Legal implications of Using Periscope – Interview with Tatiana J. Whytelord – Unsolicited Mass Text Messages – Episode 30 – IP Fridays

Tatiana J. Whytelord

Tatiana J. Whytelord

Tatiana J. Whytelord talks about her new business model for IP attorneys. Ken talks about the legal implications of using the live streaming app Periscope as well as issues with unsolicited mass text messages.





Rolf Claessen and Kenneth Suzan


Episode 30 – June 12, 2015


RC =   Rolf Claessen

KS =    Kenneth Suzan

TS = Tatiana J. Whytelord


Hi.  I am Tatiana J. Whytelord.  I am the President and Founder of Intelligent Brand Extension and an attorney and solicitor and you are listening to IP Fridays.


KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.


RC:      Welcome to Episode 30.  Our shows have been downloaded over 20,700 times and last month we had 2,630 downloads.  That makes us very happy.  Thank you for listening and being loyal listeners to our show.


Today our special guest is Tatiana J. Whytelord and she tells us about a new business model for IP lawyers so stay tuned.  This is really cool, at least I thought that.  Before that, Ken is telling us about unsolicited mass text messages and the legal implications of Periscope.  So Ken, why don’t we start with Periscope?


KS:      Rolf, Social Media is an agent for change.  People, companies, and brands have found ways to incorporate social media into almost every aspect of life.  Popular Apps such as Twitter, Facebook, Instagram, and Snapchat allow users to easily share pictures and videos of their lives.  The new Twitter-based App, Periscope, now allows users to stream live video for the world to see – this is relatively new ground for the social media space.


Since Periscope is one of the newly launched live video streaming services, the company is bound to run into some legal troubles.  Legal issues stemming from live streaming Apps can range from copyright infringement to invasions of privacy.


Like many people, celebrities enjoy their privacy.  Live streaming a celebrity can potentially open up doors for the celebrity to sue whoever is filming them without consent.  Using a live video stream, with advertising present and a celebrity can also land you in trouble.  A-list actress Katherine Heigl had a $6 million dollar law suit with Walgreens because they tweeted a picture of her without her consent.  Given that this proceeding focused on a photograph, imagine the issues connected with a live video broadcast worldwide.


The popular hit TV show, Game of Thrones, recently had its season premier.  During that performance, there were allegedly Periscope users who were re-broadcasting the show via their Periscope feeds putting copyright rights to a test.  Periscope claims that they will shut down every account that attempts to illegally stream.  More specific regulations and laws will likely be in the works to keep this App running smoothly without copyright troubles.


Periscope was again in the spotlight during the widely aired fight between Pacquiao and Mayweather.  Periscope received some negative attention due to fans that were at the fight streaming it live via the App.  People pay considerable money to watch these fights, either in person, or on demand.


Periscope states that they are not responsible for content that is posted, and it is all under the discretion of the user.  Periscope’s Terms of Service notes “we do not endorse, support, represent or guarantee the completeness, truthfulness, accuracy, or reliability of any content or communications posted via Periscope or endorse any opinions expressed via Periscope.”


Meerkat, another video streaming App similar to Periscope and located in Israel is likely to face similar issues and potential scrutiny.


Periscope opens many doors to the social media world and is bound to gather popularity in the coming years.  Watch for possible challenges to the App’s services and/or changes in the law to accommodate this new way for people to interact in real time on the Internet.


RC:      So be careful about what you are doing with Periscope.  Ken, you also had an interesting story about unsolicited text messaging by the Navy.


KS:      Rolf, unsolicited text messages and phone calls are usually not welcomed.  Some may wonder if sending automated messages without consent is legal or illegal.  The advertising agency Campbell-Ewald is now making an attempt to fend off a class action lawsuit over accusations that the company sent a mass text on behalf of the U.S. Navy.


Under the Telephone Consumer Protection Act, it is illegal to make a call or send a message using an automated system without consent.  The text message at issue was sent to around 100,000 recipients, with the phrase, “Destined for something big? Do it in the Navy.”


The advertising agency offered to settle the case, but the offer was not accepted.  The 9th Circuit ruled last September that the case could proceed forward despite an offer to settle the claims for $1,500 per violation.  The advertising agency has appealed to the U.S. Supreme Court.


It is unknown whether this advertising agency was aware that it is against the law to send the unsolicited text messages.  Under the federal statute, a consumer can recover up to $500 for each violation per call, and up to $1,500 per call if the consumer can establish that the caller violated the federal statute knowingly and willfully.


