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Klemchuk Kubasta Law Review: Ten Things to Consider About Social Media

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Klemchuk Kubasta Law Review

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The Klemchuk Kubasta Law Review is a monthly educational Internet radio podcast focused on sharing news, tips and trends in complex legal issues focused in business, technology and innovation. This series features attorneys and guests of Klemchuk Kubasta, LLP, the law firm providing patent, trademark, trade dress, copyright and trade secret services, including litigation, licensing, prosecution and other intellectual property counseling.

Topics covered on this show by Darin Klemchuk:

  1. Social media concerns in business and protecting trade secrets and confidential information;
  2. Consideration of employees using company social media and their own for several intents and purposes;
  3. Trademark registration and proactive measures to protect usernames and brand identity; and
  4. Additional litigation concerns and using social media policies to guard against liability.

Darin Klemchuk is the co-founder and managing partner of Klemchuk Kubasta LLP, a Dallas-based IP boutique law firm that offers comprehensive intellectual property legal services, including litigation and enforcement of all forms of intellectual property as well as registration and licensing of patents, trademarks, trade dress and copyrights. He can be reached at darin.klemchuk@kk-llp.com.

Klemchuk Kubasta LLP

8150 North Central Expressway, 10th Floor, Dallas, TX 75206

(214) 367-6000. 

This podcast interview was produced by Lone Star Content Marketing


0:07 Nick Augustine

Hello! This is Nick Augustine and I am here with Attorney Darin Klemchuk from the law firm of Klemchuk Kubasta LLP, the business technology and innovation focused law firm in Dallas, Texas providing patent, trademark, trade dress, and copyright, trade secret services including litigation, licensing, prosecution and other intellectual property counseling. The Klemchuk Kubasta Law Review is an educational internet radio podcast focused on sharing news, tips and inference and conflict legal issues focused in business, technology and innovation. This series features attorneys and guests of Klemchuk Kubasta LLP, the law firm providing patent, trademark, trade dress, copyright and trade secret services. Again, including litigation, licensing, prosecution and other intellectual property counselling. This program is produced and promoted by the Klemchuk Kubasta Law Firm and Lone Star Content Marketing where we keep your marketing machines moving so you can focus on work. You can find links to all of our educational radio shows on the Facebook page where Klemchuk Kubasta's program and others are located. You can find that at lonestarcontentmarketing.com and also you can find more information on the Klemchuk Kubasta website which is www.kk-llp.com. Today's show is Klemchuk Kubasta Law Review. I have 10 things to consider about social media to protect intellectual property and avoid other problems. 30,000 of view of what we'll talk about today. First, we'll talk about social media concern in business and how to protect trade secrets and other confidential information. Talked a little bit about consideration of employees using company's social media as well as their own for several intents and purposes. And after, I'd like to talk more about trademark registrations and proactive measures to protect usernames and brand identities. And then finally, avoiding additional litigation and concerns about using social media policies to guard against liability.

2:15 Nick Augustine

Our guest and presenter today is Darin Klemchuk. He is the co-founder and managing partner of Klemchuk Kubasta LLP, the Dallas based IP boutique firm that offers comprehensive intellectual property, legal services including litigation and enforcement of all forms of intellectual property as well as registration and licensing of patents, trademarks, trade dress and copyrights. Darin can be reached directly in his email which is darin.klmchuk@kk-llp.com. Alright. As a general disclaimer, this is an educational and information program and we advise share them at __02:55__ show does not constitute legal advice. Communication with attorneys on our show cannot give rise to attorney-client relationship. If you have any questions, you should call the firm directly by daling 214-367-6000. Again, that's 214-367-6000 Klemchuk Kubasta. Finally, all callers remain confident while life broadcast are there. Alright, enough from me. Let's play a load of errand.

3:20 Darin Klemchuk

Well, thank you for having me in the show. It's a pleasure as always.

3:25 Nick Augustine

Alright Darin. Well, it is a sunny Monday and a happy St. Patrick's day to all the Irish out there.

3:35 Darin Klemchuk

It rained on St. Patrick's day. It's rainy in Dallas again this year which seems to happen I think almost every year.

3:42 Nick Augustine

You know, it is the curse of the Irish and it always, there is always that some sort of stormy weather on St. Patrick's day so we hope that everyone had a good time and I like that we are doing this show today and there is so much green in the Klemchuk Kubasta website and at the firm there. So, I think the green is really a go in. So, we are going to talk about everybody who is going to be really lucky with their social media and they're going to protect all their IP and avoid other problems. So, Darin, let's take it away.

