Protecting the “look and feel” of your website: Intellectual Property Considerations

Mark A. Wright
Director and Chair, Intellectual Property Practice Group
May 15, 2000

As companies increasingly rely on websites to conduct business and provide information to consumers, they also need to become more sophisticated in protecting the intellectual property rights associated with those websites. The distinctive aspects of a company’s website can, and should, be protected under applicable copyright, trademark and contract law.

Trademark and Domain Name Protection

It is important for all businesses, particularly those with an Internet presence, to have a basic understanding of trademark law, which protects names, slogans, logos and graphic elements that are used on or in connection with goods or services. Companies using the Internet to sell products or services should consider searching and federally registering trademarks/service marks that are used on their websites.

It is especially important for an owner of a domain name–the name used to enable Internet users to find a particular website–to try to obtain a federal trademark registration for the domain name. Since a domain name that is used simply as a website address will not qualify for federal registration, the name should be used prominently (bold, italicized, underlined) on web pages and with a clear reference to the goods or services provided by the company.

Federal registration of a mark or domain name has potentially far reaching benefits. In addition to the remedies and rights granted by the Federal Trademark Act, the owner of a federally registered mark or domain name can use the Internet Corporation for Assigned Names and Number’s (ICANN) Uniform Domain Name Dispute Resolution Policy. Under this policy, ICANN can force a party who is infringing on the domain name of another party to cease doing so. In the absence of federal registration, and access to the ICANN enforcement mechanism, a company will have to resort to expensive and time consuming litigation to enforce its rights.

Trade Dress Protection

Trade dress is actually a special type of trademark which protects the non-functional image and appearance of a product or service. Although obtaining trade dress protection for a website is likely to be difficult unless a website has been in existence for a number of years, it is available where the site’s owner can demonstrate that particular elements of the site have become so distinctive that when the public sees them, it associates them with the website and the website’s products or services. In most cases, the owner will need to show that the look and feel of the website have acquired distinctiveness through years of use and aggressive advertising in a variety of media.

Copyright Protection

Copyright protection is available for specific features of a website, such as the text, graphics, music or audiovisual material. Registration is not mandatory for copyright protection, however, if a copyright has not been registered prior to an infringement, the owner’s ability to collect damages or attorney’s fees may be significantly reduced or even eliminated. The type of copyright application necessary to protect a website depends on the features to be protected. In addition, because a website evolves and changes from time to time, new registrations must be filed to protect new material.

A critical issue companies often overlook or fail to understand when developing a website is the “work-made-for-hire” concept. Creation of a website by a non-employee/independent contractor does not automatically vest ownership in the company that commissions the work. It is, therefore, critical to have a written agreement addressing ownership, future use, restrictions and exploitation of the website elements.

Finally, website owners should use proper copyright and trademark notices/legends on their home pages or in the footers on each page. Companies should also consider whether it is appropriate to include restrictions on the use, reproduction or distribution of material on their sites.