Social Media in The Workplace - From Constitutional To Intellectual Property Rights

NKU CHASE LAW + INFORMATICS INSTITUTE WORKING PAPER SERIES
Social Media in the Workplace –

from Constitutional to Intellectual Property Rights
Jon M. Garon*
Northern Kentucky University

Chase Law + Informatics Institute, Highland Heights, KY
Abstract:
Social media has become a dominant force in the landscape of modern communications.
From political uprisings in the Middle East1 to labor disputes in Washington State,2 social media
has fundamentally disrupted the way in which communications take place. As noted
constitutional scholar Erwin Chemerinsky explained, “technology has changed and so has First
Amendment doctrine and American culture. It now is much more clearly established that there is
a strong presumption against government regulation of speech based on its content.”3 Just as the
government must tolerate more speech, the same thing is true about employers. Chemerinsky
further notes that “for better or worse, profanities are more a part of everyday discourse.”4
Abrasive speech may be coarse from the word choice or may more readily upbraid the objects of
the speech. Whether foul or abusive, such speech now pervades commercial and social media.
Social media fundamentally upends the notion of the traditional commercial media
environment and with that, it reverses the established legal doctrine from constitutional
assumptions to everyday rules involving copyright, defamation, and unfair labor practice. For
employers, these rules are particularly important to navigate because they effect the manner in
which the companies communicate with the public, how employees communicate with each
other, and how laws are restructuring the employee-employer relationship. The transformation is
taking place with changing policies affecting trade secrets, confidential information, copyrighted
material, aggregated data, trademarks, publicity rights, and endorsements.
This article highlights the nature of the changes as they present the new paradigm shift and
provides some guidance on how to prepare policies for the transitional model. The article tracks
the rise of the many-to-many model of social media, its effect on commercial speech, intellectual
property, and labor law. The article concludes with suggestions on employment policies geared
* Director, NKU Chase Law + Informatics Institute and Professor of Law, Northern Kentucky University
Salmon P. Chase College of Law; B.A. University of Minnesota; J.D. Columbia University School of Law 1988.
Portions of this article was originally developed for presentation at the 2013 Florida Bar Association Intellectual
Property Annual Meeting and the meeting of the Dayton Intellectual Property Law Association.
1
See John D. Sutter, YouTube restricts video access over Libyan violence, CNN (Sept. 13, 2012, 5:38 AM),
http://www.cnn.com/2012/09/12/tech/web/youtube-violence-libya.
2
Rain City Contractors, Inc., 19-CA-031580 (June 4, 2009), http://www.nlrb.gov/rights-we-protect/protected-
concerted-activity/Lakewood-washington (employees discharged for showing unsafe practices at hazardous waste
cleanup location on YouTube).
3
Erwin Chemerinsky, Bad words?; In 'fleeting expletives' case, Court should recognize changed doctrine,
culture, NAT’L L. J. (Dec. 19, 2011) http://www.nlj-digital.com/nlj/20111219?pg=46.
4
Id.
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SOCIAL MEDIA AT THE WORKPLACE NKU CHASE LAW + INFORMATICS INSTITUTE
JON M. GARON PAGE 2
to managing these changes in the modern workplace.

Table of Contents
I. MANY-TO-MANY: THE CONSTITUTIONAL NATURE OF NEW MEDIA ............ 2

A. Traditional Commercial Media .................................................................................... 2
B. Social Media ................................................................................................................. 4
C. Constitutional Changes Brought by the Many-to-Many Paradigm.............................. 5
D. Impact on Commercial Speech: Publicity Rights and Advertising............................... 8
II. INTELLECTUAL PROPERTY LAW – COPYRIGHT, TRADEMARK, TRADE
SECRET........................................................................................................................................ 13
A. Copyright .................................................................................................................... 13
B. Copyright Takedowns ................................................................................................. 14
C. Trademark .................................................................................................................. 15
D. Trade Secret ................................................................................................................ 17
III. LABOR & EMPLOYMENT LAW ............................................................................ 19
A. Introduction ................................................................................................................ 19
B. Screen Potential Employees ....................................................................................... 19
C. National Labor Relations Board ("NLRB") on Social Media Usage ......................... 22
D. Interim General Counsel Holds Most Social Media Policies are Overbroad ............ 24
E. Post Employment Planning through Social Media Policies ....................................... 26
IV. CONCLUSION .......................................................................................................... 30
I. MANY-TO-MANY: THE CONSTITUTIONAL NATURE OF NEW MEDIA

A. Traditional Commercial Media
In the latter half of the past century, media regulation was built on an economic model under
which a few speakers had access to both content and the means of content distribution. The
constitutional models treated newspapers and magazines as economically unbounded5 while
5
Miami Herald Pub. Co., Div. of Knight Newspapers, Inc. v. Tornillo, 418 U.S. 241, 248-49 (1974) (citing
Commission on Freedom of the Press, A Free and Responsible Press 14-15 (1947); Background Paper by Alfred
Balk in Twentieth Century Fund Task Force Report for a National News Council, A Free and Responsive Press 18
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JON M. GARON PAGE 3
broadcast radio and television were deemed scarce.6 Although the print publications were open
to new entrants, the theoretical open market for print had practical economic limits. This resulted
in consolidation and market power.
Newspapers have become big business and there are far fewer of them to
serve a larger literate population. Chains of newspapers, national newspapers,
national wire and news services, and one-newspaper towns, are the dominant
features of a press that has become noncompetitive and enormously powerful and
influential in its capacity to manipulate popular opinion and change the course of
events.7
Nonetheless, newspapers had been treated differently. Efforts to limit the harm by
newspapers often met judicial resistance. In Near v. Minnesota,8 a publisher found to be a public
nuisance9 could not be barred from publishing future editions of the paper. While the legislature
believed that a day in court was sufficient, the Supreme Court forced the state to rely on
defamation law.10
Whether through scarcity of broadcast bandwidth or economic market power, the oligopoly
comprising mass media had unfettered control of the public agenda, so Congress imposed a
concomitant obligation to ensure balance, accuracy and protection of the public trust. 11 In
addition, the FCC required the Fairness Doctrine until 1987.12 The conceptual underpinning
remained that the individual was largely powerless against the media’s power to advocate a
position or meaningfully respond to the press. Under regimes such as the fairness doctrine, rights
of reply statutes, and similar efforts, the government sought to legislate some balance. In the
context of print media, those efforts were rejected,13 while in broadcast limited regulation
remains, for the moment.14
(1973); Report of the Task Force in Twentieth Century Fund Task Force Report for a National News Council, A
Free and Responsive Press 4 (1973)).
6
Red Lion Broadcasting Co. v. FCC, 395 U.S. 367, 390 (1969) (“Because of the scarcity of radio frequencies,
the Government is permitted to put restraints on licensees in favor of others whose views should be expressed on
this unique medium.”).
7
Id.
8
Near v. Minn., 283 U.S. 697 (U.S. 1931).
9
Id. at 706.
10
Id. at 737, (Butler, J., dissenting. “It is well known, as found by the state supreme court, that existing libel
laws are inadequate effectively to suppress evils resulting from the kind of business and publications that are shown
in this case.”).
11
See, e.g., 47 U.S.C. § 307 (requiring that a broadcast license be issued only when the license serves the public
interest).
12
Kathleen Ann Ruane, Fairness Doctrine: History and Constitutional Issues, CONG. RESEARCH SCVS 7-5700,
July 13, 2011, available at http://www.fas.org/sgp/crs/misc/R40009.pdf. See also Donald D. Moss, The Public
Domain and a Right of Access: Affect upon the Broadcast Media, 3 Loy. L.A. L. REV. 451 (1970), available at
http://digitalcommons.lmu.edu/llr/vol3/iss2/16.
13
Miami Herald Pub. Co., Div. of Knight Newspapers, Inc. v. Tornillo, supra note 5 at 248-49.
14
Red Lion, supra note 6 at 390.
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JON M. GARON PAGE 4
B. Social Media
The communications model changed with the advent of social media.15 To contrast from
commercial media, social media analysis tends to focus on user generated content. The user
generated content can range from entire fan-fiction novels to a single click of a “like” or
“dislike” button. Social media includes each unique piece of content as well as the aggregate
pattern of the content comment on commercial media.16 In sum, “[s]ocial media is the media we
use to be social. That’s it.”17
Any person with access to a networked computer, tablet, or smartphone has the ability to
communicate with potentially billions of people. For example, the social video distribution site
YouTube reports that 1 billion unique visitors view six billion hours of video monthly.18 The
content is socially generated and actively shared; YouTube is the most followed brand on Twitter
with 19 million followers.19 Facebook boasts the largest social media network with 1.01 billion
users.20 Wikipedia, the largest collectively edited wiki site is ranked as the third largest social
media host.21 Twitter, the micro-blogging site, Pinterest, the photo-sharing site, Google+, the
social networking site tied to other Google products, and LinkedIn, the business social media
network, all regularly place among the top ten social media networks domestically and
globally.22
When coupled with almost ubiquitous access to technology, the many-to-many model of
media distribution flips the earlier assumptions about media dominance on their head.23 Scarcity
is eliminated from broadcast.24 Newspapers and print magazines are struggling to maintain
audience, relevance, and market-share.25 Print advertising revenue has been disintermediated by
15
See Debora Halbert, Mass Culture and the Culture of the Masses: A Manifesto for User-Generated Rights, 11
VAND. J. ENT. & TECH. L. 921, 924 (2009) (“User-generated content can be found on wikis, blogs, Twitter feeds,
YouTube, Facebook, and pirate websites, as well as in virtual worlds, reactions to news stories, reactions to others’
reproductions of news stories, and ratings for products. . . .”).
16
See, e.g., Marcy Wheeler, How Noninstitutionalized Media Change the Relationship Between the Public and
Media Coverage of Trials, 71 LAW & CONTEMP. PROBS. 135 (2008).
17
LON SAFKO, THE SOCIAL MEDIA BIBLE: TACTICS, TOOLS, AND STRATEGIES FOR BUSINESS SUCCESS 3 (2d Ed.
2010).
18
Statistics, YOUTUBE, http://www.youtube.com/t/press_statistics (last visited Oct. 30, 2013).
19
Brian Honigman, 100 Fascinating Social Media Statistics and Figures From 2012, Huff. Post. Tech, Nov. 29,
2012 at http://www.huffingtonpost.com/brian-honigman/100-fascinating-social-me_b_2185281.html.
20
Drew Olanoff, Facebook Announces Monthly Active Users Were At 1.01 Billion As Of September 30th, An
Increase Of 26% Year-Over-Year, TECHCRUNCH (Oct. 23, 2012), http://techcrunch.com/2012/10/23/facebook-
announces-monthly-active-users-were-at-1-01-billion-as-of-september-30th/.
21
Mathias Buerk, Top 20 global Social Media Sites – Networks and Videos dominate, ETHORITY (Mar. 21,
2012), http://www.ethority.net/blog/2012/03/21/top-20-global-social-media-sites-2012/ (last visited Oct. 30, 2012).
22
Top 15 Most Popular Social Networking Sites, EBIZMBA (Oct. 2013),
http://www.ebizmba.com/articles/social-networking-websites (last visited Oct. 30, 2013).
23
Erwin Chemerinsky, Keynote Luncheon Presentation, American Bar Association Section of Business Law
Cyberspace Committee Winter Working Meeting (Jan. 25, 2013.).
24
John W. Berresford, The Scarcity Rationale for Regulating Traditional Broadcasting: An Idea Whose Time
Has Passed, FCC MEDIA BUREAU STAFF RESEARCH PAPER NO. 2005-2, 12 (Mar. 2005), available at
http://www.fcc/gov/working-papers/scarcity-rationale-regulating-traditional-broadcasting-idea-whose-time-has-
passed.
25
Derek Thompson, The Scariest Thing About the Newspaper Business Isn't Print's Decline, It's Digital's
Growth, THE ATLANTIC (Dec. 19 2012, 3:15 PM), http://www.theatlantic.com/business/archive/2012/12/the-

