity of blogs is in large part the anonymity they offer. Furthermore, creative and outrageous comments are often perceived as the best way to attract readers. While blogging may be portrayed as the ultimate exercise of the First Amendment, a recent poll shows that more than 40% of bloggers did it to increase their incomes where only a little more than 30% maintained blogs primarily for the love of writing.2

Blogs And Intellectual Property Rights

Copyrights

Blogging presents many challenges to the intellectual property owner. Bloggers often copy existing materials verbatim as part of their discussion of some topic or to provide support for their view. Indeed, the cut and paste functions available on most websites may be perceived by some as an invitation to engage in this activity. Music, photographs and other digitized images can easily be copied and then modified to emphasize the blogger's perspective.

Bloggers who engage in this activity may believe that their copying is protected under the fair use doctrine of copyright law. However, the fair use defense is highly fact specific and clearly does not provide blanket protection for bloggers. For instance, in one case involving an on-line bulletin board that allowed visitors to post articles along with a blogger's commentary, a federal court in California rejected the fair use doctrine.3 The court held that the commentary on a news article required only the underlying facts, not verbatim repetition of another's expression of those facts.4

Interestingly, a review of some of the more sophisticated blogs shows that at least some bloggers recognize that "[w]e bloggers have, to put it mildly, a very robust concept of fair use."5 It also has been reported that some online stock photo companies are starting to aggressively enforce their rights.6 Of course, large stock photo companies have one advantage over most businesses: they have already registered the copyrights to the images they license. A U.S. business can only commence an action claiming copyright infringement after the work has been registered. Importantly, if registration is made within three months of publication of the work and prior to an infringement, the copyright owner is entitled to statutory damages and, often, an award of attorney's fees.7

Notwithstanding that the copyright registration process is fairly simple and inexpensive ($30 per application), few companies register any of their materials. In this environment, however, companies should, at least, register their websites and update their registrations once every six months in order to protect newly added material, if any.

Trademarks

Blogs also present trademark issues, many of which are similar to domain name or metatag issues. The law in this area is still evolving and therefore not predictable. For instance, while some courts have found trademark infringement when the trademark was used in a domain name purportedly critical of the brand or brand owners, other cases have held that there is no confusion.8

As noted above, most blogs are hosted within a larger domain such as blogspot.com owned by Google. While the trademark questions may be familiar, there is little caselaw in this area. In fact, trademark law is completely silent on the use of trademarks in third level subdomain names, which are generally assigned to blogs. A pending case in the Southern District of New York, Jews for Jesus v. Google, Inc., 05 CV 10684, will examine whether the use of a mark in a URL, jewsforjesus.blogspot.com, by Google constitutes trademark infringement.9

What can a trademark owner do to protect themselves? Recognize that a trademark watch report will not alert you to the use of trademarks in blogs. Policing against infringing use by bloggers requires specialized search services that are more expensive than the standard U.S. watch service. In our experience, it is far easier to halt Internet trademark infringers when they are caught early. We encourage our clients to post a "victory page" on their website,, where potential infringers can see how seriously the issue is taken. Some clients have gone so far as to place a notice on their homepage offering "incentives" in exchange for confirmed reports of trademark infringement.

Employment Law

Corporate Human Resources (HR) officers are well aware of the problems created by e-mail and Internet access. Most employers have a policy alerting their workforce to the importance of writing e-mails with the same seriousness and discretion as other business communications. Similarly, most businesses already recognize that it is necessary to have policies in place which tell their employees that they should only use their computers for work-related matters and not to simply play games all day. Employee handbooks often contain policies which alert employees that they have no expectation of privacy with respect to computers, files, e-mails, etc. It is therefore somewhat surprising that a September 2005 survey recently found that only 30% of U.S. companies have policies about blogging.10

Why should employees care? Beyond the fact that the employee is being paid to work and not to blog, blogging can subject a company to significant liability on the theory of respondeat superior.11 Thus, the employer may be held liable for its employee's violation of copyright law, for the acts of sexual harassment by one employee against another or for libelous statements contained in blogs. In one case where pilots posted inappropriate remarks to an online bulletin board, the court found that the airline could be held liable for its employees' harassing statements.12 The airline had a duty to remedy the harassment to avoid liability.13 In a more recent case, a New Jersey Appeals panel held that an employer who was on notice that one of its employees was using a workplace computer to access pornography had a duty to investigate and take prompt and effective action to stop the unauthorized activity.14 No privacy interest of the employee stands in the way of this duty.15

Employers should be aware of the potential of having their trade secrets posted to a blog by an employee either inadvertently or with that purpose in mind. For a company that depends on their trade secrets for their success in the market place, disclosure of their trade secrets can deal a financial blow. Seeking out individuals who post trade secrets to blogs is imperative to set the precedent that such disclosures will not be tolerated.