4:15 Darin Klemchuk

Thanks Nick. Well, the first topic is the risks pose to trade secrets and confidential information by social media. Mainly, where it comes up is an employee, or officer, sometimes you know vendor, may innocently post a product development or some other update in LinkedIn, Twitter or other social media outlet and that could inadvertedly disclose confidential information. Obviously once that that happen, you can't unring the bell and so poses a great risk for those few instances where confidential or trade secret information is disclosed in by... (Crosstalk)

4:57 Nick Augustine

Uh-hmm. What are the-

5:00 Darin Klemchuk

Probably the best -- go ahead Nick.

5:04 Nick Augustine

Just go ahead. I was just going to ask, you know, could you use some example of how these things could happen, but I'm sure you're going to tell us.

5:12 Darin Klemchuk

Well, you know, where it comes up, you know, it's not always obvious as when a, you know like if you think about a competitor can monitor a company's social media post. And so, if they are looking at a competing product development cycle and an employee inadvertently discloses a new feature that has been added, like a beta version of software or something along these lines, then it can basically give competitive intelligence to competitors inadvertently and then there have been a number of instances in the last 5 years where somebody, for whatever reason, just stupidly disclosed the trade secret on Twitter for example and it is very, very difficult to unring that once it is there. And so once that information is out, it's out and you can't put it back. And so, the best ways to handle that are through education and awareness. So in other words, training of employees on what's, you know, good usage of social media and being aware that even information that may not seem confidential if posted to a competitor or the public at large could pose problems. And then the second thing that companies can do is put together good social media policies which also raise awareness and provide guidelines on what should or shouldn't be posted to social media.

6:34 Nick Augustine

Uh-hmm. You know, once again, I'd like to make a note of is that there are all sorts of companies out there whose business is to troll for information using different keywords like many of us use our Google searches or notifications of when certain words show up online. So, people who think that, oh there's no one out there looking for this stuff, there are people whose business it is are just like those people out there who buy domain and register and highjack domains. That happened to me recently. You know, so people are out there.

7:05 Darin Klemchuk

Yeah, in this sport -- for attorney in particular, you have to be very careful because you know, I have personally witnessed instances where attorneys were actually opposing council was making social media post like for example on Facebook about what they were doing and those posts could give opposing council an advantage if they were reviewing those posts and considering them in light of what was going on in a lawsuit at the time. So I just, I can't stress enough how important discretion is in making posts to social media, particularly for professionals.

7:39 Nick Augustine

Uh-hmm. Now on the other side of that coin, a lot of attorneys could be are so frozen solid in fear at that they are not taking advantage of the good parts of social media and we've even seen this at ABA Tech show. There was a round table discussion and a lot of people just said, I'm not doing it. Yet there are all sorts of really positive attributes of social media use and marketing and sharing information so, tell us how we can be more protected.

8:09 Darin Klemchuk

Well, I mean, one of the ways is I think attorneys can be successful and avoid significant risk is you know, focusing the post and the social media interactions on events like marketing events or events in the law, using it for educational purposes. So in other words, you know, posting on developments in the law that can be used by others. You know, that is, you know, it is quite helpful if your strategy is to stay top of mine with lots of people. For example you know, for litigation, a lot of the business above my affects of getting me cases is being top of mind. For several people and companies, you know, because you just never know when that next law suit is going to come or where it is coming from and so you need to be out there all the time. And so social media is a great way of achieving that top of mind status but again, you just have to be careful because I have also seen instances in this particular blog post where a lawyer may take a position of what the law is and then have that blog post sited against them later by another lawyer if they are trying to take a different position so I just would, you know, urge caution and how you write your posts and the positions that you take 'cause it may come back to hunt you later.

9:28 Nick Augustine

Uh-hmm, good advice. Moving on, what about-

9:33 Darin Klemchuk

The next topic-

9:36 Nick Augustine

Go ahead.

9:38 Darin Klemchuk

The next topic I had was, and this is just a short one, is that the National Labour Relations Board has taken the position that certain kinds of employee post even gripes that are made in social media in very, very public arenas can constitute protected speech and so there have been a number of cases where employers have fired employees only to get a claim against them for retaliatory firing based on these online posts and comments. And so I caution all business owners out there to be careful about that when they are considering terminating employee based on social media post.

10:21 Nick Augustine

Alright. Well, that's, again, the National Labor Relation Board. I am sure their website has all sorts of information about that. You know, when we are taking about employees and using social media, what are some of the considerations that we should talk about there?

