“LOOK AND FEEL” PROTECTION FOR WEB SITES

IVAN HOFFMAN, B.A., J.D.



        Often site owners and designers are shocked to find another site that looks like a virtually exact copy of their site or one they designed.  Code is copied.  Background colors are copied.  The way the site operates is copied.  What can be done?  The answer is not a simple, straight forward one but it may be that, under certain circumstances, web sites that intentionally copy the so-called “look and feel” of another site may be subject to claims of copyright infringement under United States law.

        There are 3 elements that must be demonstrated:

1. Site 2 (the alleged infringer site) has copied from Site 1 (the site allegedly copied from);
2. What Site 2 copied from Site 1 are elements of Site 1 that the copyright law recognizes as protectable elements; and
3. That Site 1 either has provable damages or has registered its site, including making the required deposit of all the protectable elements, with the copyright office within the time required by the statute.
Demonstrating the Elements

Copying

        The key element of course is to show that Site 2  has copied certain otherwise protectable and protected elements from Site 1.  Keep in mind that the copyright law is designed to prevent copying and thus Site 1 must be able to prove that such copying took place.  Merely because Site 2 ended up looking and feeling like Site 1, standing alone, will not support a claim for copyright infringement.  Although innocent infringement is infringement just the same, often innocent infringement, without more, may be claimed to be not infringement at all.  That is, the “innocent” infringer may say that it was merely a coincidence that Site 2 ended up looking like Site 1.  Therefore, Site 1 must be able to show that there was a copying, either intentionally or innocently.

        One way to demonstrate this copying is to show that the source code of Site 2 is identical to that of Site 1.  Site 2 may actually copy typos from Site 1 and this is some evidence of copying.  Further, if Site 1 contains unique and perhaps fanciful names for some of its source elements and these appear in Site 2’s code, this is further evidence of copying.  Programmers should always keep this legal issue in mind as they create coding so that they can build in whatever uniqueness they can to be later able to identify their source code from another source code.  Similarly, designers should give their graphics unique names so that if that graphic appears on Site 2 with the same unique name, it may be cited as further evidence of copying.

Protectability of Copied Elements

        But, having said that the copyright law protects against copying, the second element that must be proven is that what was copied is actually protectable under that law.  While the threshold for originality is low under the copyright law, there are some elements that are simply not protectable under the law.  Short phrases, mere ideas as opposed to the expression of ideas and functionality are among the elements not protectable.  But the look and feel, the web site interface as it were, can contain elements that are protectable if they are sufficiently original and are not public domain or taken from other sources or serve as so-called “methods of operation” i.e. functionality.  Much of the programming that creates how the site looks can be protected as of course can be original graphics and designs.  Keep in mind that this protection exists only for the copyrightable elements and that the overall “look and feel” standing alone, is unlikely to be protected by copyright under the federal copyright law.

        Other than in an exact duplication of the sites, copyright infringement may also be found if the sites are “substantially similar.”  What this means is often subjective and the courts have developed a number of different legal “tests” to determine whether, in this instance, Site 2 is an infringement of Site 1.  These tests are often referred to as the “abstractions test,” the “subtractive test,” the “totality test,” the “intrinsic/extrinsic test,”  the “analytic dissection of similarities” test and the “abstraction-filtration-comparison” test. Without going into the details of each of these tests, suffice it to say they are methods for determining whether or not there is an infringement in a given instance.  In each instance, the purpose is to enable a court to decide if what was copied is sufficiently protectable under the copyright law to warrant sustaining a claim of infringement.

        If Site 1 had been registered as a copyright, the certificate obtained from the copyright office is presumptive, if not conclusive, evidence of copyrightability.  However, having this certificate does not mean that Site 2 cannot attack the validity of the copyright.

Damages

        In order to file a copyright infringement lawsuit, Site 1 must have a registered copyright as a condition to such suit.  However, if Site 1 waits to file this application until just before the suit, it will not be able to avail itself of the benefits of the copyright law that attend having a registered copyright on file.  (For details about registration, including when the registration must be made to avail yourself of the remedies under the act, see “Do I Need to Register My Copyrights?”).  If the copyright on Site 1 were filed in the appropriate manner at the appropriate time, Site 1 would not have to prove that it was damaged by the infringement by Site 2 but could recover what the law refers to as “statutory damages,” which are damages that are awardable without having to prove that the infringement actually damaged the copyright owner.  In addition, Site 1 would be in a position to seek attorneys fees from Site 2, also not awardable in most circumstances absent a timely registration.  Without such registration, Site 1 would have to prove that it suffered compensable, recognizable and provable damages from the infringement by Site 2, often impossible to show.

        Registration is not only essential for the reasons above, but because Site 1 had a registered copyright, it could be then in a better negotiating position to perhaps settle the claim without resort to litigation since Site 2 would know that Site 1 had these potential legal remedies available and thus Site 2 would likely lose the case and have to pay statutory damages and attorneys fees.   This is incentive to settle.

Contract Issues



        As between site owner and web designer, the issues related to which party is going to be the copyright owner of the elements of the site must be address in the contract between these parties.  There are a large number of articles on my site under the link “Articles for Web Site Designers and Site Owners” that touch upon these questions and how they might be resolved in the agreement.  What is important for the purposes of this article is that the copyright proprietor is the proper party to bring a suit against the allegedly infringing site so it is important to know who is that copyright proprietor as between site owner and designer.

Conclusion

        Often the infringement of one site by another is both a practical and legal mess.  However, by some forethought in design and programming as well as legal planning, the entire dynamic of the legal relationship between the alleged infringer and copyright owner can change dramatically.  By the expenditure of a relatively few dollars in advance, in this instance, Site 1 can potentially go from loser to winner.

        Have vision.  Plan for contingencies.  Be an entrepreneur.  Remember, help me is almost always cheaper than fix me.

 © 2000 Ivan Hoffman

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This article is not intended as a substitute for legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  You should consult with an attorney familiar with the issues and the laws.
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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

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