bad news is that meaningful guidelines are only just developing and few cases exist to demonstrate what success looks like. A common theme among the cases, however, points to a lack of specificity as the prime cause of failed claims for protec- tion. Claimants have not recognized the separate domains of copyright and trade dress law and have not sufficiently articu- lated their claims. These shortcomings may well be the result of the fact that websites are not necessarily designed with intellec- tual property law in mind and companies have had little to go on if they did attempt to take the law into consideration. Never- theless, given the increasing importance of websites to economic success, com- panies must give consideration to the re- quirements the Copyright Act and Lanham Act at the development stage. In addition, they need to self-audit their intellectual property to strengthen their claims, which may also serve as an opportunity to im- prove their image. Should another compa- ny emulate the content and/or design of a website, it is important to be able to spec- ify what protectable elements in fact have been infringed upon. The earlier a compa- ny can define the protectable elements of its website, and use those elements consis- tently, the more likely it will be afforded le- gal protection.


____________________ Gary Franklin, Esq., is a shareholder and Kevin Henry, Esq., is of counsel at Primmer Piper Eggleston & Cramer PC. Both gener- ally practice in the area of commercial liti- gation.


____________________ 1


out/Web-en.html. 2


100millionwebsites. 3


ter-e-commerce. 5


-companies. 6


ecommerce-sales-growth-2011-03. 4


See http://public.web.cern.ch/public/en/Ab See http://articles.cnn.com/2006-11-01/tech/ See http://www.webpronews.com/u-s-retail- See http://mashable.com/2011/02/28/forres See http://www.marketingprofs.com/charts/


2011/5452/websites-fueling-growth-in-industrial See http://techcrunch.com/2011/01/03/j-p-


morgan-global-e-commerce-revenue-to-grow- See http://www.internetretailer.com/2011/06/


by-19-percent-in-2011-to-680b. 7


07/global-e-commerce-reach-14-trillion-2015. 8


The scope of this article is limited to copyright and trade dress protection for the visual aspects of websites. We do not discuss other intellectu- al property issues that may arise in connection with websites. For example, there have been a number of trademark infringement cases relat- ing to websites, which raise other interesting is- sues, including: use of another’s trade mark in a website domain name; use of another’s trade mark in elements of a website; and use of a com- petitor’s trade mark in a “metatag” for internet search engines, so that a consumer’s search for the competitor’s website includes the infring- ing site. Other issues involve linking and fram- ing of websites. Where a website provides a link to another site, there is a possibility that the link amounts to an infringement if it suggests that sites are related or the work of the same person


www.vtbar.org


or company. Similarly, website framing allows websites to be subdivided into several parts to show content from two different sites. The use of frames in this way can mislead the viewer as to the creator of the sites. A useful analysis of cases addressing these issues can be found in Lanham Act Trademark Infringement Actions in Internet


and Website Context, 197 A.L.R. FED. 17. 9


In general there are three basic principle le- gal schemes for protecting industrial and prod- uct designs against unauthorized copying: de- sign patents, copyrights, and trade dress. How- ever, design patent protection is unsuitable and impractical when applied to the active nature of websites. See Kurt M Saunders, Trade Cite or Web Address? Trade Dress Protection for Web- site Interfaces, available at: http://alsb.round tablelive.org/Resources/Documents/NP%


202001%20Saunders.pdf. 10


11


17 U.S.C. § 102(a). 17 U.S.C. § 102(b).


12 Kregos v. Associated Press, 3 F.3d 656, 663 17 U.S.C. § 501(b).


(2d Cir. 1993). 13


14 15 16


17 U.S.C. § 201(a). 17 U.S.C. § 101. Id.


17 See Community for Creative Non-violence, et


al., v. Reid, 490 U.S. 730, 738 (1989) (explaining that work does not satisfy the requirements be- cause there is no written agreement); 108 De- grees, LLC v. Merrimack Golf Club, Inc., et al., 2010 U.S. Dist. LEXIS 28560 *(D.N.H.) (holding that there is no work for hire because, even if the work does fall within one of the nine categories, “the other statutory prerequisite has not been satisfied: nothing in the complaint suggests that the parties had a written work-for-hire agree-


ment.”). 18


17 U.S.C. § 411(a) (“no civil action for in- fringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”) Recently, the U.S. Supreme Court held that the registra- tion requirement is not a jurisdictional require- ment. See Reed Elsevier, Inc. v. Muchnick, __ U.S. ___; 130 S.Ct. 1237 (2010). Subsequent- ly, lower courts have held that the registration is nonetheless an element of an infringement claim. See e.g., Cosmetic Ideas, Inc. v. IAC/In- teractiveCorp, 606 F.3d 612, 615 (9th Cir. 2010). There is a split in authority over the question of whether an application for a registration satisfies this requirement. The court in Cosmetic Ideas noted this split and concluded that an applica- tion does satisfy the requirement. See id. at 615- 16, 621. This issue has not been addressed by the Second Circuit, but district courts have held that an application does not satisfy the require- ment. See Louis Psihoyos, v. John Wiley & Sons, Inc., 2011 U.S. Dist. LEXIS 120204 *6 (“The mere pendency of an application is, however, insuffi- cient to satisfy section 411’s registration require-


ment … ”). 19


17 U.S.C. § 410(c); Cosmetic Ideas, Inc., 606


F.3d at 621 (9th Cir. 2010) (“In fact, a defendant is in some ways aided by a plaintiff’s lack of a certificate, because if a party proceeds to litiga- tion without a registration certificate, it bears a greater evidentiary burden of proving the valid-


ity of its copyright.”). 2


17 U.S.C. § 412 (A plaintiff is not entitled to statutory damages and/or attorney fees for “any infringement of a copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after


the first publication of the work.”) 21


Peter F. Gaito Architecture, LLC, et al. v. Sim- one Development, Corp., et al., 602 F.3d 57, 63 (2d Cir. 2010) (citation omitted).


THE VERMONT BAR JOURNAL • WINTER 2012 33


Protecting Your Company’s Website


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