October 10, 2018

Protecting Your Content and Brand

Copyright law can provide protection for your website content and code. Trademark law can protect your brand. Patent protection may be available for websites which embody a novel "business method". Obtaining a patent, however, is an expensive and lengthy process.

Copyright protection is available automatically, upon fixation of a copyrightable work in a tangible medium. Software code, the text and graphics that appear on a website, even the "look and feel" of the site, can be copyrightable. However, copyright law protects only the particular expression and not the ideas contained in it. Thus, it may be possible for someone to paraphrase the text, or rewrite the code to achieve the same result, without necessarily infringing the copyright in the original.

Copyright notice is no longer required, although it is recommended. Likewise, registration of the copyright is not required, but is a prerequisite for bringing a lawsuit for infringement, as described in greater detail below.

The U.S. Copyright Office has a number of informative circulars available on its website which explain what works are subject to copyright, the duration of copyright, registration procedures, and more, at www.copyright.gov. (Click on "circulars and brochures" under the "publications" heading.)

Registration of Copyrights: As the US Copyright Office explains at https://www.copyright.gov/registration/, even though registration is not a requirement for protection, the copyright law provides registered works with several advantages to encourage copyright owners to registrater. Among these advantages are:

  • Registration establishes a public record of the copyright claim
  • Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.
  • If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
  • If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
  • Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies. For additional information, request Publication No. 563 "How to Protect Your Intellectual Property Right," from: U.S. Customs Service, P.O. Box 7404, Washington, D.C. 20044. See the U.S. Customs Service Website at https://www.cbp.gov/ for online publications."

Registration is a prerequisite for bringing a copyright infringement suit. Under normal circumstances, the Copyright Office can take more than six months to issue a registration unless special expedited registration procedures are followed and additional fees paid.

Copyright Notice: U.S. law no longer requires use of copyright notice, the standard form being composed of the copyright symbol ©, the year of publication, and the copyright holder's name. Nevertheless, it still helps to include a copyright notice on copyrighted material, including a website, so infringers cannot claim, as a defense, they were unaware the material was protected. For more information on copyright notice, see https://www.copyright.gov/circs/circ03.pdf.

Trademarks Any word or symbol can theoretically obtain trademark status, if it is used to identify the source of goods or services, and is not descriptive, generic, primarily a surname, or otherwise incapable of being protected on public policy grounds, such as curse words or national symbols.

Trademarks need not be registered to assert trademark protection. In the U.S., common law trademark rights can arise through use of a mark, in the geographic areas where such mark is used.

The United States Patent and Trademark Office website contains a wealth of information about trademarks at www.uspto.gov/main/trademarks.htm. (Click on "Basic facts about Trademarks"). It contains sections on the registration of marks, the advantages of registration, the registration process, and use of symbols, such as ® or ™.

Registration of Trademarks: Although federal registration of trademarks is not required to assert trademark protection, it does provide a number of advantages as follows:

  • Constructive notice to the public of the registrant's claim of ownership of the mark;
  • A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. Registration as a basis to obtain registration in foreign countries; and
  • The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Trademarks may also be registered at the state level, generally through the relevant Secretary of State's Office. Most states have adopted some version of the Model State Trademark Act. State registration cannot provide national benefits, like federal registration can, and is considered duplicative of such benefits within a state. State registration remains a viable option primarily when Federal registration is unavailable, for example, because a mark is being used only locally, i.e., not in Interstate Commerce.

Federal registration of marks works only works to protect marks in the United States.Each country protects marks used within its boarders and maintains its own registration system. Many countries do not recognized common law trademark rights, so registration would be required to obtain any protection there against infringers.

Trademark Notice: Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (services mark) designation to alert the public to your claim, regardless of whether you have filed an application with the United States Patent and Trademark Office. However, you may use the federal registration symbol ® only after the United States Patent and Trademark Office actually registers a mark. Also, you may use the registration symbol ®with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Trademark Searches: Prior to adopting a new mark, it is prudent to do a search of existing trademark registrations and applications to see if you will be infringing on marks already in use or reserved by the filing of an application on an "intent-to-use" basis. Because common law trademark rights might exist in favor of a third party, a search should also include databases likely to reveal such use, such as telephone directories, domain names, trade publications, etc. There are commercial search companies that specialize in producing trademark "availability" or "clearance" search reports. However, interpreting the search results may require the engagement of a trademark lawyer to determine the likelihood of a successful infringement claim, to the extent that the report reveals similar (but not identical) marks.

Does a third party's use of your website content or brand qualify as "fair use"?
The fair use doctrine permits others to lawfully use your mark in comparative advertising/promotions, non-commercial use, and in news reporting and commentary.

With respect to copyrighted content, fair use considerations include:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

The "fair use" provisions of the Copyright Act can be found at 17 U.S.C. § 107 .

Policing marks and fighting infringers
The Trademark Act of 1946, commonly referred to as the "Lanham Act" (15 USC § 1051 et sq.), provides a federal cause of action for trademark infringement, trademark "dilution", and false designation of origin, such as misrepresenting or "passing off" one's product or services as another's. The Lanham Act also provides for a federal claim based on misleading, partially correct, or untrue statements regarding your product(s).

Most states provide causes of action for unfair competition and under anti-dilution statutes, such as California's Business & Professions Code §14330. State law claims may be filed along with a Federal Lanham Act case. State law also may offer remedies for commercial disparagement, if untrue statements are made by third parties regarding your goods and/or services.

The Anticybersquatting Consumer Protection Act (the "ACPA"), contained in an amendment to the Lanham Act, provides a claim for incorporating a third party's trademark in a domain name that "results in consumer fraud and public confusion as to the true source or sponsorship of products and services." The trademark owner may sue under the ACPA, where such owner believes that the accused cybersquatter has a bad faith intent to profit from usage of the mark and registers, traffics, or uses a domain name that is identical or confusingly similar to the mark.

A mark need not be registered to assert rights under the ACPA. However, the accused cybersquatter may avoid a finding of bad faith if the court finds it had reasonable grounds to believe that its use of the domain name was fair or otherwise lawful. Thus, there is an advantage to having a registered mark, as the registration provides constructive notice to all of a claim to trademark rights.

The Internet Corporation For Assigned Names and Numbers ("ICANN") offers several domain name dispute resolution policies. The most frequently used policy is the Uniform Dispute Resolution Policy (the "UDRP") since it covers the .com, .net, .org., .aero, .biz, .coop, .info, .museum, .name, and .pro domains. The UDRP provides a simplified administrative proceeding for resolving domain name disputes. All ICANN- accredited registrars include the UDRP provisions in their domain name registration agreements. Remedies are limited to canceling the domain name registration or transferring ownership to the complainant.

More Information
For more information on obtaining and protecting brands and content on the internet, see "Obtaining and Protecting Domain Names" and "Posting Third Party Content and Linking" on this site.