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OPINION: Avoiding trademark, copyright infringement

By Published on .

The power of the World Wide Web results from the ability of sites to transparently link among different pages and different sites anywhere in the world.

The commercialization of the Internet and particularly the power of linking has led to discussions of potential liability, new statutory proposals and a need to carefully evaluate current practice.

The question of liability affects all varieties of links, from lists of URLs of linked pages, to images or text which automatically link to Web pages, to automatic (and user-transparent) retrieval of information from one page onto another, to the use of HTML "frames."

CONFUSION ABOUT SOURCE

As a general matter, liability for trademark infringement results from a finding of confusion as to the source of the information to which the specific marks refer.

In the Web context, the URLs of Web sites are not automatically trademarks but may contain trademarks (e.g., http://www.xerox.com) or may be treated as trademarks in their own right to refer to the services provided by the Web site (e.g., Amazon.com books).

However, when a URL is paired with a trademark, or a URL including a trademark is misdescribed in accompanying text, the link itself may represent trademark infringement.

For example, suppose that site A uses a Coca-Cola logo to link to a site created not by Coca-Cola Co., but by a college student who (without authorization) reproduces Coke's ads on his site.

While the student may be liable for copyright or trademark infringement, site A could potentially be liable for trademark infringement as well, since it misrepresents that Coca-Cola is the source of the Web site with which its trademarks are linked.

IMAGE LINKS PROVE TRICKY

URLs, like book titles, are not by themselves copyrightable. However, different types of links may expose the owner or designer of the linked site to liability for copyright infringement.

The first possibility is if a site owner uses copyrighted images (such as a picture of a comic strip character like Dilbert) as the link indicator-whether to the site from which the images come or to another site-without the authorization of the image's owner.

The image's use would by itself be an infringement (unless a defense such as fair use applies). Additionally, the HTML formatting language enables a site to automatically display images from another site as part of the first site's page, without making copies of the image.

This type of use would also probably be a copyright infringement, since the image would be displayed without consent of the copyright holder.

FRAMES QUESTIONABLE

The frames function permits a Web site designer to divide a compatible browser's window into independent frames.

Each frame can operate separately, including loading an entirely different Web page than the one containing the frame.

Depending on how frames are designed, it is possible that a Web page can create a "picture in picture," where the listed site name, URL and perhaps navigation bar belong to one site, but the rest of the display is of another site.

Any efforts to bookmark the framed site may well bookmark the framing site instead, preventing the user from easily returning to the framed site.

There might be some argument for copyright infringement (by creating a visual work which incorporates elements from another's work, without permission) or trademark misuse.

REDUCING LIABILITY RISK

With appropriate steps, a site owner can significantly reduce the risk of link liability.

A procedure should be put in place to review all content prior to its going live and advise those who are building the sites about copyright and trademark law.

Additionally, if a site will include links to other sites-or if others' sites will appear in traditional media advertisements-try to get written approval via a signed release.

The bottom line is that, while Web content may be delivered differently than other corporate communications, many of the same rules apply. Careful review, appropriate contracts and disclaimers and education will all serve to reduce risk, while still permitting the use of links to add functionality and appeal to Web sites.


Jonathan I. Ezor is an attorney with Davis & Gilbert, New York. Mr. Ezor can be reached at jezor@newmedialaw.com.

Copyright December 1996, Crain Communications Inc.

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