By John Wright, Esq.
Small businesses can achieve big results from digital marketing efforts, but must take care to protect intellectual property from theft and infringement. Intellectual property found in digital marketing assets includes creative works subject to copyright protection, as well as words, phrases and designs functioning as trademarks. Digital marketing assets containing intellectual property may include:
• a website including the domain name and its content;
• social media accounts and postings; and
• online advertisements and campaigns.
The list of potential digital marketing assets grows as new technology is being adopted by consumers. For example, businesses are increasingly using smartphone apps as marketing tools, and these apps can contain all different types of intellectual property. These marketing devices allow businesses to reach consumers quickly and conveniently, but care must be taken to avoid infringement of intellectual property rights.
Copyright law protects creative expression by giving the creator an exclusive right to copy and distribute a creative work. Examples of digital marketing assets and their components that are eligible for copyright protection are website design, the written word contained in a website, photographs, sound recordings and videos. Copyright protection automatically vests in the creator once a work is created. However, if a business employs a creator to make a particular creative product, then rights will vest in the employer instead of the employee as a work made for hire. Note that if a business commissions work through an independent contractor, all intellectual property rights should be transferred to the business through a signed contract.
It is not absolutely necessary to register with the United States Copyright Office in order to receive copyright protection. Registration, however, is a prerequisite to bringing a lawsuit in federal court. Often, a lawsuit is not necessary to enforce copyright ownership on the web. Owners of content subject to copyright protection can issue a takedown notice under the Digital Millennium Copyright Act (DMCA). This is a process where the owner of material subject to copyright protection will request that the company hosting the website remove infringing material. Sometimes this will take the infringing website offline completely.
Other times, a business may be able to remove a specific post on a social media website. In order to not be on the receiving end of a DMCA takedown notice, businesses should consider strategies for reviewing content before posting it online. This is to ensure that any multimedia used in a digital marketing campaign is either property of the business or properly licensed from another entity. Businesses should never assume that if a picture, sound clip or body of text is freely available on the internet that it is not protected by intellectual property laws.
Distinguished from copyright, trademark law protects words, phrases, symbols and other marketing devices that identify the entity that makes goods or provides services. As with copyright, a federal registration is not required in order to gain trademark protection, but it is a prerequisite for filing a federal lawsuit. A federal trademark registration is obtained through the United States Patent and Trademark Office (USPTO) and each individual state also has its own trademark registry. Simply using a trademark will gain the trademark owner some rights at common law. If a business is only doing business in a single state, a state registration will provide enhanced protections in that particular state but not others. When it comes to marketing online to a national audience, a federal registration may be most appropriate since it will give constructive notice throughout the United States that a trademark is already in use.
Trademark law is often involved when it comes to disputes over domain names. It is a common practice to register domain names that are similar to those of legitimate businesses in order to divert potential customers or simply “squat” on the domain in hopes of selling it to the rightful trademark owner. In order to avoid this result, a trademark owner can gain control of an infringing domain name through the Uniform Dispute Resolution Policy (UDRP) proceedings at the International Corporation for Assigned Names and Numbers (ICANN), the non-profit, non-governmental organization that regulates domain name distribution. There has been a considerable amount of administrative litigation on this front since there is only a limited number of domains available with a generic top level domain (gTLD) such as .com and .net. Currently, ICANN is in the process of introducing new gTLDs such as .business and .marketing, and the amount of litigation over disputed domain names may increase because of this.
There are limited circumstances where it is permissible for competitors to use each other’s trademarks or material subject to copyright in advertising. The concept of a “fair use” affirmative defense under copyright law and the right to free speech under the First Amendment will often control when it is permissible to use a competitor’s intellectual property.
Other aspects of intellectual property not discussed here, including patents and trade secrets, rarely make their way into digital advertising and marketing materials, but are worth mentioning. The most notorious examples of patent and trade secret infringement come up in the context of trade shows, where a new innovation or secret strategy is revealed to the public by accident. This is not necessarily a digital marketing concern, but it can be compounded if the trade show is being covered through online outlets or broadcast live on social media.
Businesses should be vigilant in protecting intellectual property contained in digital marketing assets. The first step is to inventory these assets and identify what can be protected and how. Next, determine what additional steps need to be taken to increase protection. For instance, whether creative content should be registered for copyright protection, or whether a trademark should be registered with the USPTO or a state registry. Finally, businesses should develop enforcement strategies to protect intellectual property as well as policies and procedures to prevent unintended infringement of other companies’ intellectual property.