EVALUATION FORM
In order for us to improve our continuing legal education programs, we need your input. Please complete this evaluation form and place it in the box provided at the registration desk at the end of the session. You may also mail the form to CLE Director, NYCLA, and 14 Vesey Street, New York, NY 10007.
Key Leadership Issues in Sports Law: Maximizing Profits and Protecting the Brand
Tuesday, April 29, 2014, 2014 9:00 AM – 12:00 PM
I. Please rate each speaker in this session on a scale of 1 - 4 (1 = Poor; 2 = Fair; 3 = Good; 4 = Excellent)
Presentation Content Written Materials
T. David Bomzer
Anna Erenburg
Rebecca Griffith
William Heller
Andy Latack
Keith McWha
Richard Raysman
Paul Sarkis
Patrick Turner
II. Program Rating:
1. What is your overall rating for this course? Excellent Good Fair Poor
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III If NYCLA were creating a CLE program specifically tailored to your practice needs, what topics or issues would you want to see presented?
KEY LEADERSHIP ISSUES IN SPORTS AND MEDIA
NSTITUTE LAW: MAXIMIZING I
PROFITS AND PROTECTING THE BRAND Prepared in connection with a Continuing Legal Education course presented
CLE at New York County Lawyers’ Association, 14 Vesey Street, New York, NY
scheduled for April 29, 2014
Program Chairs & Moderators: Keith McWha, McCarter & English LLP; Richard Raysman, Holland & Knight LLP; T. David Bomzer, Pratt & Whitney
Faculty: Anna Erenburg, Fuse Networks LLC, Madison Square Garden Co.; Rebecca L. Griffith, National Advertising Division, Council of Better Business Bureaus, Inc.; William Heller, General Counsel of the New York Giants; Andy Latack, Creative Artists Agency (CAA); Paul Sarkis, The Associated Press; Patrick Turner, CBS Law Department NYCLA
This course has been approved in accordance with the requirements of the New York State Continuing Legal Education Board for a maximum of 3 Transitional and Non-Transitional credit hours; 1 Skills; 1 Professional Practice; 1 Ethics. This program has been approved by the Board of Continuing Legal education of the Supreme Court of New Jersey for 3 hours of total CLE credits. Of these, 1 qualifies as hours of credit for ethics/professionalism, and 0 qualify as hours of credit toward certification in civil trial law, criminal law, workers compensation law and/or matrimonial law. ACCREDITED PROVIDER STATUS: NYCLA’s CLE Institute is currently certified as an Accredited Provider of continuing legal education in the States of New York and New Jersey.
Information Regarding CLE Credits and Certification Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand Tuesday, April 29, 2014 9:00 AM to 12:00 PM
The New York State CLE Board Regulations require all accredited CLE providers to provide documentation that CLE course attendees are, in fact, present during the course. Please review the following NYCLA rules for MCLE credit allocation and certificate distribution.
i. You must sign-in and note the time of arrival to receive your course materials and receive MCLE credit. The time will be verified by the Program Assistant.
ii. You will receive your MCLE certificate as you exit the room at the end of the course. The certificates will bear your name and will be arranged in alphabetical order on the tables directly outside the auditorium.
iii. If you arrive after the course has begun, you must sign-in and note the time of your arrival. The time will be verified by the Program Assistant. If it has been determined that you will still receive educational value by attending a portion of the program, you will receive a pro-rated CLE certificate.
iv. Please note: We can only certify MCLE credit for the actual time you are in attendance. If you leave before the end of the course, you must sign-out and enter the time you are leaving. The time will be verified by the Program Assistant. Again, if it has been determined that you received educational value from attending a portion of the program, your CLE credits will be pro-rated and the certificate will be mailed to you within one week.
v. If you leave early and do not sign out, we will assume that you left at the midpoint of the course. If it has been determined that you received educational value from the portion of the program you attended, we will pro-rate the credits accordingly, unless you can provide verification of course completion. Your certificate will be mailed to you within one week.
Thank you for choosing NYCLA as your CLE provider!
