Infringing the Dream
You’ve just founded the hottest new Internet start-up company based on a brilliant idea for selling toothpaste over the Internet.
You’ve also just had some of your employees create a Web site for your new company, containing all kinds of new bells and whistles, cool colors, killer logos, unique design, selection and arrangement of toothpaste ordering buttons, and Shakespearean-like marketing text. Your idea is taking off as your Web site begins to receive millions of hits per day. Your customers are ample and the money is rolling in.
Then, one day you realize some competitors are popping up and they seem to be mimicking features of your Web site on their sites. For instance, one competitor has copied verbatim some of your carefully crafted marketing slogans.
Or even worse, a pornographic site has decided that your unique design, selection and arrangement of toothpaste-ordering buttons would be perfectly suited for ordering X-rated videos over the Internet and has, therefore, decided to copy the design, selection and arrangement of your ordering buttons, down to the exact button configurations and colors. As a result, the porno site looks just like yours, except for the obvious lack of toothpaste.
You think to yourself that these are blatant cases of copyright infringement and should be easily stopped by filing a copyright infringement suit. Although you do not have a copyright registration for your Web site, you picked up a thing or two about copyright law from your several years of prior experience at Microsoft and know that copyright protection subsists from creation.
You then put in a call to your expert intellectual property attorney to confirm your conclusion and to file suit immediately against the infringing companies. So, “We can sue right?” you ask your attorney, silently confirming to yourself that your dream is still intact.
– Registration Is
Prerequisite to Suit
Well, not exactly. While a copyright does indeed subsist from the moment a work is created, having a copyright registration from the U.S. Copyright Office is a prerequisite to bringing a copyright infringement suit.
In addition, by failing to have a copyright registration in force prior to the infringement, you lose your right to receive up to $100,000 in statutory damages and to recover attorneys’ fees.
To avoid these problems, it is advisable not to hesitate in registering the copyright in your Web site.
There is no separate form for registering Web site copyrights. So, for example, if your Web site consists primarily of text, but contains some graphics and some sounds, you should use Form TX. Nevertheless, if the sounds are highly unique, it may be a good idea to obtain a separate registration for them, as the required deposit materials for textual works do not necessarily encompass sounds.
Once you have selected the proper form, you must then determine who is the “author” (i.e., the creator or developer) of the Web site. Absent an assignment, the author is the owner of the copyright in a work.
If employees developed the site within the scope of their employment, then the site is a “work made for hire” and the employer will be deemed to be the author under copyright law.
If an independent contractor developed the site, the developer is the author, and you will generally need to obtain an assignment of the rights in the Web site from the independent contractor in order to become the owner of the copyright.
– Deciding Which
Materials To Deposit
Probably the most prevalent problem in registering the copyright in a Web site is trying to determine what type of materials to deposit with the application. An application for copyright registration must be accompanied by a deposit representing the entire work for which registration is to be made.
Again, U.S. copyright deposit regulations do not specifically address the deposit requirements for online works.
For an online work, the Copyright Office requires the deposit of either (a) a computer disk containing the entire work and representative portions of the work in a format that can be examined by the Copyright Office (e.g., printout, audiocassette or videotape), or (b) a reproduction of the entire work in a format that can be examined by the Copyright Office.
For most Web sites, it is too cumbersome to print out the entire Web site, so it is easier just to submit representative pages of the site, along with the entire HTML code of the site on a disk. It is nevertheless advisable to deposit both representative pages and the HTML code to ensure the maximum protection for your site.
So, the moral of the story is to register the copyright in your Web site before it’s too late.
Broberg is a shareholder in the San Diego office of Heller Ehrman White & McAuliffe LLP. Deutsch is a former associate.