Are Email Confidentiality Notices Just Plain Stupid?

Confidentiality notices, often automatically pasted at the end of email correspondence are annoying, aren’t they? More annoying still are those trails of emails sent back and forth when the parties hit “reply” a few times and a brief email chat becomes a 10-page string loaded with repetitive boilerplate notices. Here’s the one that I use, which looks similar to or exactly like the ones sent by many other attorneys:

CONFIDENTIALITY NOTICE: This facsimile/e-mail message is intended only for the person or entity to which it is addressed and may contain CONFIDENTIAL or

PRIVILEGED material. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender and destroy all copies of the original message. If you are the intended recipient but do not wish to receive communications through this medium, please so advise the sender immediately.

Does this obnoxious prophylactic effort actually protect anyone’s confidentiality, or is it just plain stupid? Some commentators suggest as much. (See goldmark.com, Jeffrey Goldberg, 8/14/03 [“counting the ways” in which email confidentiality notices are “stupid.”]). The reasons for why attaching a confidentiality notice to emails may be considered a waste of effort and space at least and a serious mistake at worst include: (1) it gives an ambiguous directive; (2) it projects a contradictory intent; (3) it has no legal effect; and (4) it can eviscerate any legal effect that it might otherwise have.

The ambiguous directive of the confidentiality notice says that the “unauthorized” recipient is prohibited from reviewing or distributing the email message, while also directing that take action by contacting the sender and destroying the message. How do I know that I am not the intended recipient unless I review the message? Since the message was, in fact, addressed to me (because that’s how I got it), then aren’t I the de facto intended recipient? How do I know that I’m not supposed to review the message until after I have read it and then found the notice at the end of the message? And, who are you, Sender, to tell me what is prohibited; what authority do you have to tell me what to do with the emails sent to my address?

Very often, confidentiality notices at the end of email messages directly contradict the intent of the sender. This is the case if, for example, the information contained in the email is a press release or corporate memo, directing the recipient to disseminate its contents to other employees. And what does “may contain confidential or privileged material” mean? Is it or isn’t it confidential? How am I supposed to know what portions of the message are or are not confidential or privileged? Recently, I took on a lawsuit where it turned out that my new legal adversary was an old friend. My friend/new adversary sent me an email, stating that he was glad to have me as his adversary so that we could make head-way on some protracted issues in the case and, in the same email, made friendly inquiries about me and my family. At the end of the email was a confidentiality notice. Common sense told me that nothing in that particular email could be deemed confidential. Nor did any privilege exist, no matter what the email contained.

Nearly all of my legal adversaries send me emails with a confidentiality notice at the end of their emails. The problem for them is that there is no way their messages are kept confidential. In fact, we, as attorneys, are looking for those emails which contain incriminating admissions and/or contradictory statements that can be used against our adversaries. Such correspondence is used in court all the time as evidence to support legal positions and, if the court papers are filed online as in Federal Court proceedings, these communications are available to anyone who wishes to see them.

So, there are some prime examples of why confidentiality notices at the end of emails are totally useless. Now, here’s why they are simply a bad idea: First, it can lull the sender into a false sense of security by the very harshness of the message’s tone and implied legal implication of “prohibition.” A confidentiality notice has no inherent legal effect. Second, if used routinely, they can make all of your email communications non-confidential. If you make all of your email communications confidential, when it is clear that you do not have a “reasonable expectation of confidentiality” for every message you write, then you are not making specific efforts to protect certain information, as distinguished from all information. You must intend to protect certain information as confidential.

Only when such notices are used carefully and sparingly do they have a chance to actually protect confidential information transmitted by email. The basic legal standard is a “reasonable expectation of confidentiality,” which does not exist by the mere force of the words in the notice; such an expectation must be accompanied by another reason for having such an expectation.

To simplify, your author suggests that you keep the following in mind when you want to attempt to keep information confidential. Common sense should tell you that you cannot force someone to keep your secrets just by demanding that they do. There must be some outside agreement or requirement that your secrets will be kept by a particular recipient. Therefore, the confidentiality notice is like a reminder or a back-up of sorts, indicating that you are proceeding under a previously-established agreement between you, the sender, and another party, who is the recipient; it reaffirms your commitment to keep your secrets secretive.

Think Before You “Cease and Desist” Somebody

Author: Mona Conway

Intellectual property attorneys have at least one standard form in their protective arsenals against infringement: the “cease and desist” letter. For the novice business owner or individual receiving such correspondence, this can be quite worrisome. The reason is that such letters do not tend to merely state, “Knock it off, Buddy,” they threaten litigation (usually of the federal kind) and contain statutory citations, which appear to be cryptically forceful. And they surely are packed with a punch. Many federal intellectual property statutes allow for coveted remedies such as attorney’s fees, costs, treble and punitive damages. Perhaps unlike your run-of-the-mill cease and desist letter, the ones served to prevent intellectual property infringement are to be taken most seriously.

But, what if the infringement is actually a good thing for the intellectual property holder? What if the infringer’s actions actually resulted in a benefit to the holder of some intellectual property right?

Here is a case in point. Long Island Newsday created a clever ad for the iPad, which, as luck would have, went “viral” on YouTube. The ad says that Newsday’s iPad app is better than the paper in all kinds of ways, except for one. The video then depicts a man attempting to swat a fly with the device (instead of a newspaper), which, of course, shatters into a million pieces. The 30-second clip received 600,000 views in just days and was well on its way to receiving even more attention, when the ad was abruptly pulled. Apparently, all that good, free publicity was not worth seeing the iPad smashed to bits. Some call this decision by Apple one of the biggest business blunders of 2010.

