Securing Rights to Your Website, By: Lee Kim
About the author: Lee Kim is an intellectual property associate at Tucker Arensberg, P.C. She specializes in copyrights, trademarks, trade secrets, and patents. See http://www.tuckerlaw.com/att/alpha/K/kim_lee.html
1. Securing Your Domain Name
If you are creating a website, you should first register at least one domain name of your choice with a reputable domain name registrar. While there are many domain name registrars out there, well-regarded registrars include register.com, Go Daddy, and Network Solutions.
Tip: It is recommended that you register the domain name yourself instead of having a third party (e.g., consultant) do this on your behalf. Domain name registrars such as the ones named above generally have support numbers that one can call if one needs assistance registering the domain name(s) of choice.
Why this is recommended: There are individuals, companies, and other entities (a.k.a. "cybersquatters") that attempt to make money by holding one’s domain name hostage. For example, if one owns a trademark and the domain name that is being held hostage is identical or substantially similar to that trademark, then one needs to go through a dispute resolution process such as the Uniform Dispute Resolution Policy ("UDRP"), below.
Tip: Since domain name registration is relatively inexpensive, it is recommended that one register several domain name variants, such as top level domain ("TLD") variants (e.g., .org, .com, .net, .us, and the like) and singular/plural variants of the domain name. You also may consider registering commonly misspelled variants of your domain name. Also, there are commercial services which monitor the web for misuse of your domain name. Thomson CompuMark is one such reputable provider. Thomson CompuMark’s website has the following Uniform Resource Locator ("URL"): http://www.thomson-thomson.com.
Why this is recommended: There are individuals, companies, and other entities (a.k.a. "typosquatters") that attempt to make money off of typo-variants of domain names and oftentimes ask for exorbitant sums of money in exchange for these domain names. See, e.g., http://searchengineland.com/070711-083600.php for an article on domain name best practices. See, e.g., http://www.icann.org/tlds/ for an informational page on TLDs. For example, if one owns a trademark and the domain name that is being held hostage is identical or substantially similar to that trademark, then one needs to go through a dispute resolution process such as the Uniform Dispute Resolution Policy ("UDRP"), below.
Question: What if someone holds my domain name hostage (i.e., a cybersquatter) or someone has a typo-variant of my domain name (i.e., a typosquatter)?
Answer: Often, the domain name is parked and the domain name owner makes revenue using click-through links. Some domain name registrars and other Internet domain services offer domain name holders cash for parked domain names in exchange for the traffic that their respective domain name generates through the click-through links. See, e.g., https://www.godaddy.com/gdshop/park/landing.asp?se=; http://www.whypark.com/. If the cybersquatter or typo-squatter has a domain name that is identical or substantially similar to your trademark or service mark, has no rights or legitimate interests in the domain name, and is using the domain name in bad faith, then you may be able to successfully dispute the third party’s ownership of that domain name and request transfer or cancellation of the domain name by filing a Uniform Dispute Resolution Policy ("UDRP") complaint against that third party. See http://www.icann.org/dndr/udrp/policy.htm for the UDRP policy. The complaint may be filed with a dispute resolution provider such as the National Arbitration Forum or the World Intellectual Property Organization.
Question: Can I register my domain name as a trademark or a service mark?
Answer: Yes, if the domain name functions as a trademark or service mark which serves to identify your company’s name, products, and/or services. The domain name may be registered with the United States Patent and Trademark Office ("USPTO") under certain conditions such as these.
Question: What are the benefits of trademark or service mark registration of my domain name?
Answer: By obtaining a trademark or service mark registration with the USPTO, one may have legal recourse against a cybersquatter or typo-squatter under federal law. Further, having the trademark or service mark registration leads to a stronger case if one has to file a complaint based upon the UDRP. See, e.g., http://www.uspto.gov/web/offices/tac/tmfaq.htm#Basic002.
2. Protecting Your Website
Terms of use
The "terms of use" is an agreement between the user and the website provider (i.e., you or your company) with respect to certain terms and conditions that the user is bound to; additionally, if the user disagrees with any of the terms and conditions, he or she should not use the website. One important advantage of a well-drafted "terms of use" is that is helps shield the website provider from liability (e.g., disclaimer of warranties, indemnity, limitations on liability, and the like). Another advantage is that it puts the user on notice with regard to the website owner’s intellectual property rights to certain copyrights, trademarks, and the like.
See, e.g.ecommercelaw.typepad.com/ecommerce_law/2006/05/common_issues_f_1.html.
Tip: It is recommended that one has a well-drafted "terms of use" page on the website whereby the user agrees to the terms by the "type and click" method. In other words, the user types in "I agree" (or something similar) in addition to clicking the "Agree" (or similar) button. The "terms of use" agreement may accompany, for example, user registration.
Privacy policy
The "privacy policy" is also an agreement between the user and the website provider (i.e., you or your company). The privacy policy explains how the website provider collects and uses the personal information which is collected through means such as cookies. It also describes how the website provider complies with the applicable data protection and/or privacy laws. For further information on privacy policies, see, e.g., http://www.publaw.com/new.html.
Tip: It is also recommended that one has a "type and click" method whereby the user agrees to the terms of the privacy policy since it is a legal agreement between the user and website provider. For further information on "type and click" (i.e., click-wrap) agreements, see, e.g., http://grove.ufl.edu/~techlaw/vol4/issue3/friedman.html .
Registering copyright for the website
One may register copyright in the website if there is original content such as text, graphics, and the like. See, e.g., http://www.copyright.gov/circs/circ66.html. The advantages of copyright registration include the ability to enforce the copyright (i.e., sue for copyright infringement in federal court) and presumption of copyright ownership. However, please know that one must own the copyright in order to register it (e.g., authored the work without subsequent copyright transfer; or, authored by a third party with subsequent copyright transfer). For information on copyright transfers whereby the work was authored by someone else (e.g., a consultant), please see below.
3. Using Consultants to Create Web Content
One may use outside consultants to create web content such as web programming and/or web design. In order to avoid disputes about ownership of such content, it is recommended that a written agreement is entered into between the website provider (i.e., you or your company) and the consultant. Ideally, the agreement should have a provision which states that the consultant is obligated to perfect any and all intellectual property (including executing any intellectual property assignment documents) and that such an obligation shall survive the termination of the development agreement. See, e.g., http://www.out-law.com/page-417.
When transferring copyrights, trademarks, and other intellectual property from the consultant, make sure that the agreement (a.k.a. intellectual property assignment, intellectual property transfer agreement, and the like) is in writing and signed by both parties and preferably notarized. See, e.g., http://www.copyright.gov/title17/92chap2.html#204 and, e.g., http://inventors.about.com/library/bl/toc/blfaq35.htm.