There is a $500 penalty for each message that was sent.  If you multiple $500 by 100,000, that adds up to a hefty fine.  Past cases that are similar include Papa John’s Pizza who faced a $250 million spam lawsuit when they sent 500,000 unsolicited messages.  That case settled for 16.5 million dollars.


The U.S. Navy is a not a party to the case.  The appeal is pending at the U.S. Supreme Court, and oral arguments are due in the next term, which will begin in October and end in June 2016.


RC:      Thank you Ken.  Now it is time for our special guest today.  I had the chance to interview Tatiana during the INTA meeting in San Diego.




RC:      I am very excited to be joined by Tatiana J. Whytelord.  Tatiana is the owner and founder of Intelligent Brand Extension LLC in New York and her business is catering to mid-cap companies as well as startup companies and her specialty is that she is not only consulting regarding trademarks but also finding the connection to the business side of things.  Thank you very much for being on the show Tatiana.


TW:     Thank you Rolf.  It is a pleasure to be here.


RC:      So how would you define today’s innovation scene and how does it differ from ten years ago?


TW:     The innovation scene has changed considerably today.  I think ten years ago if you had this kind of innovation a lot of companies, groups and even practitioners and professionals would be somehow cynical and today it is so proliferate that actually big companies are creating groups just dedicated to innovation whether inside or outside of the groups and then they are investing in startups, they are investing in incubators.  That, in itself, is a tremendous change because they know that they won’t survive.  I think on the individual side, more and more entrepreneurs are being introduced to the market every day and people have phenomenal ideas.  Some of them are very viable, some are less viable, and then there are also a lot of vehicles for funding.  There are a lot of new venture capital firms, a lot of new smaller firms that not only cater to innovation on the technology side but also innovation on the brand side.  You know, people around the world are very creative these days so definitely I would think that in terms of innovation we have probably tripled what we had ten years ago as availability in the market.


RC:      So you would say that innovation is done mostly in the small companies who are really innovative, they are just bought up by the large corporations?  Is that a trend that you are seeing?


TW:     It is a trend but what we are seeing also is that the larger companies are creating almost entire setups of innovation people and previously, certainly during the times that I was counsel for some of the larger companies in the world, innovation was an integral part of marketing but it was a small part of marketing.  Today innovation is a stand-alone element.  There are massive resources dedicated to innovation even within big groups and part of that resource is to go and find startups and invest in them.


RC:      Before the interview you told me that legal and marketing can actually go hand-in-hand, especially for startups and it is not uncommon at the moment, for example, marketing people ask the lawyers if they can use a certain name for a product but you say that you have something different in mind.  Explain.


TW:     Yes, I think what I or we have in mind is something more complete.  Certainly what one has seen historically probably you know most of your users and subscribers whether on the legal side or the business side will always say that if you are outside counsel you are not really involved in the business and marketing strategy of the company so they come to you with just an end result and all you do is implement without being involved at an early stage on what can and cannot be done.  If you are in-house counsel they involve you too late.  What we try to do is fill that gap from the beginning.  So, in other words, there is a way, particularly when you talk about innovation and startups, there is a need for legal advice and marketing and business strategy to be combined at the outset because these companies need to protect their IP, they need to protect their innovation, they need to structure themselves correctly.  But they also need marketing strategy to coherently penetrate the market that they are going after and to know their competition and to have a new offering.  So if these two don’t go hand-in-hand, there is a disconnect.  So what we have attempted to do it to gap that disconnect and I think nowadays we are increasingly seeing the benefit of the legal community and the marketing and business community to talk together continuously and to be able to work together, if I may say, more cohesively.


RC:      So you actually want the clients to come to you and find you before they write their marketing plan, basically, and at a very early stage.  So how do you educate your clients to come to your office or to call you at such an early stage?  How do you do that?


TW:     I think what we pride ourselves in, and that’s thanks to the marketing side and the business strategy side of our business because in the end we are strategists.  That’s what we are really strong at and we pride ourselves at being able to identify what’s missing.  So whoever comes to us, within the first couple of conversations, we are pretty much able to identify whether they are not going in the right direction or they are going too far in the wrong direction.  So we try and show them what is needed and how it is needed by simply studying what they are doing.  A lot of work goes into actually studying the brand or the technology or anything that it is in order to be able to provide them even our thoughts on what the next steps should be and that is often what they really like.  That we really delve into it before they even become clients.


