Website Audits: Protecting Intellectual Property in Cyberspace – Part IV

My last post discussed how to avoid infringing the the IP rights of others.  My fourth and final post on this topic will discuss how to avoid exposing YOUR intellectual property rights to infringement BY others! While you want to make every effort to avoid infringing the intellectual property rights of others, you must be just as eager to protect your own intellectual property rights in cyberspace.   Here are just a few points to consider.

Proper Use of Your Trademarks

Regarding trademarks, consider registering trademarks, including your domain name.  Further, use trademark notices appropriately and consistently throughout your website.  Check to see if any of your company’s trademarks are being used as domain names, and consider obtaining ownership of domain names that infringe your trademarks.  Obtain “legal title” to the domain name; avoid allowing legal title to be held by the website developer, the Internet service provider, or an employee.

Proper Use of Copyrights

Although creative content on a website is protected automatically by copyright, you should use copyright notices appropriately and consistently to reserve your rights and put others of notice. Further, obtaining federal copyright registration allows you to sue in U.S. federal court for infringement of your copyright.  Under certain circumstances, websites that intentionally copy the so-called “look and feel” of another site may be subject to claims of copyright infringement in the U.S.  One way to demonstrate copying is to show that the source code is identical.  It is suggested that web designers give their graphics unique names so that if a particular graphic appears on another site with that same unique name, it may be cited as further evidence of direct copying.  As between the site owner and the web designer, again, the issues related to which party is going to be the copyright owner of the elements of the site must be addressed in the contract between these parties, and the agreement should indemnify you or your client should any suit arise with respect to copying the “look and feel” of a website.

Furthermore, attempt to be proactive in prohibiting copyright infringement of your website and the elements of your website. For example, consider mechanisms to prevent “cutting and pasting” of information, text, and pictures from your website as a deterrence to copying, or at least explicitly state the prohibition of copying.   Consider using technology to track third party use of your content, and take steps to ensure that your website fully complies with and takes advantage of the Digital Millennium Copyright Act.

Patents

Although an actual “patent” is unlikely to appear on your website,  or even be accessible to third parties via your website, you should consider whether patent protection could be available for the technology or business models incorporated on your website.  You should determine whether the ideas underlying the business model used for your website and e-commerce business are adequately protected under patent law.  Further, keep in mind the novelty requirements, and in the U.S. there is a statutory one-year bar (35 U.S.C. §102), which allows you a one-year grace period after publishing information about your invention, using the invention publicly, or offering it for sale.  In other words, you must file a patent application by the one year anniversary of the first publication, use or sale of your invention to obtain a patent; otherwise, you are statutorily barred.  Outside the U.S., most countries require absolute novelty at the time of patent application filing, and, in many countries, business methods are not patentable subject matter.

Informing Users of Your Intellectual Property Rights

Website owners, particularly owners of e-commerce sites, should strongly consider placing “Terms & Conditions,” “Statement of Use,” and “Privacy Policy” documents on their website.  These are dynamic documents that must be reviewed and continuously amended throughout the life of your website in order to comply with the laws and fluid nature of the Internet.  These documents require exploring beyond the bounds of this article in order to perform an appropriate website audit.  Briefly, however, the documents should include information regarding ownership of copyrights and trademarks, explain any licenses granted to use the site, and outline prohibited activities such as linking, downloading and modifying material from the website.  Further, consider whether you will require users to acknowledge and affirmatively consent to the terms of your website before accessing particular areas of your website and what internal procedures are in place for “accountability .”

Conclusion

The issues mentioned above  are just a few of the many issues you must consider when implementing a website, whether it be for e-commerce, or solely for entertainment or informational purposes.  Although risks cannot be eliminated in their entirety, a thorough periodic website audit will certainly reduce the inherent risks associated with owning and maintaining a website.  The nature of the Internet and the laws pertaining to intellectual property are enormously complex, and it is vital to follow the dynamic legal landscape associated with the Internet and intellectual property.   As such, a thorough website audit prior to the launch of a website, and annually thereafter, will address many more concerns than outlined above to avoid the risk of litigation, identify potential infringers, remind well-meaning supporters of the valuable proprietary nature of your intellectual property rights, allow you to take advantage of any new laws and regulations, and, at the very least, give you the peace of mind to proceed with your Internet business.

Website Audits: Protecting Intellectual Property in Cyberspace – Part II

My last post discussed the importance of a website audit to help avoid infringement of the IP rights of others.  I briefly discussed selecting a domain name, and use of third party trademark on your website.  Today, hit on copyrights, and the rights of privacy and how they relate to your website.

