Unless you are just a thief (and there are some of you out there), you have a substantial investment in your website. You either have produced your own visual materials, or purchased "Web Legal" ones - either way, at meaningful cost. You have designed a clever way to facilitate "navigation" of your website by your customers, secured a domain name and perhaps even have given your site or company a catchy name of its own. The bottom line is that you have spent considerable time, energy, and money to bring about what you believe to be a good product. But did you ever stop and think about what you really own after all of this money and work?
In the final analysis, the only things you can ever own are rights. For example, if you own your house, all you really own is the right to use and occupy it to the exclusion of all others. And even those rights are subject to limitations, such as by taxing authorities and, perhaps, an easement by the power company.
Prudent owners of property rights protect them. For example, when you purchase a home, the first thing you do is march down to the county recorder's office (or whatever you have in your state) and record your deed. This gives notice to everyone that you are owner of your dream home (parenthetically, this process obviously is more complicated given mortgages, title insurance, escrow and so on). Your real estate investment is called "tangible" property - something which is three-dimensional and cannot be duplicated. The same is true of your automobile (where the title is registered in your name with the Department of Motor Vehicles or Department of Public Safety) and other such physical objects.
Whatever you own on your website, however, is "intangible" property - words, symbols, pictures and other things which are subject to unlimited duplication. If your website is "xyz.com," it is meaningless to you unless you have the right to use it. Anyone with a pencil and a piece of paper can write down "xyz.com."
More specifically, what you own is "intellectual property." And the only reason that you "own" any of it is that legislatures and courts have established mechanisms to identify and enforce ownership of intellectual property rights. Of principal concern here are copyrights, trademarks (used here to include service marks) and the right of publicity, although intellectual property rights also can be established for patents, trade secrets and other things. While trade secrets and patents will occasionally surface in the Internet world, discussion of them is well beyond the scope of this article.
It perhaps is appropriate to begin with an analysis of the distinction between copyrights and trademarks and the function of each, recognizing that some of this may be "old hat" to many readers.
The core of copyright and trademark protection comes from the federal government. There are no longer any copyrights under state laws because, according to the Copyright Act of 1976 (the one which currently is in force), the federal government has exclusive jurisdiction over copyrights. And, while there are state-law trademarks, the last thing you would want for a website is a trademark which is good only in one state. Also, there are issues of international enforcement of copyrights and trademarks. Suffice it to say that there are mechanisms in place which allow the enforcement of copyrights and trademarks most everywhere in the world. However, like trade secrets and patents, those mechanisms too are beyond the scope of this brief survey.
An analysis of copyrights and trademarks in the United States begins with two provisions of the United States Constitution. First, the Constitution expressly gives Congress the power "to promote the... useful arts, by securing for limited times to authors... the... exclusive right to their... writings." The Constitution also gives Congress the power to regulate interstate commerce. That commerce power provides the basis for the vast majority of federal functions and regulations, including the issuing of trademarks.
Under its constitutional power to promote the useful arts, Congress has created an exclusive system of copyright protection. Those "useful arts" include writing books, writing songs, singing songs, making motion pictures, carving sculptures, drawing architectural plans (the artistic part, not the engineering) and other such educational and amusing things.
If you think about it, the word "copyright" is derived from the right to copy. And �106 of the Copyright Act spells out that right with great particularity. Generally speaking, the owner of a copyright has the exclusive right to copy its subject matter. That right can be sold or licensed, on an exclusive or non-exclusive basis, permanently or temporarily, for whatever deal the copyright owner can make.
The entire body of trademark law is designed to avoid confusion as to the source of products and services - entirely different from the purpose of copyright law. For example, McDonald's has a series of trademarks designed to distinguish its hamburgers from others - the name "McDonald's"; the "Golden Arches"; and the phrase, "Did somebody say McDonald's?" McDonald's owns the right to use those trademarks, a right which serves two functions: First, it protects the consumer. If you are hungry and you see a hamburger stand with golden arches, you know that the source of the hamburgers inside will be McDonald's and, accordingly, you will know the quality of the product which you will be getting (as a result of which you may either stop by for a hamburger or not, depending on your personal preferences). Ownership of those trademarks also protects McDonald's from unfair competition by other hamburger stands. Otherwise, someone could open a hamburger stand with similarly designed golden arches and, as a result, unfairly garner a great deal of traffic on the basis of McDonald's hard-earned reputation.
While there may be some artistic value in the McDonald's golden arches or a Campbell's soup can (at least one artist thought there was some in the latter), that is not at all what the trademark law is designed to protect. In fact, if you stop using a particular trademark, no matter how artistic and notwithstanding its valid registration with the Patent and Trademark Office, it is deemed abandoned and you lose it.
Beginning with the copyright law, it is perhaps best and most easily explained by example, and the best example is what appears most frequently on readers' websites - photographs and motion pictures. At this level of discussion, the copyright law as applied to photographs is materially identical to how it is applied to motion pictures.
