Legal Question in Intellectual Property in Massachusetts

I have a situation where I created a linkedin group named after company I worked for at the time. I created it during off work hours, developed and maintained community at my own time, and it was not part of my work functions.

2 years down the company asked me some control over the group, and I granted management rights, but not ownership on the group. Now they are asking to transfer the ownership of the group to them in a legal form, arguing I might have copyright violations problems with LinkedIn. They are not offering anything to reimburse me.

What should I do? What are my options?


Asked on 4/29/10, 1:35 am

2 Answers from Attorneys

Lawrence Graves Coolidge & Graves PLLC

You certainly do not have a copyright issue here, but one of trademark may be involved. From your question, you are no longer an employee, so the only issue is the reimbursement on your side? This company can turn the matter into a clear money-loser for you if they sue you, but of course that means expenditure of legal fees on their side. Likely not, IMO, a potential for any sizeable return for you here, and there is down-side risk, but you would know the personalities involved better than I (will they decide to turn this into a crusade to avoid paying you anything?).

Happy to discuss if you want to call and bounce around some ideas. Best wishes,

LDWG

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Answered on 5/04/10, 2:39 am
Edmund Burke Edmund B Burke, Attorney at Law

If people viewing the group, or belonging to the group (or both) would be inclined to believe that the group is one that is sponsored by or affiliated with the Company, then you have a trademark problem (or tradename problem, not much different). The Company has a right to ensure that people are not deceived as to the ownership of the group, and will claim that your use of the Company name creates this (false) impression.

The Company doesn't have an absolute right to prevent others from using its name: only a right to prevent confusion in the marketplace. Sometimes the use of disclaimers can help to overcome the impression that a tradename or trademark implies a connection with the trademark owner: for instance, "This group is not sponsored by or affiliated with XYZ. It is an independent group of former or current XYZ employees and is not acting for the Company and no association should be implied."

This is not an automatic fix. But your goal is to ensure that people are not confused as to the affiliation of the group with the Company. That may be tough, if you are using their exact name, because many people would automatically assume it is a Company operation. Good luck!

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Answered on 5/04/10, 11:06 am


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