Addressing the inter-related issues of cyberpiracy, copyright infringement and trademark infringement, the U.S. Court of Appeals for the Eleventh Circuit affirmed a district court’s ruling that a website was owned by the employer but the copyright was invalid because the employer misrepresented the former employee’s contribution to that website. St. Luke’s Cataract and Laser Institute, P.A. v. Sanderson, Case No. 08-11848 (11th Cir., July 9, 2009) (Hull, J).
The defendant physician, Dr. James C. Sanderson, worked at the plaintiff hospital and collaborated with other employees on creating websites for “laserspecialist.com” and “lasereyelid.com” for his cosmetic eye surgery work in the late 1990s. The site was linked to the hospital’s website, as were other specialty websites related to specialty services. In 2003, Dr. Sanderson left the hospital to start his own practice. Sanderson surreptitiously switched ownership of the domain names to his own practice and used content from the hospital’s website on his own website, which used the same domain names as previously used at the hospital.
After learning of these actions, the hospital registered the two versions of the websites as its own copyrighted materials, although it included some of Sanderson’s own materials. The hospital then sued Sanderson for violations including copyright infringement, violation of the Digital Millennium Copyright Act, Anti-Cybersquatting Protection Act, trademark infringement and various other torts. A jury found that the hospital deliberately misrepresented Dr. Sanderson’s contributions to prevent his ownership of the copyrighted materials. St. Luke’s appealed.
The Eleventh Circuit affirmed, finding that the copyright registrations were invalid because the hospital made numerous intentional misrepresentations about authorship and originality of the websites in its copyright applications. The court found that although the hospital called these misrepresentations “clerical mistakes,” it affirmed the jury’s finding that the misrepresentations were deliberate.
However, the court also found that Dr. Sanderson had infringed the hospital’s trademark of the stylized version of the laserspecialist.com mark, which was used conspicuously on the hospital’s website. The court found that the laserspecialist.com service mark was likely a suggestive mark or at least qualified as descriptive within the spectrum of trademark classifications and thus was entitled to protection. The hospital had used the mark continuously to promote Dr. Sanderson’s practice for five years before he left, and the mark appeared on the laserspecialist.com website for three years. Since the likelihood of confusion was clear based on Dr. Sanderson’s competing practice, the court affirmed the jury’s finding of trademark infringement.
Practice Note: Registering a copyright is not a mere formality. Only original work may be copyrighted and only by the author, work-for-him author or assignee of the author.