Protecting Your Company's Website
| Publication year | 2012 |
| Citation | Vol. 2012 No. 12 |
Winter 2012-#5. Protecting Your Company's Website
Volume 37, No. 4
Winter 2012
The worldwide web is claimed to have been invented in 1989 by a scientist at CERN, the European Organization for Nuclear Research.(fn1) Since then, with remarkable speed, the web has been transformed from an academic platform focused 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.(fn2) E-commerce in the United States is predicted to grow by over 40% between 2011 and 2015,(fn3) reaching more than $270 billion in sales accounting for 15% of total retail sales excluding grocery.(fn4) In 2010, more than three-quarters of the North American industrial businesses that reported growth said that websites made a significant contribution to that growth.(fn5) Overall, global e-commerce revenue is forecasted to hit $960 billion by 2013(fn6) and $1.4 trillion in 2015.(fn7) Statistics aside, many of us have experienced the growing commercial importance of the worldwide web in our everyday lives.
The tremendous growth of e-commerce presents a compelling question of how to best protect what has fast become an increasingly 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 becomes 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 protections may be available and how companies can take advantage of them.(fn8) We demonstrate 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."(fn9) Understanding the principles discussed 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.
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 later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."(fn10) Importantly, copyright protection does not "extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work."(fn11) In sum, copyright only protects the original and creative expression of an idea, not the idea itself.(fn12)
Ownership and registration
Only "the legal or beneficial owner" of a copyright has standing to bring an action for infringement.(fn13) Generally speaking, the owner of a copyright is the person or entity who authored the work.(fn14) 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.(fn15) 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 commissioned for use ... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire."(fn16) Websites are often designed by third-party vendors who specialize 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.(fn17)
The next step is to register the copyright with the U.S Copyright Office. While registration 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 copyright registration.(fn18) In addition, a copyright registration is prima facie evidence of a valid copyright, shifting the burden to a defendant to prove that the copyright is invalid.(fn19) Finally, a copyright registration allows a plaintiff to recover statutory damages and attorney fees in an infringement action.(fn20) Because websites are changed on a periodic basis, it is important to consider 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 copyright must demonstrate that: (1) the defendant 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 elements of plaintiff's.'"(fn21) The first element, copying, can be satisfied by showing access to the work and "probative similarities," which is a lesser standard than substantial similarities.(fn22) 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 website infringement will turn on the issue of substantial similarity.
Preemption
The Copyright Act bars assertions of any "equivalent right in any such work under the common law or statutes of any State."(fn23) To determine whether there is preemption courts consider whether "(1) the work upon which the non-copyright claim is based is protected by the Copyright Act; (2) the non-copyright claim involves acts that violate federal copyright law, i.e., 'acts of reproduction, adaptation, performance, distribution, or display'; and (3) the non-copyright claim does not contain any 'extra elements that make it qualitatively different from a copyright infringement claim.'"(fn24) While the Act does not expressly preempt other federal law, the U.S. Supreme Court has explained the distinction between copyright claims and trade dress or false designation of origin claims under the Lanham Act, and held that the Lanham Act must not be used to assert a copyright claim.(fn25) In other words, if the allegation is that an original and copyrightable work is illegally copied, the remedy lies exclusively with the Copyright Act.(fn26 )That is why any claim for protection of a website should begin with copyright law. If the subject matter falls within the purview of the Copyright Act, the claim must be brought under that Act.
A threshold issue is the extent to which the Copyright Act protects websites. It is clear that the creative content of a website-i.e., sufficiently original text, photographs, graphics, source code-is copyrightable to the same extent that such material is published in any medium. Whether a website as a whole is copyrightable as a single work is another question. The U.S. Copyright Office has provided some (albeit sparse) guidance on this issue stating that copyright applications should not describe the work using terms that are not protected by copyright or that are ambiguous such as "website," "interface," "format," "layout," "design," or "look of website."(fn27 )This guidance suggests that the overall appearance of a website or its "look and feel" is not protected.
Indeed, such an application was denied by the Copyright Office, resulting in a...
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