RC:      That’s really interesting.  I mean, it’s really difficult to grasp the ideas of the client before they are even aware of some of the ideas that you might present to them.


TW:     Exactly, and that’s I think what they like.  The types of companies that we deal with are certainly very fast, very evolving, lots of new ideas.  But they are oftentimes not the most structured companies in terms of strategy, particularly.  So there is a lot going on but if you think about it they are silos so they are going all over the place but if you ask them about the big picture and the long term picture they know what it should be but everything between A and Zed, or some of it, is missing.  We can see that because that is our experience.


RC:      You take them by the hand.


TW:     We take them by the hand so that they are then go and do what they like to do which is busy and go and create and innovate and you know buy other companies and whatever it is that they do and not have to worry about all of those details that we are good at.


RC:      I assume that in your day-to-day experience there is some advice that you give again and again.  Always the same things.  What are the top five mentioned things that you tell your startup clients?


TW:     I think the startup clients definitely have to create a solid legal structure from the beginning.  Protect your IP.  It doesn’t matter who says what, ultimately what you are selling is your IP, so protect it.  Clarify your offer.  Define your target and focus your efforts.  So don’t go on tangents, you know.  The world is a big place but only part of it is relevant to what you are doing.  If you are properly protected, if you have the right strategy in terms of your IP, and if you focus, target and define your business and where it is going, then you are doing a good job.


RC:      Can we dive into clarifying the target because that seems to be something that I also see with my startup clients that I have that is sometimes overlooked.  Some of the clients, they just have this great idea and they say okay we have to market this and this is the marketing plan and we can break even in two or three years or whatever but the real goal or the target is missing.  Is the target selling the company in ten years?  Is the target being a market leader in the field in twenty years or in three years or what is actually the target?  So how do you get the clients to think about this and are there any methods that you use to take them by the hand and identify the target?


TW:     Yes, and it’s interesting that you should say that because we obviously headquartered in New York but we are global and we cater to clients from around the world.  We have clients from Europe, Australia, U.S., South America and many other places and they all have this problem.  Wherever the startup is from, interestingly, they have exactly that problem.  What they think their target is and what we make them understand or see what their target is at the end of the exercise are generally different.  Usually we have to do a workshop with them where we basically get the most relevant people of the client firm, whether it is just one person or ten people, into a room for about two or three days and we really make them think about a certain number of things.  So, it’s a lot of work and it usually takes us about two or three weeks to prepare for the workshop and then it is about a two to three day workshop, depending on the complexity, and then it is another good month to two months of creating the document that becomes essentially their bible for that particular target.  Then we manage the process with them so that there are no mishaps because a lot of the times, because we are not implementers, we have a collective of very good implementers who work with us, but if the client prefers to work with another service provider, we are okay with that.  But a lot of the times we will say please manage them for us because we have to be sure that they follow the strategy that leads us to the target.  So, yes, to answer your question, there are, I wouldn’t say formulas, but there are very specific kinds of questions that lead you to defining what your target is.


RC:      If people want to get in touch with you, what would be the easiest way?


TW:     Anything really.  They can call me, e-mail me, look on our Website.


RC:      Your website is?


TW: and we are here and we would love to talk to anyone.  Everyone comes to us probably because they heard about us or they’ve read about us and usually they like what we offer because we like to listen to them.


RC:      Thanks for being on the show Tatiana.


TW:     Thank you very much.  It was a pleasure.


KS:      That’s it for this episode.  If you liked what you heard, please show us your love by visiting and tweet a link to this show.  We would be so grateful if you would do that.  It would help us out to get the word out.  Also, please subscribe to our podcast at or on iTunes or  If you have a question or want to be featured in one of the upcoming episodes, please send us your feedback at  Also, please leave us a review on iTunes.  You can go to and it will take you right to the correct page on iTunes.  If you want to get mentioned on this podcast or even have comments within the next episode, please leave us your voicemail at .

You have been listening to an episode of IP Fridays.  The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms.  None of the content should be considered legal advice.  The IP Fridays podcast should not be construed as legal advice or legal opinion on any specific facts or circumstances.  The contents of this podcast are intended for general informational purposes only and you are urged to consult your own lawyer on any specific legal questions.  As always, consult a lawyer or patent or trademark attorney.


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