Will citing the source protect you from a copyright infringement claim?

There are an awful lot of misconceptions about copyright law that are floating around. One of my favorites that I keep hearing over and over again is that people believe that you can use any copyrighted work that you want as long as you give credit to the original author.


Ok, folks, this isn't school. Citing the source may have prevented you from being dinged for plagiarism when you were in school, but plagiarism isn't a violation of the law. Copyright infringement, on the other hand, is.


I've said this before, but I'll say it again since it bears repeating. Any original expression fixed in a tangible medium is protected by copyright. There are very few exceptions to that rule. (And for my international friends, this applies not only to United States law. The Berne Convention, the Universal Copyright Convention and the WIPO treaties subject member nations to the same requirements when using works that enjoy copyright protection under U.S. law.)


Copyright holders have certain exclusive rights to their works. Section 106 of the 1976 Copyright Act grants the owner of copyright the exclusive rights to do the following:

- To reproduce the work in copies or phonorecords;

- To prepare derivative works based upon the work;

- To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

- To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;

- To display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and

- In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.


By using the copyrighted work without permission, you are violating several of these rights including, but not limited to, the right to display, the right to distribute and the right to reproduce the work.


Now, I'm not saying that you can't use discrete portions of the work for fair uses, like comment, parody or satire, under certain (usually non commercial) circumstances. However, using the work in its entirety (or even in large part) will subject you to liability under copyright law.


So, what can you do if you want to use a work that belongs to someone else? The easiest answer is to get permission from the copyright holder. Very often, in this day and age, people are willing to allow others to use their work provided that they're given credit and a link back to their site. Other copyright holders are willing to license their work for a nominal fee.


What do you do then if the copyright holder doesn't want you to use his or her work? Well, at that point, you have two options. Post the link (don't embed it on your site (I'll talk about that in another post), post just the link), find another work that does allow you to use it (Creative Commons is a good place to look) or create your own work from scratch on the same topic.


What can you do if you're already using or displaying someone's copyrighted work on your site? The first thing that you can do is to remove it. If you want to continue using it, you need to contact the copyright holder and ask their permission. Don't be surprised though if the copyright holder isn't thrilled to find out that you've been using their work without their permission.

The safest thing that you can do is to avoid using people's copyrighted work. If you don't know how to write, hire someone to do it for you as a "work for hire". If you need pictures, go out and take them. If you can't find a way to do it yourself make sure that you've got permission or a license to use the material before you post it on your site. Better safe than sorry....

When can I register a URL that contains a trademarked name?

So, you've got this great idea. You've seen this URL at the domain registrar and you think, "I've got to have that! I'll put up a site about how much I love their product!" So, you register it. You start talking to your buddy about it and he says, "You can't register that domain name. It's got a trademark in it. You're in big trouble, man." So, who's right?

Let's assume, for the purposes of this argument that you've registered, mcdonaldsforum.com. Your name isn't McDonald or anything like that. In fact, you own a small burger joint in Toledo where folks can order online to have the burgers shipped anywhere in the world. You want to put up a forum that talks about McDonald's. You're planning to put some links to your site, but it'll be mostly to talk about McDonald's.

If you asked me for advice, this is the conversation that we'd have...

In and of themselves, the URLs including the McDonald's name violate McDonald's trademark. If McDonald's wants them back, you can be subject to not only transfer of the domain, but also statutory and other damages for trademark infringement.

First we should look at if you're going to lose the name in a domain name challenge. ICANN ("Internet Corporation for Assigned Names and Numbers"), among other responsibilities, oversees the administration of internet domain names. ICANN has created the Uniform Dispute Resolution Policy ("UDRP") to handle internet name disputes. Those disputes are brought before the World Intellectual Property Organization ("WIPO").

In order for McDonald's to win at WIPO, McDonald's would have to prove that they own the trademark "McDonald's", which is indisputable. So how can you defend against that presumption?

The only defense to using a trademarked word is spelled out by the UDRP, which states in paragraph 4(c) that a respondent may have rights or legitimate interests in a domain name if:

"(i) before notice of the dispute over the domain name, the respondent has made "use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services";

(ii) the respondent has been "commonly known by the domain name"; or

(iii) the respondent is "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.""

In the situation above, you would need to defend under subsection (iii). That means that you cannot make ANY money off of the site at all, no AdSense, no banner ads, NOTHING. I'm not sure that this was your plan.

So, you'd lose the name. Big deal.

But that's not necessarily the end of your problems.

Now that you've lost the name, we have to look at trademark law.

The thing that is most important is whether your usage falls within a fair use exception to the Lanham Act (which is the US law governing trademarks). Generally, there is a nominative fair use defense that is used to overcome the presumption that you've infringed the trademark.

The nominative use defense requires that:

1. There is no readily identifiable way to discuss the product or service without mentioning the trademark (e.g., You're not required to refer to McDonalds as "the fast food chain with the golden arches as its logo");

2. That you're using the minimum amount of the mark necessary to identify the service or product (i.e., the name, but not the logo or font); and

3. That you do not suggest affiliation or sponsorship in any way by the trademark holder.

You need to stay within the bounds of both the UDRP and the Lanham Act to avoid problems.

My advice would be to stay away from other people's trademarked names when you're registering domain names. It's the easiest and safest way to avoid big headaches later.

Ack! Someone's copied my site! What should I do?

Well, the first thing to do is not to panic. Sadly, content scraping happens all the time. It can be as seemingly innocuous as someone using an article from your site without express permission (even if they link back to you and give you credit) or as extreme as a wholesale copying of your site.

You may be thinking, "But I never filed a copyright for my site! I didn't even have a copyright noticed on my site! I'm screwed!"

Seriously. Don't panic.

All works of original authorship fixed in a tangible medium of expression (even on the internet) are protected by copyright. Registered or not, copyright notice or not, you're protected.

Are you breathing yet?

The first thing you do is you try to find out if you can find contact information for the shlemiel who did this. You can try the site itself but your best bet is a who is search at networksolutions.com.

Contact him and demand that he take down the site immedately. You can do a more formal cease and desist letter if you'd like. You can even have a lawyer do it for you if you really want to give them a scare. (I don't know what it is about legal letterhead, but it has some magical power or something... LOL!)

What do you do if you can't find him at all or if he doesn't take down the infringing material after you ask him to? Don't panic, you have a recourse.

Under the Digital Millenium Copyright Act of 1998, all "service providers" including hosts must have a policy for removing material that infringes another person's copyright in order to avoid being held liable for copyright infringement themselves.

So, what does that mean to you? It means that you visit the host of the infringing website and follow their DMCA takedown provisions. Piece of cake.

And because the DMCA was implementing WIPO treaties, even hosts in other countries (where the countries are signatories to the WIPO treaties) have similar provisions.

No sweat. See, I told you not to panic...

Feel better?