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Protecting Your  Website, Privacy and New Laws Present: Protecting Intellectual Property Since 1980 1000 Fourth St, San Rafael  1700 Montgomery St, S.F. (415) 457-8300 e-mail: Phil@iplegal.com

Website: Copyright for text, music, interactive elements, data and other “works of authorship” Trademark to protect the “goodwill” and reputation of the site and its owners. Secrets for data control Agreements are Essential!

Privacy, Cookies and Notice THE EU and US will agree on privacy standards. The Key: Full Policy. Notice of Privacy Policy links up front Policy in Compliance with FTC Rules Need “Opt Outs” and “Choices” MUST notify if site sends “Cookies.”

Intellectual Property Rights in a Website: Text including “meta text” because it is perceivable by a device. Photographs, Graphics, Visual Arts, Databases, information, articles, Processes, methods, search and other “engines”, “spiders”, Frames, Names, Domain Names, Marks, Animations...4

Securing Intellectual Property Rights:* Copyright: Registration Trademark / Service Mark: Use + Registration Patent: Claim within 1 year of ANY form of market readiness. Secrets: Keep them Secret, Use Agreements, Use Care in employee selection, Retention, assignment, departure and exit! *You will be tested on this later!

Patents for “Inventions” Tangible Results of processes like the spoke-and-wheel analysis of financial portfolios Databases: More Valuable than Ever Other inventions: methods, processes, designs - Even “natural” Mathematical Algorithms Can take 3 years to obtain New Law:Government Guarantees 17 years.

Privacy,  Publicity, personal rights, International in scope. EU Vs U.S.A. on Privacy Rights Laws FTC and State agencies will jump on fraud (on the rise) Requires International Cooperation - Not Imposition Dustin Hoffman Case 1.5 Million for Publicity violation

Copyright: Registration a Must... A Website is a linked html grouping of files that reside on a server. To some, it is an interactive magazine to others, a bookstore, an auction or Mall. The best way to quickly protect it and stop others is to register your Intellectual Property rights.

The Benefits of Copyright Registration: In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.  NOTICE of your claim to ownership of the work is made a public record.

So What? To Stop a Copyright Pirate In the U.S.A. : The Certificate is deemed true and correct for evidence purposes.  This goes to the "prima facie" aspect above and saves much expense. 17 USC Section 411 requires the work to be registered before an infringement suit can begin.

To Get Damages and Stop Imports, register before... 17 USC Section 412:   to be entitled to the following, the work must have been registered prior to Infringement.  Any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work: statutory damages  of up to $100,000 per infringement and Your attorney's fees, assuming you win, and exclusion by the Customs Service of imported infringing works.

Digital Millenium Copyright Act, 1998 Complete Revamp of Law Protection of Databases by use of technology, agreements on US protection of foreign works. ISP Liability defined, given SAFE HARBOR May apply to ANY “linking” site! Hackers beware: Easier to prosecute infringers who circumvent technological measures DVD cases & MP3.

DMCA: Intellectual Property on The Internet: Laws are catching up with the technology. New Ways to Protect Content by High Tech Means 17 USC 1201. Within 18 months of Oct, 1998 Tape machines must detect “Macrovision” Libraries, educational institutions, “Fair Uses” still OK.

Year 2000, 1999: MANY MORE NEW LAWS Industry must police itself and establish standards for privacy and notice. UCITA on horizon for e-contracts. Commerce to increase multifold. $$$ To Be Made…Crimes to be Committed UETA Here Now – e-Signatures OK Fraud an issue, FTC to police our ‘Net.

TRADEMARK: to protect “goodwill” and reputation... What if your “family” site were linked to a PORN site? What if YOUR trademark was someone ELSE’s URL? What if you want to have the URL “Porsche.com?” Anti Cybersquatting Consumer Protection Act, 1999 – Stops Pirates from using famous names, TMs as URLS.

U.S.  TRADEMARKS ® STRAIGHT UP SM What they are Why care What to do about Unique Web Situations How to Protect trademarks?

Trademark: What They Are A trademark is any word, name, symbol or device used by a person that distinguishes one’s goods or services from those of another. 15 USCA 1127 TRADEMARK  ESTABLISHED BY USE OF THE MARK IN COMMERCE Copyright established by Registration Patents by Claim of Invention Internet Website Use Counts

What TMs Are: What forms they take Words:  “KleenexÒ”, “XeroxÒ”, “KodakÒ”, “Game LinkÒ” Logos:  So many they couldn't be listed here but imagine what you like. A phrase:  “They’re GRRRReat” for cereal. “Where the Internet & Entertainment Converge” “Mark.com” – Use is tricky P.T.O. rules.