New York County Lawyers’ Association Continuing Legal Education Institute 14 Vesey Street, New York, N.Y. 10007 • (212) 267-6646
Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand
Tuesday, April 29, 2014, 9:00 AM-12:00 PM
Program Chairs & Moderators: Keith McWha, McCarter & English, LLP Richard Raysman, Holland & Knight LLP T. David Bomzer, Pratt & Whitney
Faculty: Anna Erenburg, Fuse Networks LLC, Madison Square Garden Co. Rebecca L. Griffith, National Advertising Division, Council of Better Business Bureaus, Inc. William Heller, General Counsel of the New York Giants; Andrew Latack, Creative Artists Agency (CAA) Paul Sarkis, The Associated Press Patrick Turner, CBS Law Department
AGENDA
8:30 AM – 9:00 AM Registration and Breakfast
9:00 AM – 9:05 AM Opening Remarks and Introduction T. David Bomzer
9:05 AM – 9:55 AM Protecting the Brand Moderator: Keith McWha Speakers: William Heller, Andrew B. Latack
9:55 AM – 10:45 AM Strategic Alliances Moderator: Richard Raysman Speakers: Paul Sarkis, Patrick Turner
10:45 AM -- 10:55 AM Networking Break
10:55 AM – 11:45 AM Enforcement Actions Moderator: T. David Bomzer Speakers: Rebecca L. Griffith Anna Erenburg
11:45 AM – 12: 00 PM Questions and Answers
Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand
Outline
I. Protecting the Brand
• Contracts with players
• Damage Control
• Use of Social Media
• Employment Issues
• Trademarks
• Endorsements
• Drug policies
• Ethics
II. Strategic Alliances
• Joint Ventures
• Partnering with advertisers
• Partnering with networks
• Corporate sponsorships
• Promoting teams and events
• Ozzie and Daniel Silna $300M NBA deal
• Ethics
III. Minimizing Third Party Claims
• Risks from third party lawsuits
• Injury to spectators
• Injury to players and litigation
• Enforceability of disclaimers (e.g. back of ticket) • Player on player liability
• Team doctors
• Regulatory restrictions
• Ethics
Relevant Ethics Rules Applicable to Sports Law
NOTE: The full text of the Rules are available on-line at https://www.nycourts.gov/rules/jointappellate/NY-Rules-Prof-Conduct-1200.pdf
Rule 1.1 Competence
Rule 1.2 Scope of Representation and Allocation of Authority Between Client and Lawyer
Rule 1.3 Diligence
Rule 1.5 Fees and Division of Fees
Rule 1.6 Confidentiality of Information
Rule 1.7 Conflict of Interest: Current Clients
Rule 1.8(A) Current Clients: Specific Conflicts of Interest Rules – Business Transactions Between Client and Lawyer
Rule 1.8(B) Current Clients: Specific Conflicts of Interest Rules – Use of Information Relating to a Representation
Rule 1.8(D) Current Clients: Specific Conflicts of Interest Rules – Literary or Media Rights
Rule 1.9 Duties to Former Clients
Rule 1.13 Organization as Client
Rule 5.3 Lawyer’s Responsibility for Conduct of Non-lawyers
Rule 5.5 Unauthorized Practice of Law
Rule 5.7 Responsibilities Regarding Nonlegal Services
Rule 5.8 Contractual Relationships Between Lawyers and Nonlegal Professionals
Rule 7.1 Advertising
Rule 7.3 Solicitation and Recommendation of Employment
Rule 7.5 Professional Notices, Letterhead and Signs
4/28/2014
BOSTON // HARTFORD // NEW YORK // NEWARK // STAMFORD // PHILADELPHIA //WILMINGTON // WASHINGTON, D.C. Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand
William Heller, General Counsel of New York Giants Andrew B. Latack, Creative Artists Agency Moderator: Keith McWha McCarter & English, LLP April 29, 2014
Introductions . William Heller, General Counsel of New York Giants
. Andrew B. Latack, Creative Artists Agency
. Moderator: Keith McWha McCarter & English, LLP
1 4/28/2014
Protecting The Brand -Trademark . A trademark is an identifying mark that distinguishes one person's product (whether it's goods or services) from those of another.
. Word, name, symbol or device that is used in trade with goods to indicate the source of the goods. ® ™
Protecting The Brand -Some Factors that Affect the Brand
. Intrinsic/Controllable Factors
. Extrinsic Factors
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Protecting The Brand -Contract with Players . Publicity and Licensing
. Performance Contract
. Injuries
. Suspensions
Protecting The Brand -Employment Issues . Endorsements – Team Authorized – Team Unauthorized
. Drug Policies
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Protecting The Brand -Damage Control . MLB- Pine Tar Incident
. LA Clippers
Protecting The Brand -Use of Social Media . Approved Use
. Unapproved Third Party Use
. Blogs
4 4/28/2014
Protecting The Brand -Ethics
. Obligations of Players – Full Disclosure from Players
. Obligations to Players – Safety – Right of Privacy
Thank You! Questions?
5 Unlikely teammates | NJBIZ Page 1 of 3
Unlikely teammates
In-house attorneys for Jets, Giants are as different as the teams they represent
December 03. 2012 3:00AM
By Joshua Burd
Bill Heller and Hymie Elhai may seem as different from each other as the teams they represent. But after just two years of working side by side, the in-house attorneys for the New York Giants and Jets have the look and feel of two longtime teammates.
Bill Heller, left, likens the chemistry between Jets and Giants attorneys to 'a little private law firm.' Heller at MetLife Stadium with Hymie Elhai.
"It definitely doesn't feel like new at this point," Elhai said recently, joined by Heller at MetLife Stadium. "It feels like we've known each other for a really long time."
Heller, general counsel for the Giants, spent three decades in private practice before joining one of the NFL's oldest and most exalted franchises. But Elhai, his 36-year-old counterpart, has known nothing but Gang Green, spending his entire legal career with the upstart team known for its boisterous coach and an owner who doesn't shun the spotlight.
Yet the two attorneys see their differences as assets to one another, and they are as mutually deferential as two colleagues who have spent decades together in the legal trenches. For Elhai, Heller's experience in private practice "really helps me understand how the other side thinks … which, I think, makes it a lot easier to negotiate these deals, because we're always prepared for what's going to happen next."
For his part, Heller, 59, said he "learn(s) from Hymie all the time." And his Jets counterpart brings the institutional knowledge of having worked with the NFL for so long.
