TRADEMARKS AND THE INTERNET
By Martha M. Markusen

Trademarks play a key role in marketing goods and services. Through advertising, a business uses trademarks to distinguish its goods and services from the goods and services of others. For example, the Sunkist brand immediately brings to mind oranges and the Pepsi brand immediately brings to mind cola.

A business establishing an Internet presence may want to use a trademark or trade name as its domain name. This will facilitate customers finding its web site and will reinforce the company's name or mark as a symbol of recognition in the marketplace. Because reservation of domain names is currently on a first-come, first-served basis, there are numerous potentials for conflict.

For example, Ford Motor Company has long established Ford as a trademark and trade name. If a person wants to find Ford's web site on the Internet, it is logical to try the address ford.com. This address is for the Ford web site. Similarly, Dodge Motor Company has long established Dodge as a trademark and trade name. A person may try to find Dodge's web site on the Internet simply by typing in the address dodge.com. However, this address is for The Dodge Group, a company that provides accounting systems. Dodge Motor Company's web site is found at 4adodge.com. Unfortunately, Dodge Motor Company missed out by not obtaining dodge.com as a domain name before The DodgeGroup.

If your business has a distinctive trademark associated with its goods or services, and you anticipate establishing a web site, you should promptly take the following steps:

• Determine whether your business has registered its trademark with the United States Patent and Trademark Office.
• If there is no federal registration, undertake both a domain name search and a trademark search.
• If the search indicates that the mark and domain name are available, federally register the mark as a trademark and simultaneously apply for registration of the domain name.

Undertaking a clearance search to determine whether anyone else is using or has registered your trademark is important if your business intends on expanding beyond a limited geographical area. A search may reveal that another company in a similar type of business is already using the trademark. The first to use a trademark has the right to exclude others from using that mark on similar goods or services, at least within the geographical area where the first to use the mark does business.

Provided no one else has used your mark first, a federal registration gives your business nationwide rights, dating back to the date the trademark application is filed with the United States Patent and Trademark Office. If the trademark is available, registering it both as a trademark and as a domain name will give the greatest assurance of the continuing ability to use the trademark on the Internet.

COPYRIGHT AND YOUR WEBSITE
By Martha M. Markusen

Many Internet users mistakenly believe that any work available online can be freely used, copied and distributed to others. This is not the case. Although there is considerable debate as to how copyright law applies to certain online activities, there is no question that copyright law does apply.

Copyright protects original works of authorship, whether in the form of text, graphics, photographs or sounds. Copyright comes into existence when an original work of authorship is fixed in a tangible medium, for example, on the hard drive of a computer or when typed on a piece of paper. The law does not currently require any copyright notice to obtain copyright protection and does not require that a copyright be registered. Therefore, even if there is no copyright notice on a work, you cannot assume that the work is available for your use.

The owner of a copyright has the right to control how the work is used. With some limitations, copyright gives the owner of the work the exclusive right to make copies of the work, to sell or otherwise distribute copies, and the right to create new works based upon the original work. However, copyright protects creative expressions only. It does not protect facts. For example, anyone can publish a list of telephone numbers without violating copyright laws. Copyright also does not protect ideas, only patent law can protect ideas. For example, a retailer might design a website which offers a new and unique way of selling products over the Internet. Unless that idea is protected by a patent, a competitor may be able to use the same idea to set up its own website. The competitor will not be able to use the same words, artwork or other expressions, but will be able to use the same clever idea.

There are some exceptions to the rule that copyright bars any sort of copying of the works of others. Copying is allowed if it falls within the definition of "fair use". Unfortunately, the concept of fair use is far from clear cut. A number of factors are taken into account in determining whether a particular use of a copyrighted work is fair. For example, a use is more likely to be considered fair use if only a small portion of a work is copied, and the copied matter is used for non-commercial purposes such as criticism, education or scholarship. However, uses that generate income or interfere with a copyright owner's income likely are not fair uses.

Certain other uses of works available online may be approved either by implication or as a "fair use". For example, when I view a website on my computer, by necessity I have copied information from the website onto the screen of my computer. However, no one really questions that I have an implied right to view web pages because that is part of the basic nature of the Internet. However, do I have the right to store a copy of that web page on my hard drive, or print a copy for my personal use? Most likely I would have an implied license to do so. However, if I print 20 copies to share with my friends or print one copy and make a number of photocopies, the concept of implied license most likely would not apply and I may be violating the author's copyright.

