Monthly Archives: September 2012

Further Discussion of Judge Wettick’s Opinion on Discovery of Social Media

by: Kelly A. Williams, a partner at Picadio Sneath Miller & Norton, P.C.

As a follow up to Robert Wagner’s post, “Discovery of Facebook Accounts,” I will take a closer look at the analysis by Judge Wettick in Trail v. Lesko, No. GD-10-0172249 (July 3, 2012) for determining what a party needs to establish before Judge Wettick will order disclosure of non-public Facebook, or other social networking, content.  I will also provide an update on whether other courts have relied upon Judge Wettick’s opinion.

At the outset, Judge Wettick notes that no appellate court in Pennsylvania has addressed discovery requests for information contained within an individual’s Facebook profile.  He reviews the approach of other trial judges in Pennsylvania to date and concludes that most Pennsylvania “courts recognize the need for a threshold showing of relevance prior to discovery of any kind, and have nearly all required a party seeking discovery in these cases to articulate some facts that suggest relevant information may be contained within the non-public portions of the profile.  To this end, the courts have relied on information contained in the publicly available portions of a user’s profile to form a basis for further discovery.”

Judge Wettick also found the decisions of other state and federal courts to be largely in line with Pennsylvania case law.  As in Pennsylvania, other courts agree that the content posted by someone on Facebook is not privileged, either because communications with “Friends” are not privileged or because, if the communications were privileged, such privilege was waived by sharing the content with others.  On the other hand, the courts disfavor “fishing expeditions” and tend to require some evidence suggesting the existence of relevant information prior to ordering access to a person’s non-public social media information.  According to Judge Wettick, courts from other jurisdictions have taken more steps than Pennsylvania courts, however, to require more narrowly tailored discovery orders or have even relied on counsel to review his or her client’s profile for relevant information in the first instance.

Trail v. Lesko was a personal injury case arising from a motor vehicle accident which was allegedly caused by defendant’s drunk driving.  Judge Wettick indicated that he was basing his rulings on Pennsylvania Rule of Civil Procedure 4011(b), which provides that “[n]o discovery or deposition shall be permitted which . . . (b) would cause unreasonable annoyance, embarrassment, oppression, burden or expense to the deponent or any person or party . . . .”   Judge Wettick reasoned that a court order that gives an opposing party access to another’s non-public Facebook page “is intrusive because the opposing party is likely to gain access to a great deal of information that has nothing to do with the litigation and may cause embarrassment if viewed by persons who are not “Friends.”   Because such discovery is intrusive, it is protected by Rule 4011 “where the party seeking discovery has not shown a sufficient likelihood that such discovery will provide relevant evidence, not otherwise available, that will support the case of the party seeking discovery.”

However, Judge Wettick did acknowledge that the level of intrusiveness for a Facebook page, containing information made available to others who have no obligation to keep it confidential, is likely to be low.  Therefore, someone seeking to obtain such information will only need to show that the discovery “is reasonably likely to furnish relevant evidence, not available elsewhere, that will have an impact on the outcome of the case.”

Applying this reasoning to the facts of the case before him, Judge Wettick found that neither party had shown sufficient need for discovery of each other’s non-public Facebook pages.   Plaintiff was not entitled to the information because defendant had already made admissions in response to requests for admissions that made the request for Facebook content unnecessary, and defendant was not entitled to the information because the photos from plaintiff’s public page did not contain any information that suggested plaintiff’s personal injury claims were called into question.

With this opinion, Judge Wettick is informing litigators that while he is not opposed to permitting discovery of non-public social media, parties need to show that the social media that a person otherwise assumes is directed solely to a limited audience, i.e. their “friends,” is reasonably likely to be relevant to the claims in the case and is not available elsewhere.  In short, Judge Wettick attempts to balance a person’s privacy interests with those of a party seeking to prove or defend his or her case.

So far, no other courts have cited Judge Wettick’s opinion.  We will continue to watch for Pennsylvania court opinions following or rejecting Judge Wettick’s approach and for any rulings from the Pennsylvania appellate courts on the issue of discovery of social media.