Their close relationship has helped Heller and Elhai during a critical time for their employers. Since the teams opened the stadium in 2010, there have been several high-profile legal assignments involving both clubs, like sponsorships and stadium contracts. That's not to mention that both men have acted as co-counsel for the stadium since the spring, when the position became vacant. And even for projects that don't overlap, "we're pretty careful to be sure that we're in sync on important business and legal terms," said Elhai, the Jets vice president for business affairs and general counsel.
http://www.njbiz.com/apps/pbcs.dll/article?AID=/20121203/NJBIZ01/121139973/Unlikel... 4/25/2014 Unlikely teammates | NJBIZ Page 2 of 3
A milestone in their partnership came early on, in 2011, when they negotiated the stadium's naming rights deal with MetLife Inc. Elhai recalled the "immense amount of pressure" that was placed on those working on the deal — particularly from the Jets' perspective, after the team spent some 25 years as tenants of Giants Stadium.
The deal, he said, was time consuming, but gave them a chance to forge their partnership while there were many different interests at stake.
"We had a table filled with business people and lawyers, which on the one hand was necessary, because it was a tremendous deal with a lot of details," Heller said. "On the other hand, when you have that many people involved, progress is slow and tedious. And one of the things that Hymie and I like is efficient."
Heller came to the Giants to fill a role held by John Mara, who shifted from the franchise's general counsel to president and CEO after his father, co-owner Wellington Mara, died in 2005. Much of his time with Newark-based McCarter & English included service as an outside general counsel for the team.
Still, he said, "I never thought I would leave private practice." So it came as a thrill when Mara offered him the job in April 2010. He recalled that "I was wearing my lawyer costume at a fancy restaurant, and inside I was jumping for joy. But outside I was saying calm things, like 'Thank you very much. I appreciate the opportunity.' "
Elhai's rise to his own post was perhaps equally unexpected. The lifelong Jets fan had planned to pursue a career in sports and entertainment, perhaps as an agent, when he started with the team as an intern in 2000, he said.
"If you told me 10-plus years later that I'd be sitting here as general counsel of the team, I would have thought you were crazy," Elhai said.
But his performance and the ties he had built with team executives landed him a job as a manager of legal affairs and business development, he said, paving the way for his rapid ascent. He noted the marked growth of the NFL "from even 10 years ago," conceding that such a career path would be less likely today.
"But from my standpoint, if I took a different path, I wouldn't have been thrown to the wolves as quickly as I was, and I would be at a different stage in my career," he said. "So I do feel fortunate that was happening at that point."
Aside from sharing some legal duties for the region's two NFL franchises, Heller and Elhai now share the perks of working for a professional sports team: attending home games and "living and dying" with the team as an entire organization.
They also share the quirks, they said, like the steady stream of midgame messages from friends and relatives.
"I'll get texts that say, 'What the matter with Eli (Manning) today?' " Heller said.
As for any rivalry between the organizations, Elhai and Heller leave it to the players — and the fans.
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"That has no place in what Hymie and I do," Heller said, though he acknowledged that there are sometimes disagreements between the Jets and Giants businesspeople.
"But when that happens, Hymie and I talk separately and we get it resolved," he said. "This is a little private law firm we have going on here, and it's working real well for the teams."
E-mail to: [email protected]
On Twitter: @JoshBurdNJ
www.NJBIZ.com
http://www.njbiz.com/apps/pbcs.dll/article?AID=/20121203/NJBIZ01/121139973/Unlikel... 4/25/2014
Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand
Strategic Alliances
New York County Lawyers Association April 29, 2014 ■ New York, NY Paul Sarkis Patrick Turner Corporate Counsel Assistant General Counsel The Associated Press CBS Law Department Moderator: Richard Raysman Holland & Knight LLP
Ozzie and Daniel Silna – $800 Million NBA Deal
• Greatest sports deal of all time • St. Louis Spirits • ABA merged into NBA • “Visual Media” Rights • Television Revenues in Perpetuity
2
1 Joint Venture Structures
• Marketing • Partnership • Responsibilities • Exit Strategy • 50/50 Owner • Compete and Enhance
3
Sponsorship Agreements
• Structure • Responsibilities • Financial Allocation • Investment
4
2 Intellectual Property
• Trademarks • Which entity owns? • Which entity files? • Newly created rights • Where will rights reside? • Rights of Dissolution
5
Ambushing
• Official Sponsor • Trade off good will of event • Venue Rights • Competing Sponsors • Promotion of Teams and Events
6
3
10/17/12
A service of the advertising industry and Council of Better Business Bureaus
Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand
April 29, 2014 New York County Lawyers’ Association New York, NY
What is NAD?
. NAD provides an effective, successful self-regulatory mechanism for resolving false advertising claims. . The self-regulatory forum ensures that advertisers are held responsible for their claims and practices. Rigorous review serves to encourage consumer trust.
. NAD’s forum is a quick, private and low-cost alternative to litigation. . NAD keeps confidential all data it receives in reviewing a case. NAD’s decision is made public and provides guidance to the industry.
. NAD helps to ensure a level playing field. . NAD has earned the respect of consumers and regulators alike. Advertisers’ willingness to support NAD and voluntarily adhere to its decisions helps to ensure an honest and open playing field in advertising.
