Protecting Your Intellectual Property

22 December 1999
(Co-written this week by Allison Hift)

I found a portion of my website in cyberspace today. The only problem is it wasn't located at MY Internet address. It was smack in the middle of another law firm's website. I fumed. I wanted justice.

No License to Steal

The Internet, like many developing technologies, promises substantial consumer benefits and, at the same time, invites fraud and deception. The technology is such that it's all too easy to steal a whole website with a mere click.

Experts estimate that Internet business will grow to a $220 billion industry by 2001. This is great news for e-commerce businesses.

Still, for businesses and consumers to continue to fuel the growth of the Internet at breakneck speed, we must aggressively address the protection of intellectual property (IP) rights online. Law enforcement agencies must take a proactive role in punishing online offenders and lawmakers must swiftly put workable solutions into place.

The dilemma is that technology is forging ahead much more quickly than the law. My e-commerce clients can't afford to wait until laws are put into place and enforced effectively. They need their e-commerce sites up now. Time is money!

Any good business plan maps out a strategy to maximize opportunity and to handle calculated risk. So, instead of waiting for Congress to wave its magic wand (don't hold your breath), you need to take the law into your own hands to protect your IP rights.

You should consider taking the following steps to minimize your company's risks.

The Intellectual Property Pursuit

Ideally, your company's human resources, accounting, and marketing departments should work together to establish an in-house department to enforce IP rights. Depending on your resources, this department could be an independent department, could "borrow" people from other departments, or you could outsource the work to an IP attorney. Whatever your choice, the responsible party should be charged with, among other things, policing the Web for potential infringements on your "property."

Your property could include the words and graphics on your website, corporate logos, trademarks and service marks, and maybe even the "look and feel" of your website.

If you discover any of these things on a website other than your own, you may have just discovered a site that's infringing your IP rights.

Maximizing your Copyright Protection

To gain the maximum protection under current copyright laws, you should register the material on your website with the U.S. Copyright Office promptly after you create your site. I know that many of my regulars are now saying that I've always said that they didn't have to register their work with the Copyright Office for protection. That's true, but there is a "but."

Once an original work is "fixed in a tangible medium," it's protected by U.S. copyright laws. Failure to register doesn't give somebody the right to freely copy and use your work as his own. However, if you register your original work, the law gives you advantages like a presumption of ownership, entitlement to statutory damages, and reimbursement of your attorney's fees.

In other words, when you discover that another website is infringing your site, it will be easier and cheaper to enforce your IP rights if you've registered your copyright.

You can search for federally registered copyrights yourself for free. One good starting place is the U.S. Copyright Office, http://lcweb.loc.gov/copyright. Here, you can find a searchable database of registered copyrights in the LOCIS (Library of Congress Information System). Information also appears on how to investigate the copyright status of work.

Still, this column and the government's website aren't a substitute for an IP lawyer's advice regarding suitable copyright protection. An IP lawyer brings many things to the table. For example, she can help you to avoid technical mistakes in drafting a copyright application and can also tell you whether you should be registering a copyright or seeking other IP protections including a trademark or patent.

Ultimately, there's no substitute for plain-old, down and dirty, Web surfing. So, no matter what else you do, you should also get out there and search for your material. You must do your due diligence. Try typing a blurb or two from your website into a search engine and see what you find.

I had a client who did just that recently. What he found was a competitor's website--identical to his own site. The only difference was the name at the top and the phone number and e-mail address at the bottom. No kidding.

Do-It-Yourself Patent and Trademark Searches

If you need or want to conduct an initial and basic trademark or patent search yourself for free, go to the U.S. Patent and Trademark Office website at http://www.uspto.gov. Here, you'll find searchable databases for both U.S. pending and accepted patents and trademarks. Both databases contain images. You can also conduct an expired patent search.

I emphasize that you may not find what you need or are looking for using one of these search sites. Web searches are imperative.

One suggestion is to search the Web for slightly different versions of your domain name. In other words, if you own the site www.fish.com, you may want to visit www.gofish.com. You never know what you'll find until you look.

A potential worst case scenario would be your competitor's website with your copyright-protected graphics. (Depending on how your graphics are used on the site, this may be an infringement.)

Another zinger would be your competitor's website and defamatory material concerning your company. One final disaster would be for you to type in your company's trademark protected name, add a www at the beginning and a dot com at the end and find that you're at your competitor's site. You should periodically check for these types of problems.

Enforcing your IP Rights

If you find an IP problem online, what do you do? Your good choices don't include doing nothing. You could hurt your legal position through your own inaction. Basically, if you snooze, you lose. When you find a violation, act fast.

If what you've found is a copyright violation, you need to stop the infringer in his tracks. You'd like your lawyer to obtain a court-ordered injunction stopping the infringer from copying. According to the Copyright Act, you can also obtain an impoundment and destruction of all infringing copies, damages and in some cases, attorney's fees. In limited circumstances, criminal punishment is also available.

If it's a trademark violation, your attorney can ask the court to issue an order forcing the infringer to stop using the mark and to take remedial actions (like a remedial advertising campaign). The court can also award damages and profits earned by the infringer from his wrongdoing. Triple that and, in an "exceptional case," tack on attorney's fees if you registered your material properly with the U.S. Patent and Trademark Office.

For a patent violation, you'll also want your attorney to attempt to obtain an injunction and recover money damages and lawyer's fees. Damages for patent violations can be large due to the legal formula for calculating them.

If you've found a competitor's website at www.yourcompanyname.com, you may have just found a classic case of cybersquatting. In addition to pursuing traditional trademark remedies, you may be tempted to act rashly. Before you do that, you should consider the following advice:

Don't tell the guy off in a letter. Recipients often post these letters online and you don't necessarily want everyone to have a firsthand view of your temper tantrum.

Also, don't immediately give into the extortion. While it may make business sense after examining the situation, a quick sell-out might encourage other infringers to test just how deep your pockets are. Consult with a lawyer before you give in and pay off.

Now that I've explained some of the ways that an IP thief can rip you off on the Net, I hope that I've made you just a little paranoid. If your paranoia provokes you to monitor the Web for your stolen material, I've done my job.




Mark Grossman's "TechLaw" column appears in numerous publications. Mark Grossman has extensive experience as a speaker as well. If you would like him to speak before your group or corporate meeting, please call (305) 443-8180 for information.

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