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Numerous AIA Provisions Implemented by USPTO

By: Joe Carnicella, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

On September 16, 2012, numerous provisions of the America Invents Act (AIA) went into effect with the United States Patent and Trademark Office.  These rules include new administrative trial provisions, the supplemental examination provision, the inventor oath and declaration provision and the citation of prior art and written statements provision.  The new administrative trial provisions include inter partes review, post-grant review and a transitional program for covered business method patents, all of which are designed to provide third-parties that want to challenge the patentability of an issued patent with alternatives to district court litigation that are more timely and cost-effective.  The supplemental examination provision affords applicants an opportunity to submit additional information relevant to the patentability of an issued patent that may protect a patent from an inequitable conduct charge.  Under the inventor oath and declaration provision, assignees may now file a patent application.  Finally, with respect to the citation of prior art and written statements provision, the USPTO will now be able to treat the claims in a patent consistent with how the patent owner represents the claims in proceedings before a court or the USPTO.  According to David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, “These new AIA provisions now in effect give us tools to deliver cutting-edge technologies to the marketplace sooner, further reducing the backlog of patent applications, and getting high-quality patents issued faster.”  Other provisions of the AIA, including the first-to-file provision, are scheduled to go into effect on March 16, 2013.

The USPTO received one of its first high-profile test cases for these latest provisions when Microsoft filed an inter partes review petition on September 18, 2012, asking the USPTO to invalidate a patent that its owner has accused Microsoft and other major companies of infringing.  Microsoft included a declaration that nine of the claims in the patent should be invalidated because the claims contain nothing innovative when compared to the prior art.  The USPTO will institute a review if Microsoft is able to convince the USPTO that there is a reasonable likelihood that Microsoft would prevail on at least one challenged claim, which may only address issues of novelty and obviousness.  The board would then hold a mini-trial and issue a final determination within one year.

Popular Reality Television Show Deals With Trademark “Situation”

By: Robert M. Palumbi, attorney at Picadio Sneath Miller & Norton, P.C.

When we think of the typical reality television show today, we are generally focused more upon the outrageous conduct of the characters rather than the implications of the onerous terms of the contracts between the cast and company. However, intellectual property rights are currently directly in dispute between Michael “The Situation” Sorrentino and MTV owner Viacom over trademarks to the phrases he uses on the show “Jersey Shore.”

A trademark generally refers to a distinctive sign or indicator used by an individual or company in order to identify their products and services to the public, usually through a logo or brand. Using a trademark without the permission of the owner in certain products which may be similar or dissimilar would constitute trademark infringement, allowing the owner of a registered trademark to institute legal proceedings against the infringer.

Sorrentino has claimed in the past that many of the catch-phrases he uses on the show were developed prior to filming, with the intention of using such phrases in the show and later asserting trademark rights. On August 22, 2011, Sorrentino, through his company, MPS Entertainment, filed a registration with the Trademark Board for the term “twinning”, with the intent to use the phrase on t-shirts. On August 15, 2012, MTV owner Viacom filed papers at the Trademark Trial and Appeals Board stating that it owned any and all catch-phrases that Sorrentino develops on the show.

So what is Viacom’s basis for such a position? It can all be traced back to the oppressive Participant Agreement Sorrentino signed with the studio that produced the original “Jersey Shore.” In that Participant Agreement, Sorrentino waived the rights to “all ideas, gags, suggestions, themes, plots, stories, characters, characterizations, dialogue, text, designs, graphics, titles, drawings, artwork, digital works, songs, music, photography, video, film, and other material whether or not fixed or reduced to drawing or writing, at any time heretofore or hereafter created or contributed by me which in any way related to Jersey Shore.”

Nonetheless, this was just the original contract between the parties. After the show became popular, Sorrentino and Viacom signed an amended contract which reasserted the above rights, adding “The above language shall not be construed to grant to Artist or otherwise allow Artist the right to issue t-shirts featuring Artist’s quotes from the series.” Viacom followed this up with an additional provision that states “The above language shall not in any way limit any previous grant of rights to the Producer.”

Based upon this Participation Agreement, Viacom stated in papers filed with the Trademark Trial and Appeals Board that “Under the terms of the Participant Agreement Form, all rights in any intellectual property relating to Jersey Shore belong to 495 Productions Inc., the production company which creates the programs in the Series, which in turn assigned those rights by separate contract to Remote Productions Inc., a wholly owned subsidiary of Viacom. Therefore, Viacom is the rightful owner of all rights in and to the “twinning” mark and slogan.”

These developments highlight the carelessness of individuals who are explicitly willing to sign away their personal rights just for a chance at becoming a celebrity. Production companies are well aware of this phenomenon, and seemingly are in a position of power when proposing terms. However, this doesn’t mean that Sorrentino was permanently placed in such a position; remember, he did sign an amended contract. Perhaps a smarter way to deal with such a situation would be the path Karen J. Connelly took in her 2005 case against ValueVision Media. (Connelly and S.Y.K., LLC v. ValueVision Media, Inc. d/b/a ShopNBC, 393 F. Supp. 2d 767 (D. Minn. 2005).

