Many businesses strive for an interactive website, but interactivity brings with it the risk that someone else’s posting will create legal risk. Fortunately, a number of laws help shield the website operator from risk, most important among them the Digital Millennium Copyright Act (DMCA)
The DMCA, or more specifically the DMCA “notice and takedown” procedure, protects businesses from copyright liability for content posted to their website by third parties. Essentially, website owners and operators who register with the US Copyright Office and follow the takedown procedure are granted immunity from copyright lawsuits as long as they were not actively involved in posting from the alleged infringement. This protection can be invaluable, given the potentially high cost of even inadvertent copyright infringement.
Key to DMCA protection is the designation of an agent with the US Copyright Office – without an agent, even companies which follow the procedure are not immune from liability. Under the original system, companies completed a paper form which was scanned and put online. Although it’s called a “directory,” the old list was really just a database of scanned forms, many handwritten and some illegible. Since the designations never expired, designations for long-inactive websites remained online well past the expiration dates of the underlying business ventures. Starting December 1, 2016 there’s a new directory which will replace the previous forms. In order to populate the directory, companies will be required to file electronic designations (along with a new, increased fee) by no later than December 31, 2017, after which all registrations under the old system will expire. Under the new rules, registrations must be renewed every three years.
Some have criticized this as a money grab on the part of the US Copyright Office and, frankly, I tend to agree. That being said, anyone who has ever filled out or tried to read the scanned “Interim Designation of Copyright Agent” has to agree that the procedure was in need of an overhaul. It’s hardly surprising that the government would want industry to pay.
For more information, see the US Copyright office’s website.
The battle to protect your trademark does not end with federal trademark registration. Once registered, you have to be vigilant about protecting the trademark from misuse, or risk losing the trademark’s protected status. The better the brand name, the easier it will be to protect it from improper use by others.
Protection begins with your own use of the mark. In order to maintain a federal registration, you have to actually use your mark in commerce; you cannot simply register it and keep it for possible future use. If you don’t use it, a third party (e.g. a competitor that thinks you came up with a great brand name and wants to use it for their own products) can seek to cancel your registration for non-use and then register it as their own brand name. It is important that you not only continue to use your trademark, but that you use it properly. I will discuss proper trademark use in a later post.
Additionally, certain documents must be filed periodically with the Patent and Trademark Office (the “USPTO”) to maintain a trademark registration. These documents essentially provide a mechanism of proof to the USPTO that you have been continuing to use the trademark in interstate commerce. If the deadline for filing a maintenance document passes, you will lose your registration. If you buy or sell a trademark (e.g. pursuant to the sale of a business or an inter-company agreement between related companies) or grant or take a security interest in a trademark or change the name or address of your company, you should update the ownership records with the USPTO. It is important to keep the trademark registration’s contact information up to date with the USPTO. However, the USPTO will not send you reminders about filing deadlines, so it is incumbent on the trademark owner to keep track of filing deadlines.
It is also important that you prohibit others from using your trademark improperly and without your consent. You should actively pursue any third parties who infringe your trademarks. Sometimes you will find out about an infringement in an ordinary Google search or because one of your customers tells you that they found a competitor’s website when they were looking for yours. There are also trademark watchdog services that will send you notices about potentially infringing marks. If you have a valuable trademark that is frequently infringed, a watchdog service may be a worthwhile investment.
If you are lucky enough to have a brand name that becomes extremely well-known, it may be eligible for status as a “famous” mark. Famous marks come with their own set of privileges as well as challenges. While afforded certain special protections against infringement, famous marks are sometimes vulnerable to becoming generic (and losing their registered status) through unchecked misuse. Examples of once-famous trademarks that lost their trademark registrations are aspirin, cellophane, thermos, escalator, zipper, and yo-yo. All of these once-famous trademarks are now generic names used to describe the product. Most of these were lost as a result of under-policing the misuse of the name by third parties and probably by the owners (and their employees) themselves. But while under-policing can lead to loss of the registration, over-policing can be costly too in terms of legal fees, watchdog service fees, and public image. Finding the right balance is important to ensure long-lasting protection while keeping costs to a minimum.