Use of Third Party Copyrights

It may be a breach of copyright to take graphics, text, photos, music, etc., from another site and place it on your own website without the prior consent of the author.  Typically, you already own the content created by your company and its employees.  For materials you are already using “with permission,” review the existing licenses, which often restrict the type of media and the territory in which you can use the media.  For new known third party content, be sure to obtain a license to cover your proposed uses, or better yet, obtain an assignment of ownership rights in the content.  Particularly, if the third party is not your employee, you must have a valid written work-made-for-hire agreement or some other form of written agreement transferring to you all the rights in the materials.  If you obtain material from a third party and you do not have a valid work-made-for-hire agreement, you will need to get a license to use the content.  And, for unknown third party content (i.e., you are  not really sure where the content originated), get indemnity from the supplier of that content so that you can try to insulate yourself from possible negative legal ramifications.

Rights of Privacy

The Internet has made access to information easier, including access to personal information.  There is no comprehensive privacy protection legislation in the U.S. that address the collection, storage, transmission or use of personal information on or from the Internet.  Typically, in the U.S., the response has been to enact laws to target specific privacy-related issues as new technologies develop and new issues arise (e.g., Cable Communications Policy Act, the Children’s Online Privacy Protection Act, and, arguably, the USA Patriot Act.)

The European Union, however, enacted the EU Directive on the Protection of Personal Data in 1995 to harmonize privacy protection laws of the EU Member States.  The EU does not consider US laws to provide adequate protection of personal data, and generally personal data may not be transferred from the EU to the US, unless the US company signs a contract to provide adequate protection for the personal data.  Given the U.S.’s lack of a comprehensive privacy law, self-regulation plays an important role in the U.S. for the protection of privacy online.  Although the industry is motivated to self-regulate because of the fears of overly burdensome government imposed laws, self-regulation may leave open the question of whether the privacy of Internet users is actually being maintained.

My next post will discuss the rights of publicity, and linking within websites.

Website Audits: Protecting Intellectual Property in Cyberspace – Part I

Consider the following questions:  Are you considering a website for your business? Does your business already have its own website?  If you answered ‘yes’ to either question, and chances are you did (!), have you addressed the intellectual property issues  associated with having a website?

When you finally take the leap into cyberspace, and chances are, you will(!), a thorough website audit can be a crucial tool to help avoid any unpleasant legal ramifications.  By examining your website, and all agreements associated with the website, you may be in a position to avoid two main types of risk: infringing the intellectual property rights of others, and exposing your intellectual property to infringement by others.  My next series of blog posts are intended to be a non-exhaustive discussion of just a few of the many intellectual property issues to consider when performing a website audit.  Of course, pay particular attention to the laws in your home country and the location of your website’s target audience.

Avoiding Infringement of the Intellectual Property Rights of Others

As a website owner, you have the obligation to proactively take steps to avoid infringement of the intellectual property rights of others.

Selecting a Domain Name

Consider whether the domain name of your website  infringes the trademark rights of others.  “Cybersquatting” is prohibited in the U.S. under the Anticybersquatting Consumer Protection Act (15 U.S.C. §1125(d)). This act prohibits registration and use of domain names in bad faith and trafficking in domain names While domain names are often considered merely electronic addresses, trademarks are often used as domain names.  A trademark search will likely reveal any existing trademarks that are likely to cause confusion with your domain name.

Use of Third Party Trademarks

One of the areas of potential trademark infringement that is peculiar to the Internet is the use of trademarks within the body of the “meta tag” section of the source code of a website.  A meta tag includes keywords used by search engines to locate websites.  Thus, the manner in which such keywords are created and used in the meta tag section can often determine whether your website is “found” on the Internet during an Internet search.  Do not use other’s trademarks as keywords in the meta tag unless you have been given permission by the trademark owner to do so.  In other words, do not bury other business or product names that are protected by trademark law in your meta tags to increase the traffic to your website, unless you have the consent of the trademark owner.  Note, U.S. courts have held that the use of federally registered trademarks in the keywords is an unauthorized use of the registered trademark, and thus an infringement.  Furthermore, when reviewing the contract between the web designer and the website owner, you should consider provisions which place responsibility for the designation and placement of keywords and meta tags, which should be covered by the express terms of the written agreement.

Also, avoid using trademarks and logos of other companies on your website without first obtaining permission from the owner, as this may give the false impression that the owner is affiliated with or endorses your company.  However, you may use trademarks of other companies in proper comparative advertising.  Keep in mind that such “fair use” must be limited to taking only that which is necessary, so use of logos is usually not permitted without consent.

That’s all for today.  My next posting will talk about use of third party copyrights and privacy rights!