digilaw 2013 THE YEAR IN REVIEW JANUARY 2014 JANUARY

2013 WAS A FASCINATING, FAST-MOVING YEAR FOR OUR CLIENTS in the telecommunications, media, and technology world, and this year promises to be no less eventful. Regulators and courts scrambled to keep up with the rapid pace of change and innovation, producing new rules, decisions and guidelines seemingly every day. The FTC, under the new leadership of Chairperson Rameriz, has signaled expansion of the use of unfairness authority and state and local consumer protection authorities, especially in California, have become more aggressive. Just last week a federal court of appeal overturned “net neutrality,” paving the way for charging online publishers based on their bandwidth use. In the EU, regulators have been debating material changes to the EEC’s data protection scheme. Further, the revelations of Edward Snowden have focused attention on the differences between US and EU privacy schemes and called into question the adequacy of the current EU-US safe harbor accord for cross-border data transfers.

Recognizing the difficulty of staying abreast of these dizzying developments, the world-wide TMT team at Edwards Wildman produces frequent articles in outside publications, as well as blog posts and client alerts featured on our firm’s website. These write-ups analyze and break down the significance of legal changes in advertising, social media, , privacy and data protection, and communications. They provide a practical perspective on topical areas such as the cloud, 3D printers, social media, consumer protection, and how companies can safeguard against the next, headline-making data breach. They also examine inevitable confusion and difficulty arising from conflicting jurisdictional rules.

Even as we were busy analyzing outside events, a number of exciting events marked the evolution of our TMT practice:

The year 2013 got off to an exciting start with recognition by the Association of Media & Entertainment Counsel (AMEC), which presented Edwards Wildman with its “Outstanding Entertainment & Media Law Firm” award. In February 2013, we formally launched our TMT practice group, which garnered widespread media coverage. The group covers the landscape of TMT matters, and it provides a significant dimension to our highly regarded client service. DIGILAW - YEAR IN REVIEW - 2013

David Anderson, an intellectual property lawyer and thought leader in the videogaming and interactive entertainment industries, joined the firm’s office in March 2013. September saw the arrival of Sarah Pearce, a new partner in our office who focuses her practice on information technology, data privacy and protection, communications, and outsourcing projects, advising clients on complex IT transactions and procurement . Also in September, we were excited to launch a new office in Istanbul, Turkey, which is already producing new opportunities to serve our clients in the communications sector in the region. We were pleased to be recognized in several prominent legal directories, including Chambers and Legal 500 . Finally, 2014 saw the arrival of Ed Glynn, a prominent advertising and antitrust attorney and former senior FTC staff lawyer, in Edwards Wildman’s growing office in Washington, DC.

This 2013 edition of Digilaw: The Year in Review is a collection of some of the most notable of our publications over the last year. We hope you find the articles useful and encourage you to reach out to the authors with questions or comments. And looking ahead to 2014, we will continue to inform our clients of significant developments in this ever-changing area as they occur.

Alan L. Friel Editor, Digilaw [email protected]

Representative Articles

Publication Title Author(s) Date Edwards Wildman New Year, New Requirements for Consumer Web Jesse Brody and Alan January 2014 Client Advisory Sites and Mobile Apps Friel

There are myriad new, and not-so-new, privacy and consumer protection laws that impose requirements on web site and mobile app operators. For instance, if you do business with California consumers, certain specific notices are required. While bringing sites and apps into compliance with these additional requirements, publishers should undertake a broader compliance check-up.

Intellectual Property Don’t let the cloud become a grey area Mark Deem September 2013 magazine Mark Deem, a commercial litigator in Edwards Wildman’s London office, co-authored an article about the concept of ‘bringing your own cloud’ in Intellectual Property Magazine. In the article, “Don’t Let the Cloud Become a Grey Area,” the author analyzed the explosion of personal cloud-based services, which creates new IP risks for employers and their IT teams.

World Trademark The future of branding David Van Der Laan July / August 2013 Review David Van Der Laan, a -based intellectual property attorney in Edwards Wildman’s Chicago office, co-authored an article analyzing fluid marks in World Trademark Review. In the article, “The Future of Branding,” the authors traced the history of fluid marks, how fluid marks could be a powerful marketing tool, and considerations for rights holders when creating and selecting fluid marks.