A service of the advertising industry and Council of Better Business Bureaus
1 10/17/12
Existing Rules and Guidance Generally-Applicable Industry and Self- Laws and Regulations Regulation Fill in the “Gaps” . FTCA and FTC . NAD Guidelines . Trade Association . Food, Drug & Cosmetics Guidelines, E.g., Act . WOMMA . Intellectual Property . MMA . Right of Publicity . DMA . Federal and State . Publisher self- Consumer Protection regulation/guidelines Laws . IAB Native Advertising Task . Case Law Force (est. June 2013)
A service of the advertising industry and Council of Better Business Bureaus
Fundamentals
. It is the nature of the claim that drives the requirements for support.
. The advertiser must have a “reasonable basis” for its claims.
. What is the message?
. What is the substantiation?
. Is there a good fit between the two?
. Will look to regulatory authorities for “guidance” where there is a clearly articulated position.
A service of the advertising industry and Council of Better Business Bureaus
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Identifying claims: Different claims require different levels of substantiation
. Express claims . Implied claims . Puffery . Quantified claims . Establishment (“clinically proven”) claims . Dr. recommended claims . Monadic vs. comparative performance claims . Preference claims . #1 claims . Health claims . Product denigration
A service of the advertising industry and Council of Better Business Bureaus
Monitoring • Advertisements that include significant new or unique claims for mature products or new and/or unusual claims for products that are new to the market;
• Advertising that focuses on issues that are of particular concern to the public, especially where advertisements include performance claims that consumers will not be able to judge the truthfulness of for themselves (e.g. environmental safety claims, nutritional benefit claims);
• Advertising claims involving health and safety.
A service of the advertising industry and Council of Better Business Bureaus
3 10/17/12
Claim: “Discover up to 28% more of a workout for your butt. And up to 11% more toning for your hamstrings and calves”
Test: • 5 subjects • Randomly assigned to wear EasyTone shoes, regular walking shoes or no shoes • Indoor treadmill for 5 minutes • Electrodes measured muscle activation
Tests offered in support of product performance claims must reflect real world conditions. Reebok Intl. (EasyTone), Case #5263 (Dec. 2010)
“Longest driver” claim reasonably conveys the message that any golfer using the Razr Fit Xtreme will hit a golf ball a longer distance than with any competing drivers.
Test: • Razr Fit Xtreme against the top 5 selling competing drivers • Participants were Callaway employees • Drivers were not fitted to the players prior to testing them
Superiority claims must be supported by testing against a representative sampling of competing products.
Callaway Golf Co. (Razr Fit Xtreme Driver), Case #5589 (May 2013)
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Social Media: . Advertiser’s commercial messages in social media are advertising (Facebook, Twitter, Pinterest, YouTube, user generated content, etc.)
. Same rules in social media as in traditional media. . Advertising must be truthful, accurate and not misleading.
. If a disclosure is needed to prevent a claim from being misleading, it must be clear and conspicuous and in close proximity to the main claim.
. Endorsements must disclose the connection between the endorser and the advertiser.
A service of the advertising industry and Council of Better Business Bureaus
Advertisers are responsible for all messages reasonably conveyed by their claims, whether or not those messages were intended.
It is reasonable to assume that when Twitter users use the #1BallFitter to Tweet or find Tweets about the advertiser’s golf ball fittings that they understand the meaning of the # symbol to be a “Number 1” claim.
5 10/17/12
Cascade Sports (M11 Hockey Helmet), Case #5191 (June 2010)
Claims that the M11 hockey helmet provides “maximum protection.”
“Better protecting our players will help to reduce the risk of concussion and this is crucial to the long term health of the game.”
Establishment (“clinically proven”) claims: • High standard of proof – a promise that scientific evidence “establishes” the truth of the claim. • Reliable and well-controlled clinical testing used to determine whether there is a reasonable basis for the claim.
Test: • 16 subjects who took NeuroImpact after a concussion • Young (12-41) competitive athletes • Results measured objectively and subjectively • Subjects were required to take Trinity Sports (NeuroImpact), Case #5666 DHA and EPA supplements (Dec. 2013)
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Claims that NeuroImpact supports “brain recovery” and “proper neurological function” in brains injured during contact sports.
Structure/function claims must be supported by reliable, competent scientific evidence.
Could the advertiser make ingredient claims for NeuroImpact?
Testimonials by Sammy Morris. • FTC – advertiser must disclose the performance that consumers can typically expect.
Claim: “Nike’s eliminated virtually all distortion . . . more than any other sunglasses have before.”
Claim: The wearer can “see the ball faster” and “read the hop better” than they can while wearing other sports sunglasses.
NAD was concerned that one reasonable takeaway is that the glasses actually improve the wearer’s vision as compared to not wearing sunglasses at all.
Is the comparative clearly disclosed?
Nike, Inc. (Nike Vision Skylon EXP Sunglasses), Case #4244 (Oct. 2004)
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The Online archive includes NAD/CARU/ERSP case reports, as well as NARB panel reports at: www.asrcreviews.org
Thank you.
Rebecca Griffith Senior Staff Attorney [email protected]
8 4/28/2014
ICANN’s New Top Level Domains (gTLDs): Bigger Marketing Opportunities… or a Brand Enforcement Nightmare?
