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10 Steps to Protecting Your Online Investment (UPDATED JANUARY 24, 2003) Harvey S. Jacobs, Esq.
Step One: Selecting your domain name: Before registering your domain name you should first check the U.S. Patent and Trademark Office database to see if your desired mark is a registered trademark, or servicemark. If it is a registered or pending mark you may want to select another domain name. If you do have a domain name that is the same as an existing registered trademark, you should be prepared for a trademark infringement action and if the marks are similar in purpose and scope, you may lose. If you are using the mark for a dissimilar service/product and if you are using the name for a legitimate purpose, i.e., not endeavoring to trade on the good will of the trademark holder, nor attempting to hijack the name in order to sell it back, then under the recently adopted ICANN domain dispute policy, you are likely to prevail in any actions brought against you. Step Two: Registering your Domain name: Once you have determined that your desired Domain name is not registered or pending at the PTO you can proceed to register your domain name with one of the now multiple domain name registrars. The original and most infamous registrar is Network Solutions, Inc. www.networksolutions.com. Domain names are the piece after the www and include a suffix (for example: .com, .net., .org) after the “dot.” Thus a complete URL (Universal Resource Locator) would be: www.domainname.com. Domain names may contain up to 23 letters, numbers or hyphens, but cannot begin with a hyphen. Domain names are not case sensitive, however, specific page names within a domain may be case sensitive. Currently Network Solutions charges $70 to register your domain name for two years, thereafter they charge $35 per year. Recently Network Solutions’ monopoly was broken up. There are now many other cheaper domain name registrars such as Cheap-DomainRegistration.Com which sell domain names for a little as $8.75. This cost only buys you the domain name NOT the place to put that domain name. That service is called webhosting and typically costs additional money. Step Three: Selecting a webhost: After you have determined that your desired domain name has not been trademarked and is available, in order to register the name you may need to provide certain technical information to the domain name registrar so it will know where to send Internet messages. It is critical that you list your own company at the administrative and or billing contact when registering your domain name. You will also need to provide the DNS number of the computer server being used as your Web site host. There are numerous companies that own those servers and which have direct connections to the Internet infrastructure. Those companies, called webhosts charge fees to allow you use of their server to store your Web site content. When evaluating a webhost, you should check to see how long they have been in business. Check with the Better Business Bureau to see if there have been any complaints. You should also inquire about the number, and type of servers being used. The Internet is nothing more than a series of computer servers all interconnected and all sending traffic constantly through the “web” of servers. However, not all webhosts are created equally. For example you will want a webhost with a so-called tier 1 connection to the Internet. What that means is their connection is a direct connection to an Internet node. Other webhosts (tier 2 or tier 3) will be connected to the Internet through one or more intermediary switches or routers. The further from the Internet your server is the slower traffic will be to your site. Another factor in site speed is the type of “telephone” line being used by your webhost. The largest “pipeline” for Internet traffic is called a T-3 line, next to that is a T-1 also a very large capacity pipeline, moving down in size are fractional T-1's, cable modems, regular ISDN lines, DSL (Digital Subscriber Lines) and frame-relay lines. Step Four: Creating Online Content: Now that you have gone to the trouble of obtaining a domain name and webhost, you will want to create your Web site. To the extent that you hire individual to write copy, design the layout, or write code you will need to make sure that you own that intellectual property. The best way to make sure that you will own it is to use a “Work For Hire Agreement” with all of your creative and technical vendors. Unless you agree in writing in advance that you own all patent, trademark and copyright rights to your content, by law, the creators of those items are the legal owners. To that end they can use their creations for other customers. A Work For Hire Agreement sets forth, among other terms, that you as the client are to own all intellectual property rights to the creative work. In order to make sure all necessary terms covering your specific situation are addressed, it is advisable to consult with an intellectual property attorney before using an Work For Hire Agreement. Step Five: Obtaining Trademark and Copyright Protection: Now that you have gone to the trouble of getting a domain name, webhost and content, you will want to protect it to the maximum extent possible by obtaining your own trademark, copyright and or patent protection. The U.S. Patent and Trademark Office handles the filing of Trademarks (for goods), servicemarks (for services) and Patents for Inventions. The Library of Congress handles Copyright applications. Though the PTO has made searching and filing of trademarks and servicemarks relatively easy via their Web site www.uspto.gov, the practice is a highly technical area and in order to maximize your chances for obtaining these protections you should consult with competent legal counsel, experienced in these areas. The filing fees for Trademarks and service marks is $325 per class. Copyright filing fees are approximately $30. Patent applications run a few hundred dollars. Only “creative works” can be protected, (for example, words music, photographs, computer code, business methods). Mere recitations or compilations of facts cannot be protected. Similarly, works in the public domain cannot be protected. Step Six: Let the World Know It is Your Content: Although not legally