JON M. GARON PAGE 5
online search ads, which reduces the funding for newspapers but does not render them scarce in
any economic sense.26
The Supreme Court has not entirely abandoned the scarcity doctrine, though it may be
getting ever closer. Justice Thomas and Justice Ginsburg have come closest. Justice Thomas has
provided a brief but quite explicit repudiation of the doctrine.27
[T]he logical weakness of Red Lion and Pacifica has been apparent for some
time: “It is certainly true that broadcast frequencies are scarce but it is unclear
why that fact justifies content regulation of broadcasting in a way that would be
intolerable if applied to the editorial process of the print media.”28 … Second,
even if this Court's disfavored treatment of broadcasters under the First
Amendment could have been justified at the time of Red Lion and Pacifica,
dramatic technological advances have eviscerated the factual assumptions
underlying those decisions. … Moreover, traditional broadcast television and
radio are no longer the "uniquely pervasive" media forms they once were. …
These dramatic changes in factual circumstances might well support a departure
from precedent under the prevailing approach to stare decisis.29
Justice Ginsburg echoed the distrust in the scarcity doctrine. “In my view, the Court's
decision in [Pacifica] was wrong when it issued. Time, technological advances, and the
Commission's untenable rulings in the cases now before the Court show why Pacifica bears
reconsideration.”30 While other First Amendment cases have not directly implicated scarcity, the
broad protections afforded to social media and the public leave little room for claiming unique
obligations of the government to regulate broadcasters in a manner discrete from Internet sites
and publishers.
C. Constitutional Changes Brought by the Many-to-Many Paradigm
At the constitutional level, the changes affecting social media come slowly, often without
express statements of the changed factual assumptions. In three First Amendment cases decided
over the past five years, the Supreme Court has reinforced an almost absolutist approach to
protecting free speech, disavowing other public considerations as secondary.
In United States v. Stevens,31 the Supreme Court addressed an abhorrent social media
phenomenon in which individuals would film and post “crush videos.”32 Quoting from
legislative hearings, the Court explains that “[c]rush videos often depict women slowly crushing
scariest-thing-about-the-newspaper-business-isnt-prints-decline-its-digitals-growth/266482/ (Since 2006, “$20

billion in annual revenue, down the drain. In that time, digital ad growth has erased only 2% of the losses. How
dreadful.”).
26
See id.
27
FCC v. Fox TV Stations, Inc., 556 U.S. 502, 533-35 (2009) (Thomas, J., dissenting).
28
Id. (quoting Telecommunications Research & Action Center v. FCC, 801 F.2d 501, 508 (C.A. DC 1986)).
29
FCC v. Fox TV Stations, Inc., supra note 27 at 533-35 (Thomas, J. dissenting).
30
FCC v. Fox TV Stations, Inc., __ U.S. __, 132 S. Ct. 2307, 2321 (2012) (citing FCC v. Pacifica Foundation,
438 U.S. 726 (1978)).
31
United States v. Stevens, __ U.S. __, 130 S. Ct. 1577 (2010).
32
Id. at 1583.

JON M. GARON PAGE 6
animals to death ‘with their bare feet or while wearing high heeled shoes,’ sometimes while
‘talking to the animals in a kind of dominatrix patter’ over ‘[t]he cries and squeals of the animals,
obviously in great pain.’”33 Laws prohibiting cruelty to animals make the acts illegal, so the
federal legislation was designed to prohibit the distribution of the videos rather than the
underlying acts of cruelty.
Unsurprisingly, the Court invalidated the law.34 The statute was struck down on vagueness
and overbreadth grounds because depictions of this animal cruelty could not be categorically
different from scenes depicting hunting, documentaries on food processing, or other generally
accepted media practices which the law was not intended to ban. The law was targeted at a
specific specie of content that fell well outside the historically established, narrow categories of
speech subject to prohibition.35 As such, the speech is protected by the First Amendment.36
Although the case represents the first Supreme Court review of content created specifically for
social media Internet distribution, that landmark aspect of the litigation went by without notice
by the Court.
In Brown v. Entm't Merchs. Ass'n,37 the Supreme Court provided a sweeping rejection to
attempts to regulate the video game industry as somehow different than print, film, or
broadcast.38 The Court declined to follow the constitutional tradition of protecting minors from
indecent speech to indecent violence.39 It limited the ability to protect minors from speech
characterized as “obscenity-for-minors” to only sexually explicit obscenity.40 Other categories of
speech harmful to minors will not be recognized.
Rejecting the expansion of obscenity to any kind of violence, the Court applied full strict
scrutiny to video game regulation. “Because the Act imposes a restriction on the content of
protected speech, it is invalid unless California can demonstrate that it passes strict scrutiny–that
is, unless it is justified by a compelling government interest and is narrowly drawn to serve that
interest.”41
Although the Court does not say anything about social media or the norms of the online
33
Id. (quoting House Committee Report H. R. Rep. No. 106-397, at 2-3 (1999)).
34
Id. at 1584.
35
Jennifer E. Rothman, 25 HARV. J.L. & PUB. POL'Y 283, 287-88 (2001) (“Speech such as obscenity, fighting
words, child pornography, incitement, and ‘true threats’ is considered outside the protections of the First
Amendment.”). See R.A.V. v. St. Paul, 505 U.S. 377, 382-90 (1992).
36
Stevens, supra note 31 at 1583-84.
37
Brown v. Entm't Merchs. Ass'n, __ U.S. __, 131 S. Ct. 2729 (2011).
38
Id. at 2737 n.4. (“Well of course [playing a video game] is different in kind [from reading], but not in a way
that causes the provision and viewing of violent video games, unlike the provision and reading of books, not to be
expressive activity and hence not to enjoy First Amendment protection.”).
39
Id. at 2735.
40
Id. Because speech about violence is not obscene, it is of no consequence that California's statute mimics the
New York statute regulating obscenity-for-minors that we upheld in Ginsberg v. New York, 390 U.S. 629, 88 S. Ct.
1274, 20 L. Ed. 2d 195 (1968). That case approved a prohibition on the sale to minors of sexual material that would
be obscene from the perspective of a child. … [B]ecause “obscenity is not protected expression,” the New York
statute could be sustained so long as the legislature's judgment that the proscribed materials were harmful to children
“was not irrational.”
41
Id. at 2738.

JON M. GARON PAGE 7
environment, it categorically rejected any differentiation between media based on type, audience,
or impact. The Court refuses to equate violence with pornography or consider that some violent
speech may be so extreme as to be obscene. The categories of speech are immutable and the
media are largely irrelevant.
Third, in Snyder v. Phelps,42 the Court provided some guidance on the scope of the First
Amendment as it limits traditional common law doctrine. The case arose after Fred Phelps and
six parishioners of the Westboro Baptist Church picketed the funeral of Marine Lance Corporal
Matthew Snyder, a soldier killed in the line of duty in Iraq.43 Phelps often used the public
attention of soldier funerals to capture some public attention regarding his protests. “A jury
found for Snyder on … intentional infliction of emotional distress, intrusion upon seclusion, and
civil conspiracy claims, and held Westboro liable for $2.9 million in compensatory damages and
$8 million in punitive damages.”44 The award was remitted to $2.1 million.45
The Court felt the civil liability could not be sustained if it violated the First Amendment.
Matters of private concern may constitutionally be adjudicated to a negligence standard while
matters of public concern require an actual malice standard of knowledge or reckless disregard
for the truth to establish liability.46 “Whether the First Amendment prohibits holding Westboro
liable for its speech in this case turns largely on whether that speech is of public or private
concern, as determined by all the circumstances of the case.”47 The Court summarized the
evolving standard of public concern:
Not all speech is of equal First Amendment importance, however, and where
matters of purely private significance are at issue, First Amendment protections
are often less rigorous. That is because restricting speech on purely private
matters does not implicate the same constitutional concerns as limiting speech on
matters of public interest…. Speech deals with matters of public concern when it
can be fairly considered as relating to any matter of political, social, or other
concern to the community, or when it is a subject of legitimate news interest; that
is, a subject of general interest and of value and concern to the public. The
arguably inappropriate or controversial character of a statement is irrelevant to the
question whether it deals with a matter of public concern.48
The decision is very important in distinguishing from the myriad of claims for harmful
speech involving those that are private in nature and those that have a public face. As such, the
facts of Snyder establish a rather low threshold to gain an inference that a matter is of public
concern. Phelps’ banners and slogans were attacks on homosexuality and the U.S. military
42
Snyder v. Phelps, __ U.S. __, 131 S. Ct. 1207, 1216 (2011).
43
Id. at 1213.
44
Id. at 1214.
45
Id.
46
See New York Times v. Sullivan, 376 U.S. 254, 279 (1964) (scienter standard required for public officials);
Gertz v. Welch, Inc., 418 U.S. 323, 349-350 (1974) (only something more than strict liability required when not a
matter of public concern and no “presumed or punitive damages, at least when liability is not based on a showing of
knowledge of falsity or reckless disregard for the truth.”).
47
Snyder, supra note 42 at 1215.
48
Id. at 1215-16 (omitting internal quotations and citations).