10:38 Darin Klemchuk

Well there's a thing like-

10:38 Nick Augustine

Sort of company liability.

10:41 Darin Klemchuk

Sure. Well, there are several over here. Here are 2 more that I think companies should consider. The first one is that the federal trade commission promulgated some new regulations in December 2009 that have to do with disclosing the relationship between what's considered an endorser at a company's products and service and if that relationship does not disclose and even though the online or social media posts are accurate, there's still could be an administrative action against the company. And so, employees and paid third parties, which could include independent contractors as well as paid bloggers, are considered or maybe considered endorsers and so therefore, that triggers the disclosure requirement and where this can result in common innocent problems is when employees get online and start plugging their employer's products and services without fully disclosing it and they are employed by the company. And so I think, like what some of the other social media issues, having good education and guidelines and social media policy are great steps to avoid that kind of risks. And other kinds of risks we can come up and this is more devious is if a company has employees or others may fake online reviews of the company to pump it up, in other words, to make it look better, to make it show up higher in organic search result and the like, there have been some cases where companies were sued for accepted trade fact, this isn't false advertising based on this fake reviews. So again, caution should be exercised and encouraging employees to make posts about companies' products and services.

12:30 Nick Augustine

Yeah. There is nothing more irritating than fake profiles. I mean, we have seen this; we have talked about this too before about using social media in litigation and people making fake profile to talk to people, get information from witnesses and all. I mean, it shows up a lot in family law I have seen. I mean, you know, how many of us out there have already found, I mean, I personally have found people who were talking to me on social media I figured out didn't exist. You know, everyone who's seen that MTV's show Catfish where people have posed as other people and fake profiles, it's an irritating thing. And you know also with those reviews, social media reviews and different sites like Yelp, so on and so forth. You know, people are relying on the quality of information there, so that's a very tricky area as well.

13:25 Darin Klemchuk

Yeah. Over the years I have seen couple cases of what are called social media identity theft and that's where, you know, a person gets upset at a second person and they hijack or create a profile of the second person and then they start making you know, offensive or embarrassing posts, they put up pictures and other things that are quite harmful to the second person. We've had some success with contacting out __13:56__ council for like Facebook for example in getting them to work with Facebook internally to take down those bogus profiles and actually it was surprising when you use it to get taken care of.

14:09 Nick Augustine

Well that's good. And I think that a lot of you know, a lot of the policies and the laws, I'm sure you know, case laws on social media is still developing and you know, we look to several states that are leaders in that area. So, and it's good to know that a lot of the companies are as responsive as they are. What I'd personally like to see is more verification of people's individual Facebook profile. We see that little blue circle with a check box if we go to let's say, famous sports athletes and so on and so forth, have the verification mark there. So it would be nice if more of normal regular users could get that and I'm sure that is something that is on its way.

14:54 Darin Klemchuk

Yeah. I'm sure you've read the stories of others entire cottage industry in fake profile creation and which is quite scary.

15:04 Nick Augustine

Uh-hmm. Well, it is scary, you know, in myself. We will talk a little bit about this after the break. We're going to pause for a short break but you know, what happened with my domain through GoDad, he went to an email address that I don't check. So it's my fault, my bad, someone else bought it and someone in the U.K. hijacked my domain name and want to extort a bunch of money for me to get it back. So, again, there is in many people out there and it's just so important to use social media safely especially with use in business out definitely, I personally recommend that people you know, talk to a lawyer and start working on policies so everyone knows what to do ahead of time so that if there is a problem, people know what to do. So, we're going to come back to a short break. I just want to let the folks out there listening know that if they are new to the Klemchuk Kubasta Law Firm, they do provide educational resources on their website which again is www.kk-llp.com. The information includes several blogs, news letters and presentations, the firm shares to help educate not only attorneys and professionals on the current issues and matters and intellectual property. Klemchuk Kubasta Law review is an internet radio show podcast series featuring various episodes focused on industry news, cases and what's happening in the rapidly developing intellectual property practice phase. Topics and episodes will also cover IP protection, litigation and other business matters affecting innovators and technology forward businesses. Darin and the team at Klemchuk Kubasta often appear at community events and activities. Darin, do you have any recent or future events you'd like to share with our folks at home?

16:47 Darin Klemchuk

Yeah. We have a 10th annual ethics CLE for IP lawyers on April 25, the afternoon of April 25. And so, if there are any lawyers in the Dallas __16:58__ area that are listening to this, they are welcome to attend. Just contact me via email and we will add you to the invitation list. Again, that's April 25, that's a Friday, Friday afternoon.

