Several weeks ago I wrote on the subject of legalities in web design, highlighting four legal matters that web designers should address, some with the aid of a legal advisor. Several days after the post, I received an email from David Weslow, who is a partner with Wiley Rein LLP. David’s email referenced several topics related to domain names and copyright issues pertaining to web design and the Internet. After several emails, David agreed to a phone interview where we could delve deeper into several specific legal issues that concern websites including intellectual property, copyright, and domain name registration. This is part one of a two part interview, part two will be posted later this week.

David focuses on trademarks, copyrights and domain names, and provides counsel on intellectual property, technology, and related product and service distribution issues. David has represented companies and organizations in a wide range of Internet and online issues including recording of domain name transactions and disputes, cyber squatting, anti-spam fraud and scams, and several legal actions involving trademark, copyright, and intellectual property rights cases. He is a member of the American Bar Association (ABA), IP Section, and also on the Special Committee on Computer Gaming and Virtual Worlds, and the Special Committee on Online Copyright Issues.

Ryan: As an attorney for Wiley Rein LLP, how did you get started in the area of providing advice for domain name and Internet intellectual property issues?
David: I started writing web pages in 1995 for the State of Maryland doing web pages that were close to or near 100% text in HTML with some linking, and then in 1996, I became the web master for the college website for Elon College in North Carolina (now Elon University) which included mostly HTML, some JavaScript, and all the early web design languages and materials. In college I had a hunch that there would be a need for lawyers who could understand and handle Internet issues since domain names were becoming more important and raising interesting issues in relation to trademarks and business names. As web master for the college website, I was also doing a decent amount of computer support for the administration and professors with typical computer issues in 1996, and in particular with issues in understanding the web and how web pages worked.
Ryan: So you were a software and web developer before becoming an attorney? How did you make the shift from a technical role and into the legal aspects of Internet property rights?
David: I pursued both computer and legal interests, and combining the two was a natural fit for me. I also worked in the legal departments for several organizations with a focus on Internet legal issues.
Ryan: How long have you been doing this type of legal work?
David: About 10 years now as an attorney, and a few more years in other capacities.
Ryan: What are some of the common Internet property rights issues that you see clients facing today? What types of issues do you see clients running into with respect to domain names?
David: Companies and individuals are often faced with the issue of whether or not use of a domain name will conflict with the trademark rights and vise-versa. Or in the instance of a start up company, the founders need to be sure to avoid calling the company something that conflicts with an existing name or brand. It is important for all organizations to evaluate trademark issues before naming new products, businesses, or even domain names on the Internet. Businesses should be sure they are clear to commercially use a domain name before registration of the domain name or launch of a site.
Ryan: This reminds me of the situation where a person or organization will own a domain name with a site running under that name. The site could be about a particular topic and eventually another company or entity either buys or sues for the domain name and then use it as part of their services. Is this a case of copyright infringement?
David: If the site and domain name were originally about a particular topic, and the site is operated legitimately prior to the other company’s first use of the name in question, then the original owner could be within their legal rights to keep the domain name and the site. If the second company came out with their product or name after the fact and wanted to buy the domain name or website from the original owner, the original owner could be able to sell for a fair market price. On the other hand, if the original owner of the domain name registered the domain name because they were aware of the name or trademark of another company, also known as cyber squatting, then the organization might have a case to sue for the domain name and damages based on a claim of cyber squatting and or trademark infringement.

When individuals or organizations register domain names that correspond to other company or brand names for the purpose of capitalizing on the association between the domain name and the brand/company name, they could be subject to a federal lawsuit for cyber squatting. Ownership of generic words as domain names is typically permitted under trademark laws when the domain names are used to display content related to the generic meaning of the term. For this reason, you will often encounter generic or “category” terms in popular top-level domains such as “.com” that are being used to display ads or other types of revenue-generating content.

Ryan: I know several folks who blog and take their content seriously, especially when they see images or even entire articles stripped and posted on other sites without permission. I have been a victim myself and with some very popular well know media sites taking images from several blog posts. How does the average blogger or small business owner handle copyright and property rights issues when their content is stolen? Do you have any tips for victims of copyright infringement and content theft?
David: This continues to be a perception in some corners of the Internet that all content is free; right-click and it is yours, but this is not the case. Your creative content is entitled to copyright protection, and taking content without authorization can be copyright infringement.

There are technical ways to prevent copyright infringement include disabling right-click, putting text and content in flash rather than in HTML text, and other techniques. These can slow down the casual Internet users, and I recommend that clients chat with their web developers to ensure there are systems in place to limit content copying.

If a copyright has been registered with the U.S. Copyright Office before the unauthorized copying, or within 90 days of publication, the copyright owner may be entitled to “statutory damages” for copyright infringement, which can be up to $150,000 plus attorney fees per work. You can see how unauthorized copying can be a very serious issue.

One interesting issue that has been in the news recently is with a group out of Nevada called Righthaven, LLC, which has a relationship with several newspaper companies. Righthaven will acquire rights related to newspaper content from its partner companies, and after determining that the content has been copied to other online sites without permission, then they will sue the offending online sources for reposting the content. When someone copies or reposts the newspaper content, then Righthaven will sue for copyright infringement. The business model is set up just to sue people. This business has had some setbacks in legal rulings recently with several going against them based on whether or not it really has the necessary rights to file the copyright lawsuits. However, the Righthaven setbacks are a special situation and will not limit other people’s ability to pursue copyright infringement claims under similar circumstances.

The second segment of this two-part interview will be posted later this week.

Note: In this interview, David provided general information about legal aspects of web design. His comments were not legal advice or legal opinions. You should consult an attorney for any specific legal questions.