JON M. GARON PAGE 8
(among others) rather than on Lance Corporal Snyder or his family. As individuals they were not
public officials or public figures.
The Court also listed previous cases, such as the publication of a credit report and the
distribution of employees’ sexually explicit videos as examples of non-public speech that
involves no First Amendment considerations. The Court claimed its holding was narrow,49 but in
fact it provides an important statement on the parameters regarding matters of public concern and
affirms Hustler v. Falwell50 in invalidating intentional infliction of emotional distress as an
independent tort in matters of public concern.51
D. Impact on Commercial Speech: Publicity Rights and Advertising
The constitutional expansionist approach to the First Amendment has a significant
implication on commercial speech, state law, and common law doctrine.52 The Supreme Court
has recently invalidated a law which prohibited the sale of pharmaceutical data for marketing. 53
The decision did not broadly dismiss the government’s right to regulate commercial speech, but
treated the regulation as discriminatory regarding speaker and content. 54 Since the Court found
the law was not content neutral, the statute was unable to withstand the test of heightened
judicial scrutiny.55
1. FTC: In contrast, Section 5 of the Federal Trade Commission Act,56 empowers the
Federal Trade Commission (“FTC”) to prevent businesses “from using unfair methods of
competition in or affecting commerce and unfair or deceptive acts or practices in or affecting
commerce.”57 Deceptive commercial speech has little First Amendment protection, so reaching it
remains within the police power of a state, subject to intermediate scrutiny for its effect on
speech.58
For social media, the FTC’s role has been particularly influential because the FTC has
amended advertising and endorsement guidelines specifically to address the potential for unfair
trade practices.59 Applying broadly across the Internet, the regulations require “the honest
opinions, findings, beliefs, or experience of the endorser.”60 They prohibit false commercial
49
Id. at 1220.
50
Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988).
51
Id. at 53. See also Time, Inc. v. Hill, 385 U. S. 374, 390 (1967).
52
See Jon M. Garon, Beyond the First Amendment: Shaping the Contours of Commercial Speech in Video
Games, Virtual Worlds and Social Media, 2012 UTAH L. REV. 607, 615 (2012) (“From recent Supreme Court
jurisprudence, it follows that the commercial regulation of video games, virtual worlds, and social media must be
conducted with a deft and gentle hand if regulators hope to have the regulation survive constitutional scrutiny.”).
53
Sorrell v. IMS Health Inc., 131 S. Ct. 2653, 2663 (2011) (declaring unconstitutional a law prohibiting sale of
patient data for marketing purposes but no other purposes as content and speaker specific).
54
Id.
55
Id. at 2663-64. See Ward v. Rock Against Racism, 491 U.S. 781, 791 (1989) (heightened scrutiny required
for “a regulation of speech [enacted] because of disagreement with the message it conveys.”).
56
15 U.S.C. § 45 (2006).
57
Id. at §45 (a)(2).
58
See Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n, 447 U.S. 557, 562 (1980).
59
FTC Endorsement Guidelines, 74 Fed. Reg. 53,124, 53,125 (Oct. 15, 2009) (Guides Concerning the Use of
Endorsements and Testimonials in Advertising).
60
16 C.F.R. §255.1(a) (2011).

JON M. GARON PAGE 9
speech, declaring that “an endorsement may not convey any express or implied representation
that would be deceptive if made directly by the advertiser.”61
Under the FTC endorsement guidelines,
an endorsement means any advertising message (including verbal
statements, demonstrations, or depictions of the name, signature, likeness or other
identifying personal characteristics of an individual or the name or seal of an
organization) that consumers are likely to believe reflects the opinions, beliefs,
findings, or experiences of a party other than the sponsoring advertiser, even if the
views expressed by that party are identical to those of the sponsoring advertiser.
The party whose opinions, beliefs, findings, or experience the message appears to
reflect will be called the endorser and may be an individual, group, or
institution.62
When a person blogs, tweets, or otherwise promotes a product, the statement may constitute
an endorsement. If the communication is made upon receipt of consideration, that consideration
must be disclosed.63 “Advertisers are subject to liability for false or unsubstantiated statements
made through endorsements, or for failing to disclose material connections between themselves
and their endorsers. Endorsers also may be liable for statements made in the course of their
endorsements.”64 Under these rules, if an employer was to ask its employees to pose as members
of the general public and make positive statements about the employer’s goods or services, both
the employer and the employees would be liable.65 If this was done on behalf of a third-party
advertiser, the advertiser would also be liable even without actual knowledge of the particular
conduct.66
2. Publicity Rights: State law protection of publicity rights is also impacted by these same
constitutional and endorsement considerations.67 Publicity rights are protected as a common law
extension of privacy,68 but like other common law doctrine affecting speech, many aspects have
61
Id. at §255.1(b).
62
Id. at §255.0.
63
Id. at §255.5.
64
Id. at §255.1 (citing §255.5).
65
See, e.g., David Streitfeld, Give Yourself 5 Stars? Online, It Might Cost You, N.Y TIMES, Sept. 23, 2013, at
page A1 (“the investigation uncovered a wide range of services buying fake reviews that could do more permanent
damage: dentists, lawyers, even an ultrasound clinic. “What we’ve found is even worse than old-fashioned false
advertising,” said Eric T. Schneiderman, the New York attorney general.”); Hugo Martin, Can you trust online hotel
reviews? The debate heats up, L.A. TIMES (Nov. 18, 2012 8:00 AM), http://www.latimes.com/business/money/la-fi-
mo-online-hotel-reviews--20121116,0,4791105.story. See also Tim Kickinson, The NRA vs. America, ROLLING
STONE (Jan. 31, 2013 10:00 AM), http://www.rollingstone.com/politics/news/the-nra-vs-america-20130131
(discussing political “astroturfing” of the NRA and Tea Party to create a false impression of broad public support for
narrow, commercial interests).
66
16 C.F.R. §255.1(a).
67
See, e.g., Donahue v. Warner Bros. Pictures Distributing Corp., 272 P.2d 177 (Utah 1954) (publicity rights
statute limited to the use of name or likeness in advertising, or the sale of “some collateral commodity.”); CAL. CIV.
CODE § 3344(a) (West 1997) (limiting protection to use “on or in products, merchandise, or goods, or for purposes
of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s
prior consent.”).
68
See Samuel Warren & Louis Brandeis, The Right to Privacy, 4 HARV. L. REV. 193 (1890). See also William
L. Prosser, Privacy, 48 CAL. L. REV. 383, 383–85 (1960).

JON M. GARON PAGE 10
been constitutionalized.69 Publicity rights are properly considered a form of limitation on

commercial speech and should be subject to legitimate content regulation as is allowed by the
FCC and FTC, namely intermediate scrutiny.70 Traditional publicity rights doctrine first asks
whether the use of the name or likeness involves a commercial transaction.71 The commercial
transaction may be the sale of a commercial item or an endorsement of a good or service.72 If the
use of the publicity rights constitutes an endorsement, then the FTC endorsement guidelines offer
further liability for unauthorized use.
In theory, formulations such as that embodied in the Restatement (Third) of Unfair
Competition should provide clear breathing room between expressive works and their
commercial cousins. As the Sixth Circuit recently stated, “A viable right-of-publicity claim
usually requires (1) defendant’s use of plaintiff’s identity; (2) the appropriation of plaintiff’s
name or likeness to the defendant’s advantage, commercially or otherwise; (3) lack of consent;
and (4) resulting injury.”73
Section 47 of the Restatement sets an explicit limit on the scope of publicity rights:
The name, likeness, and other indicia of a person's identity are used “for
purposes of trade” under the rule stated in § 46 if they are used in advertising the
user's goods or services, or are placed on merchandise marketed by the user, or
are used in connection with services rendered by the user. However, use “for
purposes of trade” does not ordinarily include the use of a person's identity in
news reporting, commentary, entertainment, works of fiction or nonfiction, or in
advertising that is incidental to such uses.74
The scope of publicity rights explicitly excludes news, entertainment, and creative works.75
The limitation embodied in the Restatement is written to be categorical, which provides for
greater certainty and reinforces the importance of free speech rights and avoidance of a chilling
effect caused by fear of litigation involving a person’s identity in a communicative work.
Comment d. to the Restatement recognizes this concern by stating “[b]roader restrictions on the
use of another's identity in entertainment, news, or other creative works threaten significant
69
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 577 (1977) (In distinguishing between
defamation, false light and publicity cases, the Court explained that the “Constitution does not prevent Ohio from …
deciding to protect the entertainer's incentive” to perform.)
70
See Sorrell, 131 S. Ct. 2653, supra note 53 at 2663; Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n,
447 U.S. 557, 562 (1980); Ohralik v. Ohio State Bar Assn., 436 U.S. 447 (1978) (upholding state lawyer advertising
regulation); Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 771-772
(1976) (establishing First Amendment protection for commercial speech and recognizing right of recipients of
commercial speech to have access to the content).
71
See, e.g., Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 802 (Cal. 2001).
72
Id. at 802 (although the speech was not an “advertisement, endorsement, or sponsorship of any product,”
defendant nonetheless “used the likeness of The Three Stooges on . . . products, merchandise, or goods within the
meaning of the statute.”).
73
Moore v. Weinstein Co. LLC, 12-5715, (6th Cir. Oct. 31, 2013) (unreported) quoting Restatement (Third) of
Unfair Competition.
74
Restatement (Third) Unfair Competition §47 (1995).
75
Id. at cmt. c. (“the use of a person's name or likeness in news reporting, whether in newspapers, magazines,
or broadcast news, does not infringe the right of publicity. The interest in freedom of expression also extends to use
in entertainment and other creative works, including both fiction and nonfiction.”).

public and constitutional interests.”76

Nonetheless, in practice, publicity rights are tested under a variety of inconsistent court-
fashioned doctrine which do not balance commercial and speech interest nearly as cleanly as
does the Restatement or the regulatory analysis under the FTC. “Various commentators have
noted that right of publicity claims—at least those that address the use of a person's name or
image in an advertisement—are akin to trademark claims because in both instances courts must
balance the interests in protecting the relevant property right against the interest in free
expression.”77
The Rogers test78 most squarely distinguishes between commercial works and
communicative works. Under that test, a court should not “permit the right of publicity to bar the
use of a celebrity's name in a movie title unless the title was ‘wholly unrelated’ to the movie or
was ‘simply a disguised commercial advertisement for the sale of goods or services.’”79 This test
most closely mirrors the FTC commercial endorsement guidelines, particularly if the recognition
of disguised commercial advertisements extends to the various undisclosed endorsements.
The Predominant Use test loosely balances the free speech rights of the publisher against the
economic goals of that publisher.80 Works that predominantly exploit the commercial value of
identity must certainly include all celebrity magazines, ESPN, and the Sunday section of the
New York Times. The fact that a work is published under a profit motive does not transform the
content into commercial speech.81 The Predominant Use Test is ineffectively under-inclusive and
over-inclusive, making it unhelpful for jurisprudential guidance.82
The third common test flows from copyright law rather than trademark law. Based upon the
Supreme Court jurisprudence involving fair use, the California Supreme Court adopted the
transformative test from the first factor of copyright fair use to determine the right of publicity
free speech doctrine.
According to the Supreme Court as applied by the California Supreme Court,
the central purpose of the inquiry into this fair use factor ‘is to see ... whether
the new work merely “supercede[s] the objects” of the original creation, or
instead adds something new, with a further purpose or different character, altering
the first with new expression, meaning, or message; it asks, in other words,
76
Id. at cmt. d.
77
Hart v. Elec. Arts, Inc., 717 F.3d 141, 155 (3d Cir. 2013).
78
Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1989).
79
Id. at 1004.
80
Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo.2003) (en banc).
If a product is being sold that predominantly exploits the commercial value of an individual's
identity, that product should be held to violate the right of publicity and not be protected by the
First Amendment, even if there is some “expressive” content in it that might qualify as “speech” in
other circumstances. If, on the other hand, the predominant purpose of the product is to make an
expressive comment on or about a celebrity, the expressive values could be given greater weight.
Id. at 374.
81
See New York Times v. Sullivan, 376 U.S. 254, 265 (1964). See also Valentine v. Chrestensen, 316 U.S. 52,
55 (1942) (commercial speech cannot evade regulation by appending protected first amendment content).
82
See Hart, supra note 73 at 154 (“By our reading, the Predominant Use Test is subjective at best, arbitrary at
worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics.”).