17:13 Nick Augustine

Always good to have something on the calendar outside of being at your desk in a bright afternoon. So, thank you for sharing that. So, let's go back into our 10 things that we should consider about social media. Let's talk about how social media can provide a much bigger real time audience for yesterday's problems?

17:31 Darin Klemchuk

Yeah, in addition to you know, as what any new technology advance, the law usually in whole is slower than technology and so the technology can create new problems that takes you years to address in the law and obviously that you know, we've discussed a number of those already, we have a few more we'll talk about by the end of the show. But, probably one of the bigger things about social media is that all of the problems that have plagued the companies in the past can play out in social media but the difference is that the much larger targeted and concentrated audience. So the amount of damage that it can be done is worse. And so for example, you know, let's contrast 2 things where let's say an ex-employee gets upset and takes out a website using the company's name and the domain name and then adds you know, some disparaging language at the end of it to get a new domain name, it's registered, they put up a website, the system cover one page, you know rant website, so that's scenario number one. And then let's talk about scenario number 2 where a disloyal as employee takes a video after company charismas party, post it on Facebook and has to go viral. So you can see where social media can provide a much bigger avenue in audience for causing problems even innocent or inverting problems than older technology.

19:01 Nick Augustine

So what do we do to protect ourself?

19:04 Darin Klemchuk

Well yeah. I think some of these other problems that I mentioned, I think the best step is just t have a social media policy and to educate employees on what is appropriate and inappropriate behaviour and what are the risks associated with social media.

19:18 Nick Augustine

Very good. Alright. Moving on. Social media as a recruiting tool.

19:23 Darin Klemchuk

Yeah. I mean. Clearly, you can determine a significant amount of information including personal information about potential hires using social media not only as a tool to locate candidates but also to gain information about candidates who have submitted resumes. One of the risks with this has to do with the fact that there can be a lot of what is considered protected information about a potential job candidate available on social media that you would not ordinarily get in a resume and because that information is available, that could give rise to a claim of discriminatory hard practices and so while now the labour and employment lawyers, I think one of the better approach is to segregate the people that make the hiring decisions who meets candidates and look at resumes from the people who do research on potential candidates that might learn this protected information.

20:21 Nick Augustine

Very interesting. So, you know, do you know of any recent cases or anything the law as far as turning over? I know for a while, people are being asked to turn over their social media accounts.

20:34 Darin Klemchuk

You know, there have been some cases in California, or actually there are some law changes, statutory law change in California last year where I believe California has not made it illegal for employers to ask or require employees to give their social media accounts and passwords and I think the same is true for students in educational institutions as well.

20:57 Nick Augustine

Well that's good a good thing to know because that's just kind of changes the landscape of what we all want to do with social media if the entire world is liable to find out all that information. It kind of takes a lot of way from it. What about, now talking about the back of some of the business aspects, registering usernames you know. I talked about the example where I lost my domain that affected a few changes which ended being good spring house keeping on my part I believe but a lot of people have different usernames and their brand identity. So can you talk a little bit about ways that intellectual property law is useful for registering and saving our usernames?

21:44 Darin Klemchuk

Sure. In previous episodes of the show, we talked about the advantage of registering trademarks, not only with the United States patent and trademark office, and so, once you have that photo registration, you get some significant advantage like nationwide rights potentially you get prima facie ownerships and some other things. Well, social media is actually even better because the cost to register a company's name or key brand or product name is basically almost nothing to do in social media and what that does is for most of these social media companies, once that username is registered, its frozen. Twitter is a notable exception to that because I believe Twitter cancelled accounts after six months none user at least have used it. So, setting Twitter aside, if you have a company and you've got a company name that you use for branding purposes and you have 1 or 2 more trademarks, it is, who is the company to register all of those key trademarks as usernames or handles in a various dominant social media outlets to prevent others from coming along later then registering them and using them in the way that harms your company's products or brands or image.

23:05 Nick Augustine

Uh-hmm. It is very important consideration there because we don't always know what, you know, when different companies, you know, law firms and professional practices on thing but a company that has different brands and spoken some trademarks they may use in the future, there still on development phase. Again, anyone this got me to the fact to our protecting trade secrets and confidential information. Again, protecting these things is important because there are people out there looking to get an edge. You know, a lot of competitors are looking at those things so that's good advice. Let's talk about a little bit now about social media policies are at best practiced and development in that arena.