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Publication Title Author(s) Date

Corporate Counsel Safeguarding Brand Reputation in Social Media Jesse Brody, Alan Friel, June 18, 2013 and Akash Sachdeva

Alan Friel, chair of Edwards Wildman’s Media and Technology Licensing & Transactions practice; Akash Sachdeva, an intellectual property litigation partner in the firm’s London office; and Jesse Brody, a partner in the firm’s Los Angeles office, co-authored an article about compliance issues to consider in social media marketing in Corporate Counsel. In the article, “Safeguarding Brand Reputation In Social Media,” the authors discussed how statements made in social media will be held to the same standard as traditional advertising claims; companies may be responsible for what their customers, employees, celebrity spokespersons, and contractors say about them in social media; how maintaining a good social media policy, which influencers are contractually obligated to follow, may help to stave off liability; and that companies should be aware of special considerations regarding children.

Edwards Wildman Aereo Supports Supreme Court Review of its Seth Davidson December 16, 2013 Client Advisory Victory in the Second Circuit

In a development that surprised most observers, Aereo has filed a brief with the Supreme Court agreeing that the Court should hear the broadcast industry’s challenge to Aereo’s legality under the Copyright Act. Aereo’s action may make it more likely that the Court will take the case even though there is not yet a “split in the circuits,” which often is an informal prerequisite for Supreme Court review. Seth Davidson analyzes the case.

Corp. Compliance Data Hygiene Part of Corporate Compliance – 10 Alan Friel Sept. 24, 2013 Insights Steps to Build a Privacy and Security Program

Alan Friel, a Los Angeles-based partner and chair of the Media and Technology Licensing & Transactions practice at Edwards Wildman, wrote an article about the general process of developing a good data privacy and security compliance program in Corporate Compliance Insights. In the article, “Data Hygiene Part of Corporate Compliance – 10 Steps to Build a Privacy and Security Program,” Friel addressed information assets and practices, conducting an assessment, identifying responsive measures, and data in the hands of third parties.

Entertainment Law & Comparing contract drafting in the Ben Goodger and Jonny May 2013 and United Kingdom McDonald

Ben Goodger and Jonny McDonald, intellectual property attorneys in Edwards Wildman’s London office, wrote an article about contract drafting in Entertainment Law & Finance. In the article, “Comparing Contract Drafting in the United States and United Kingdom,” the authors highlighted some of the principal differences between UK and US contract law, such as the language barrier, implied terms, limitation of liability, endeavours clauses, and duty of good faith.

Bloomberg BNA ‘It’s a Party in the U.S. and U.K.’: Legal Jesse Brody March 5, 2013 Electronic Commerce & Considerations When Offering A Cross-Border Law Report Digital Promotion

Jesse Brody, a partner in Edwards Wildman’s Los Angeles office, co-authored an article about laws and regulations in the US and the UK relating to the offering of consumer promotions over the internet, including through mobile devices and social media, in Bloomberg BNA Electronic Commerce & Law Report. In the article, “‘It’s a Party in the U.S. and U.K.’: Legal Considerations When Offering A Cross-Border Digital Promotion,” the authors discuss the distinctions between lotteries, sweepstakes, and contests in the US; lotteries, gaming, betting, prize draws, and competitions in the UK; and contracts with entrants through the official rules and prize acceptance agreements.

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Publication Title Author(s) Date

Intellectual Property Own goal: when site blocking goes wrong Akash Sachdeva and September 24, 2013 magazine Ellen Hughes-Jones

Akash Sachdeva and Ellen Hughes-Jones, intellectual property attorneys in Edwards Wildman’s London office, wrote an article about the struggle that rightsholders have in protecting and enforcing their intellectual property rights on the internet, in particular where the owners or operators of websites containing infringing material are hard to identify in Intellectual Property Magazine. In the article, ”Own Goal: When Site Blocking Goes Wrong,” the authors discussed whether the courts will continue to use their discretion to make orders requiring ISPs to take steps to protect the IP rights of the applicants from continued infringement by a third party.

Intellectual Property Spotlight on 3D printing: Intellectual Property Julie Matthews October 2013 Strategist

Julie Matthews, an intellectual property partner in Edwards Wildman’s Chicago office, wrote an article about intellectual property issues arising from 3D printing in Intellectual Property Strategist. In the article, “Spotlight on 3D Printing: Intellectual Property,” Matthews discussed implications for IP rights holders, patent, copyright, and trademark concerns unique to 3D printing, and the right of publicity.