whether and to what extent the new work is “transformative.”83

To the first factor of the copyright test embodied in Transformative Test, the California
Supreme Court obliquely reintroduced the copyright fair use test’s fourth factor: the effect on the
potential market for the work.84
Virtual worlds and video games may trigger the most direct conflict between publicity rights
and free speech jurisprudence.85 The communicative nature of video games highlighted in Brown
v. Entm't Merchs. Ass'n should require the medium be treated like any other.86 Nonetheless, both
video game manufacturers and the courts tend to continue to treat these works as if they are
commercial products rather than works of expression protected by the First Amendment.87 As
products, they are commercial works subject to the Transformative Test or another of the
balancing tests rather than excluded from the limitation in publicity rights that such rights only
apply to commercial products or the advertisements for such goods and services.
The communication in a video game generally is not a proposal of a commercial transaction
or the sale of a product, so rights of publicity simply do not apply. 88 If instead, the media is used
to make an endorsement or advertise a commercial product, then the FTC endorsement
guidelines and the state publicity rights come back into play.89
This distinction should guide the behavior and social media policies of employers. To the
extent they are creating content as media broadcasters, there are no publicity rights constraints
and no endorsement concerns.90 If instead the content is designed to promote commercial
83
Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal.4th 387, 404 (2001) (quoting Campbell v. Acuff–Rose
Music, Inc., 510 U.S. 569, 579 (1994) (citations omitted).
84
Id. at 407.
Furthermore, in determining whether a work is sufficiently transformative, courts may find
useful a subsidiary inquiry, particularly in close cases: does the marketability and economic value
of the challenged work derive primarily from the fame of the celebrity depicted? If this question is
answered in the negative, then there would generally be no actionable right of publicity. When the
value of the work comes principally from some source other than the fame of the celebrity—from
the creativity, skill, and reputation of the artist—it may be presumed that sufficient transformative
elements are present to warrant First Amendment protection. If the question is answered in the
affirmative, however, it does not necessarily follow that the work is without First Amendment
protection—it may still be a transformative work.
85
See Hart, supra note 73 at 152-53; O'Bannon v. NCAA, 2010 U.S. Dist. LEXIS 19170 (N.D. Cal. Feb. 8,
2010) (dismissing Keller v. Elec. Arts, Inc., 2010 WL 530108 (N.D. Cal. 2010) to substitute anti-trust claims for
publicity rights claims); In re NCAA Student-Athlete Name & Likeness Licensing Litig., 2011-2 Trade Cas. (CCH)
¶ 77, 549 (N.D. Cal. 2011) (ongoing litigation emphasizing anti-trust implication of refusing to negotiate rights with
former NCAA players).
86
Brown v. Entm't Merchs. Ass'n, supra note 37 at 2737 n.4.
87
See Hart, supra note 71 at 148-49 (“Appellee [EA Sports] concedes, for purposes of the motion and appeal,
that it violated Appellant's right of publicity; in essence, misappropriating his identity for commercial exploitation.”)
88
Cf. Comedy III, supra note 71 at 802; Hart, supra note 75 at 149.
89
Garon, supra note 52 at 615, 624.
90
See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1017 (3d Cir. 2008) (quoting U.S. Healthcare, Inc. v. Blue
Cross of Greater Phila., 898 F.2d 914, 933 (3d Cir. 1990)).
The Estate contends that the program is commercial speech, and we agree. Our Court has
"three factors to consider in deciding whether speech is commercial: (1) is the speech an
advertisement; (2) does the speech refer to a specific product or service; and (3) does the speaker
have an economic motivation for the speech."

transactions, serve as advertisements, or sell merchandise, then permission is required from the
endorser and the endorser must be providing factual, honest information.
II. INTELLECTUAL PROPERTY LAW – COPYRIGHT, TRADEMARK, TRADE

SECRET
A. Copyright
Social media does not alter the fundamentals of copyright ownership. Copyright initially
vests in the author of a work upon fixation91 which in the case of social media, occurs as soon as
the content is written to the computer or mobile device. Since content is stored somewhere, even
if not on the device itself, it meets the fixation requirement to be protected by copyright.92
1. Originality: The copyright may also be limited by the length of the post. Copyright does
not extend to “[w]ords and short phrases such as names, titles, and slogans; familiar symbols or
designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of
ingredients or contents.”93 Generally, text messages and tweets may be too short to receive
copyright protection individually. If the text messages or tweets, however, are part of an ongoing
public dialogue, then the entire conversation may more properly be considered the work for
copyright purposes. Photographs shared via text and tweet have no such limitations.
2. Registration: At the same time, copyright law requires that the work first be registered
with the Copyright Office.94 Unless a particular set of posts develops significant economic value,
it is unlikely that the copyright owner will undertake to register the work and, therefore, the
owner would not have standing to protect the work in court. As discussed below, a more
pragmatic concern may arise in the context of contractual relations with current and former
employees as well as independent contractors. Companies should specify by contract that use of
such copyrighted material (whether or not registered) remains with the company.
3. Unauthorized Use: In the social media context, unauthorized use of a company’s
copyright typically arises from links to pirated content, re-posting of content without permission,
and unwanted commentary by third parties in the form of parody or satire. Linking to an owner’s
copyright does not utilize any copyright-protected content.95 The URL address of the information
is a fact, not covered by copyright protection. As a result, linking to another’s content does not
91
17 U.S.C. §§ 101-2 (2013) (By definition, a work is "fixed when its embodiment in a copy ... is sufficiently
permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than a
transitory duration.").
92
But cf. Cable News Network, Inc. v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (where the court found
that a buffer holding small portions of a work on a 1.2 second loop did not meet the fixation requirement). Whether
the text message buffer is sufficient does not matter since the entire thread is hosted remotely by the service
provider.
93
37 C.F.R. § 202.1(a).
94
17 U.S.C. § 411(a) (2013).
95
Ticketmaster Corp. v. Tickets.Com, Inc., 2003 WL 21406289 (BNA) 1344, 2000 U.S. Dist. LEXIS 4553
(C.D. Cal. 2000) (“[H]yperlinking does not itself involve a violation of the Copyright Act (whatever it may do for
other claims) since no copying is involved, the customer is automatically transferred to the particular genuine web
page of the original author.”).

raise any copyright liability.96 In contrast, reposting content is an unauthorized copying of the
work that may result in liability, assuming the work has been registered with the copyright office
so that the plaintiff has standing.97 Unwanted commentary may be actionable, but complex fair
use rules make such claims unlikely to succeed unless there is some commercial advantage being
taken by the defendant which tends to make the second work compete with the company’s
copyrighted work in the marketplace.98 Given the costs and uncertainty of copyright litigation in
this regard, the best advice is to develop a thick corporate skin, and just move on. News reports
about a large company’s efforts to close down a parody website typically does far more
reputational harm than anything the parody or satire could have accomplished.99
B. Copyright Takedowns
Although social media has become a powerful influence on constitutional and employment
law, these changes hit intellectual property policies much earlier and, as a result, the law is more
settled in this area than in the others. Copyright law was amended in 1998 to balance the interests
of service providers, copyright holders, and consumers. The amendments applied to both Internet
services providers (“ISPs”)100 and to hosting sites, known as online service providers
(“OSPs”).101 The emphasis was on immunity for service providers which passively hosted or
transmitted content. Sites like AOL and CompuServe ultimately gave way to YouTube,
MySpace, Facebook, and Twitter, built in part on the legal protections afforded by the statute.
The immunity provided to the service providers obligates those companies to expeditiously
remove materials posted without consent of the copyright holder after the copyright holder has
given appropriate notice.102 If the recipient of the notice believes she has the right to post the
96
Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990) ("Copyright law protects an author's expression; facts
and ideas within a work are not protected.").
97
See Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (Section 411(a) registration requirement represents
a claim-processing, non-jurisdictional, prerequisite to suit).
98
17 U.S.C. §107 (2013). See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 581 (1994) (discussing fair
use factors and distinguishing between parody and satire); Faegre & Benson, LLP v. Purdy, 367 F. Supp. 2d 1238,
1244 (D.Minn. 2004) (applying parody analysis to a website critical of plaintiff’s website).
99
See, e.g., Dan D'Ambrosio, 'Eat More Kale' trademark flap more complex than simple slogan, BURLINGTON
FREE PRESS (Nov. 24, 2011) http://www.burlingtonfreepress.com/article/20111124/BUSINESS08/111240307; Joe
Harris, North Face Wants South Butt Sanctioned, Courthouse New Service (Aug. 9, 2012, 11:05 AM)),
http://www.courthousenews.com/2012/08/09/49143.htm (trademark parody settlement allegedly violated within two
days. The new but dissimilar mark continues to remind the public of the bad press earned by the plaintiff).
100
Digital Millennium Copyright Act of 1998, Pub. L. No. 105-304, 112 Stat. 2860 (1998) codified 17 U.S.C. §
512(d) (2012).
101
Id. at § 512(c). See Jonathan Zittrain, A History Of Online Gatekeeping, 19 HARV. J. LAW & TECH. 253, 265-
266 (2006) (“§512(a) exempted the most passive intermediaries -- ISPs -- from any responsibility for copyright
infringement for the data they carried …. Section 512(c) was directed at OSPs: those who actually stored
information for consumers for mass distribution to others….”).
102
See, e.g., 17 U.S.C. § 512 (c).
(c) Information Residing on Systems or Networks at Direction of Users.—
(1) In general. — A service provider shall not be liable for monetary relief, or, except as
provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by
reason of the storage at the direction of a user of material that resides on a system or network
controlled or operated by or for the service provider, if the service provider -
(A)(i) does not have actual knowledge that the material or an activity using the material on the
system or network is infringing;

information, she can issue a counter-notice.103 Failure by the service provider to reinstate the
removed material will terminate the safe harbor protection.104
In the past two years, takedown notice requests have exploded from 112,584 in the week of
October 17, 2011 to a height of 6,498,012 on October 7, 2013, before receding slightly.105 In the
month of October 2013 alone, Google reported the total number of infringing URL requests to
be 27,150,592.106 These requests were made by only 3,665 copyright owners.107 The data can be
exploited to make many public policy arguments, but the massive numbers of infringing websites
suggest the problem of unauthorized copyright infringement is not focused on heavily trafficked
websites such as Facebook, Twitter, and YouTube, but is instead focused on commercial piracy
conducted through millions of anonymously hosted websites. Moreover, since the number of
takedown requests has grown exponentially with the release of the Google transparency data, it
suggests that the data is being used by copyright holders as a blueprint to wage a more
aggressive anti-piracy campaign against the commercial pirates.
The data highlights a growing trend to seek takedowns of URLs linking to infringing content
in addition to the host of the content itself. Takedown notices given to owners of infringing
websites often serve no practical purpose. Pirate web host companies are typically located in
non-U.S. territories, which do not respect takedown requests; the identifications provided by the
web operators are fictitious; and these service providers are often operating in concert with the
website owner. Reducing access to these sites by eliminating them from Google, Bing, and
Yahoo searches is thought to be the only remaining remedy. The unauthorized content remains
publicly available, but the amount of illegal traffic may be reduced somewhat.
C. Trademark
Social media has created new and vexing challenges for trademark managers. The
consequence of a many-to-many publisher paradigm is that trademarks are bandied about in an
informal manner, online marketplaces and auction sites lawfully sell authentic trademarked
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from
which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable
access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case
in which the service provider has the right and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds
expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be
the subject of infringing activity.
103
17 U.S.C. §512(g).
104
Id. at §512(g)(2)(C) (potentially infringing copyrighted material must be reinstated “not less than 10, nor
more than 14, business days following receipt of the counter notice” unless the service provider is notified that a
legal action has been filed so as to permit time for a legal proceeding to commence).
105
Google Transparency Report, http://www.google.com/transparencyreport/removals/copyright/ (last visited
Oct. 30, 2013).
106
Id.
107
Id.

