Tammy McLane
Argenta-Oreana Junior High School
Argenta, Illinois

Illegally copying software is a common issue with 8^th grade students. In my class, I have tried to introduce the topic of copyright laws, shareware vs. warez, site licenses, etc. I am amazed sometimes that the students are not even aware that copyright laws pertain to software (especially games). On the other hand, several of my students are experts at warez sites and cracker codes. Unfortunately, I am not usually able to convince them to stop these practices, but at least I hope I have raised their awareness.

I really like www.spa.org. My students have participated in the SPA screensavers' contest and I have used many of the organization's online resources for my lesson plans covering copyright issues. For example, there is a copyright glossary at www.spa.org/piracy/glossary.htm.

Intellectual Property on the Internet: Copyright and Trademark Law in Cyberspace

Copyright Issues

A company’s Web site can violate the copyrights of others. Ironically, one of the World Wide Web’s most attractive features, easy access to a universe of information and data available in digital form, is one of its greatest vulnerabilities. It is a quick and simple matter to access, download, copy, cut, paste and re-publish any of the text, pictures, video, program code and other data available on the Internet. Because of the fast pace of business today, the designer of a Web site is tempted to borrow materials or design ideas from other sites on the Web.

Under copyright law, however, unless there is permission or a license from the owner, generally it is illegal to copy, reproduce, publish, broadcast or distribute copyrightable material published on the Internet. Whether a company uses an outside consultant or prepares its Web site in-house, the company ultimately is responsible for compliance with the copyright laws, and the penalties for infringement can be severe.

The protection of the copyright laws extends beyond protection against making an exact copy. For example, a copyright may be infringed even if copyrighted material taken from another location on the Internet is altered, if the original material still is recognizable. And if the design of a Web page uses elements similar to those from another user’s page, arranged in a similar way, an infringement may occur, even if the individual elements are arguably somewhat different. The "look and feel" software cases illustrate that the courts draw fine lines in this area of the law, and caution is appropriate.

Although the above copyright issues are similar to those that arise in print and other media, the technology of computers and the Internet have presented some novel issues, some of which are still evolving. For example, the very process of accessing and viewing a Web site causes a "copy" of the site to be made in the memory of the user’s computer. Although the law is unsettled, it is likely that, at least as to ordinary browsing, the browser has an "implied license" to access and investigate Web sites. That license does not necessarily extend to the downloading, printing and re-transmission of material available on the Web, however. In fact, Congress currently is considering a bill to amend the Copyright Act to clarify that electronic transmissions over the Internet are "distributions" under the Copyright Act.

The lesson for the Web site owner is that, if the content on a Web site is taken directly from a third-party source, it is wise to get permission and/or to license the material from the third party. While there may be some uses that constitute "fair use" under the law, e.g., use of an extremely limited portion of a work, or use for non-commercial, teaching purposes only, the possibility exists that the owner of the work will not agree with the Web site owner’s interpretation of the use.

"Linking" and "inlining" may result in copyright infringement. One of the Web’s great strengths is the ability to create "links" between one Web site and another. This is done using embedded commands in the original Web site which allow a browser to click on a "hyperlink" or button on the screen and to jump immediately to another Web site. For example, these links could allow a user to pursue a chain of searches until the desired information is found.

In theory, linking to another site should be protected by the implied license a user has to browse any site on the Internet. The user who is transported to another site by a hyperlink can view the indications of authorship (e.g., company name) and any attributions of authorship at the destination site.

More difficult copyright issues are raised by the practice known as "inlining." Under that practice, the original Web site automatically appropriates text or images from another Web site and reproduces it as if it were part of the original site. As a legal matter, inlining may involve making a "copy" of the borrowed information and redistributing it on the original Web site. This copying could violate both copyright and trademark laws, since indication of attribution and authorship may be diluted or removed entirely. See box on page 2.

Trademark Issues

Established domain names may violate trademarks of others. Domain names—the addresses of "locations" on the Web—raise a number of issues under the trademark laws. The use and registration of a domain name may infringe a trademark owned by another company. The possibility of infringement may be greater where the domain name in question also is used as a trademark.

