This is the second of an occasional series on US law and intellectual property (IP) as it affects software and systems used in health technology. This article is an overview of the issues surrounding and actions you should take to protect your proprietary website, software and patents. Especially for early stage companies, the last has grown in importance with ‘patent trolls’ demanding settlement fees for claimed infringement.
Mark Grossman, JD, has nearly 30 years of experience in business law and began focusing his practice on technology over 20 years ago. He is an attorney with Tannenbaum Helpern Syracuse & Hirschtritt in New York City and has for ten years been listed in Best Lawyers in America. Mr. Grossman has been Special Counsel for the X-Prize Foundation and SME (subject matter expert) for Florida’s Internet Task Force. More information on Mr. Grossman here.
Imagine if you found a portion of your proprietary software or your website in cyberspace. The only problem was that it wasn’t located at your Internet address. Let’s say that it was smack in the middle of someone else’s website and/or made available for download. You would fume and want justice.
No License to Steal
The Internet, like many technologies, promises substantial consumer benefits and, at the same time, invites fraud and deception. The technology is such that it’s all too easy to steal software or a whole website with a mere click.
For businesses and consumers to continue to fuel the growth of the Internet we must aggressively address the protection of intellectual property (IP) rights online. Any good business plan maps out a strategy to maximize opportunity and to handle calculated risk. So protecting your IP rights must be a core part of your business plan.
You should consider taking the following steps to minimize your company’s risks.
The Intellectual Property Pursuit
Ideally, your company’s human resources, accounting, and marketing departments should work together to establish an in-house department to enforce IP rights. Depending on your resources, this department could be an independent department, could “borrow” people from other departments, or you could outsource the work to an IP attorney. Whatever your choice, the responsible party should be charged with, among other things, policing the Internet for potential infringements on your “property.”
Your property could include the words and graphics on your website, corporate logos, trademarks and service marks, and of course your software. And don’t just limit your search to websites–you never know what you might found out there in the cloud or on a social networking sites.
If you discover any of these things out there on the Internet you may have just discovered someone who is infringing your IP rights.
Maximizing Your Copyright Protection
To gain the maximum protection under current copyright laws, you should register your software and the material on your website with the US Copyright Office promptly after its creation.
Once an original work is “fixed in a tangible medium,” it’s protected by US copyright laws. Failure to register doesn’t give somebody the right to freely copy and use your work as his own. However, if you register your original work, the law gives you advantages like a presumption of ownership, entitlement to statutory damages, and reimbursement of your attorney’s fees.
In other words, when you discover that someone is infringing your website or software, it will be easier and cheaper to enforce your IP rights if you’ve registered your copyright.
You can search for Federally registered copyrights yourself for free. One good starting place is the US Copyright Office, www.copyright.gov
Still, this column and the government’s website aren’t a substitute for an IP lawyer’s advice regarding suitable copyright protection. An IP lawyer brings many things to the table. For example, he can help you to avoid technical mistakes in drafting a copyright application and can also tell you whether you should be registering a copyright or seeking other IP protections including a trademark or patent.
Ultimately, there’s no substitute for plain-old, down and dirty, Internet surfing. So, no matter what else you do, you should also get out there and search for your material. You can also use some automated tools such as Google Alerts to do the work for you. You must do your due diligence. Try typing a blurb or two from your website or a few lines of code into a search engine and see what you find.
I had a client who did just that. What he found was a competitor’s website—identical to his own site. The only difference was the name at the top and the phone number and e-mail address at the bottom. No kidding.
Do-It-Yourself Patent and Trademark Searches
If you need or want to conduct an initial and basic trademark or patent search yourself for free, go to the US Patent and Trademark Office website at www.uspto.gov. Here, you’ll find searchable databases for both US pending and accepted patents and trademarks. Both databases contain images. You can also conduct an expired patent search.
I emphasize that you may not find what you need or are looking for using one of these search sites. Internet searches are imperative.
One suggestion is to search the Internet for slightly different versions of your domain name. In other words, if you own the site www.fish.com, you may want to visit www.gofish.com. You never know what you’ll find until you look.
A potential worst case scenario would be your competitor’s website with your copyright-protected graphics. (Depending on how your graphics are used on the site, this may be an infringement.)
Another zinger would be your competitor’s website and defamatory material concerning your company. One final disaster would be for you to type in your company’s trademark protected name, add a www at the beginning and a dot com at the end and find that you’re at your competitor’s site. You should periodically check for these types of problems.
Enforcing Your IP Rights
If you find an IP problem online, what do you do? Your good choices do not include doing nothing.
You could hurt your legal position through your own inaction. Basically, if you snooze, you lose. When you find a violation, act fast.
- If what you’ve found is a copyright violation, you need to stop the infringer in his tracks. You’d like your lawyer to obtain a court-ordered injunction stopping the infringer from copying. According to the Copyright Act, you can also obtain an impoundment and destruction of all infringing copies, damages and in some cases, attorney’s fees. In limited circumstances, criminal punishment is also available.
- If it’s a trademark violation, your attorney can ask the court to issue an order forcing the infringer to stop using the mark and to take remedial actions (like a remedial advertising campaign). The court can also award damages and profits earned by the infringer from his wrongdoing. Triple that and, in an “exceptional case,” tack on attorney’s fees if you registered your material properly with the US Patent and Trademark Office.
- For a patent violation, you’ll also want your attorney to attempt to obtain an injunction and recover money damages and lawyer’s fees. Damages for patent violations can be large due to the legal formula for calculating them.
- If you’ve found a competitor’s website at www.yourcompanyname.com, you may have just found a classic case of cybersquatting.
In addition to pursuing traditional trademark remedies, you may be tempted to act rashly. Before you do that, you should consider the following advice:
Don’t tell the competitor off in a letter. Recipients often post these letters online and you don’t necessarily want everyone to have a firsthand view of your temper tantrum.
Also, do not immediately give into the extortion. While it may make business sense after examining the situation, a quick sell-out might encourage other infringers to test just how deep your pockets are. Consult with a lawyer before you give in and pay off.
Now that I’ve explained some of the ways that an IP thief can rip you off on the Internet, I hope that I’ve made you just a little paranoid. If your paranoia provokes you to monitor the Internet for your stolen material, I’ve done my job.
Mark Grossman, JD
Tannenbaum Helpern Syracuse & Hirschtritt
7 March 2013
Editor Donna thanks Tate Stickles, JD of Tannenbaum Helpern Syracuse & Hirschtritt’s Florida office for his assistance in securing this article series.