goods without control by the trademark holders,108 and fraudulent goods are pouring into the
country. For example, “[i]n Fiscal Year 2012, there were 22,848 intellectual property rights
seizures with a manufacturer’s suggested retail value of $1.26 billion. Goods from China
accounted for 72% of the total manufacturer’s suggested retail value for all IPR seizures.”109
The large number of seizures may not predict or correlate to the totality of counterfeit
merchandise making its way through U.S. commercial channels, but undoubtedly the number is
large. As noted in Tiffany v. eBay,110 for example, “during the last six weeks of 2004, 125
consumers complained to eBay about purchasing 'Tiffany' items through the eBay website that
they believed to be counterfeit.”111 Of course, there are many sites beyond eBay. Formal and
informal steps to monitor the use of company trademarks should be adopted, whether the process
includes a professional monitoring service, or merely Google alerts. In many ways, the internal
policing utilized by eBay provides a model for an effective consumer protection and trademark
management protocol.112
Keywords are another important indicator for online trademark concerns. Google’s AdWords
program is illustrative: “AdWords is Google's program "through which advertisers purchase
terms (or keywords). When entered as a search term, the keyword triggers the appearance of the
advertiser's ad and link.”113 By purchasing a competitor’s brand as the keyword, the purchaser
places its paid ad above and adjacent to the native search results.114 While the search companies
have become more sensitive to the propriety of such sales, the history of litigation on this issue
makes it very difficult to win an action against the search firms.115 At the same time, however, an
action may be successful against a company which aggressively purchases the trademarks of its
competitors to misdirect customers.116 When employees regularly see a competitor’s
advertisements appearing next to the employer’s Internet search results, the employer should
investigate.
In the context of the workplace, these trends suggest two important steps that can be taken.
1. Training on Trademark and Brand Management. Whether the employer likes it or
not, every potential, current and former employee is a brand manager, communicating about or
utilizing the brand on a daily basis. Trademarks are often incorporated into URLs and email
addresses so that every comment made by every employee is subtly tagged with the corporate
initials. Posts made on behalf of the employer, as well as those made despite the best efforts of
the employer, all end up in the online information marketplace. Employee misconduct may be
108
See Tiffany, Inc. v. eBay, Inc., 600 F.3d 93, 97 (2d Cir. 2010) (“[Tiffany] does not -- nor can it, for that
matter -- control the ‘legitimate secondary market in authentic Tiffany silver jewelry,’ i.e., the market for second-
hand Tiffany wares.”).
109
Intellectual Property Rights, U.S. Customs and Border Patrol Fact Sheet 2012,
http://www.cbp.gov/linkhandler/cgov/newsroom/fact_sheets/trade/ipr_fact_sheet.ctt/ipr_fact_sheet.pdf (last visited
Oct. 30, 2013).
110
Tiffany, supra note 95 at 98.
111
Id. at 98-99.
112
Id.
113
Rescuecom Corp. v. Google, Inc., 562 F.3d 123, 125 (2d Cir. 2009).
114
Id.
115
See, e.g., Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137, 1144 (9th Cir. 2011).
116
See Binder v. Disability Group, Inc., 772 F. Supp. 2d 1172, 1176-77 (C.D. Cal. 2011).

posted as a YouTube video,117 or customers may pull out cell phone cameras if they do not like
the service being received. Every employee needs to understand how to respond to these
situations.
 Communications training should provide clear guidance on how to use the
correct trademarks, names, style sheets and abbreviations for the employer so
the trademarks do no become diluted or genericized.118
 Brand management training should include both customer service training to
keep one’s professional demeanor, and training on when to call for help rather
than letting a situation escalate.
 Training should demonstrate how to use social media wisely rather than
provide a list of prohibitions and services to avoid.
2. Enlist Brand Police. A company’s employees know the products and services better than
any other group. As both brand counterfeiting grows and the outlet for counterfeit goods
increases, employees should be trained on how to report potential counterfeiting and incentivized
to do so.119 Forty percent of trademark piracy enforcement actions are in the handbag and wallet
sector, with an additional fifteen percent in watches and jewelry.120 By value, clothing industries
lose as much as industries in these two accessories categories.121 But the data reflect only public
seizures. Many other forms of trademark counterfeiting may occur in formats that do not readily
lend themselves to enforcement by customs and border patrol. Diligence on the part of
employees will encourage support in their efforts to protect a company brand and better
understand the economic costs of piracy.
D. Trade Secret
Trade secret law may be the most expansive area of intellectual property protection. Both law
and litigation have exploded. “No legislation prohibiting trade secret misappropriation existed
before 1980. Today, forty-seven states have a civil statute, and over half of those states also have
specific criminal statutes. In 1996, Congress passed a federal statute criminalizing trade secret
misappropriation….”122 Trade secrets protect a narrow sub-category of confidential information.
Although state laws vary, the Uniform Trade Secrets Act (UTSA) provides a useful summary for
117
E.g., Dirty Dirty Dominos Pizza, YOUTUBE (Apr. 15, 2009),
http://www.youtube.com/watch?v=OhBmWxQpedI.
118
See Ryan Strom, Step Away From The Trademark: Avoid “Genericide,” HENNEPIN LAWYER (Nov. 20,
2009), http://hennepin.timberlakepublishing.com/article.asp?article=1378&paper=1&cat=147.
119
See generally, Tiffany, supra note 95 at 96-98 (discussing efforts to protect auction site from falsely
identified trademarked goods).
120
Intellectual Property Rights Fiscal Year 2012 Seizure Statistics 6, U.S. CUSTOMS AND BORDER PROTECTION
OFFICE OF INTERNATIONAL TRADE (2012), available at
http://www.cbp.gov/linkhandler/cgov/trade/priority_trade/ipr/ seizure/fy2012_final_stats.ctt/fy2012_final_stats.pdf.
121
Id.
122
David S. Almeling, Seven Reasons Why Trade Secrets Are Increasingly Important, 27 BERKELEY TECH. L.J.
1091, 1092-1093 (2012) (citing David S. Almeling et al., A Statistical Analysis of Trade Secret Litigation in State
Courts, 46 GONZ. L. REV. 57, 67-68 (2011) (“Over the past three decades, trade secret litigation in federal courts has
grown exponentially, doubling roughly every decade, while federal litigation has decreased overall”)); Foreign and
Economic Espionage Penalty Enhancement Act of 2012, 18 U.S.C.A. §§1831-39 (2013).

U.S. law. Under the UTSA 123 a trade secret is

Information, including a formula, pattern, compilation, program, device,
method, technique or process, that: (i) derives independent economic value, actual
or potential, from not being generally known to, and not being readily
ascertainable by proper means by, other persons who can obtain economic value
from its disclosure or use, and (ii) is the subject of efforts that are reasonable
under the circumstances to maintain its secrecy.124
The expansion of U.S. trade secret law coincides with the proliferation of the Internet, and
ease with which corporate data can be transferred using computers, USB drives, and mobile
devices. Foreign and domestic computer espionage has become rampant. 125 The four-month-long
incursion by Chinese government officials into the press at the New York Times highlights the
modern approach to long-distance espionage.
Investigators … suspect the hackers used a so-called spear-phishing attack, in
which they send e-mails to employees that contain malicious links or attachments.
All it takes is one click on the e-mail by an employee for hackers to install
“remote access tools” — or RATs. Those tools can siphon off oceans of data —
passwords, keystrokes, screen images, documents and, in some cases, recordings
from computers’ microphones and Web cameras — and send the information
back to the attackers’ Web servers.
Michael Higgins, chief security officer at The Times, said: “Attackers no
longer go after our firewall. They go after individuals. They send a malicious
piece of code to your e-mail account and you’re opening it and letting them in.”126
Since spear-phishing attacks can begin with any employee with log-in access, careful training
is essential. Companies may also wish to consider treating those crown jewel trade secrets
separately from the confidential information that is maintained on a regular basis. For companies
that have computer code, chemical formulae or other extremely high-value, discrete digital
assets, those assets should be isolated from the rest of the computer network.127 (Isolated may not
mean air-gapped or sneaker-networked since any USB port can result in content walking out or
corrupted data leaching in.128 Worse, the isolation may increase the likelihood of missing virus
123
Unif. Trade Secrets Act §1 (amended 1985), 14 U.L.A. 538 (2005). See Elizabeth A. Rowe, Saving Trade
Secret Disclosures on the Internet Through Sequential Preservation, 42 WAKE FOREST L. REV. 1, 2 (2007)
(identifying need for adaptations of trade secret law for Internet disclosure).
124
Unif. Trade Secrets Act, supra note 110 at §1.
125
See Nicole Perlroth, Hackers in China Attacked The Times for Last 4 Months, N.Y. TIMES, Jan. 31, 2013, at
A1 (“While computer security experts say China is most active and persistent, it is not alone in using computer
attacks for a variety of national purposes, including corporate espionage. The United States, Israel, Russia and Iran,
among others, are suspected of developing and deploying cyberweapons.”).
126
Id.
127
See Dale G Peterson, Air Gaps Dead, Network Isolation Making a Comeback, DIGITAL BOND (July 19,
2011), http://www.digitalbond.com/blog/2011/07/19/air-gaps-dead-network-isolation-making-a-comeback/.
128
Allegedly the Stuxnet virus which disabled Iranian nuclear centrifuges was inserted with a USB stick – as
was a virus which recently shut down a major power turbine control system at a U.S. water facility. Jim Finkle,
UPDATE 1-Malicious virus shuttered U.S. power plant –DHS, REUTERS (Jan. 16, 2013, 5:53 PM),
http://www.reuters.com/article/2013/01/16/cybersecurity-powerplants-idUSL1E9CGFPY20130116.

patches and security updates.)