Anna Erenburg Fuse Networks/The Madison Square Garden Company
Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand April 29, 2014 New York County Lawyers’ Association New York, NY Copyright © 2014 Anna Erenburg All Rights Reserved
ICANN and Top Level Domains (gTLDs)
What is ICANN? ‐ Internet Corporation for Assigned Names and Numbers ‐ Global, non‐profit organization in charge of the domain name system ‐ Assigns domain names (e.g., Amazon.com) to hard‐to‐remember numerical codes (e.g., 478.289.437.34) ‐ Oversees all domains worldwide, including country specific domains What is a gTLD? ‐ generic Top Level Domain ‐ It’s what comes after the dot, e.g., SiteName.com, .net, .org Currently, there are 22 gTLDs (* designates unrestricted use): .aero .edu .mil .pro .asia .gov .mobi .tel .biz .info* .museum .travel .cat .int .name .xxx .com* .jobs .net* .coop .me .org*
1 4/28/2014
Current gTLD List
CURRENT INDUSTRY gTLD .aero the air transport industry .asia companies, organizations and individuals in the Asia-Pacific region .biz business use .cat Catalan language/culture .com commercial organizations (unrestricted) .coop cooperatives .edu post-secondary educational establishments .gov U.S. government entities at the federal, state, and local levels .info informational sites (unrestricted) .int international organizations established by treaty .jobs employment-related sites
Current gTLD List (cont’d)
CURRENT INDUSTRY gTLD .me online business or a personal blog .mil the U.S. military .mobi sites catering to mobile devices .museum museums .name families and individuals .net originally for network infrastructures (now unrestricted) .org originally for organizations not clearly falling within the other gTLDs (now unrestricted) .pro certain professions .tel services involving connections between the telephone network and the Internet (added 3/2/07) .travel travel agents, airlines, hoteliers, tourism bureaus, etc. .xxx pornography
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ICANN’s New gTLD Program
• Organizations may apply for the right to operate a new gTLD Registry of their choice for use on the Internet – $185,000 application fee – 1,930 applications to operate new gTLDs received by May 2012 deadline for a wide range of categories and uses – .sports, .basketball, .tennis, .art, .games, .menu., .film – First time that domains with foreign language scripts/extensions are available • Once a new gTLD is delegated, the Registry will make second‐level domain names available to Registrars who will then “register” (sell) them to end users. – Rangers.sports, Tribeca.film, MOMA.art, Hilton.hotel, etc. • ICANN plans to add hundreds and eventually possibly thousands of new gTLDs. – Over 175 new gTLDs have been delegated to date – Over 600 new gTLDs currently planned – Over 1300 new gTLDs possible
Registry vs. Registrar
• Registry – the authoritative, master database of all domain names registered in each Top Level Domain (TLD). The registry operator keeps the master database and also generates the "zone file," which allows computers to route Internet traffic to and from top‐level domains anywhere in the world – Examples: VeriSign is the Registry for .com and .net; Afilias Limited is the Registry for .info – Internet users don't interact directly with the registry operator • Registrar – an ICANN‐accredited company that registers/sells domains to end users (Registrants) – Information intermediary between Registries and Registrants – Registrar Examples: GoDaddy, NameSecure, Network Solutions – ICANN has several versions of the Registrar Accreditation Agreement (RAA) ‐ 2001, 2009 and 2013 • The RAA year indicated after each registrar’s name in ICANN’s on‐line table shows which contract they have signed with ICANN • Both the 2009 and the 2013 versions provide enhanced protections for Registrants and an increased level of accountability for Registrars • May want to take the RAA version into account when selecting a registrar for gTLD name(s)
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New gTLD Launch Sequences
• So the new gTLD has been delegated to a Registry. Now what? – Each new gTLD Registry has its own unique launch sequence for public registration • Each Registry controls its gTLD rules, pricing, and timing – Launch sequences will likely include the following: • Trademark Sunrise Period • Community Sunrise Period • Landrush/Landrush Auctions • Open Registration
New gTLD Launch Sequences (cont’d)
• Trademark Sunrise Period –30 to 60 Days – Trademark owners must be given an opportunity to pre‐register their marks before the general public • Mandatory –Must Be Offered by All Registries: – Start‐Date Sunrise Period –open for minimum 30‐days and cannot commence prior to expiration of a required 30 day notice period – End‐Date Sunrise Period ‐ open for at least 60 days – TM owners must first register marks with the Trademark Clearing House (TMCH) – TMCH has its own registration requirements • Optional –May Be Offered by Some Registries: – For brands that don’t meet the TMCH requirements – May allow domain pre‐registration to common law marks • Community Sunrise Period – Available to verifiable members of city, geographical, social, or other communities – Qualifications and requirements will vary by specific gTLD extension and its Registry
4 4/28/2014
New gTLD Launch Sequences (cont’d)
• Landrush/Landrush Auctions – Considered a “Limited Registration Period” – Available to the general public for a limited period with some additional conditions/restrictions – Likely to have higher than regular retail prices – Auctioned off if several parties want the same domains • Open Registration – Open to the general public – First come, first served basis – Regular retail prices
TMCH Benefits • Purpose – Authenticate and validate trademarks submitted for TMCH registration – Central database to provide information for Registries and Registrars to support Sunrise or claims processes • Registration Benefits – Priority registration during the Sunrise Period – Monitoring (similar to a TM Watch Service) • TMCH will send a notice to a 3rd party trying to register a TMCH registered mark as a new gTLD domain • If, despite notice, applicant proceeds to register the new domain, TMCH will send notice to the trademark owner
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TMCH Drawbacks • Mark must be: – “live” and nationally or regionally registered (pending applications/“dead” registrations don’t qualify); or – validated by a court or other judicial proceeding; or – protected by a statute or treaty • TMCH merely verifies factual information, does not perform legal analysis
TMCH Drawbacks (cont’d)
• Notices concerning new gTLD domain applications and registrations are sent only for identical TMCH registered marks – No notices sent for any TM spelling variations • TMCH Registration Fees per Mark – $150 USD for 1 year – $435 USD for 3 years (saving $15 USD) – $725 USD for 5 years (saving $25 USD) – Plus additional fees of vendors, e.g., Corsearch, Mark Monitor, etc.
