By Kevin Heinl, Brooks Kushman
A company’s website is an essential part of marketing and sales for most businesses. Your investment in your website should be protected to prevent others from unfairly competing by using confusingly similar trademarks and copying your original graphics and text. Websites may be protected primarily by copyright and trademark law.
Copyright
When a company engages a website developer, special care should be taken to assure that the company owns the copyright in the creative and original graphics and photographs, HTML code used to prepare the website, and screen displays. Internally developed websites by employees of the company are owned by the company because of the “work made for hire” provision of the United States Copyright Act. However, most websites are developed by independent contractors or website development companies and the development agreement should include an assignment of all copyrightable subject matter from the developer to the company and also should state that the website is a “work made for hire.”
A copyright notice should appear on at least the home page of the website and may be provided on all the pages of the website. The copyright notice (“Copyright 2019 owners name”; or “© 2019 owners name”) should not be the name of the website developer. The notice prevents an infringer from claiming that they did not know that they were infringing your copyright and may support a finding of willful infringement and enhanced damages. If the copyright notice is removed by the infringer from the work, it is a criminal act and may subject the person to a fine or civil liability.
Your copyright in the website should be registered with the Copyright Office before an act of infringement occurs or within 90 days of the first publication of the website. A registration certificate must be obtained before the copyright can be enforced in Federal court. By timely registering the copyright, actual damages or statutory damages and attorney’s fees are available in an infringement action. Statutory damages may be between $750 and $30,000 and up to $150,000 if willfulness is proven.
Copyright registrations may be filed by the company or its attorney for a few hundred dollars including the government filing fee. A web-based registration form is available from the Copyright Office and a copy of the work to be registered (screen prints of the entire site and/or a copy of the HTML code) must be filed with the registration application.
Trademark
Trademark law may protect the names, symbols, logos and phrases used to identify a company or its products and distinguish them from those of others. Domain names function as the address of a company on the Internet and may be protected under trademark law. If a competitor uses a confusingly similar name in connection with similar products, they may be held liable for trademark infringement.
An action for trademark infringement may be filed against a third-party who uses or registers a domain name that contain a company’s trademark. An arbitration procedure under the Uniform Dispute Resolution Policy (UDRP) can also be used to challenge the third party’s registration of the domain name including your registered trademark. Generally, the arbitration procedure is much quicker and more cost effective than litigation.
A trademark search should be conducted before selecting a new trademark to avoid potential problems with prior users of similar trademarks. A trademark search should include a search of the federal trademark register, stat trademark registers and “common law” uses. It is also imperative that a domain name is available from ICANN if the trademark is to be part of the domain name.
Trademarks registered in the United States Patent and Trademark Office (USPTO) are presumed to be owned by the company holding the registration and provides notice as a matter of law to potential infringers. A registration entitles the trademark owner to recover triple damages, and attorney’s fees for willful infringement.
To register trademarks on the federal register, an application must be filed in the USPTO that includes a specimen showing how the mark is used or intended to be used on the product (or otherwise associated with the product), the owner’s name, the date of first use, and a listing of the products identified by the trademark. A federal registration establishes jurisdiction in Federal court for enforcement of trademark rights.
Conclusion
The time to act to protect your intellectual property is at the outset when you are preparing or revising your website. The key to maximizing your company’s rights if an infringing competitor knocks-off your website that was developed with your investment is to be ready and waiting with your copyrights and trademarks properly registered in the Copyright Office and in the USPTO.