As with other intellectual property areas, employee training is critical. While some trade
secret information is clearly marked, there are many kinds of information that employees learn
on the job which are never clearly identified. For example, if the layout of a manufacturing
process provides a significant operational advantage over general state of the industry, then the
employer should have clear policies prohibiting videotaping in the area. The rationale should be
explained clearly so employees understand and can protect the trade secret.
Other trade secrets may be disclosed unintentionally. Social media updates listing travel or
mentioning visitors to an employer’s facilities might indicate that merger negotiations or other
sensitive talks are taking place. Internal news may leak from employees who themselves do not
understand the implications of the information to financial markets. Unless the employees
understand how the information may be used in a manner that risks exposing trade secrets or
triggers Securities and Exchange disclosure obligations, those employees will not know to avoid
the disclosures.
The problem is only growing. The temptation to use a personal smart-phone at the office,
check Facebook, download pictures, and receive personal content while at work, exacerbates the
security challenge. To protect employer trade secrets, maintain confidentiality, and reduce risks
of attacks, investment, planning, and training are essential for organizations of all sizes.
III. LABOR & EMPLOYMENT LAW

A. Introduction
Social media has become an important part of the communications strategy for most business
organizations. They ask their employees to post to Facebook, maintain LinkedIn accounts, Tweet
on behalf of the employer, and promote the company in a variety of websites, blogs, and online
communities. At the same time, however, employers are very concerned about the unflattering
content posted by the more disgruntled employees, potential trade secret information posted by
naïve employees, and the ownership of the social media presence following separation with an
employee.
In each phase of an employee’s life-cycle with her employee, policies and laws affecting
social media are rewriting the ongoing employment relationship. At the pre-employment stage,
the concern is overreaching on the part of the employer; during employment, the challenge is to
balance the policies of the employer with the rights of an employee under the National Labor
Relations Act; and following employment, the difficulties stem from the power an employee has
over the social media assets rather than the company.
B. Screen Potential Employees
One of the favorite – but questionable – uses of social media is to perform a public search of
potential employees as part of a company’s intake screening process. By June of 2009, at least
45% of employers responding to a CareerBuilder survey were using social media sites to screen

potential employees.129 The practice makes a certain amount of common sense. If material
information is readily available on the Internet that was missed, then embarrassment or
potentially even liability could arise.130 At the same time, such searches could create more
liability than they resolve and should be conducted carefully.
1. Avoid screening for impermissible information: Employers are prohibited from
discriminating in their hiring on the basis of protected categories such as age, race, gender,
veteran status, and disability status.131 A public Facebook page may include pictures of the
potential employee which may disclose gender and race characteristics; the profile may provide
age and religious affiliation; and content on the site may disclose disabilities. Further searches
will reveal even more. At the same time, employers will generally avoid hiring candidates who
have publicly available content with “inappropriate photographs,” “drinking or drug use,” “bad-
mouth[ing] their previous employer,” “poor communication skills,” “discriminatory comments,”
“[false] qualifications,” or “confidential information from [a] previous employer.”132
To address the tension between the benefits of online screening and the risks of engaging in a
discriminatory practice, employers can shield themselves from the online search. Some very
helpful suggestions are provided by World Compliance:
 Have a third party, someone not involved in the decision making process,
perform the search. This person would be responsible for filtering out
discriminatory or irrelevant information, and focusing on relevant matter.
 Maintain a record of the searches and results which can be used at a later date
to refute any accusations of malfeasance.
 Ensure that the information gathered online can be corroborated or
supplemented via other channels as this could be incomplete or inaccurate.
 Request the candidate to sign a waiver both authorizing and acknowledging
use of the information gathered online to be used in the application.
 The employer should condition an employment offer based upon the
successful completion of a search.133
The critical aspect of this process is to limit access to information gathered online from the
remainder of the decision making process. For each candidate rejected, the non-discriminatory
reason for the rejection should be noted. For each candidate that continues to be vetted, none of
the information that could lead to a discriminatory decision should be connected to the personnel
129
Rosemary Haefner, More Employers Screening Candidates via Social Networking Sites,
CAREERBUILDER.COM (June 10, 2009, 4:20 PM), www.careerbuilder.com/Article/CB-1337-Getting-Hired-More-
Employers-Screening-Candidates-via-Social-Networking-Sites/.
130
E.g., claims of negligent hiring from failing to conduct an appropriate search. See Michael Jones, Adam
Schuckman & Kelly Watson, The Ethics of Pre-Employment Screening Through the Use of the Internet, in THE
ETHICAL IMPERATIVE IN THE CONTEXT OF EVOLVING TECHNOLOGIES 3 (Dirk S. Hovorka ed.., 2007).
131
See, e.g., Federal Laws Prohibiting Job Discrimination Questions and Answers,
http://www.eeoc.gov/facts/qanda.html (last visited Oct. 30, 2013).
132
Haefner, supra note 116.
133
Employee Screening, WORLD COMPLIANCE,
http://www.worldcompliance.com%2FLibraries%2FWhitePapers%2FEmployee_Screening.sflb.ashx&ei=N9oOUf2
aHMGbygGZmYDoAg&usg=AFQjCNH4d8_0MFQbbwTH5ELLcNmFDGCd9g&sig2=tTqvhl1R2JSy25p6mNG0
xg&bvm=bv.41867550,d.aWc&cad=rja (last visited Oct. 30, 2013).

file. Instead, that information should be kept separately. The participants of the hiring process
should not go online in search of information. The instructions to avoid trolling the web for
information should be explicit and enforced. In this way, the information used by the people
making the hiring decisions will not be based on information that could lead to discrimination or
claims of discrimination.
2. Do not directly access employee’s social media accounts: After a teacher’s aide in
Michigan was suspended for refusing to provide a password to her Facebook account,134 and a
Maryland Department of Public Safety employee was asked to provide his log-in and password
to check for gang affiliations,135 state and federal lawmakers have responded. Ten states have
enacted legislation prohibiting the requirement to provide employers passwords while dozens
more have considered such legislation.136
Although the laws vary among jurisdictions, California and Michigan exempt employers
from seeking the log-in information of existing employees as part of an otherwise appropriate
ongoing investigation.137
Other employers seek to skirt the law by asking the employee to log-in and then let the
employer shoulder surf or peek over the shoulder to gain access to the content without
demanding the password itself.138 This process is highly suspect and likely to invite litigation as
well.
Although no cases have been reported, shoulder surfing opens the employer to precisely the
same allegations of discrimination as the Internet surfing – only conducted in a more demeaning
and direct manner that begs for a legal response. A Facebook page showing friends,
relationships, and photos kept private, could well expose religious affiliations, national origin
status, sexual preference, age, medical conditions, and other information related to protected
classifications. As a screening matter, the practice should be avoided in all but the most sensitive
of positions, and then, only in jurisdictions where it is not illegal.
134
Lance Whitney, Democrats to employers: Stop asking for Facebook passwords, CNET (May 10, 2012, 8:04
AM), http://news.cnet.com/8301-1009_3-57431724-83/democrats-to-employers-stop-asking-for-facebook-
passwords. See also, Bob Sullivan, Govt. Agencies, Colleges Demand Applicants’ Facebook Passwords,
MSNBC.COM (Mar. 6, 2012, 6:13 AM), http:// www.nbcnews.com/technology/govt-agencies-colleges-demand-
applicants-facebook-passwords-328791.
135
Charles Cooper, Fork over your Facebook log-on or you don't get hired. What?, CNET, (Mar. 24, 2012, 4:00
A.M.), http://news.cnet.com/8301-1023_3-57403315-93/fork-over-your-facebook-log-on-or-you-dont-get-hired-
what.
136
See Employer Access to Social Media Usernames and Passwords 2013, National Conf. of State Leg., (Oct.
23, 3013) http://www.ncsl.org/research/telecommunications-and-information-technology/employer-access-to-social-
media-passwords-2013.aspx (The ten states are Arkansas, Colorado, Illinois, Nevada, New Jersey, New Mexico,
Oregon, Utah, Vermont and Washington.).
137
Erika C. Collins, Implementing U.S. and International Social Networking Regulations, N.Y. L. J. (Oct. 22,
2012), http://www.newyorklawjournal.com/PubArticleFriendlyNY.jsp?id=1202575483064.
138
Disclosing the password is typically a violation of the Terms of Use for the service; suborning such violation
to gain unauthorized access of a computer could create liability under the federal Computer Fraud and Abuse Act,
though such excessive use of the statute has yet to be explored.

C. National Labor Relations Board ("NLRB") on Social Media Usage

Social media has become an increasing headache for the management of employees. The use
of social media has become a common way for employees to communicate amongst themselves
and such communication is protected under the National Labor Relations Act (“NLRA” or
“Act”).139 While Section 7 of the Act focuses on unionizing, Section 8 and other aspects of the
NLRA apply to all working conditions – whether unionized or not.140 As a result, the NLRB
plays an important role in shaping corporate policies and activities involving social media.
As a threshold matter, it should be noted that while the NLRB has acted on three social
media appeals,141 those appeals may be rendered invalid due to the constitutional status of the
member appointment status at the time of the decisions.142 Despite this, the decisions are very
instructive and reflect the current thinking of the NLRB.
1. The National Labor Relations Board Broadly Interprets Mutual Aid: On December
14, 2012, in Hispanics United of Buffalo, Inc.,143 a 3-to-1 NLRB decision upheld an earlier
administrative ruling that use of Facebook constituted a legitimate forum for employee mutual
aid and protection. In Hispanics United, five employees were terminated for conducting a
conversation on Facebook regarding a complaint being brought by a part-time worker at the
nonprofit organization.
The NLRB found the five employees were unlawfully discharged for their Facebook
conversation on a public Facebook page, which was protected concerted activity within the
meaning of Section 7 of the NLRA. Section 7 of the NLRA 144 provides that “employees shall
have the right to self-organization, to form, join, or assist labor organizations, to bargain
collectively through representatives of their own choosing, and to engage in other concerted
activities for the purpose of collective bargaining or other mutual aid or protection ....”145 As the
panel explained, “in her initial Facebook post, Cole-Rivera alerted fellow employees of another
employee’s complaint …. By responding to this solicitation with comments of protest, Cole-
Rivera’s four co-workers made common cause with her, and, together, their actions were
concerted….”146
The NLRB applies a four-part test to determine whether communications constitute
concerted activity and therefore any discharge would violate labor laws.
[T]he discipline or discharge of an employee violates Section 8(a)(1) if the
following four elements are established: (1) the activity engaged in by the
139
29 U.S.C. §§ 151-169 (2011).
140
Id. at §§157-58.
141
Hispanics United of Buffalo, Inc. and Ortiz., 359 NLRB No. 37 (Dec. 14, 2012) (slip op.); Karl Knauz
Motors, Inc. d/b/a Knauz BMW and Becker, 358 NLRB No. 164 (Sept. 28, 2012) (slip op.); Costco Wholesale Corp.
and United Food and Commercial Workers Union, Local 371., 358 NLRB No. 106 (Sept. 7, 2012)(slip op.).
142
Noel Canning v. NLRB, 705 F. 3d 490 (D.C. Cir. 2013) (cert. granted June 2013) (“the appointments were
constitutionally invalid and the Board therefore lacked a quorum, we grant the petition for review and vacate the
Board's order.”). The invalid recess appointments have since been confirmed by Congress.
143
Hispanics United of Buffalo, Inc., supra note 130 at 1.
144
29 U.S.C. §157.
145
Id.
146
Hispanics United, supra note 130 at 2.

