Copyright
Businesses have many ways to protect their web sites and online brand identity. Firstly, copyright is a protection granted automatically to the creator of an "original work of authorship." In web site design, copyright is used to protect the content of the site.
During the 1980s and 90s, copyright was expanded to protect software. In 1986, the Third Circuit Federal Court of Appeals ruled in Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc. that "copyright protection of computer programs may extend beyond the program's literal code to its structure, sequence, and organization." This was a very broad definition that protected any code that was not essential to the software's function. However, in 1992, the courts overturned this ruling in the case of Computer Associates Int'l v. Altai, Inc. In this case, the court rejected the somewhat simplistic Whelan test and replaced it with a three-part test known as the "abstraction/filtration/comparison" test. In this test, the software code is broken up into its various levels of abstraction. The court then examines the structural components of the software at each level of abstraction in order to filter out those that were included for reasons of efficiency, were required by factors external to the program itself (such as a data input or output protocol), or were taken from the public domain. The final step of the test involves comparing what is left of the code at each level of abstraction to the accused software. If there are enough similarities between the two, copyright infringement may be found. Today, the test used in Computer Associates is generally accepted and applied by the courts. The result of this case, and that of Lotus v. Borland a short time later, is a narrower scope of copyright protection for computer software.
Patents
Because copyright protection for software had been reduced, software companies looked to patent protection of their software. The scope of patent protection, like that of copyright protection, has changed significantly over recent years. However, it has been enlarged.
While patents provide stronger legal protection than copyrights, since they grant the inventor "the right to exclude others from making, using, offering for sale, or selling" his invention for twenty years, they are much harder to obtain. Patent applications can be costly and may take years to be completed by the Patent Office.
Until 1981, software was considered unpatentable. This was confirmed by two U.S. Supreme Court cases, Gottschalk v. Benson (1972) and Parker v. Flook (1978). However, in 1981 the Court decided in Diamond v. Diehr that software was eligible for patent protection as long as it was not purely a procedure for solving a mathematical formula. The Court had cleared the way for software patents; but the industry did not take a large-scale interest in it until the early 1990s, when copyright protection for software was restricted. In addition, cases such as In re Alappat (1994) continued to broaden patent protection of software. In Alappat, the Federal Circuit judges ruled that in order to be patentable, software only had to meet the general patent requirements of "useful, new, and unobvious."
Trademarks
Short phrases and titles are not eligible for copyright, but they can be trademarked. Names, slogans, designs, or a combination of these can all be registered as trademarks if they are used to identify or distinguish the source of goods or services. Visual elements used in web site design, such as logos, can be registered as a trademark.
Trademark law can be extended beyond registered marks to protect the distinctive, decorative look of a product. This is known as trade dress. A restaurant's decor or a product's distinctive packaging or color may be protected by trade dress in order prevent competitors from using confusingly similar features.
Trade dress
In order to qualify for trade dress protection, a company must prove that its trade dress is distinctive and indicates the source of the goods or services. The trade dress must either be inherently distinct or have acquired "secondary meaning" in the public mind. There are two types of trade dress cases: those that consist of a product's packaging and those that consist of the appearance or the configuration of the product itself.
Product Packaging
In cases concerning a mark or packaging, proving inherent distinctiveness is usually a simple matter. The Court ruled in Two Pesos Inc. vs. Taco Cabana Inc. (1992) that a mark is inherently distinctive if "[its] intrinsic nature serves to identify a particular source." A mark must be more than unique in order to qualify as inherently distinct, it must indicate a source. When determining whether a proposed mark is distinct, the U.S. Patent and Trademark Office considers whether a mark is:
· a "common" basic shape or design
· unique or unusual in the field in which it is used
· a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods
· capable of creating a commercial impression distinct from the accompanying words.
Product Configuration
In cases concerning product configuration, such as Walmart Stores Inc. v. Samara Brothers Inc. (2000), the Supreme Court has maintained that a product's configuration cannot inherently indicate a source and noted that product design almost invariably serves other purposes and that even the most unusual product design (e.g., a cocktail shaker shaped like a penguin) is intended not to identify the source, but to make the product itself more useful or appealing. Therefore, in order to register a product configuration or design as a mark with the U.S. Patent and Trademark Office, a company must prove that their dress has acquired a secondary meaning.
Functionality vs. ornamentation
When an applicant wishes to register a product design, product packaging for goods, trade dress for services, or color, the U.S. Patent and Trademark Office must determine whether the mark is functional. If the proposed mark is functional, it cannot be registered. Because trademarks can be renewed indefinitely, it is important that trade dress protection does not include a product's functionality. Otherwise, trade dress protection would be tantamount to an immortal patent, giving the company a monopoly. In order to determine the functionality of trade dress features rules have been developed by Congress and the courts. Since an amendment to the Lanham Act, it is up to the owner to prove that his or her trade dress is not functional. In addition, many courts have held that prior protection by a utility patent amounts to at least some evidence of functionality.
The
Supreme Court reinforced this idea in its most recent trade dress case,
Traffix Devices Inc. v. Marketing Displays Inc. (2001). In this
case, Marketing Displays sought trade dress protection for the design
of its temporary traffic signs, which had formerly been protected under
a utility patent. According to the Court, the fact that the design had
been eligible for utility patent protection was "strong evidence" of functionality.
Therefore, the burden of proof regarding functionality when seeking trade
dress protection was considerably heavier for Marketing Displays than
it would have ordinarily been. In order to win trade dress protection,
Marketing Displays would have had to prove that its features were "merely
an ornamental, incidental or arbitrary aspect of the device," an impossibility
considering that they had formerly been covered by a utility patent that
establishes functionality. While this ruling deals only with cases in
which utility patents and trade dress intersect, many speculate that it
marks the beginning of an era of more conservative trade dress rulings.
Building a protected site
Trade dress has become an increasingly important part of intellectual
property law as it applies to technology. As technology has evolved over
the past decade, companies are not only looking to protect their software
programs. They wish to protect their successful web site and interface
designs as well; using trade dress protection has been the best way to
do this.
In order to register the dress of a web site as a mark with the Patent
and Trademark Office, a company must first prove that its site design
has acquired distinctiveness in the public's mind and that the design
indicates the source of the web site. This goes beyond the inclusion of
a single visual element. The public must associate the entire user-interface
design, including style and architecture, with the company that published
it. (This is valuable in and of itself as an online branding strategy.)
Secondly, the company must prove that this distinctiveness does not include
functionality. If it does, the design is no longer eligible for registration.
However, trade dress does not have to be registered in order to be protected.
If a company feels that its trade dress is being infringed upon, it may
claim so in court and thereby obtain protection of its dress.
These intellectual property issues should not be left up to lawyers alone.
Trade dress "distinctiveness" is a complex problem that must be taken
into account at the beginning of the design process. Trade dress protection
must be a design priority, not a legal one. Development teams must take
the questions of distinctiveness and functionality into account when building
their user-interface designs.
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