World Trademark First Amendment trumps trademark in Call of Dave Anderson and July 11, 2013 Review Duty Case Straat Tenney

Dave Anderson, counsel in Edwards Wildman’s Los Angeles office, and Straat Tenney, an intellectual property associate in the firm’s New York office, wrote an article about how a California federal court held that Novalogic’s attempt to enjoin Activision from using the phrase “Delta Force” and a Delta Force logo in “Call of Duty: Modern Warfare 3” is barred by the First Amendment in World Trademark Review Daily. In the article, “First Amendment Trumps Trademark in Call of Duty Case,” the authors discussed how this decision builds on a line of cases that provide video game companies wide latitude under the First Amendment to use terms which, in other commercial contexts, would rise to the level of infringement under federal law. This article first appeared on WTR Daily, part of World Trademark Review, in July 2013.

World Trademark Losing a trademark under naked licensing law Perla Kuhn and Jenny June / July 2013 Review Slocum

Perla Kuhn and Jenny Slocum, intellectual property attorneys in Edwards Wildman’s New York and Washington, DC offices, respectively, wrote an article examining licensing agreements in World Trademark Review. In the article, “Losing a Trademark under Naked Licensing Law,” the authors discussed how a licensing agreement in itself offers no guarantee of saving a trademark from the risk of abandonment and that the license must include specific quality control provisions.

Landslide Social Media in the Digital Millennium Julie Matthews (co-author) May / June 2013

Julie Matthews, an intellectual property partner in Edwards Wildman’s Chicago office, co-wrote an article about how social media users, copyright holders, Internet service providers, and courts continue to wrestle today with the consequences of the system established in simpler times in the ABA’s Landslide. In the article, “Social Media in the Digital Millennium,” the authors analyzed user-generated content and the DMCA, recent developments in the DMCA and social media jurisprudence, and looking toward future DMCA effects on social media.

Intellectual Property Pay for play Jim Behmke May 2013 magazine

Jim Behmke, a partner in Edwards Wildman’s Intellectual Property practice in , wrote an article about the ongoing debate regarding software patents in Intellectual Property Magazine. In the article, “Pay to Play,” Behmke analyzed whether software patents encourage or discourage innovation, the elements of patentability found in software, and the advantages of filing for patents.

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Publication Title Author(s) Date

Intellectual Property The times they are a-changin’ Frederique Bodson, April 2013 magazine Ben Hitches, and Akash Sachdeva

London-based trio Akash Sachdeva, a partner in Edwards Wildman’s intellectual property group; Ben Hitchens, an associate in the firm’s intellectual property practice; and Frédérique Bodson, a legal assistant, wrote an article about copyright extension for musicians in the EU in Intellectual Property Magazine. In the article, “The Times They Are A-Changin’,” the authors discussed the current state of copyright law, the question of authorship, terms of protection, and attempts at reform.

E-commerce law & Social media and intellectual property in Europe Gareth Dickson February 2013 policy

Gareth Dickson, an intellectual property attorney in Edwards Wildman’s London office, wrote an article assessing the situation faced by individuals when uploading protected works to the Internet in E-Commerce Law & Policy. In the article, “Social Media and Intellectual Property in Europe,” Dickson discussed the patchwork of similar yet subtly different laws governing intellectual property in the context of social media.

World Trademark Keyword advertising trademark infringement Mitchell Stabbe February / March Review litigation: an uphill battle 2013

Mitch Stabbe, an intellectual property partner in Edwards Wildman’s Washington, DC office, wrote an article about the challenges facing trademark owners in regards to keyword advertising in World Trademark Review. In the article, “Keyword Advertising Trademark Infringement Litigation: An Uphill Battle,” Stabbe discussed how trademark owners who believe that keyword advertising is causing them damage will face a number of hurdles if they opt for litigation.

Target Marketing Is Your Contest Illegal? 33 Important Legal Jesse Brody and Alan May 8, 2013 Considerations for Contests and Sweepstakes Friel

Jesse Brody, the co-chair of Edwards Wildman’s Gaming Practice Group, and Alan Friel, the chair of the firm’s Media and Technology Licensing & Transactions practice, penned an article on how to structure sweepstakes and contests in compliance with applicable legal requirements in Target Marketing. In the article, “Is Your Contest Illegal? 33 Important Legal Considerations for Contests and Sweepstakes,” the authors discussed whether it should be considered a “sweepstakes” or “skill contest”, required legal documentation, such as official rules, advertisements, contracts and winner releases, and special legal concerns where additional legal compliance steps are needed, including direct mail promotions, special entry promotions, and public voting.