employee was “concerted” within the meaning of Section 7 of the Act; (2) the
employer knew of the concerted nature of the employee’s activity; (3) the
concerted activity was protected by the Act; and (4) the discipline or discharge
was motivated by the employee’s protected, concerted activity.147
The NLRB found that Cruz-Moore’s “‘mutual aid’ object of preparing her co-workers for
group action was implicitly manifest from the surrounding circumstances.”148
Despite the general protections of Section 8, under Atlantic Steel Co.,149 an employee can
lose protection of the NLRA if the actions are sufficiently inappropriate.150 In the modern
Facebook parlance, rants are not protected. But the posts in Hispanics United were not rants. The
Facebook posts were not made at work, the criticisms were related to job performance, and there
were no outbursts. As such, even though the Facebook posts singled out an employee for
criticism, they were with the “mutual aid or protection” clause of Section 7. 151 Importantly, since
the Facebook criticism was directed to fellow employees, the access to posts by non-employees
is not relevant to the analysis.152
2. Rants Compared: While Hispanics United has become the most significant NLRB
concerted activity decision, there have been numerous additional actions. Acting General
Counsel Lafe Solomon has issued two reports summarizing decisions that addressed this
question of protected concerted activity, or activity involving mutual aid and support.153 He has
also authored a third report focusing on social media policies.154
The reports compare those cases involving concerted employee activity or mutual aid and
support with those situations where the employee turned to Twitter or Facebook to complain
about a supervisor or co-worker.155 Where the worker of a home improvement store complained
on Facebook about being reprimanded “in front of the Regional Manager,” she posted to
Facebook on her cell phone.156 One co-worker “liked” the post, two others commented.
Additional posts by the employee followed. What did not follow was a discussion involving
other employees and the working conditions of the employer. Sympathy by other employees is
not enough to turn complaints or rants into protected speech.157
147
Meyers Industries, 268 NLRB 493, 497 (1983) (Meyers I), remanded sub nom. Prill v. NLRB, 755 F.2d 941
(D.C. Cir. 1985), supplemented 281 NLRB 882 (1986) (Meyers II), affd. sub nom. Prill v. NLRB, 835 F.2d 1481
(D.C. Cir. 1987).
148
Hispanics United, supra note 130 at 37-3.
149
245 NLRB 814 (1979).
150
Id. (“The Atlantic Steel factors are: (1) the place of the discussion; (2) the subject matter of the discussion;
(3) the nature of the employee's outburst; and (4) whether the outburst was, in any way, provoked by an employer's
unfair labor practice.”).
151
Hispanics United, supra note 130 at 37-3.
152
Id.
153
Lafe Solomon, Report of The General Counsel, Memorandum OM 12-31 (Jan. 24, 2012); Lafe Solomon,
Report of The General Counsel, Memorandum OM 11-74 (Aug. 18, 2011) (summarizing Facebook-based
employment disputes).
154
Lafe Solomon, Report of The General Counsel, Memorandum OM 12-59 (May 30, 2012) (addressing the
overbreadth in social media policies).
155
Solomon, OM 12-31, supra note 142 at 6-9.
156
Id. at 6.
157
Id.

3. Invalid, Overbroad Employment Handbooks: In the NLRB decisions of Costco and

Knauz BMW, the panels held that the policies provided to employees were unenforceably
overbroad. The concern flowed from the extent to which written policies could be treated as
extending beyond the workplace to cover the conduct of workers seeking to collectively bargain
or seeking mutual aid and comfort to address their working conditions.
In Knauz BMW, one of the two handbook provisions in question addressed courtesy:
(b) Courtesy: Courtesy is the responsibility of every employee. Everyone is
expected to be courteous, polite and friendly to our customers, vendors and
suppliers, as well as to their fellow employees. No one should be disrespectful or
use profanity or any other language which injures the image or reputation of the
Dealership.158
The panel found the second sentence too broad because the prohibition on profanity and
language that might harm the reputation of the dealership could be applied to employees
complaining about the dealership in coarse but emphatic tones. Since the provision could be
applied to chill collective bargaining activities and interfere with collective action, the policy was
ordered rescinded.
A policy such as this can be invalidated either because it “explicitly restricts Section 7
rights,”159 or because “(1) employees would reasonably construe the language to prohibit Section
7 activity; (2) the rule was promulgated in response to union activity; or (3) the rule has been
applied to restrict the exercise of Section 7 rights.”160 The courtesy rule of Knauz BMW was
found by the Administrative Law Judge and by the NLRB to give rise to such a construction.
By contrast, in Costco, the Administrative Law Judge did not find that employees would
construe a policy on electronic communications to include Section 7 activity, but a majority of
the panel found that the provision would be construed to do so.161 Given that the policy itself
reiterated discipline “up to and including termination” for “statements posted electronically …
that damage the Company,” the provision had potential to be read quite broadly.162 The Costco
policy seems to be a much more aggressive prohibition than the call for courtesy in Knauz BMW
handbook, but it was Costco which led to a dissent. Moreover, the questions of constitutionality
regarding the NLRB’s composition and the inconsistent decisions for various Administrative
Law Judges, introduce some ambiguity to the law regarding the scope of social media policies.
D. Interim General Counsel Holds Most Social Media Policies are Overbroad
158
Knauz BMW, supra note 130 at 1.
159
Id. (citing Lutheran Heritage Village-Livonia, 343 NLRB 646, 646 (2004).
160
Id.
161
Costco, supra note 130 at 1. The Costco rule permitted by the administrative law judge but found to violate
Section 7:
Any communication transmitted, stored or displayed electronically must comply with the
policies outlined in the Costco Employee Agreement. Employees should be aware that statements
posted electronically (such as [to]online message boards or discussion groups) that damage the
Company, defame any individual or damage any person’s reputation, or violate the policies
outlined in the Costco Employee Agreement, may be subject to discipline, up to and including
termination of employment.
162
Id.

In contrast to the ambiguity at the NLRB, the advice provided by General Counsel Solomon
has been extremely consistent, finding most social media policies are too broad or vague, in
derogation of Section 7. In all three of his memoranda, he has focused on the appropriateness of
the written employment policies involving social media. Even in many of the decisions allowing
the discharge for rants and gripes on social media sites, the NLRB General Counsel163 has
nonetheless found that published social media policy is overbroad. This explanation is a good
illustration of his analysis:
The Employer’s social media policy prohibits employees from using social
media to engage in unprofessional communication that could negatively impact
the Employer’s reputation or interfere with the Employer’s mission or
unprofessional/inappropriate communication regarding members of the
Employer’s community. …
These prohibitions would reasonably be read to include protected
statements that criticize the Employer’s employment practices, such as employee
pay or treatment. Further, the rule contained no limiting language excluding
Section 7 activity from its restriction. We noted that although the rule did contain
examples of clearly unprotected conduct, such as displaying sexually oriented
material or revealing trade secrets, it also contained examples that would
reasonably be read to include protected conduct, such as inappropriately sharing
confidential information related to the Employer’s business, including personnel
actions.164
As illustrated by the excerpt above, policies will be deemed overbroad and invalid if they
include any prohibition of misconduct that could be construed to suggest protected Section 7
activity is prohibited along with content appropriately banned.165
Given this very narrow approach, the third Solomon report reproduced the Walmart social
media policy in full because it was the only report to pass review. 166 Policies “prohibiting
employees from ‘disparaging’ the Employer in any media” will invariably violate Section 7.167
Rules prohibiting soliciting (presumably donations, Girl Scout cookie sales, etc.) could include
soliciting for union activities and are similarly overbroad.168 As discussed below, limitations on
communicating confidential information – rather than protecting trade secrets – were overbroad
as well.169
The Walmart policy survives, in part, because it is simply written and uses examples to
illustrate what the rules are trying to encompass. It also is short and limited. The sections on
163
Solomon, OM 12-31, supra note 142 at 2 (“Cases concerning the protected and/or concerted nature of
employees’ social media postings and the lawfulness of employers’ social media policies and rules continue to be
presented to the Regional Offices and are then submitted to the Division of Advice in Washington for my
consideration.”).
164
Id. at 12.
165
See Solomon, OM 12-59 supra note 143 at 3.
166
Id. at 22-24.
167
Solomon, OM 12-31, supra note 142 at 3.
168
Id. at 6.
169

confidentiality and public disclosure are reminders rather than policies.

Maintain the confidentiality of [Employer] trade secrets and private or
confidential information. Trades secrets may include information regarding the
development of systems, processes, products, know-how and technology. Do not
post internal reports, policies, procedures or other internal business-related
confidential communications.170
The private information protected, in the context of the paragraph shaped by the list. The list
does not include employee information that would be of interest to unions. The statement to
respect financial disclosure laws is a simple reminder that laws exist.171 Given the limited scope
of the Walmart policy, companies face a choice: Elect to risk ignoring the position of the NLRB
Interim General Counsel; adopt Walmart-like policies that give only modest policy guidance; or
rely on more general anti-discrimination policies, anti-harassment policies, and trade secret
provisions in the employee handbooks. At present, none of the options is ideal.
E. Post Employment Planning through Social Media Policies
For general employees who make personal use of their social media accounts, the Walmart
policy, or reliance on general employment policies as relating to social media will likely suffice.
A different policy is required, however, relating to employees and independent contractors who
operate social media accounts as agents for the employer. These provisions must limit conduct
while the relationship exists and terminate all rights to use social media following the
relationship. At the same time, the employer must understand that a former employee is in no
worse position than any other person in posting social media content about the company.172
Policies that attempt to extend gag orders on former employees will be unenforceable as
overreaching.
1. Overbroad Policies Limiting Social Media for General Employees Appropriate for
Social Media Agents: The various social media policies found to be overbroad by NLRB
General Counsel Solomon focus on the interference those policies have on the ability of
employees to act collectively regarding wages, working conditions, and similar issues. This
concern is not present for policies which govern how an agent of the employer conducts herself
when exploiting social media on behalf of the employer. The Facebook page and Twitter feed
used to send coupons to customers should never be used as the forum to discuss working
conditions.
 Social policies for employees and independent contractors communicating on
behalf of the employer can place specific content limits for these posts. Often a
company has multiple social media outlets. Each medium may have a very
specific audience, subject matter, tone, frequency, and function. A Twitter feed
dedicated to shareholder relations may read quite differently than one used to
170
Id. at 23.
171
Id. (“Respect financial disclosure laws. It is illegal to communicate or give a “‘tip’ on inside information to
others so that they may buy or sell stocks or securities. Such online conduct may also violate the Insider Trading
Policy.”).
172
The exception to this general rule applies to trade secrets and information protected by privacy or
confidentiality laws, where some post-employment obligations remain.

promote customer interaction.