Connelly worked as a television program host of the corporation, and her initial contract was similarly as oppressive as Sorrentino’s, forcing her to sign away all “inventions, innovations, or improvements in the method of conducting Employer’s business or otherwise related to Employer’s business, including new contributions, improvements, ideas, and discoveries, whether patentable or not or otherwise protectable by copyright, trademark, common law or trade secret law.” However, as Connelly grew in popularity, she also had an opportunity to sign an amended contract, which did in fact in retain some trademark rights. Perhaps if Sorrentino would have taken advantage of his opportunity to sign an amended contract he wouldn’t be in the situation he finds himself in.

Who Will Inherit Your Digital Music–Bruce Willis to Sue Apple?

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Earlier this week, an interesting story emerged that Bruce Willis was considering suing Apple over whether his children could inherit his iTunes collection after his death. The story turned out to be a hoax, but the questions it raises regarding ownership and rights in this digital age are very interesting.

Decades ago, music, movies, and books were exclusively purchased in a tangible form—records or CDs, videotapes or DVDs, and paperback or hardback books. While these formats are still largely available, more and more people are purchasing this type of content in an intangible digital format through services like Apple’s iTunes and Amazon’s Kindle stores.

In the past, the purchase of a tangible product like a record or book made transferring the product easy. Under the first sale doctrine, one simply could give or sell the record or book to another without any constraints. Thus, inheriting the record or the book did not pose any problems from an intellectual property or legal perspective. (Whether anyone wanted grandma’s or grandpa’s record or book collection is another matter).

When one purchases a song from iTunes or a book for Amazon’s Kindle store, the issue gets more complicated. One is actually purchasing a limited license to listen to the song or read the book on a limited number of devices. No physical, tangible products are purchased. Normally, the license is limited to the purchaser and is arguably valid only during the lifetime of the purchaser (assuming there are no other restrictions, as there sometimes are with video “purchases”). Thus, there is nothing tangible to give to another. Indeed, the licenses often explicitly restrict the giving or selling of the product to another.

Getting back to the situation that Bruce Willis was supposedly concerned about—what would happen to all of the music he purchased after he died? Most of the time, families will likely not be particularly concerned about whether they inherit grandpa’s music collection, but not always. For instance, what if the father or mother dies prematurely, and everything that the family was listening to or watching on a regular basis was purchased through that person’s iTunes account? The shift to a digital medium could have a very real and expensive consequence (in addition to whatever emotional trauma the family has to deal with from the untimely death).

I think a more concerning issue is the potential effect on a family’s photographs and letters, which can be some of the most treasured possessions a family has. With the shift to storing photographs on-line and corresponding through e-mail rather than letters, we are moving some of our most prized possessions and memories from tangible forms that can easily be preserved and given to others to an intangible form that may have unexpected and unanticipated restrictions. For example, if an individual stores all of his or her photographs on-line, what happens when that person dies? Will the account be closed and all the files deleted once the annual payments stop? Even if it is not, who will be allowed to access it, especially if the passwords were never written down or are lost?

We are still in the infancy of the digital age in many respects and questions like these are only beginning to be considered, and many companies’ terms and conditions are simply not designed to deal with circumstances like these. So, what should one do?

Where possible and when the ability to transfer the item to your spouse, children, or others is important, then efforts should be made to make sure the item is in a tangible form or resides on a computer in a way that is accessible regardless of whether you are alive or whether you fail to make an annual payment to a particular cloud service. In the case of pictures, that could mean having them printed out or storing them in a folder on your hard drive (instead of in the cloud). The same is true of e-mails. If there are particularly important e-mails, make sure that they have been saved on your hard drive, instead of leaving them in the cloud, or print them out.

Finally, it is a good practice to leave instructions as to what important on-line accounts you have (e-mail, Facebook, iTunes, cloud storage, banking, etc.) and how to access them so that others can get access to these accounts where appropriate if you are no longer able to. Given the important nature of these accounts, you should only leave this information with people you trust or in a location that is secure (e.g., a bank box).

It will be interesting to see how companies respond to issues like the one that Bruce Willis supposedly raised (even though he didn’t actually). The cloud provides many great conveniences, but as is often true with new technologies and ways of doing things, there are many unexpected issues that emerge. Hopefully, people, companies, and the law will find solutions to preserve those family treasures without too many hassles.