Complicating matters is the administrative procedure for obtaining and protecting domain names. Currently, domain names are controlled by Network Solutions, Inc., which maintains the Internet Network Information Center (the "Internic") under a contract with the National Science Foundation. Applicants for domain names contact the Internic (usually through their Internet Service Provider), apply for a domain name, and pay the registration fee. An applicant must certify to the Internic that its selection of a domain name does not infringe the rights of third parties. The Internic does not perform an independent trademark search to determine whether a domain name conflicts with an existing federally registered or common law trademark. Rather, the agency only determines whether the specified domain name is available.

Domain names can be challenged by the holder of a registered trademark. Under the Internic procedure, trademark owners who have not registered their trademarks as domain names can lose out to interlopers seeking to adopt names which will bring business to their Web site, or even to sell the names to the highest bidder. One famous case involved the domain "Kaplan.com." "Kaplan" was a mark used by Kaplan Test Centers in promoting its test preparation services. The Princeton Review, a competitor of Kaplan, registered "Kaplan" as a domain name and used it as the name for a site which compared Stanley Kaplan’s test preparation courses to those offered by the Princeton Review. Kaplan Test Centers disputed Princeton’s use of the name and threatened suit to stop the infringement and procure the "Kaplan" domain name. An arbitration panel decided in favor of Kaplan. McDonalds faced a similar challenge before it was able to acquire the "McDonalds" domain name from a third party who had registered it.

The Internic has a dispute resolution policy which allows an owner of a preexisting trademark that has been registered federally (or in a foreign jurisdiction) to dispute the use of the trademarked name as a domain name. Under the policy, domain names that are challenged by the prior trademark owner are put on "hold" status, thereby interrupting the use of the domain and potentially causing serious damage to the business of the domain owner. Under this system, even though two marks previously may have co-existed in the marketplace comfortably, the owner of the unregistered mark may lose the use of its domain name to the owner of the registered mark. Also, the owner of a domain name that is not used by the owner as a trademark for a product or service (other than as the Internet address of the owner’s Web site), may lose the domain name to a registered trademark owner.

While the Internic has been criticized for placing the needs of owners of registered trademarks over those of non-registered users, at the present time there is no way for domain registrants to protect themselves from potential loss of domain name via the policy other than by going to the great expense of suing the Internic. Therefore, domain holders are well-advised both to perform comprehensive searches before selecting a domain name, and then to register the domain as a trademark. Further, trademark users who have or are considering doing business on the Web ought to consider registering all their marks, and further may wish to consider registering valuable marks as domains on the Internet in order to protect them from being registered as domains by third parties.

The risk of trademark confusion is increased on the Web. Trademarks are intended to serve as indicators of the source of goods and services. In the real world, the same trademark may be used for more than one product (or service), owned by different owners, where the trademarked products are sufficiently different that consumers are not likely to be confused as to their source, origin, affiliation or association. For example, because of the variable contexts in which consumers encounter them, no one would think that Lotus® spreadsheet software emanated from the same source as Lotus® automobiles.

On the Web, however, such contextual distinctions do not exist. Information is presented in two dimensions and in a single location—the user’s computer. Exacerbating the problem is the relative lack of sophistication of most Internet search engines. For example, searching for "Lotus" on the Web will bring up a list containing both the car and the software, in addition to dozens of other unrelated Lotus products and services. The resulting potential for consumer confusion increases the chance that an infringement claim will be made. Thus, trademarks which may have co-existed for many years in the real world without confusion may conflict on the Web.

Some commentators argue that, as in the real world, there should be no infringement if identical marks are used for unrelated goods on the Web. Until the law is clarified, however, companies should take special care to ensure that their trademarks are reviewed and cleared prior to using them on the Web.

The Dilbert Principle—Inlining May Require Consent

One recent example of potentially infringing "inlining" occurred when several Web sites began inlining copies of the Dilbert cartoon strip, which originally appeared on the Web site of the copyright owner of the Dilbert strip, United Feature Syndicate, Inc. (d.b.a. United Media). United Media’s lawyers sent cease and desist letters to at least some of those inlining Dilbert images without permission. Although several commentators have taken the position that such inlining may be acceptable if proper attribution and authorship is maintained, United Media’s challenges have not been tried in court, and the law remains unclear.

© Copyright Testa, Hurwitz & Thibeault, LLP 1996

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© 1997 Software Publishers Association. All Rights Reserved.