 Official social media channels of the employer necessarily imply the content is
the official position of the company. This must be clearly stated and policies
must prohibit any content inconsistent with the official policies. Moreover,
such policies must be enforced. This also applies throughout the organization.
 Policies limiting how each social media outlet is exploited on behalf of the
employer should be clear that these rules are limited; it is the use of the
employer’s particular Facebook pages or Twitter feeds. The policies must
explicitly state that they do not extend to content on channels other than those
operated by the employer.
2. Policies Should Prohibit Violations of Other Laws and Regulations: If the CEO or
other senior officials wish to have a chatty or friendly social media platform to communicate
their philosophical views, that feed should be separate from the marketing feeds of the company.
Mere separation may be insufficient, however, as Federal securities laws, including Regulation
FD, specify the manner in which market information can be disclosed.173 Facebook is not yet an
approved alternative. The issue came to the forefront when Netflix’s own Reed Hastings posted
that “Netflix's streaming hours ‘exceeded 1 billion hours for the first time,’” arguably
distributing material market information not communicated in a press release or other approved
method under the regulation.174
The SEC ultimately determined not to take any action against Hastings, instead issuing a
report to provide guidance to issuers regarding disclosures involving social media.175 Instead
it updated its 2008 Reg. FD guidance to specifically incorporate new “push” technologies
such as Facebook and Twitter to the list of RSS feeds and email alerts.176
The report does not embrace social media however. Instead, it cautions that “issuers to
examine rigorously the factors indicating whether a particular channel is a “recognized channel
of distribution” for communicating with their investors.”177 The occasional, off-hand comment
that moves the market will come under increasing scrutiny and likely be met with fines. For
those companies who embrace Twitter feeds, Facebook or LinkedIn pages or other specific
social media platforms as their primary notice mechanism, the report and guidance merely
remind the issuers that these new media must be treated like other media and the public must be
able to rely on these sources for timely and complete information. Once a company elects to use
such a platform, it must do so in an ongoing and comprehensive manner so that the market
remains fully informed.
173
Regulation FD (Fair Disclosure), 17 C.F.R. § 243.100(b)(1) (2012); 65 Fed. Reg. 51,716, 51,720 (Aug. 24,
2000) (codified at 17 C.F.R. pt. 243) (Reg. FD applies where “it is reasonably foreseeable that the security holder
will trade on the basis of the information.”).
174
See Gina Hall, Hastings disagrees with SEC on Facebook disclosure, L.A. BIZ, (Feb. 4, 2013, 11:45 AM),
http://www.bizjournals.com/losangeles/news/2013/02/04/hastings-disagrees-with-sec-on.html (SEC considering a
lawsuit against Netflix CEO Reed Hastings for Facebook post regarding Netflix user milestones).
175
Report of Investigation Pursuant to Section 21(a) of the Sec. Ex. Act of 1934: Netflix, Inc., and Reed
Hastings, Release No. 69279, Apr. 2, 2013, www.sec.gov/litigation/investreport/34-69279.pdf.
176
Id. at 6.
177
Id. at 7.

3. Policies Should Establish Employer Ownership of Accounts, User Names and

Passwords: There are often problems accessing the accounts of former employees, particularly if
the separation was not entirely amicable. Companies should have their IT department establish
the corporate social media accounts rather than rely on the individuals responsible for the content
management. Since the barriers to creating social media accounts are so low, this is often
overlooked.
The policies should be explicit to both parties, that the employer owns any account created
for the employer and that the employee may not terminate, disable, or interfere with the account.
The policy should state that the employer is the user of the account; that the employee operates
as agent for the employer; and that the user name and password are property of the employer
which the employee must make available to the employer upon request. These policies help
avoid tension between the right to access an account without authorization, and the interplay
with state and federal computer use laws.178
The username associated with each social media account should be tied to a corporate email
account to which the employer has full access. If the employee leaves without providing the
password, access to the email account will usually allow the employer to submit a new password
request and reinstate access.
4. Policies Should Establish Employer Ownership of Intellectual Property: As indicated
in the discussion on intellectual property rights, stressful legal ownership battles over intellectual
property rights can be avoided through clear social media policies that; establish employer
ownership of the assets, detail usage rights by current employees, and clearly prohibit continued
use to former employees.
 Copyright. The policy should provide that the copyright ownership in all
online posts made on behalf of the employer initially vest in the employer or
are transferred to the employer. Under copyright work-for-hire rules, any
copyrighted work created by an employee in the scope of her employment is
the authorship of the employer.179 In the context of social media, however,
ambiguity could arise regarding the scope of employment, so having this made
explicit by contract or handbook will help to resolve the dispute. For
independent contractors and social media services, there is no employee
relationship, so no work-for-hire vesting of copyright in the employer. As a
result, in those situations there will be no rights to the content in the employer
unless there is an express, signed agreement.
178
See, e.g., Computer Fraud and Abuse Act, 18 U.S.C. 1030(a)(4) (2012); United States v. Rodriguez, 628
F.3d 1258 (11th Cir. 2010) (liability for exceeding authorized access under the employment policies); United States
v. John, 597 F.3d 263 (5th Cir. 2010); Int'l Airport Ctrs., LLC v. Citrin, 440 F.3d 418 (7th Cir. 2006). Cf United
States v. Nosal, 676 F.3d 854, 785 (9th Cir. 2011) (“the phrase ‘exceeds authorized access’ in the CFAA does not
extend to violations of use restrictions.”).
179
See 17 U.S.C. § 101 (2012); Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989).

 Trademarks. Many social media policies prohibit unauthorized use of

trademarks on social media sites, including the exhibition of trademarks, or
trade dress on clothing worn by the employer. Since this would cover such
conduct as posting a picture of employees picketing while in uniform, such
policies are a violation of Section 7.180 Prohibiting commercial use of the
trademarks, in contrast, directly implicates the economic and goodwill interests
of the employer. Since a commercial use may be a nuanced distinction in many
situations, the policy should give examples. Use of the trademarks in
conjunction with a product or service not provided by the employer is
prohibited. Permitted non-commercial uses may include photographs of the
employee at community events, or on amateur sports teams, or be a part of
factually accurate descriptions of the employee’s employment information.
 Data, Followers and other Assets. Companies understand the value in
customer lists, often treating them as confidential, or as trade secrets. The data
available about website visitors, lists of social media followers, and other
aggregations of factual information, is likely to be outside U.S. copyright
protection but still highly valuable.181 Rather than relying on copyright or trade
secret laws, employers should contract with employees that the employer owns
this data, and that the employee may not use data obtained while employed for
the employee’s personal use, either during, or after the employment
relationship.182
 Trade Secrets. One of the problems identified by General Counsel Solomon
in many social media employee policies is the tendency to equate trade secrets
with confidential information.183 Confidential information related to trade
secret categories can be limited, while under the NLRA, confidential
information related to wages and working conditions can be shared with fellow
workers and union organizers. The employer should provide clear guidance
with examples as to the types of information that constitute trade secrets,
information subject to state and federal privacy laws, and confidential
information about which the employer has a duty not to disclose.184 This
180
Solomon, OM 12-59, supra note 143 at 3-4.
181
17 U.S.C. § 102(b). See Feist Pubs., Inc. v. Rural Tel. Svc. Co., Inc., 499 U.S. 340 (1991) (factual
information such as that gathered for a telephone book white pages has insufficient originality to obtain copyright
protection).
182
See Anne Fisher, PhoneDog v. Kravitz: Who owns your Twitter followers, you or your employer?, CNN
MONEY (Dec. 13, 2012, 12:08 PM), http://management.fortune.cnn.com/2012/12/13/twitter-work-employees
(discussing settlement of PhoneDog v. Kravitz, 2012 WL 273323 (N.D. Cal. 2012), in which plaintiff claimed
ownership of Twitter followers at a valuation of $2.50 per follower).
183
Solomon, OM 12-31, supra note 142 at 14 (“Interests protected by trademark laws … are not remotely
implicated by employees’ non-commercial use of a name, logo, or other trademark to identify the Employer in the
course of engaging in Section 7 activity.”).
184
We also found that the Employer’s rule requiring employees to maintain the confidentiality of
the Employer’s trade secrets and private and confidential information is not unlawful. Employees
have no protected right to disclose trade secrets. Moreover, the Employer’s rule provides sufficient
examples of prohibited disclosures (i.e., information regarding the development of systems,
processes, products, know-how, technology, internal reports, procedures, or other internal

information must be kept confidential. Given the critical risk of losing trade
secrets, policies should be well crafted to protect the most important
information , rather than being vague and unenforceable.
5. Advertising Policies must take Endorsement Guidelines and Publicity Rights into
Account: For employees posting on behalf of the employer, it is important that the employer’s
policies reinforce the obligations under the FTC endorsement guidelines to prohibit false
promotion of the employer, false disparagement of the competitors, or false suggestions of
endorsements by third parties.185 It is extremely easy for a well-intended employee to start
salting the online commentary about goods or services, so the FTC guidelines should be
incorporated into employee handbooks to avoid liability. In this way, the employer can better
manage the conduct of the employees and take action if the guidelines are violated.
IV. CONCLUSION
Social media exploits copyrights, trademarks, and publicity rights to enable the public to
communicate with the public. The paradigm shift to the many-to-many model of social media
has irrevocably transformed the law involving commercial speech, intellectual property, and, of
course, employment law. Employers represent just one community of speakers within the new
many-to-many environment, but that group shapes public policy. Sometimes operating as
advertisers, other times as broadcasters, and often just as additional voices among the throngs,
employers must navigate the unmapped shoals of social media by carefully understanding their
role in crafting policies for their general employees, more targeted policies for those employees
and independent contractors who speak on behalf of the enterprise, and policies for the
protection and exploitation of intellectual property assets – particularly trade secrets.
An employer will be most successful by addressing each aspect of the social media
communication separately, with particular rules for trade secrets, internal confidential
information, copyrighted material, aggregated data, trademarks, publicity rights, and
endorsements. Neither sweeping prohibition nor overbroad endorsement will achieve an
employer’s goals and obligations. In social media, as in all things, moderation guides the course.
Perhaps the best advice is some of the oldest, “[g]ive thy thoughts no tongue, [n]or any
unproportioned thought his act.”186 This sage advice remains as true for conduct in social media
as it has been throughout the ages.
business-related communications) for employees to understand that it does not reach protected
communications about working conditions. [Walmart, Case 11-CA-067171]
185
See 16 C.F.R. §255.1(a).
186
THE TRAGEDY OF HAMLET, PRINCE OF DENMARK, WILLIAM SHAKESPEARE, ACT I, SCENE 3 (Spring Books,
London) (Polonius’ advice to Laertes).
See thou character. Give thy thoughts no tongue,
Nor any unproportioned thought his act.
Be thou familiar, but by no means vulgar. …
Give every man thy ear, but few thy voice;
Take each man's censure, but reserve thy judgment. …
Neither a borrower nor a lender be; …
This above all: to thine ownself be true,
And it must follow, as the night the day,
Thou canst not then be false to any man.

Social Media in The Workplace - From Constitutional To Intellectual Property Rights

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NKU CHASE LAW + INFORMATICS INSTITUTE WORKING PAPER SERIES

Social Media in the Workplace –

Northern Kentucky University

to managing these changes in the modern workplace.

I. MANY-TO-MANY: THE CONSTITUTIONAL NATURE OF NEW MEDIA ............ 2

I. MANY-TO-MANY: THE CONSTITUTIONAL NATURE OF NEW MEDIA

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scariest-thing-about-the-newspaper-business-isnt-prints-decline-its-digitals-growth/266482/ (Since 2006, “$20

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been constitutionalized.69 Publicity rights are properly considered a form of limitation on

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public and constitutional interests.”76

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whether and to what extent the new work is “transformative.”83

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II. INTELLECTUAL PROPERTY LAW – COPYRIGHT, TRADEMARK, TRADE

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U.S. law. Under the UTSA 123 a trade secret is

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patches and security updates.)

III. LABOR & EMPLOYMENT LAW

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C. National Labor Relations Board ("NLRB") on Social Media Usage

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3. Invalid, Overbroad Employment Handbooks: In the NLRB decisions of Costco and

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confidentiality and public disclosure are reminders rather than policies.

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promote customer interaction.

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3. Policies Should Establish Employer Ownership of Accounts, User Names and

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 Trademarks. Many social media policies prohibit unauthorized use of

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