Edwards Wildman 10 Things You Can Do When Advertising & Selling Jesse Brody and Alan February 2012 Client Advisory in the Computer Age to Stay on the Right Side of Friel the Law and Maintain Consumer Good Will

In today’s competitive marketplace, media and entertainment companies rely on “evolving (or new) media” to structure innovative and edgy marketing campaigns. However, these tech-savvy companies are often unaware of the complex legal overlay of the digital world and the potential significant financial repercussions for their company’s failure to comply. In this client advisory, Jesse Brody, the co-chair of Edwards Wildman’s Gaming Practice Group, and Alan Friel, the chair of the firm’s Media and Technology Licensing & Transactions practice, offer insights on how companies can stay clear of legal traps for the unwary.

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Publication Title Author(s) Date

Edwards Wildman FTC Clarifies New Federal Privacy Rules That Alan Friel April 2013 Client Advisory Affect Companies Targeting Kids, Adults and a Mix of Kids and Adults, But Questions Remain

The FTC issued guidance to its January 2013 updates to the Children’s Online Privacy Protection Act (COPPA) regulations, which took effect in July 2013. The guidance, in the form of “Frequently Asked Questions,” provided some basic instruction to businesses on how to avoid non-compliance. Unfortunately, the staff dodged the more vexing issues such as what a general audience site or service that has behavioral advertising needs to actually do if it becomes aware that a user is a child or is coming from a site or portion of a site directed to children. Alan Friel, the chair of Edwards Wildman’s Media and Technology Licensing & Transactions practice, addressed these issues in an April 2013 client advisory.

The Licensing Book Brand Licensing in Emerging Markets: The Top 10 Ben Goodger July 2013 Mistakes to Avoid

Globalization is prompting companies to license their valuable brands in emerging markets throughout the world. To succeed, however, companies must understand the nuances of global consumer and market behavior, as well as the capabilities of licensees in various markets. Ben Goodger, an intellectual property partner in the London office of Edwards Wildman, helps companies address these challenges in his article, which begins on page 134 of the Summer 2013 edition of The Licensing Book.

Edwards Wildman European Law Catches Up With TV Streaming Gareth Dickson and March 2013 Client Advisory Service Akash Sachdeva

In March 2013, the Court of Justice of the European Union confirmed that the online streaming of television broadcasts is a “communication to the public” under the Information Society Directive 2001/29, which requires the consent of the owner of the copyright in those broadcasts. In this client advisory, Akash Sachdeva and Gareth Dickson, an intellectual property partner and associate, respectively, in the London office of Edwards Wildman, write that the Directive serves as a reminder that service providers cannot reuse third-party content while simultaneously ignoring the owners of that content. The authors also contend that the decision creates an interesting new dimension to disputes involving similar technologies in the United States.

Edwards Wildman Second Circuit Vacates and Remands YouTube Seth Davidson, April 2012 Client Advisory Summary Judgment Under the Digital Millennium Lawrence Robins and Copyright Act Glenn Pudelka

Seth Davidson, Lawrence Robins and Glenn Pudelka explore the highly anticipated Second Circuit Court of Appeals ruling regarding the scope of the safe harbor provisions of the Digital Millennium Copyright Act in Viacom International, Inc. et al v. YouTube Inc., et al and The Football Association Premier League Ltd et al v. YouTube Inc, et al., 2012 WL 1130851(2d Cir., April 5, 2012).

digilaw.edwardswildman.com Other news Leveraging our reputation in evolving regulatory compliance and intellectual property developments and issues involving the convergence of advertising, media and technology, Edwards Wildman launched its Advertising, Marketing and Promotions practice in 2013. To learn more about the group’s many capabilities, please click here. Our firm was recognized in the 2013 US Legal 500 in the category of “Media, Technology and Telecom: Data Protection and Privacy.” The guide notes, “The group advises multinational corporates, major retailers, financial institutions and data processing entities on multinational data protection protocols and data breach responses.” In addition, the 2013 Chambers USA guide ranked Edwards Wildman in the category of “Privacy & Data Security” with Thomas Smedinghoff singled out as a “Key Individual” in the area. The publication observed, “Edwards Wildman Palmer’s privacy and data protection practice is shaped by a multidisciplinary approach incorporating litigation, IP, and compliance expertise.”

Edwards Wildman’s Digilaw blog is the go-to resource for the latest in developments in technology, media and telecommunications. Click here to visit the blog and here to sign up for a monthly summary and stay informed all year long.

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