Some copyright concepts are straightforward when applied to a website. For example, you cannot scan a picture from a magazine and post it to a website without permission of the copyright owner. Similarly, you cannot copy an article posted on another's website and post it on your site without permission.

However, if the work you wish to copy is found on the web, you could establish a link to that website from your own site. Linking to another's site does have limitations and these limitations are only now being explored and litigated. For example, the link to the website should not create the impression that you are passing off another's work as your own. Another issue that has led to disputes is the concept of "frames". A website designer can divide a web page into various frames. Each of these frames may be surrounded by advertising. Problems can arise when one of the frames contains text from another website. The website owner might object to finding its web page juxtaposed with advertisements for products it does not endorse. In addition, the public might be misled as to who originated the content in the frame and might not understand that it comes from another website. This sort of activity can easily lead to disputes and it is advisable not to frame-link to another website without permission.

Copyright concepts need to be kept in mind by businesses who hire others to design their websites. Who is going to be the owner of the copyright? If an employee designs and creates content for the website as part of his job, the employer will be the owner of the copyright. However, if a business hires an independent contractor to design its website, the independent contractor may own the copyright for what expressions he creates, unless he specifically agrees in writing to assign the copyright to someone else. Therefore, it is important to have a written agreement with independent website designers that specifically identifies who is going to own what the website designer creates.

Copyright expires after a period of time. However, the term of a copyright is extensive and it is often difficult to determine whether a copyright has expired, especially for older works. For any work created after 1977, copyright protection runs from the life of the author plus 50 years or, if the work was created by an employee for an employer, it runs for 75 years from the date of publication or 100 years from the date of creation, whichever occurs first.

Even though a copyright notice is no longer required under the law and registration of a copyright is also not required, there are good reasons to place copyright notices on works you create and good reasons to register those works. Using a copyright notice puts the public on notice as to your claim of copyright and may deter others from infringing your rights. A copyright notice is very simple and consists simply of the © symbol (or the word "copyright" or the abbreviation "copr."), the year or years the work was created, and the name of the owner of the copyright. For example, I could place a copyright notice on this article which would state as follows:

© 2000, Fryberger, Buchanan, Smith & Frederick, P.A.

A copyright notice can be placed on a website by the owner of the copyright. Websites are frequently modified so there may be more than one year in the copyright notice. If a website was first designed in 1995 and modified in 1997 and 1999, the copyright notice should include all three of those years. If the website was designed in 1995 and modified each year thereafter, the notice could indicate the years as 1995 - 2000.

Even though registration of a copyright is not required, registration is necessary before a suit can be brought for infringement. In addition, if the copyright is registered within 3 months of publication or before the copyright is infringed, the owner of the copyright may also be entitled to statutory damages and attorney's fees for infringement. Therefore, there are good reasons to register a copyright. Registration of a copyright involves payment of a fee (currently $30), filing with the copyright office a form which differs depending upon the type of the work, and submitting a copy of the work. Each time the work is changed, the new work becomes a derivative work. A separate copyright needs to be filed for the derivative work.

COLORS AS TRADEMARKS
By Martha M. Markusen

A trademark is any word, name, symbol or "device" used to identify and distinguish goods or services. A distinctive feature of a product can become so identified with the producer of the product as to create trademark protection for that distinctive feature. For example, the color pink for home insulation is a trademark for Owens-Corning insulation. In the case of Qualitex Co. v. Jacobson Products Co., Inc., 115 S. Ct. 1300 (1995), the Supreme Court held that color alone can be registered as a trademark. Qualitex used a green-gold color to identify its drycleaning press pads sold to commercial drycleaners and was successful in stopping a competitor from using the same color on similar products. However, before a color can get trademark protection,the owner of a product must use the color on its product long enough for the buying public to associate the color with the brand.

WHAT'S IN A NAME
By Martha M. Markusen

In today's business world, with significant growth in advertising and "shrinking" geographical barriers, trademarks are vital in marketing goods and services. If a company understands the nature of trademark rights, it is in a good position to take full advantage of trademarks in its business.