Other Trademark Devices: In the ancient world a mark was a small engraving. TODAY “Anything Goes” (Almost) Mere Color bands for QualitexÒ Cleaners A sound: The rev of a Harley - DavidsonÒ. Scents of Perfume

With the Internet: More Devices Moving objects, Characters such as the new “virtual help desk person” The way a frame surrounds an artwork, other’s pages Trade Dress A “metatag,” and in short, Whatever we know of today and all forms these may take in the future.

Trademarks: Fanciful Vs. Descriptive A trademark is only as valuable as how it is used.  Trademarks carry the good will of a business. Trademarks could be lost through disuse by owner and abuse by others. To be registered “trademark” needs to be on Fanciful end of spectrum, not Descriptive.

Trademark and Internet: Why Care? Domain names best if Descriptive or same as / similar to your trademark. Domain name may not FUNCTION as a trademark unless properly used to BRAND the Site. Anti Cybersquatting Consumer Protection Act. Marks may CLASH because of the Internet - all in the same cyberspace “marketplace.” Unscrupulous persons will be prosecuted for “grabbing” others trademarks. NEW ICANN Dispute Policy and ADR Work!

A “Famous” Mark or Name - Dilution: Famous marks – Dilution or “How to Stop a trademark infringer without proof of public confusion”  -- Not working well Mark Must be “Famous” locally, nationally or Internationally. Anti Cybersquatting Consumer Protection Act:  Piracy stopped.

Dilution: Blending The selling, under a mark not the seller’s, a variety of goods or services not intended by the original owner to be associated with its goods or services. This causes the distinctness of the mark to be diluted.  Porsche Case is suing several dozens of websites “In Rem”.

Dilution:  Tarnishment By placing the mark in disdain by selling bad goods under the mark. By having goods “passed off” as those of a a known Brand when the goods do not originate with the trademark owner.

How Famous: “Market,” “Audience,” Proven by SURVEYS, REPORTS, Many Factors “The Greatest Show on Earth” Panavision Avery Dennison Movie Buff

Internet makes major difference SOME classes of TMs on ‘Net” (i) Class 35, 41 and 42 services, Class  9 e-goods make a big killing on the Net. (ii) Marks may clash when domain names use famous marks that might never run into each other without the Internet.

Dilution – no need to prove “likely to cause public confusion” as to Source Characters, names of characters in a play, book, article or other material also subject to copyright, may contain trademarks that can have value. “Mickey Mouse” and “Capt’n Crunch” Much easier to get injunction No Free Lunch: The mark needs FAME. Registration Major Factor

Trade Secrets Only as good as methods used to keep secret. Use of NDA contracts a must as a factor in Court. Lock IT up, assign color badges. Use Source Code Escrow to maintain secrecy and allow reasonable use by licensee. Firewalls, Watermarks, Encryption, Technological Methods.

Use of Other’s Materials on Sites: Don’t Get Sued All text, HTML, Photos, Graphics, may be copyrights, trademarks. You need a License. Even metatag of another’s trademark a no-no (Playboy cases) MP3, Music, Streamed Video - All must be Licensed. DMCA and Copyright Term Ext. Acts: can’t be sure its “free” just because its “old”!! Patents- 1 click in litigation.

Fair Use Debate: What was Gray Law is now lighter and less sure CONFU - not a new food Technological Measures Vs. Content Study and Education: Full Freedom Vs. Rights of Publishers Scientific Uses: Internet -2 and Beyond for greater unlicensed uses.

Recent Fair Use and Parody Cases : Castle Rock (Seinfeld) Vs. Carol Publ 47 USPQ2d1321 De Minmus Use of Sandoval Photos Vs New Line (Film“Seven”) 47USPQ2d1215 35 Seconds of Huggins Song Vs.Use on anti-drug TV Ad in Detroit OK 47USPQ2d1178 Authors in Print did NOT license online (Tassini)

Anti-Porn Laws Violate 1st Amendment But Avoid its Use on Site In 96 and 98 Congress passed CDA and “CDA-2” Legislation. To Protect Children from Porn -Porn not illegal; Obscenity can be stopped - fine line CDA-2 was Enjoined in Court Action by ACLU and others -Medical Community, many others concerned. Ct: Use Technology, Can’t make Internet a “Disneyland”

Seek Advice Before Spending Do or have a trademark and copyright search done. Star vs . Hilfiger Intellectual Property Audit Find out what you have or use that may produce income or liability. Establish Guidelines Privacy Policy, Copyright Notice, Porn Warnings

Review Quiz: Copyright Secured by ____________ Trademark / SM Secured by ___________ Patent Secured by ____________ Trade Secrets must be kept ________ Other’s trademarks, patents and copyrights must be ___________

In Conclusion: Protect Yourself!  Have Fun Creating! “I recommend…”  Intellectual Property rights are more easily protected at startup. Register and protect  -- An Oz. Of Prevention…. Thank You! Green & Green    phil@iplegal.com      www.iplegal.com (415) 457-8300  San Rafael, CA Answers to Quiz: -Registration, -Use, -Claim, -Secret