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Is TMCH Registration Worth It? • How big is your budget? • How many marks do you have? • What’s more important? – Domain registration during the Sunrise Period • For core, easily protectable brands, or brands that are difficult to enforce, or all brands – Receiving notices of potentially infringement domains • Consider expanding domains watch service to include new gTLDs
TMCH Registration Requirements (Rules Dated June 4, 2012) • Registered Mark ‐ copy of a trademark registration (Rule 3.3) and a signed declaration of use and one specimen of current use (Rule 5.2) • Court Validated Mark ‐ court documents, properly entered by the court (Rule 3.4) • Statute or Treaty ‐ copy of its relevant portion and effective date (Rule 3.5) • Declaration – a declaration, affidavit, or other sworn statement that information is true and correct and not supplied for an improper purpose (Rule 3.8)
7 4/28/2014
URS: Uniform Rapid Suspension System • Created by ICANN as a complement to UDRP – Included in every RAA – Arbitration proceeding – Registration with the TMCH is not required – Two Approved URS Providers • National Arbitration Forum (NAF) • Asian Domain Name Dispute Resolution Center – Designed to be cheaper and faster than UDRP • $375 Fee per URS Complaint having between 1‐14 domains provided they are registered by same domain holder • May get NAF’s decision in a few months but… (see next slide)
URS Procedure & Rules
• URS‐compliant complaint is filed with NAF – 500‐word limit (URS Procedure Dated March 1, 2013 (“URSP”), Art. 1.2.7) • Registry operator will “lock” domain within 24 hrs. of receiving notice of complaint from NAF (URSP Art. 4.1) – Domain remains active but registration data can’t be changed • Registrant must respond within 14 days of Notice of Complaint (URSP Art. 5.1) • All default cases proceed to examination for review on merits of claim (URSP Art. 6.3) – If Complainant/TM owner wins, domain Registrant can seek de novo review by filing a response up to 6 months after Notice of Default date (URSP Art. 6.4) – Domain Registrant may also request a 6‐month extension before expiration of initial 6‐month period (URSP Art. 6.4)
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URS and UDRP Similarities
• Complaint Elements – Registered domain name is identical or confusingly similar to a word mark that’s registered with the TMCH (URSP Art. 8.1.2) – Domain Registrant has no legitimate right or interest in the domain (URSP Art. 8.1.2.) – Domain was registered and is being used in bad faith (URSP Art. 8.1.3; See URSP Art. 1.2.6.3 for examples of “bad faith”)
URS and UDRP Differences
URS UDRP • Domain does not get cancelled or • Domain may be cancelled or transferred transferred to prevailing party • It’s suspended for remainder of domain registration period and redirected to an informational page (Art. 10.2)
Statement on Informational Page: The Domain Name you’ve entered is not available. It has been taken down as a result of dispute resolution proceedings pursuant to the Uniform Rapid Suspension System (URS) Procedure and Rules. For more information relating to the URS, please visit: http://newgtlds.icann.org/en/applicants/urs
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URS and UDRP Differences (cont’d)
• No discovery or hearing in URS proceeding – Only materials submitted with Complaint and Response are part of record (URSP Art. 9.1)
• URS has higher burden of proof than UDRP – Clear and convincing evidence that there are no disputed questions of material fact – Similar to a motion for summary judgment
URS Cases
• IBM.guru and IBM.ventures (International Business Machines Corp. v. Denis Antipov; Claim No. FA1402001542313, 2/12/14) – Complainant won its case for both domains because: • It showed that it owns trademark registrations for IBM in 170 countries and uses the IBM mark on a broad range of devices • Respondent’s arguments that its domains would be used for news/community support websites, and that others are using the IBM mark, were without merit • Use of trademark by others is no justification for Respondent’s use of Complainant’s mark • Domain names were registered/used in bad faith because they resolve to Complainant’s websites
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URS Cases
• Branson.guru (Virgin Enterprises Limited v. Lawrence Fain; Claim No. FA1402001545807, 3/20/14) – Complainant lost because it failed to prove that: • Its BRANSON marks are “strong” – No evidence that “Complainant owns very extensive rights in Branson” or has “significant reputation in the term” • Domain’s registration/use was in bad faith – Domain name is used as a “generic, monetized parking page for the registrar Go Daddy” – Respondent’s website does not include any references to Complainant, its mark, or Richard Branson
URS Cases (cont’d) • (1) Heartland.holdings (Heartland Payment Systems, Inc. v. Whois Privacy Protection Service, Inc.; Kyle Ramsey; Claim No. FA1403001547394, 3/27/14) – Heartland argued that: • It owns US trademark registration for payment processing services • Domain Registrant uses site merely as a parked page with pay‐per‐ click links/ads • Domain registration/use is in bad faith because domain Registrant was intentionally trying to attract users for commercial gain and • (2) Heartland.ventures (Heartland Payment Systems, Inc. v. Redwood Capital; Claim No. FA1403001547419, 3/27/14) – Heartland argued that: • It owns US trademark registration for payment processing services • Domain Registrant uses site merely as a parked page that forwards to Registrar’s website • Domain registration/use is in bad faith because domain Registrant stated that he registers domains because they seem like good speculations
