Name, Image, Likeness in College Sports

Last month marked a long-awaited policy change for many college athletes.  Under new rules issued by the National Collegiate Athletic Association (NCAA), student-athletes may now financially benefit from their name, image, and likeness (NIL). Additionally, new legislation became effective in several U.S. states on July 1, 2021. The shift follows years of legal proceedings and public pressure to grant student-athletes access to a larger portion of the billions of dollars generated each year by college sports.  While many students and entrepreneurs alike are celebrating the lucrative financial opportunities sure to follow, some still question the best way to navigate and protect all parties involved.

NIL Basics & NCAA Policy Change

Name, image, and likeness, (sometimes referred to as “NIL” for short), are all tied to the overarching legal concept of “right of publicity.”  Essentially, this right refers to an individual’s ability to capitalize on, and be compensated through third-party endorsements, for their NIL.  NCAA athletes are now able to make money from a variety of business ventures that were previously prohibited.  For example, the new rules allow athletes to profit from endorsement and advertising deals, as well as from their social media accounts, making public appearances or speaking engagements, teaching sports lessons, signing autographs, performing music, or starting their own businesses.

Policymakers, faculty, students, and businesses are working through the evolving landscape of NIL opportunities under the new NCAA rules. While the NCAA policy stipulates that students may participate in NIL opportunities consistent with the state law where their school is located, only certain states, including Florida, Georgia, and Alabama, have enacted laws regulating NIL.  Specifically, the new NCAA rule does not override relevant state NIL laws, colleges’ and universities’ specific NIL rules, or conferences’ NIL policies.

College athletes should therefore review NIL rules in the state where their school is located. That way they can work with their athletic departments to understand any school and/or conference-specific rules and restrictions.  Students competing for colleges/universities in states without an NIL law may initially have more freedom until additional guidance or laws are enacted. Further, smaller schools may not have the same ability as larger university to properly advise students on NIL opportunities and risks.

What now?

While students will have new opportunities to capitalize on their NIL, it is important for both students and the businesses working with them to understand any laws or policies that may impact their transactions. Many state laws and school/conference policies prohibit athletes from endorsing alcohol and tobacco products.  Several state laws and school/conference policies also prohibit athletes from using their school’s trademarks or other copyright material in endorsements, or do not allow athletes to sign deals that conflict with their school’s sponsorship agreements. For example, a football player on a team sponsored by Adidas may not be allowed to wear another brand of shoes, such as Nike or the student’s own brand, during games.

Numerous college athletes have already taken advantage of the new rules by signing major endorsement deals with national brands such as Smoothie King and Boost Mobile.  Students at local universities and colleges in Richmond are eager to take advantage of these opportunities as well. Along with that there is certainly room for smaller businesses to become involved with college athletes.[1]

For students considering entering into a new contract to profit from their NIL, staying well-informed is a must.

State laws and NCAA rules allow college athletes to hire professional help in the form of lawyers, agents, and tax professionals.  It is important that businesses consult with legal professionals when entering deals with students as well.  Attorneys can help students protect their own NIL and intellectual property, such as trademarks and copyrights they are using to make a profit.  Legal professionals can help both students and businesses understand the complex laws and rules that are in place regarding student-athletes’ NIL.  Importantly, understanding the laws and policies can help students and businesses avoid infringing others’, including colleges and universities, intellectual property rights.

We are continually monitoring and keeping up to date with changes in intellectual property and business legislation. If you have any questions about NIL protections and how it may affect you, contact us today. – Courtney Reigel, Esq. & Lily Taggart

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

[1] VCU, UR enter ‘evolving area’ of name, image, likeness benefits for athletes | College Sports | richmond.com

Social Media and Your Intellectual Property

Popular social media services such as Facebook and Instagram have billions of active users. In addition to allowing companies to share their personality and brand values, online platforms also function as impressive e-commerce marketplaces. This provides an opportunity for businesses to reach an impressive number of users. However, when individuals or businesses use social media, they may not be considering the following issues related to intellectual property:

  • Trademark infringement
  • Copyright Infringement
  • Rights of Publicity/Right of Privacy
  • Licenses to the social media service (i.e., Instagram, Facebook, etc.)