A trademark is a word, name, symbol, device or any combination of them that a business uses to identify its goods or services and uses to distinguish its goods and services from those of others.A service mark is a type of trademark which identifies services, rather than goods. For example, Holiday Inn is a service mark for hotel services. Trademarks include brand names, like Sunkist for oranges, Camel for cigarettes and Pepsi for soft drinks. Slogans, such as Got Milk?, You Asked For It You Got It, and Less Filling, Tastes Great, also function as trademarks.

Logos, like the NBC peacock, are popular as trademarks. Currently, there is a television commercial for Nike shoes which neither mentions shoes nor Nike, and only shows the distinctive Nike logo. Trade dress, the look and feel of a product, can also function as a trademark. The distinctive shape of the Coca Cola bottle is one example. Color can function as a trademark, such as the color pink for Owens-Corning Corp. insulation. Sounds, like the NBC chimes, can function as trademarks. Harley Davidson, Inc. is currently trying to trademark the sound of its motorcycle engines, claiming the sound is distinctive to Harley motorcycles and therefore identifies its product.

One area of confusion is the difference between trademarks and trade names. A trade name is the name under which a company does business. For example, Philip Morris is the trade name of a company that sells a number of products under various trademarks, such as Marlboro cigarettes and Kraft cheese. A trade name can become so identified with a company's products that it becomes a trademark. For example, Ford and Microsoft are both trade names and trademarks.

Trade names and trademarks are protected differently. Trade names are a function of state law. For example, when a business incorporates, it must choose a corporate name and it may reserve that name with the Minnesota or Wisconsin Secretary of State so that no other corporation or business can use the same name in those states. If the trade name is different from the business's corporate name, the business must register its trade name with the Minnesota Secretary of State. In Wisconsin, the business has the option of registering its trade name with the Secretary of State.

In contrast, a business does not have to register its trademarks. Simply being the first to use a trademark in connection with goods or services gives the business certain rights to use that trademark in the geographical areas where it does business. However, obtaining a federal registration of the trademark will give the business a number of valuable protections. Provided there is no prior use of the trademark by others, a federal registration gives the owner of the trademark nationwide rights, dating back to the date the trademark application was filed with the United States Patent and Trademark Office.

To register a trademark, an application is filed with the trademark office, and an examiner review the application and determines whether the trademark should register. There are grounds under which the trademark office will deny registration. If the trademark is merely descriptive of the goods or services, the mark will not register. For example, "light" or "lite" are generic adjectives that are merely descriptive of characteristics of beer and therefore cannot be registered as trademarks. A business is not entitled to register a mark if it is deceptively similar to an existing trademark. For example, Cresco could not be registered for lubricating oils because of the registered mark Crisco for cooking fat. Other reasons for denial of a federal trademark registration include marks that consist of immoral or scandalous material and marks that consist of the name or picture of a living person without that person's consent.

Once a trademark is registered with the federal government, the owner of the trademark is entitled to use the ® symbol to identify its trademark. This symbol is not mandatory, but is useful if the business wants to obtain damages from an infringer.

If the owner of a trademark does not register the mark with the federal government, the owner can use the ^TM symbol to show the business nevertheless claims trademark rights in the mark. The © symbol is used only in connection with copyright. Although the nature of copyright is beyond the scope of this article, copyrights concern literary and artistic expressions and are not used as commercial source identifiers. Words, slogans and other short phrases cannot be copyrighted.

Federal registration is not available for purely local businesses. For example, if a business sells T-shirts under a trademark in Two Harbors, Minnesota, and does not advertise or sell its products out of state, federal registration of the trademark likely is not available. In these circumstances, the business can register the trademark with the Minnesota Secretary of State. Although Minnesota registration only gives protection within the state's boundaries, state registration has the advantage of being automatic, quick and inexpensive.

Once a business has a trademark registered, it needs to be diligent in protecting its trademark rights. Trademark rights are infringed if someone else uses the same or a confusingly similar mark, on the same or closely related goods or services. If a business ignores infringing users, it runs the risk of losing its trademark rights.

To preserve trademark rights, trademark owners should distinguish their marks as trademarks. For example, the use of the ® or ^TM symbol distinguishes the word or symbol as a trademark. Using capital letters or italics (as in this article) can distinguish trademarks.

Always use trademarks as adjectives, never nouns. For example, Jockey shorts, not Jockeys. Trademarks that are used as nouns become generic and lose their trademark status. For example, the words escalator, aspirin, nylon and cellophane were all once trademarks and now are generic terms not entitled to any protection.