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Your Web Site

Avoiding Copyright and Trademark Problems

By Andrew Berger

Photographers are increasingly turning to Web sites to market their work. Although the Internet provides photographers with access to buyers world-wide, Web sites may also expose photographers to unanticipated problems. If you choose the wrong domain name, post material on a site that infringes another's trademark or copyright or link to a site that you know contains pirated material, you may be subjected to embarrassing and expensive litigation. The following suggestions can help you avoid this exposure.

Domain name selection

You need to choose a domain name that is both distinctive and non-infringing. That will not be easy. Most distinctive names are already registered. But first, here are some naming basics. Domain names are composed of two parts:

(i) a descriptive name ending in a "dot," called the second-level domain
(ii) the suffix following the "dot," called the top-level domain. For instance, the site amazon.com contains the descriptive name or second-level domain, "amazon," and the top level domain, "com." The descriptive name may combine letters, numbers and some typographical symbols (but no apostrophes or spaces).

Three of the seven top-level domains are open to commercial users: com, net and org. The other four (edu, gov, mil and Interactive) are restricted to certain entities. The manager for Internet addresses, the Internet Corporation for Assigned Names and Numbers (ICANN), in response to pressure from business groups, may soon be adding some new top-level domains.

Naming guidelines

After you have selected a possible name, search the Web site of one of the more than 90 domain name registrars to see if the name is available. If the name is already registered or warehoused by someone else, the search result will list similar names that you may register. For instance, search for the name "Nike," and the registrar will tell you that similar sounding names like "aboutnike.com" and "nikebusiness.com" are available. But before you register, keep the following guidelines in mind:

1. If you choose a domain name that is the same or confusingly similar to another's famous or distinctive trademark:

a. You invite litigation under a federal statute called the Anti-Cybersquatting Consumer Protection Act or arbitration under ICANN's dispute resolution policy.
b. You will most likely lose your domain name to the owner of the mark if you selected that name to compete or drain business from another's mark by confusing potential customers about the source or sponsorship of your site. For instance, if your site sells shoes made by a Nike competitor, don't pick the name "nikebusiness.com" since a court is likely to determine you picked that name to draw Nike customers and switch them to your brand.
c. Even if you do not compete with the mark, you may lose the domain name if you have never conducted business under that name; it is not the name of a person associated with your company; and you try to sell your domain name to the mark for financial gain. For example, Volkswagen was able to take the domain name "VW.net" away from Virtual Works, Inc. since that company had never conducted business under that domain name, had no trademark or other rights in the initials "VW" and confused Volkswagen customers by using that domain name.

2. If your domain name is also your name, you may be able to continue to use it, even though it is the same as another's famous mark. But the court may set some conditions on your use. Thus, Mr. Uzi Nissan, the owner of a computer business, was permitted to use the domain name "nissan.com" so long as he did not use his site to display any automobile-related information or advertising and posted a notice on the top of his home page disclaiming affiliation with the Japanese automaker Nissan.

3. You may also be able to use a domain name that is similar to another's trademark so long as your purpose is to criticize the mark's business. For instance, a court refused to shut down a site named "ballysucks," dedicated to complaints about Bally's fitness business. The court found that a reasonably prudent person would not mistake that site for the official Bally site. Similarly, a court declined to close down a site called "lucentsucks.com" because no consumer would confuse it with a site sponsored by Lucent.

What may I put on my site?

Let's assume that you have selected and registered a non-infringing domain name, what can you post on your site? The following questions and answers might help.

1. Q: Do I risk copyright infringement if I scan another's wonderful photograph and post it on my site without first obtaining the consent of the copyright owner?

A: You may. You will need authorization from the copyright owner unless the photograph is in the public domain or you justify your use as "fair use." The public domain are those works not protected by copyright and free for all to use. Copyrighted works fall into the public domain by either the passage of time or the failure to observe copyright formalities. Fair use arises when you use copyrighted material for certain purposes such as criticism, news reporting, teaching, scholarship or research. Before you conclude that material is in the public domain or protected by fair use, you may want to get some expert help since these are tricky areas.

2. Q: What if one of my Web site subscribers uploads infringing material to my site, what are my responsibilities and obligations?

A: You have a few. To qualify from an exemption to liability under a new federal statute called the Digital Millennium Copyright Act (DMCA), you must:

(i) not have known that the material was infringing
(ii) post procedures on your site for victims of copyright infringement to follow to notify you of infringement
(iii) immediately take down or remove the infringing material on request.

3. Q: May I link to anyone's site?

A: Linking is what the Internet is all about; at the same time, some sites require your permission before you may link to them and some even require a linking agreement.

4. Q: Do I have liability if the site I link to contains infringing material?

A: You may, if you know that the linked site contains such material. For instance, hackers created software which permits users to decrypt and copy data on DVDs. If you link to a site that you know contains this software, you may be liable for furthering or aiding infringement.

5. Q: May I "deep-link" to secondary pages on another's site?

A: Probably so. Commercial sites want visitors to "come in the front door" at the home page. Web sites place most banner ads there and key prices for those ads to the number of hits on the home page. But a recent court decision found that deep linking was not a copyright violation since there was no deception involved in sending a visitor from one site to a secondary page on another.

6. Q: May I use another's trademark in my "meta tags" (a type of HTML code designed to provide machine-readable information to search engines about the contents and display of a Web page)?

A. Not if your purpose is to "hijack" traffic from the mark's site to yours. But if you have a business relationship with the mark, such as act as its authorized distributor, you can indicate that relationship in your meta tags. For instance, the former Playboy Playmate of the Year, Terri Welles, was permitted to use the words playboy and playmate in her meta tags since they fairly described and identified her achievements and relationship with Playboy.

7. Q: May I "frame" or create a window on my Web page to view linked-to content on other sites?

A: Probably not. Framers often want the best of both worlds - to link visitors to content on another's site and then frame that content on their window. For instance, a "news aggregator" called Total News took news stories from other newspapers and framed them on its site, placing ads and the Total News logo above the frame. Total News stopped the practice in response to a suit by publishers who claimed the frames confused users about the origin of the information in the window. To avoid litigation, enter into a framing agreement with the site whose content you want to frame.

8. Q: May search engines key their banner ads to direct viewers to competitors of the site the viewers are seeking to find?

A: Yes, a court recently permitted Excite and Netscape to key their banner ads to pornographic sites whenever visitors used "playboy" or "playmate" in their search requests. The court said there was no evidence that customers would be sufficiently confused over the relationship between Playboy and a pornographic site.

9. Q: Is there any problem with the use of "cookies"?

A: Not yet. There are no cases or legislation that presently prohibit the practice of giving a "cookie" to a visitor. But in the "terms and conditions" on your site, you should advise your visitors what personal information you collect, what you do with that information and the procedures you follow to allow visitors to either correct that information or prohibit its collection. Internet privacy is of growing concern, and legislation governing the privacy policies of commercial sites may be in the offing.

10. Q: Who owns my Web site design?

A: If you used a designer, he or she does unless you agreed in writing with the designer to transfer the copyright to you by a signed writing that specifically states the design is a work for hire.

In conclusion, photographers want their Web sites to generate sales not lawsuits. These suggestions may help you achieve that objective.

© Andrew Berger. Andrew Berger is an attorney specializing in intellectual property matters.

He is with the New York firm of Tannenbaum Helpern Syracuse & Hirschtritt.
Ph: 212-702-3167.
E-mail: berger@tanhelp.com.

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