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URS Cases (cont’d)
• Complainant lost both of the Heartland cases (decided by same Examiner) because it failed to prove by clear and convincing evidence that: – The HEARTLAND trademark is exclusively or commonly associated with Complainant • “HEARTLAND” has other meanings unrelated to Complainant’s mark, e.g., it’s a dictionary‐defined word and also the title of a well‐known tv series – Domain is being used in a manner that is associated with Complainant’s mark • In case (1), the monetized page included references to numerous “Related Links” that don’t have any association with the HEARTLAND mark; any links associated with the HEARTLAND mark were less prominent and incidental • In case (2), the Examiner went further to say that he is “unconvinced that a registrant’s speculation in domain names is, without more, sufficient under URS to establish bad faith.”
URS Cases (cont’d)
• Aeropostale.uno (Aeropostale Procurement Company, Inc. v. Michael Kinsey, Claim No.: FA1403001550933, 4/10/14) – Complainant’s 7 registrations were owned by 3 different entities, none of which were the Complainant – No information provided about the relationship between the Complainant and trademark registrants – Complainant lost and case was dismissed without prejudice due to Complainant’s failure to establish ownership of US trademark registrations
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Some Useful Websites • ICANN New gTLDs General Information http://newgtlds.icann.org/en/ • ICANN Glossary http://www.icann.org/en/about/learning/glossary • ICANN Accredited Registries & Registrars Lists http://www.icann.org/registrar‐ reports/accredited‐list.html • ICANN Registrar Accreditation Agreements (RAA) http://www.icann.org/registrar‐ reports/accreditation‐qualified‐list.html • New gTLDs Lists http://www.newgtldsite.com/new‐gtld‐list/ • Delegated gTLDs and Their Registries http://newgtlds.icann.org/en/program‐ status/delegated‐strings • URS Technical Requirements, Procedures and Rules http://newgtlds.icann.org/en/applicants/urs • National Arbitration Forum URS Supplemental Rules http://domains.adrforum.com/main.aspx?itemID=1863&hideBar=False&navID=497 • National Arbitration Forum Domain Names Proceedings and Decisions http://domains.adrforum.com/decision.aspx (doesn’t include URS determinations)
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Faculty Biographies
David Bomzer is a member of lead team for development of patent protection strategies for the Pure Power family of Geared Turbofan Engines for Pratt & Whitney’s Commercial Engine division. Leveraging skills obtained from drafting more than one hundred patent applications, and prosecuting many hundreds more, to direct and assist patent drafting and procurement activities for all Pratt & Whitney Commercial Engine families, including the Pure Power family and the PW4000 family of Direct Drive Turbofan Engines. Member of lead team that developed foreign filing strategies for all Pratt & Whitney Commercial Engine patent assets. Assist in negotiating agreements for the manufacturing of original and spare engine equipment as well as capital improvements. Lead instructor for teaching “The Fundamentals of Intellectual Property”, a module in a series of classes taught to incoming employees. Prior to joining the team at Pratt & Whitney, David was Counsel for Day Pitney, in the New York Office, where David counseled a variety of clients on issues relating to procuring and protecting intellectual property and coordinating the transfer of technology assets. David also has experience as a shock analysis engineer for the Electric Boat Corporation, which designs and builds Nuclear Submarines for the US Navy, a process design engineer for Pall Corporation, and a structural design engineer for the commercial car carrier division of the Ryder Truck company. David has taught graduate and undergraduate mechanical and aerospace engineering courses at the Brooklyn Campus of the Polytechnic Institute of NYU, and at the Long Island Campus of the New York Institute of Technology. David holds a Juris Doctor from the Benjamin N. Cardozo School of Law, an MSME from the Polytechnic Institute of NYU, and a BSAE from the State University of New York at Buffalo.
Anna Erenburg is Senior Counsel, Legal and Business Affairs at Fuse Networks LLC, the Madison Square Garden Company. She specializes in contract and license negotiations and drafting; software agreements; transactional and intellectual property law and data and information privacy law. Previously, she was a Senior Attorney at Cadwalader, Wickersham & Taft, LLP where she served as lead transactional IP and information technology counsel, negotiating acquisitions and divestitures of U.S. and foreign companies and assets, including bankruptcy proceedings. Ms. Erenburg received a BS in Communications/Public relations from New York University and a JD from Brooklyn Law School.
