Several clients have sought our advice in combating and attempting to remove or shut down so-called "copycat web sites." Their experiences are all very similar: they have invested a considerable amount of time and effort in designing a web site for their business; they're pleased with the results - the content, the graphics, the way in which the user can easily link to different pages on the site and to other sites; then one day, while "surfing the Net," and checking out what their competitors are doing, to their surprise, dismay and anger, they come across a site that looks very similar to theirs, and which uses a lot of the same language, colors and symbols contained on their site. Often, upon closer inspection, they discover that their competitor has simply copied the design and content of their web site, or at least a significant portion of it.
These clients are not alone. The number of copycat web sites has increased along with the growth of the Internet. The Internet auction site eBay, for example, has reported discovering various other auction sites which are nearly identical, or at least bear a very strong resemblance, to eBay's. The problem is exacerbated by the fact that Internet browsers are set up in such a way that it is rather simple to copy the Source Code, or Page Source, of a web site, or portions of it, with a mere click of the mouse.
But there is another thing all of the clients who have consulted us with respect to this type of problem have had in common: none of them had registered a copyright in their web site. Registration of a copyright in a web site is not absolutely necessary in order to take action against the operator of a copycat web site. Under certain circumstances, it may be possible to obtain an injunction against the infringing party and essentially shut down the infringing site in an action for infringement of an unregistered copyright. In addition, there are other legal theories - such as unfair competition, trademark infringement and trademark dilution - which could provide relief. In Red Creek Communications, Inc. v. The Salinas Group, a case filed late last year in U. S. District Court in Northern California (Case No. C-99-20815), the plaintiff alleged that the defendant competitors copied the hypertext markup language (HTML) code and other computer programming code from plaintiff's site and set up an identical site of their own. The only difference, according to the complaint, was that the defendants' site included text relating to defendants' products and the plaintiff's logo had been altered. The complaint included counts for copyright infringement, trademark infringement, trademark dilution and unfair competition under California law. (No decision has been reported to date.)
However, there are several reasons why registration of a copyright is desirable and advantageous. While a copyright exists as soon as a work is put in a tangible medium, one cannot bring a lawsuit to recover monetary damages for infringement of the copyright unless the copyright has been registered. In addition, registration of a copyright allows a prevailing plaintiff to recover the attorney fees he or she has incurred in bringing the lawsuit. A recent example of this relief being provided is the decision in The Kroll-O'Gara Co. v. First Defense International Inc., No. 99 Civ. 4899 [SAS] (S.D.N.Y. April 11, 2000), which awarded the plaintiff over $25,000 in attorneys' fees after it prevailed in a copyright action against a web site accused of misappropriating graphics and text.
The Copyright Office has issued guidelines for registering a copyright in web sites and other online works. The guidelines can be found in Circular 66, "Copyright Registration for Online Works", and can be accessed at http://lcweb.loc.gov/copyright. (This article does not discuss other types of protection which are available to web site owners, such as registration of alternative versions of the site's domain name, or Internet address, and obtaining insurance to cover losses caused by copycat web sites and similar infringing activity.)
For something to be copyrighted, it must be both original and fixed in a tangible medium of expression. An idea cannot be copyrighted; it is only the expression of the idea that can be protected. (Recently, methods of doing business have been patented, but that is the subject of another article, page 1.) Thus, the concept of an online auction cannot be copyrighted, but an auctioneer's particular site design can be. A web site can be copyrighted provided it has a sufficient amount of originality to it. The only exception might be if there was really only one way to express a particular idea on the Internet. Then a copyright may not be available, because registration would result in the copyright holder effectively having a monopoly on the idea itself. An example might be that a site publishing maps cannot preclude other sites from doing so, as there is really only one way to display a map.
Three items must be submitted to the U.S. Copyright Office in order to register a copyright in a web site or other online work: (1) a properly completed and signed application form; (2) appropriate deposit material; and (3) a nonrefundable filing fee. A common error is the filing of an incorrect application form (there are different forms for different types of works). The Copyright Office will accept a painting with the form for a literary work and the applicant will receive a Copyright, however the protection will not be there. For this reason, it is best to seek the advice of counsel on the application process.
With respect to the the last requirement, there is typically a $30 fee for registering a copyright. With respect to the second requirement, ordinarily an author must deposit a copy of the work for which registration is sought with the Copyright Office. This can become difficult when registering an extensive web site or database. While the Copyright Office's deposit regulations do not address works transmitted online, the Office provides the registrant with two options for depositing material in these situations. The registrant can either submit a computer disk containing the entire work along with a printout of representative portions of the work, or submit a reproduction of the entire work, without a computer disk. (Different requirements apply for works which are fixed in CD-ROM format.)
One practical problem with registering a copyright in a web site is that web sites are constantly being revised or updated, typically to add information. Because there is no blanket registration available which would cover revisions published on multiple dates, each update of the web site - provided the revisions constitute copyrightable material - must technically be separately registered. However, each separate registration requires an additional filing fee, therefore a periodic registration of updates is recommended and should be sufficient in terms of providing protection to the owner of the site.
It is also recommended that each web site contain a notice or statement that the material contained on the site, as well as its design, is copyrighted and the owner of the site reserves all rights in and to the material. While web sites are often compilations of various authors' or artists' works, and such compilations are copyrightable, it is also recommended that appropriate licenses be obtained for any text, sounds and images on the site other than those created by the site operator. If employees are responsible for designing the site and creating its content, employers should make clear that the web site is a "work for hire." Under the Copyright Act, with works for hire, the person for whom the work is prepared is considered the author for copyright purposes.
To prevail on a claim for copyright infringement, a plaintiff must establish a substantial similarity between the two works at issue. Another type of copyright infringement claim which fell out of favor during the 1990s urged courts to compare the "look and feel" of the two works. Some attorneys now argue that the "look and feel" theory should be revived, because it would offer an appropriate and useful way to determine copycat web site cases.
As with other creations, the design of a web site is an important asset which should be protected by its owner. As more and more businesses and consumers turn to the World Wide Web to purchase goods and services and to obtain information, there is an increasing demand for web sites which have attractive and efficient designs and which contain useful and well-organized information. The temptation among your competitors to emulate your web site may be strong. Registering a copyright in your web site is a relatively simple and inexpensive way to protect this asset and to insure that you have the full range of remedies available in the event of an infringement.