by Gary Franklin, Esq. & Kevin Henry, Esq.
Protecting Your Company’s Website: The Application of Intellectual Property to the Digital Marketplace*
Introduction The worldwide web is claimed to have
been invented in 1989 by a scientist at CERN, the European Organization for Nuclear Research.1
Since then, with re-
markable speed, the web has been trans- formed from an academic platform fo- cused on the sharing of scientific data to a significant global marketplace. In 2006, the web reached one-hundred million sites with nearly half of them being active.2
E-
commerce in the United States is predict- ed to grow by over 40% between 2011 and 2015,3
In 2010, more
reaching more than $270 bil- lion in sales accounting for 15% of total re- tail sales excluding grocery.4
than three-quarters of the North American industrial businesses that reported growth said that websites made a significant con- tribution to that growth.5
Overall, global
e-commerce revenue is forecasted to hit $960 billion by 20136 2015.7
and $1.4 trillion in Statistics aside, many of us have ex-
perienced the growing commercial impor- tance of the worldwide web in our every- day lives. The tremendous growth of e-commerce
presents a compelling question of how to best protect what has fast become an in- creasingly significant commercial asset—a company’s digital storefront, or website. Given the global reach of the web and the fact that many websites are functionally similar, branding and creative content be- comes especially important to distinguish one company’s site from another. Legal protection for a company’s creative works in the world of e-commerce, however, is not always clear. This article explores recent and noteworthy examples of what protec- tions may be available and how companies
can take advantage of them.8 We demon-
strate that the first source of protection is the Copyright Act, which protects creative content expressed on a web page, while the Lanham Act applies broader protection to a website’s overall design or “look and feel.”9
Understanding the principles dis- cussed below that guide the assessment of intellectual property claims in websites should be an integral part of the creative process to maximize legal protection of a company’s digital storefront.
Copyright Protection in General
Assessing protection of a company’s website should start with the Copyright Act. Set forth below is a general overview of the Act followed by a discussion in Part III of how the Act has been applied in the context of websites.
Scope of the Copyright Act The Copyright Act protects “original works of authorship fixed in any tangible medium of expression, now known or lat- er developed, from which they can be per- ceived, reproduced, or otherwise commu- nicated, either directly or with the aid of a machine or device.”10
Importantly, copy-
right protection does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discov- ery, regardless of the form in which it is de- scribed, explained, illustrated, or embod- ied in such work.”11
In sum, copyright only
protects the original and creative expres- sion of an idea, not the idea itself.12
Ownership and registration Only “the legal or beneficial owner” of a copyright has standing to bring an action
for infringement.13
owner of a copyright is the person or entity who authored the work.14
Generally speaking, the An exception to
this rule is where a work is made “for hire,” in which case the copyright belongs to the person or entity for whom the work was done.15
A “work made for hire” is defined
as: “(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commis- sioned for use … if the parties express- ly agree in a written instrument signed by them that the work shall be considered a work made for hire.”16
Websites are often
designed by third-party vendors who spe- cialize in this area. To establish ownership in these instances, the vendor must sign a written agreement that expressly states that the work performed is intended to be a work made for hire under the Copyright Act.17
The next step is to register the copyright with the U.S Copyright Office. While reg- istration is not mandatory for a work to be copyrighted, registration has significant benefits. Most importantly, the owner of a copyright cannot bring suit to enforce its rights unless it has first obtained a copy- right registration.18
In addition, a copyright
registration is prima facie evidence of a val- id copyright, shifting the burden to a de- fendant to prove that the copyright is in- valid.19
Finally, a copyright registration al-
lows a plaintiff to recover statutory dam- ages and attorney fees in an infringement action.20
Because websites are changed on
a periodic basis, it is important to consid- er whether the change creates a new work, which must be registered.
Enforcement “In order to establish a claim of copyright infringement, ‘a plaintiff with a valid copy- right must demonstrate that: (1) the de- fendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectable el- ements of plaintiff’s.’”21
The first element,
copying, can be satisfied by showing ac- cess to the work and “probative similari- ties,” which is a lesser standard than sub- stantial similarities.22
Because websites are
published online for all to see, access will rarely be an issue in cases alleging that a website was illegally copied. As discussed in more detail below, most claims for web- site infringement will turn on the issue of substantial similarity.
26 THE VERMONT BAR JOURNAL • WINTER 2012
www.vtbar.org
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40