Now, what if the infringement is just too ridiculous to be taken seriously? Can sending a cease and desist letter be bad for business in addition to being a tremendous waste of time and legal fees? Here is a case in point. Last year, attorneys for the National Pork Board (NPB) sent a 12-page cease and desist letter to ThinkGeek, Inc. for using the slogan, “Unicorn – the new white meat” on its website, thinkgeek.com. The “infringer” launched the fake product on April Fool’s Day (um, as a joke). The NPB owns the mark “The Other White Meat.” ThinkGeek publically apologized, albeit sarcastically, by responding, “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn.” It seems that the April Fool’s stunt ended up making fools of the NPB when their letter became disclosed to public reaction. News agencies and bloggers have had a field day poking fun at the NPB’s way-too-serious reaction to the parody of their mark.

Finally, the Nestle matter should advise intellectual property attorneys to think carefully before sending out their cease and desist letters, because the backlash of such action could be much worse than the infringement. Greenpeace posted a graphic video on YouTube about how the food conglomerate, Nestle produces palm oil in a way that negatively impacts an endangered orangutan population. This is where the battle began. In response, Nestle had the video pulled for copyright issues. Greenpeace then fired-up its resolve and resources by using Facebook to get its message across to the public. Nestle then made a slew of what it admits to be “rude” remarks to its Facebook “fans,” which resulted in an onslaught of bad press. In the end, Nestle changed its source of palm oil, folding under the pressure of consumer outrage, which would not have been so forceful had it not been for Nestle’s determination to fight for its intellectual property rights.

Facebook Lamebook Trademark Infringement

A “Lame” Response From Facebook

About a year-and-a-half ago, two young graphic designers started their own website to parody the social networkings of Facebook.com subscribers. The two guys from Texas created “Lamebook.com” to poke fun at content on Facebook which is considered funny, absurd and/or “lame.” All of Lamebook’s content is submitted by fans who have found pictures or posts on the social networking site of Facebook. The content is reviewed by Lamebook and posted to its site. Lamebook lets you peruse categories such as “Photos,” which tend to be awkward, strange or embarrassing photos posted by Facebook users; “typOHs!”, featuring amusing typographical errors found in Facebook postings; “WTFights” which displays the uglier interactions between Facebook subscribers; and “Douchebags and Douchebaguettes” which seems to highlight the lamest of the lame. Basically, Lamebook does with Facebook what the Comedy Central show “Tosh.O” does with YouTube; it features the best of the worst of what’s on the Web.

In March of this year, Lamebook heard from Facebook’s attorneys. Facebook’s counsel demanded that Lamebook cease and desist from using the Lamebook name, asserting that Lamebook infringes on Facebook’s trademark as well as dilutes it. Simply stated, the legal premise of “dilution of trademark” occurs when a trademark loses its distinctiveness due to another’s use of a similar mark; infringement occurs when a trademark is used by another in a manner which is likely to cause “consumer confusion.” In addition, Facebook demanded that Lamebook change the look of its website, although the rationale for this demand is unclear.

Lamebook thereafter retained counsel to defend Facebook’s allegations. Lamebook’s counsel attempted to resolve the matter with Facebook, primarily by explaining that the Lamebook mark is a parody of the Facebook mark, a form of expression protected by the First Amendment of the U.S. Constitution. But, Facebook wouldn’t budge. In July, Facebook attorneys sent a letter to Lamebook, threatening a lawsuit if Lamebook refused to (1) “abandon all applications to register marks containing the term ‘LAMEBOOK’”; (2) “permanently cease use of the LAMEBOOK mark or any mark with the BOOK suffix and agree not to register such marks”; and (3) “permanently cease use of Facebook trade dress.” (Emphasis added).

Facebook has not objected to the use of any content by Lamebook (Facebook has no rights to that); Facebook’s problem with Lamebook is the name and the logo. As an attorney who practices in the area of intellectual property, I understand Facebook’s obligation to protect its mark. It is axiomatic that a trademark which is not protected is lost. In other words, if you do not protect your mark, then you lose your mark. It is for this reason that every intellectual property attorney has a strongly worded, yet boilerplate sample “cease and desist” letter stored in their computer drive.
However, Facebook’s demands seem overreaching. Since Facebook has probably been parodied in every medium across the Globe thousands of times, Facebook’s attorneys must necessarily pick and choose which battles they will initiate for Facebook’s trademark protection. Their efforts to protect Facebook’s mark must be legitimate. If they are not legitimate, they are simply unfair, given the extraordinary resources of this colossal corporate entity.

According to Lamebook, whose site was created and is maintained for fun, “Facebook didn’t get the joke.” As a result, Lamebook claims that it is being picked on by “a multi-billion dollar behemoth” whose sheer bullying power is enough to shut down the website. Lamebook is so out-resourced by Facebook, that it has started a fund raising campaign to pay for its preemptive lawsuit against Facebook, which was filed on November 4, 2010 in a Texas Federal District Court. The suit seeks a declaratory judgment, allowing Lamebook to operate and maintain its website and to use the term “Lamebook” without fear of future liability. The Complaint outlines its adversary’s power, stating that Facebook has over 400 million monthly users of its website, making it one of the most heavily trafficked websites in the World.

Conway Business Law Group is a civil litigation firm that offers a comprehensive range of legal services to protect the legal rights and best interests of small business owners and individuals in Nassau and Suffolk Counties.

Facebook commenced a trademark infringement lawsuit against Teachbook.com in August of this year. Teachbook is a social networking site for educators to assist each other with lesson plans for their students (you know; to be better teachers).