In terms of infringement (whether trademark or copyright), there are two scenarios you may encounter on social media. One involves someone infringing your own intellectual property rights and the other occurs when you infringe a third parties’ rights, whether intentionally or not. There are often several layers of intellectual property involved in a social media post. Common examples include music, photographs, videos, artwork, and brand names and logos. Understanding intellectual property ownership can be complicated, and it is best that you consult with an attorney to protect your work and avoid infringing anyone else’s as well.

Additionally, users of certain media services such as Instagram grant the platform a non-exclusive license to any material they post. Many users are not aware that they are agreeing to such a license when they consent to Instagram’s terms of use and start posting on the platform.

Further, using someone’s image or likeness online without their permission could implicate rights of publicity and/or privacy laws. Being aware of these intellectual property issues on social media is a helpful first step. Your business’s social media presence is an important part of your brand that deserves legal protection. Additionally, avoiding actions that infringe other’s intellectual property rights can help prevent financial and reputational harm. We can assist you with your legal concerns regarding you and/or your business’s online presence.

Courtney Reigel, Esq. and Lily Taggart

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

 

Domain Names Disputes and Delays at WIPO

Last month, attorney Courtney Reigel attended a webinar addressing ongoing delays at the World Intellectual Property Organization (WIPO).  Specifically, the webinar discussed the increase in the overall number of Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints WIPO has received since the beginning of the pandemic.

Domain name registrars such as GoDaddy are required to follow the UDRP. The UDRP establishes an expedited administrative process for resolving disputes involving the registration of internet domain names.  While other trademark-related legal matters must often be resolved through arbitration or litigation in federal court (which can be costly and time consuming), holders of trademark rights may file UDRP complaints with WIPO or another approved dispute resolution service provider to resolve issues involving abusive registrations of domain names (e.g., “cybersquatting”).  UDRP complaints generally offer an affordable, efficient, and straightforward option for us to resolve domain disputes for clients.

While UDRP complaints remain a useful tool for addressing domain name matters such as cybersquatting and “typo-squatting,” WIPO is currently experiencing delays in processing times for reviewing such complaints and issuing decisions.

Generally, the cause for the delay is the increase in overall number of UDRP complaints being filed with WIPO.  2020 was a record-breaking year for the number of domain name disputes filed with the organization.  However, this year is already on track to surpass 2020 in number of domain name disputes filed.  The increase in complaints is due to several factors, including the fact that there has generally been more internet activity as people shopped and worked from home during the pandemic. Additionally, the pandemic created new opportunities for cybersquatters to register and use domain names that contain a trademark plus the terms “coronavirus,” “covid,” or “vaccine,” for example.  The ICANN WHOIS service used to investigate registrant information for potentially infringing domain names no longer offers the same information it used to.  Due to privacy laws such as Europe’s General Data Protection Regulation, as well as the increase in number of privacy and proxy services registrants can use, registrant information (an individual or business’s name, address, and contact information) is no longer readily available.  In some instances, the only way for trademark holders to determine who is responsible for registering a domain that appears to infringe their intellectual property rights is to actually file a UDRP complaint and wait for the domain’s registrar to provide such information.  Further, the lack of registrant information makes it difficult to combine complaints involving several domain names that have the same registrant together into a single complaint (previously a common practice), which is also driving up the number of overall complaints.

Attorneys can help trademark holders monitor for potentially infringing domain names and enforce their rights, which often includes preparing and filing a UDRP complaint.  In light of the increase of bad actors online, such monitoring can be critical for preventing trademark dilution and avoiding the harm that can be caused by infringing domain names.  We can also draft complaints that clearly articulate trademark holders’ rights and address key issues to assist WIPO with reviewing complaints and issuing decisions as quickly as possible. The pandemic and changing laws compel a more strategic approach for handling domain name disputes, and we continue to monitor developments and are readily available to help clients with these matters.

Rina Van Orden, Esq. & Courtney Reigel, Esq.

Hidden Risks of the Side Hustle

If you’ve ever searched online for ways to make extra money, you’ve likely come across a multitude of “side-hustles.” The side hustle has become an increasingly trendy topic, especially with the recent changes in remote work. These ways of increasing your cashflow can be benign, but several popular avenues come with hidden risks.