A person who takes a photograph has created a "work" which is subject to copyright law. While that which is depicted in the photograph could itself be subject to a copyright (such as a painting which is in the photograph), the copyright to the photograph is owned only by the photographer. The people who are depicted in the photograph have some rights of their own, as explained below. But in a copyright environment, the artist and, thereby, owner of the work is the photographer.
While the "photographer" may technically be the person who pulls the trigger on the camera, that individual may not himself own the copyright. There is a concept in the copyright law called "work for hire." Generally, that means that if the photographer is an employee (i.e., W-2 forms, taxes taken out, etc.), the copyright on whatever the photographer was hired to photograph is owned by the employer. If the photographer is an independent contractor, the issue is not so well-defined. However, a written "work-for-hire agreement" can establish copyright ownership in the person who is paying for the shoot. Importantly, a valid transfer of a copyright interest of any kind almost always must be in writing; and there is nothing wrong with having a written work-for-hire agreement with an employee, just to be safe.
So, assume that you have now photographed a sexy model layout (or hired someone to do so for you with proper documentation), obtained the proper releases from the people appearing in the photographs and are ready to put them up. How do you establish your copyright interest? The answer is that you need not do anything because, once the photograph is "fixed in a tangible medium" - like film or videotape - the copyright interest is secured. However, simply because you own a copyright interest does not mean that you can enforce it, at least as a practical matter.
Although not required to establish copyright "ownership," the first important thing to do is affix a copyright "notice" to the photograph. You see this everywhere:
�2000, XYZ Corporation
That notice announces that the photograph in question is not in "public domain."
The next prudent thing to do is register your copyright with the Copyright Office because, in most every instance, registration is necessary to enforce your copyright in court. The registration process includes a small registration fee and a deposit of copies of the work, along with the appropriate form. It is best to accomplish this registration within three months of the first publication, really important to do so within five years, and imperative before any enforcement action is commenced. A registered copyright allows the recovery against infringers of both attorneys fees and enormous statutory damages. Registration also protects your copyright interest for a very long time (like 75-100 years, depending upon the circumstances).
Trademarks, on the other hand, are words and symbols that distinguish your company's websites from those of other companies. Your domain name may or may not be a trademark, depending upon a number of factors. It is clear, however, domain names which are designed to identify the company, such as "amazon.com," function as trademarks.
As a general proposition, it is probably fair to say that trademark law is considerably trickier than copyright law, especially when applied to websites. If you have a photograph that you have taken, for example, have attached the appropriate copyright notice to it and filed your registration and deposit copies with the Copyright Office, your copyright is very secure. That is not to say that there might not be other problems with your photograph, such as infringing rights in connection with people or objects depicted in it, but your copyright interest is secure.
Securing trademark rights, on the other hand, is nowhere nearly so simple. To begin with, for example, trademarks are a function of product lines. For that reason, Delta Airlines, Delta Faucets and Delta Dental Services coexist, each as a perfectly valid trademark. Second, while you can copyright virtually anything, there are some trademark names that the law will allow you to adopt only very cautiously. For example, if you introduced a line of cookies and attempted to market them under the banner "Sugar Cookies," you would have serious problems from a trademark standpoint. In the first place, everybody already knows what "sugar cookies" are. And, even if you were the first one to invent them, the name "sugar cookies" does little more than describe the product: cookies which feature sugar. At the other end of the spectrum are trademarks and trade names that are "fanciful," such as "amazon.com." Standing alone, that name bears no relationship to the selling of books. Similarly, "Delta" does nothing to describe air transportation, except to the extent that it has become the familiar trademark of that airline company. To further illustrate the point, there are companies like Kleenex and Xerox which risk being done in by their own popularity. The public at large so commonly uses the word "xerox" as a verb that the company has been required to mount a campaign to prevent the term from becoming generic. Remember, the purpose of trademark law is to distinguish one company's products and services from another. If the common meaning of "xerox" becomes any photocopy, regardless of the source, it no longer functions to distinguish Xerox's product from any other.
Trademark rights also are more difficult to obtain because, unlike copyright registration, trademark registration is not automatic. Rather, your federal trademark registration application will be assigned to an "examiner" whose function it is to do exactly that: examine the application so as to determine whether the trademark is properly subject to registration. The application can be bounced not just because it is incomplete but also if it infringes a prior trademark or it is too descriptive to be allowed use as a trademark, or any other reason that might render it invalid.
Applying the above trademark concepts to websites is not as simple as in many other instances. Websites present an entire thicket which did not exist when most of these concepts and regulations came into being.
At the outset is the question of whether your "dot-com" name also can be your trademark. Remember, the fact NSI has allowed you the privilege of a domain name does not give you the right to use it as a trademark. For example, if your domain name is "hotmiddleageblondsinbluepolkadotdresses.com," likely that will be found to be too descriptive to qualify as a usable trademark. After all, it probably does nothing more than describe the kind of pictures you have on your site, and the "dot-com" component does nothing more than identify it as a URL. On the other hand, if your domain name is "BlueTurtles.com" and your website focuses on the same group of pictures, you would have a much better chance of using it as a trademark for an adult website, although you would have a problem if the site specialized in blue turtles. (This does not imply that any current or future owner of the domain name "BlueTurtles.com" is in the adult entertainment business.)