required to obtain Copyright protection, each page of your Web site should bear the words “copyright” or © symbol, the year and the name of the copyright owner. Similarly, in order to tell the world that you intend to treat certain content as trademarked content you should place the letter “TM” or “SM” next to the protected content. Once you have been granted your Trademark or Servicemark you should use the ® symbol to tell the world this is a registered mark. Step Seven: Enforcement of Your Trademarks, Copyrights and Patents: Although you have done everything by the book you discover that another site has stolen your content and is passing it off as their own. What can you do? Unfortunately trademarks, copyrights and patents are NOT self-enforcing. Neither the PTO nor the Library of Congress have any enforcement powers over infringers. It is up to you to actively enforce your intellectual property rights. In fact you have an affirmative duty to aggressively and uniformly enforce your rights. To the extent that you fail to aggressively and uniformly seek to enforce your rights you may be deemed to have abandoned those rights. Such enforcement efforts usually start with a sternly worded “cease and desist” letter from your attorney to the infringing party. Should that not prove effective infringement cases may be brought in the Federal Court. Willful and knowing infringers may not only be liable for actual damages but for treble (triple) damages and attorneys fees! Step Eight: Web site Linking; Framing and Caching: Now you are online, great! Until you discover that some other Netizen is linking to one of your vital interior pages thus sending traffic through your server, to you Web site, but by-passing all those valuable banner ads you have on your initial homepage. This unscrupulous behavior known as “deep-linking”, though disfavored by many in the Internet community, appears to be legal (today, anyway). In the decision handed down in the Ticketmaster v. Tickets.com case, the Judge found that deep linking was permissable. Framing is the technological process of wrapping one Web site’s content around the content of another Web site. To the extent that such activity obliterates any material part of the “framed” content it is illegal and deemed to be violative of the copyright laws. If however, one wishes to frame another’s content without changing its content or context one may do so. Caching is the process of storing web content to permit quicker retrieval. The harm in caching is that when a viewer of web content views “cached” content it may not be viewing the latest version of that content. This of course can have disastrous consequences. Another downside to caching is that it will tend to deflate those all important “hit” counts. Caching, while legal, can cross the line if the cached version is used to the detriment of the owner of the cached content. For example if the cache is not refreshed sufficiently and old, material is purposefully foisted off as current content, or if the caching party is caching order to divert “hits” for the actual site to its cached site. Step Nine: Regulatory Compliance: If your content is of a commercial nature you must make sure that it complies with existing laws and regulations of the Securities and Exchange Commission, the Federal Trade Commission, the U.S. Postal Service and State regulatory authorities. For example, those agencies regulate advertising claims, pyramid schemes, ail fraud and the like. The FTC has been very active in requiring site to promulgate and prominently display their Privacy Policies. In addition those sites marketing to children are well advised to check the ever-changing rules and regulations relating to gathering personal information from children on the net. Step Ten: All Important disclaimers, limitations of liability and jurisdictional Selection: As with offline materials anytime you disseminate material that may cause another to take or refrain from taking certain actions you may want to disclaim any liability for such material. Since the Internet makes all communication virtually instantaneous, and its reach virtually global, the necessity for an appropriate disclaimer becomes essential. There is really no way to know who received the online information and therefore no way to make sure that any corrective material will reach those viewing the tainted material. Similarly, to the extent that your content is time sensitive (such as stock quotes or medical data) you will want to make sure that you are not held liable for any delay in the accuracy or timeliness of that information. To the extent that your content is commercial in nature (an e-commerce site) versus just a information site, the courts have held that you are subject to the jurisdiction of the courts in the state where the the viewer of your site is located. What that means is that by selling widgets online you are subject to being haled into any court in the land where the viewer of your site is located. In order to counter this legal precedent you may be able to expressly limit your susceptibility to foreign state lawsuits by setting forth the jurisdiction in which you will appear. If this is of concern, you should prominently post such a jurisdictional limitation on your site and make the viewer affirmatively agree with that jurisdictional limit via a click-wrap agreement.
Disclaimer-- The information contained in this memo shall not be considered to be legal advice. The recipient shall not be deemed to have entered into any attorney-client relationship which may only be created by a written agreement signed by all parties. Recipients are advised not to act in reliance on these materials until consulting and retaining competent legal counsel. Copyright © 2003 Harvey S. Jacobs, Esq. Harvey S. Jacobs, Esq. is the Managing Director with the Washington DC law firm of Jacobs & Associates, attorneys at law, a specialist in Internet Law, trademarks, business formations, contracts, real estate transactions, mergers and acquisitions, and Netpreneurship. He designed and implemented the award-winning real estate site www.stresfreesettlements.com.com and the venture capital site www.venture-capitalist.com. He can be reached at (202) 457-0100 or via e-mail at jacobs@internet-law-firm.com or via its website www.internet-law-firm.com. |