Rebecca Griffith, Staff Attorney, joined NAD in June 2010. Prior to joining NAD, Becky practiced law at Day Pitney LLP in New York City, where she concentrated on branding and intellectual property protection and counseling clients regarding trademark, copyright and advertising law. While at Day Pitney, Becky’s practice included trademark clearance, prosecution, and licensing, as well as trademark and copyright infringement litigation in the federal courts, proceedings in the United States Patent and Trademark Office and appeals in the United States Copyright Office. Becky represented domestic and international clients in a variety of industries, such as consumer products, technology, pharmaceutical, not-for-profit, financial services, fashion, media/entertainment, publishing, software, hospitality and travel, textiles, food and beverage. Becky has also worked as a litigator at Fried, Frank, Harris, Shriver and Jacobson LLP and at the intellectual property law firm Ladas & Parry LLP. As a law student, Becky interned for the Honorable Maryanne Trump-Barry, then of the District of New Jersey. Becky is co-chair of the Trademark Committee of the New York State Bar Association and a member of other local and national bar associations. She earned her B.A. in English literature, cum laude, from the University of Pennsylvania, and her J.D. from New York University School of Law. Becky is admitted to the bars of New York State, and the Southern and Eastern Districts of New York. WILLIAM J. HELLER, ESQ. is Senior Vice President and General Counsel, New York Football Giants. In his role as General Counsel for the Giants, Mr. Heller is responsible for all legal affairs of the team and its affiliates, including those that relate to the operation of MetLife Stadium. From licensing and sponsor and marketing arrangements to labor and employment issues, his practice as in-house counsel spans all areas of Sports Law. In his role as General Counsel, Mr. Heller led the Giants’ negotiation and successful completion of the license, sponsorship and naming rights deal that designated the team’s new, state-of- the-art training center as the “Timex Performance Center,” and later served on the negotiating team for the long-term licensing and naming rights deal that designated the former New Meadowlands Stadium as “MetLife Stadium”. Recently, Mr. Heller led a legal team in the successful conclusion of a green energy initiative for MetLife Stadium, under which a leading energy company will install a solar ring atop MetLife Stadium to generate electricity for the facility. Coaches and Player contracts are also a part of his practice at the Giants, where Mr. Heller also helps to lead human resource, worker’s compensation and privacy issues. Mr. Heller also handles and supervises the team’s litigation matters, including one of the largest claims in the Lehman bankruptcy and the team’s challenge of local property tax issues. Mr. Heller also works closely with lawyers from the National Football League.
Prior to his tenure with the Giants, Mr. Heller’s career in private practice spanned over thirty years, focusing primarily on complex employment discrimination, commercial, technology and intellectual property cases. He also has experience in substantial transactions and counseling engagements. Prior to serving as General Counsel for the Giants, Mr. Heller served as the outside “General Counsel” for several substantial closely held corporations, and in that role earned the position of the trusted advisor to the business, a role that prepared him for his current job responsibilities for the Giants.
Mr. Heller received his undergraduate degree from Rutgers University and a J.D> degree from University of Pennsylvania Law School. Andrew Latack is a Business Affairs Executive at CAA Sports, a division of Creative Artists Agency (CAA). He works on behalf of many of the world’s leading athletes and properties. Prior to that, he was a Corporate Associate in the Sports Practice Group at Proskauer Rose LLP. He has also served as a Legal Department Intern at CSMG Sports and served as a baseball writer at ESPN The Magazine. He received his BA from the University of Michigan and his JD from University of Michigan Law School
Paul Sarkis is corporate counsel at the Associated Press. Previously he was Managing Director, Contract Standards, at KMStandards LLC, Associate Principal Counsel at ESPN, Assistant General Counsel at Subway, Franchisee Advertising Fund (SFAFT) and a media and communications Attorney at Thelen Reid Brown Raysman & Steiner LLP. Mr. Sarkis is on the Board of Directors for the Center for Children’s Advocacy. He received his BA in Communications from the University of Massachusetts, Amherst and a JD degree from Fordham University School of Law. Patrick Turner is Assistant General Counsel at CBS Corporation. He drafts and negotiates complex technology agreements across CBS Corporation involving hardware, software, outsourcing, cloud computing, professional services and telecommunications services with major industry partners. Mr. Turner also drafts CBS Corporation company-wide standard forms for products, services, information security, confidentiality, human resources, purchase orders and claim resolution and online terms of use and privacy policy for CBS Broadcasting. He is the primary attorney on all NCAA Division I Men’s Basketball Championship sponsorship agreements. He manages information security incident legal response and advises on legal obligations, as well as manages software license audit and compliance legal requests involving review of legacy license agreements to confirm entitlement, report on deployment and resolve any claimed discrepancies. Further he reviews advertising copy for CBS Television Standards and Practices regarding contests and sweepstakes to avoid deceptive advertising and illegal lotteries. Prior to his present position, he was a Managing Engineer at CBS Corporation, a Senior Systems Consultant at Sony Electronics and a Senior Systems Consultant at RealNetworks. He received a BS from Alfred University in Ceramic Engineering and a JD from New York Law School.