Obviously, if you can select a domain name that also will serve as your trade name, that's all the better. On the other hand, if you operate many, interrelated websites, you may find it better to have a single umbrella trademark that identifies all of them as originating at the same source. Doing so would provide a mechanism for linking them with each other in such a way that the customer becomes aware that the linked site will be one of comparable quality, thus perhaps generating traffic.
When applied to websites, obtaining copyrights can become something of a thorny problem for two reasons: In the first place, websites change all the time. New content is added, old content is removed; and existing content is changed. However, if you register copyrights on a photograph-by-photograph basis, you will find yourself in the copyright registration business rather than the Web design business. One possible solution to this is take a lead from magazines, which register the copyrights on an issue-by-issue basis, avoiding the mind-boggling problem of, for example, separately registering the copyrights on each article and on each photograph (presuming all of them were produced in-house). Copyrights on photographs could be registered on a gallery-by-gallery basis, or even a section-by-section basis.
Perhaps of equal importance is to register the design of the home page. And where there are only very minor changes in it from time-to-time, re-registration probably is not necessary because "substantial copying" is sufficient to constitute copyright infringement. In other words, if someone rips off your slightly modified home page, you likely have an enforceable infringement claim even though you registered it only before it was slightly modified. For example, if you publish a novel which is identical (i.e., word-for-word) to The Firm, changing only the names of the characters obviously would not save you from a copyright infringement claim.
The last issue is the right of publicity. Simply put, every person has the right to prevent others from exploiting his or her name and likeness. Famous people have a greater right in this area than not-so-famous people. The right lessens as the prominence of the image is reduced - a non-celebrity has little right to prevent his likeness from being broadcast as a "face in the crowd" on the New-Years-Eve news coverage of Times Square. (A more focused look at the whole subject of celebrity and copyright is found in this column in the November 1999 issue.)
For this discussion, the important property you own is the release, where it assigns to your website company the right to exploit the likeness of the people in the pictures you put up. Either you obtain a release when you take the picture, or you are assigned the right when you purchase your "Web-legal" materials.
The point of all of this is to keep in mind what you own - a domain name, copyrights, trademarks and rights to exploit peoples' images. And just as you are careful to document your home ownership in at the county recorder's office and your automobile ownership with the DMV, properly documenting your ownership of the components of your website - your domain name, your trademarks, your copyrights and your right to exploit images - is critical to your continued existence.
Finally, a word about infringement: First, it is not a defense to theft that the person you stole from was himself a thief. In the Internet realm, that means that you are not off the hook for copyright or trademark infringement or violation of someone's right to publicity just because you stole the stolen picture in question from a news group. In the first place, innocent infringement is not a defense to copyright infringement, it only reduces liability. In the second place, one wonders how far you will get with a claim of innocent infringement if, in fact, you simply took the pictures in question from a newsgroup, where infringement is so rampant, or from a site with no indicia of copyright ownership anywhere.
The Internet creates opportunities for copyright infringement unmatched in human history. Just pull down "Save As" on your browser menu with intent to transfer the saved product elsewhere and you instantly become a copyright infringer. Download a homepage and you might infringe a trademark or two in the process.
Infringing websites are now facing enforcement, the level of which increases with the exponential growth of the Internet. Of course, some people reading this are doing so only to figure out a way to avoid getting caught. Indeed, if you simply are putting up a website for the sake of putting it up and you have included a great deal of infringing material, there may be ways of escaping the clutches of the "infringement police" - going offshore, etc. But if you are doing it for money, the problem is a little different. Remember Watergate and "follow the money?" Consider this: The only meaningful way of collecting money over the Internet is with credit cards. You can sell drugs for cash: you can't sell stolen, copyrighted images over the Internet for cash. If one of your customers can buy a subscription with a credit card, so can the owner of the copyright. And when the owner sues you for copyright infringement, the attorney will first subpoena the bank where he has his credit card, and then follow the trail to your bank, and then to you.
The foregoing is simply an overview. Talk to your attorney.
(Clyde DeWitt is a partner in the Los Angeles, California law firm of Weston, Garrou & DeWitt. He can be reached through AVN Online's offices, at his office at 12121 Wilshire Boulevard, Suite 900 Los Angeles, CA 90025 or over the Internet at [email protected]. Readers are considered a valuable source of court decisions, legal gossip and information from around the country, all of which is received with interest. Books, pro and con, are encouraged to be submitted for review, but they will not be returned. This column does not constitute legal advice but, rather, serves to inform readers of legal news, developments in cases and editorial comment about legal developments and trends. Readers who believe anything reported in this column might impact them should contact their personal attorneys.)