What can a company do to protect itself? A trade secret owner must ensure that protective measures are in place such as employment agreements, monitoring policies and training. Failing to have protective measures in place may cause an owner to lose his legal rights to bring an action.

In addition to those concerns, blogs are a common place to pick up spyware/adware or viruses. These programs are usually installed by misleading pop-up windows that disguise the download as a necessary Windows or Internet Explorer upgrade. Once downloaded, an adware program installs as an Internet Explorer tool bar, redirects search queries and initiates pop-up ads. Viruses can spread throughout a networked system causing significant monetary damages as well as plenty of down time.

If that isn't enough to get an employee's attention, the bottom line is that under certain circumstances an employee can be fired for inappropriately posting to a blog. For example, a former Delta employee alleged she was fired because she posted inappropriate photos to her personal blog.16 A Microsoft contractor lost his job after posting photos to a blog of Apple computers being delivered to Microsoft's headquarters.17

It is advisable that in the same way companies implemented sexual harassment training in the 1990's, web etiquette and IP related programs should be explicitly discussed in a company's employment manual. Further, employment manuals should be updated to include the following:

1. Employees may not download material from the Internet onto their company computer without permission.

2. Employees may not upload company documents onto the Internet without written permission.

3. Employees may not visit offensive or inappropriate websites.

4. Employees may not post any publicly available material onto any website from the company premises or from a company computer without prior permission.

5. Employees will advise HR of all user names and passwords used on any website for company business.

6. Employees may not download any computer programs for personal use onto their company computer without approval from the company IS department.

There are also technical "fixes" such as filters that can prevent users from visiting sites.

The bottom line is if employees can't blog, you can't be liable.

1 Copyright 2006 by Stephen W. Feingold, Adin C. Goldberg and Liza Montalvo. All rights reserved.

2 http://www.problogger.net/archives/2005/07/25/survey-48-of-bloggers-are-in-it-for-money/.
3 Los Angeles Times v. Free Republic, 2000 U.S. Dist. LEXIS 5669 (C.D. Cal. 2000).
4 Id. at 39.
5 www.concurringopinions.com/archives/2005/12/what_if_copyrig.html (posting dated December 15, 2005; viewed January 11, 2006)
6 Id. quoting unspecified issue of Wall Street Journal.
7 17 U.S.C §§ 504 and 505.
8 Compare Lamparello v. Falwell, 420 F.3d 309 (4h Cir. 2005) and Nissan Motor Co. v. Nissan Computer Corp ., 378 F.3d 1002 (9th Cir. 2004), cert. denied, Nissan Motor Co. v. Nissan Computer Corp ., 2005 LEXIS 3332 (2005).
9 This issue of trademark infringement for a third level domain has only been discussed in passing in the case law.
10 http://www.intelliseek.com/releases2.asp?id=139, September 8, 2005.
11 Restatement (Second) of Agency §228 (1958).
12 Blakely v. Continental Airlines, 164 N.J. 38 (N.J. Sup. Ct. 2000).
13 Id. at 62.
14 Doe v. XYC Corp., 2005 N.J. Super. LEXIS 377 (N.J. Super. Ct. App. Div. 2005)
15 Id. At *2.
16 http://money.cnn.com/2005/02/14/news/economy/blogging.
17 Id.

Stephen W. Feingold and Adin C. Goldberg practice in the New York office of Pitney Hardin LLP, where Stephen leads the firms Trademark, Copyright, Internet, and Advertising group and Adin is a member of the firm's Labor and Employment group. Liza Montalvo is an Associate in the Intellectual Property Group based in the firm's New York office. This article represents only the authors' opinions and does not necessarily reflect the views of Pitney Hardin or any of its clients. Questions concerning the article or Pitney Hardin's practice may be directed to the authors at (212) 297-5800.

Please email the authors at sfeingold@daypitney.com, agoldberg@daypitney.com or lmontalvo@daypitney.com with questions about this article.