23:48 Darin Klemchuk

Well, we have obviously have touchdown reasons to have social media policy. I want to give you another reason. A __23:55__ he should address who owns the social media cow, Username post content. For example, three have been cases about who earns the Twitter __24:07__ and the followers and believe me a the last thing a company wants to find out later after an employee leaves or the contract ends whether they are independent contractor or service provider is that the ex-employee, ex-independent contractor now owns the Twitter handle and hundreds of thousands of followers that the company has build up over years and so this social media policies and addition of providing guidelines and educating employees on what they should and shouldn't do. Also, can set who owns those accounts and who owns the password. So, there is absolute clarity as to what happens when the relationship ends.

24:45 Nick Augustine

For instance, followers are definitely a valuable asset and to reclaim and recapture that asset. If it is lost can be a very, very difficult thing. You know, as well as websites and domains, web traffic, a lot of these things are things that we're beginning to learn more and more about as lay people and as attorney are able to also understand how this all works. But who is us to be as smart and have a good policy ahead of time so that everybody knows where they stand so we don't go saying "Uh oh, oops who done it? And now what do we do when that person who did the-"you know, I'm just picturing you know, a business where one of the employees does all the marketing and set up all the accounts and everything in their name and again, they leave what are you going to do. So, very important consideration. Alright. We have 2 more. Number 9 on our hit parade is the best defense is a good offense. Tell us more.

25:44 Darin Klemchuk

It is. This goes back to registering trademarks and usernames and then taking it to the next step which is proactively monitoring the brand and trademark usage in social media space. So in other words, you can set up Google alerts and other monitoring systems to find or get alerted when a company's key brands are being used by others in social media or really, even online, anywhere, on a website or a domain name. And the reason why I mentioned is that many of the social media companies have take down procedures that are somewhat informal or minimal steps to recover a username that incorporates a company's name trademark, and those take down procedures are frequently far less expensive than filing a lawsuit and so if a company is proactively monitoring what's going on and it finds that somebody has registered a key brand on Twitter, then they maybe able to quickly and inexpensively shut that down right when it starts as supposed to many months down the road and because of these take down procedures that could save them significant money as suppose to them to file a very expensive federal land amount trademark infringement case. And so, what we say is the best defense is a good offence is to be out there proactively monitoring the situation and dealing with it when it happens as suppose to later.

27:14 Nick Augustine

Very good advice. As opposed to having And again, talking to the right people ahead of time and making notes and having a policy of what to do and what steps is definitely worth the investment. It's sort of what I think about like having a power of attorney before going on vacation or getting a life insurance policy. I you are in business and you are operating online, you have assets out there, it still smart to protect them. Alright, our final social media consideration for today is social media and additional litigation consideration. Darin, tell us about those.

27:44 Darin Klemchuk

In briefly because we're almost out of time. You know, when a lawsuit arises, the various parties have a duty to preserve evidence and sometimes that evidence includes social media posts. And so, that's an area that a lot of people don't think about. And so, attorneys and companies need to be mindful of preserving social media activities to extend there has any bearing on claims and defences. You know, other things that come up I've seen in litigation are, a person's activities in social media may provide inside or evidence that's very helpful to a lawsuit and so again, once a lawsuit arises or even as part of a pre-suit investigation, council and companies may, you know, or should take a look at social of the opposing side. And then, third thing I'd mention, this has thankfully has not happened to me but I've heard urban myth it would happen, others, you know, a federal court jury trial in which the jury consultants or investigators or someone associated with the party was attempting to do research on the jury pool and they accidentally made contact via social media with one of the potential jurors, and so that can raise a real problem as well. And the same can be made of parties friending or befriending the opposing party during litigation and further whether false statements were made to induce somebody to befriend or link with another party during litigation. So, once a lawsuit arises or disputirisers care should be taken on how social media is handled.

29:32 Nick Augustine

Very, very good point. So when we think complex litigations, we're not kidding. Such so many good points, if anyone has any questions, please give the firm a call. You can call Darin directly at 214-367-6000. Darin Klemchuk I want to thank you for your time again today in helping our audience learn more about safe social media use.

29:54 Darin Klemchuk

Thank you Nick, appreciate it!

29:56 Nick Augustine

Alright. Could you tell them how to get a hold of you again?

30:01 Darin Klemchuk

You can call me directly at 214-367-6000. Go to our website, www.kk-llp.com or send me an email at darin.klmchuk@kk-llp.com. Email is best.

30:16 Nick Augustine

Alright. Alright. Well, thank you all for listening to this episode of Klemchuk Kubasta Law Review and please do share any helpful programs that we produce on your social media sites because that's how people find good information. We thank you all and we'll talk to you next time.