Domain Name Marketplace

You may be thinking that it’s profitable to buy and sell domain names. That can be true! But you face risks in that process that you need to be aware of. Namely, if you are purchasing a domain name that is valuable specifically because it trades on the brand of a well-known company, you could be infringing someone’s trademark, violating anti-cybersquatting laws, and generally making a lot of people really angry.

Buying and selling domain names is also referred to as domain flipping. This is a side hustle because people can buy domain names from registrars such as GoDaddy and attempt to later resell them for a profit. Whether the flipper builds an actual website with the domain is up to them. “Domain parking” refers to flippers that do not build a site tied to the purchased domain(s). Another strategy is to invest in the site and increase traffic to make it more valuable. This practice can be lucrative – investing.com was sold for $2.45 million in 2012. But like most headline grabbing stories, it’s not as safe or simple as it sounds.

One of the major risks with purchasing domains is the potential to infringe on someone’s protected intellectual property. Even with research, you could purchase a domain name that is too similar to an existing brand and wind up paying the price. It’s a good idea to consult a lawyer to make sure a domain name doesn’t gain value from an existing source.

Finally, domain flippers must be aware of the dangers of cybersquatting. Although cybersquatting as a practice is often intentional, even unintending flippers can violate anti-cybersquatting policy. The Anticybersquatting Consumer Protection Act covers a range of domain buying and selling practices that could get side hustlers in real trouble.

Options for Trademark Owners

Cybersquatters – and potentially unknowing flippers – commonly obtain exact or confusingly similar domain names to protected marks. Since infringement is so frequent, it’s important to monitor your protected property. An experienced legal team can build the best strategy for your situation and help you keep an eye on the marketplace.

Trademark owners worried about potential infringers or cybersquatters have options. There are different types of actions mark owners can take if they find out a domain registrant is making money off of the owner’s mark. The general first course of action is to send a cease-and-desist letter. This addresses trademark ownership, how the domain name is infringing and causing damage, and your willingness to take the appropriate legal action if the infringement does not stop. If no action results from a cease-and-desist letter, you may wish to involve an attorney who can guide you and implement the correct course of action to stop the infringement.

Side Hustle Risk: Creative Infringement

People can make a lot of money selling and designing creative t-shirts, but you are better safe than sorry when it comes to designing shirts that are valuable because someone else has created the content it is based on. Using online platforms such as Etsy or Instagram means that your activity is subject to federal regulation. Goods that use characters, slogans, or even inspiration from protected works risk both trademark and copyright infringement.

Using the content of businesses commercially without express permission or license is trademark infringement. A common example is personalized goods with college or university logos. These are protected intellectual property so commercial use on your t-shirts without permission is infringement. Another example is fan gear for professional sports teams. A quick search of these online marketplaces shows plenty of stores using infringing material which might make you feel safe. However, just because other stores are selling these doesn’t mean it’s legal. Or the the trademark owner won’t shut that store down. The risk of infringement outweighs any potential gain from unauthorized use.

This type of side hustle also risks copyright infringement. T-shirts with popular tv characters or quotes from a new bestselling movie may fly off your shelves, but remember: their value comes from someone else’s work. And federal copyright infringement claims come with a hefty price tag.

Another common mistake is using pictures from Google. Without checking the source, it’s highly likely that you do not have permission to use that property commercially. No matter what good you’re interested in creating and selling, make sure it’s your original design. If what you’re selling gains value from established content – and you don’t have permission to use it – think twice. Like trademark infringement, copyright infringement can lead you into a mess of legal trouble.

To sell or not to sell

The public domain refers to a collection of works without exclusive intellectual property rights. For instance, the works of William Shakespeare are in the public domain. This means that if someone wanted to do a theater reenactment of Shakespeare’s work, they wouldn’t have to have a license or permission to do so unlike a copyright protected work.

Another type of side hustle involves publishing work from the public domain. There’s always a demand for classics such as Little Women, Treasure Island, or The Great Gatsby, which entered the public domain as of January 1, 2021. Entrepreneurial side hustlers have filled this demand by turning these public domain works into e-books on platforms such as Amazon Kindle. Due to the lack of copyright protection of works in the public domain, infringement can disappear if you are using or inspired by works in the public domain. There are enterprises which have successfully used this hustle – such as the man who sold 64,000 Anne of Green Gables e-books.

However, if you’re thinking this is the new trick for you, don’t dive in too fast. Calculation of the time a copyright is active can be complicated. One version of a work may be in the public domain, but another is not.  It’s important to err on the side of caution and contact a lawyer to be safe if you feel conflicted. No matter what side hustle you’re thinking of pursuing, always do your research and be aware of the hidden risks. If you’re a trademark or copyright owner worried about potential infringers, remember you have options.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Kat Gavin, Esq.

IP Strategies for Your Online Business

Transitioning into an online business may feel daunting. From operations to technology, there are so many potentially new processes. Business owners currently operating online can also benefit from a review of their operations and how they can best protect their work. Don’t let your intellectual property strategy hinder your success! Here are five perspectives of what you need to consider when engaging online:

Advertising and Marketing 

  1. Marketing your product or service is an integral part of any business, especially when operating online. Creating an advertising strategy that abides by legal guidelines may sound confusing but there are a few easy tips.
  2. Firstly, make sure that all claims are truthful and substantiated. If you’re selling socks, don’t say that they can fix a broken bone.
  3. Don’t forget that this also applies to social media. Not only you and/or your business, but anyone you may work with such as content influencers, with must adhere to these rules.

Trademarks

  1. Select a strong name and/or logo for your business. What is a strong name? A good rule of thumb is, if it describes what you’re selling, it’s probably not distinct enough.
  2. Make sure you take steps to decrease the likelihood of infringement. Before committing to a name to use commercially, consult with a legal team to search existing marks and assess potential risks.
  3. Will you conduct business in multiple countries? Keep up to date with individual country’s trademark requirements so you understand how to file.
  4. Lastly, make sure to review your contracts to be aware of which rights you have and which rights you are granting. You cannot grant any rights that you don’t have! If you need help deciphering a contract, reach out.

Copyright

  1. Is there content that you use on your website, social media, or mobile apps? Make sure you know whether you can use media like music, text, photos, art, video, or other content in various ways- personally, commercially, within whatever geographic restrictions. Additionally, follow “proper credit and/or attribution” requirements for the content.
  2. Are third-parties able to post content on your website? You may want to limit your liability against their potential copyright infringement by taking advantage of the Digital Millennium Copyright Act (DMCA)’s Safe Harbor. Let us know if you need help navigating these requirements.
  3. Is there a person whose name, likeness, or image you are using in connection with your business? There are right of publicity laws that you must follow as well as applicable state laws.
  4. An online entrepreneurs’ website is like their online storefront. Do you have a clear agreement with your website or software developer? Make sure any other tools created for the operation of your business, like mobile apps, are included in your strategy. A well-written contract is a good way to take preventative measures before the work is done to avoid later infringement or theft.

Privacy and Other Legal Considerations

  1. Be in the know when it comes to changing data privacy and internet laws. Specific state laws may apply to your business even if you are not physically located there.
  2. The California Consumer Privacy Act (CCPA) and Californica Public Records Act (CPRA) grants California residents greater control over their personal data and how businesses use that information. If you want to prepare your businesses for CPRA compliance, start by reviewing how your company collects data, and then contact a professional about how to make sure everything is above board and complies with the new laws.
  3. Virginia recently passed similar legislation known as the Consumer Data Privacy Act (CDPA). There are some differences compared to California’s legislation such as which businesses apply to the regulations.
  4. Finally, set up your online presence to comply with other regulations such as the Americans with Disability Act (ADA). For example, make online offerings available to those with disabilities. Other important legislation includes the Children’s Online Privacy Protection Act (COPPA) and the Communications Decency Act (CDA).

Protection Strategies

  1. Last but certainly not least, educate yourself and pursue all routes to protect your content.
  2. Seeking registration with the Copyright Office and/or the USPTO is a great first step in protecting your business and intellectual property.
  3. Another strategy which helps to prevent improper use is to include notices on your website, social media, and /or mobile applications.
  4. If you are concerned about improper use, explore all monitoring tools and consult with your legal team.

Whether you already conduct business online or not, the internet is here to stay. It’s become an invaluable economic resource, especially with the need for remote options in the past year. As such a fast and accessible way to work, make sure you take into account all your legal and commercial options as an intellectual property owner.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)