Pro­tect the Intel­lec­tu­al Prop­er­ty in your Website

In set­ting up a web­site, it is essen­tial to include stan­dard terms which address such issues as lia­bil­i­ty dis­claimers, user access terms and pri­va­cy pol­i­cy. How­ev­er, it is also impor­tant to ensure that your own intel­lec­tu­al prop­er­ty is ful­ly pro­tect­ed and that you do not infringe the IP rights of others.

1. Your own IP

Domain Names

Domain name reg­is­tra­tion con­sti­tutes a licence to use that name for a par­tic­u­lar domain lev­el for a set peri­od. Nonethe­less, like busi­ness names and com­pa­ny names, domain names pro­vide no pro­pri­etary rights in those names. The only way to obtain pro­pri­etary rights in a name is to reg­is­ter it as a trade mark. Unless your domain name is quite descrip­tive, it is vital that you reg­is­ter it as a trade mark for all the goods and ser­vices which you will pro­mote on your web­site. For exam­ple, if you are pro­mot­ing edu­ca­tion and legal ser­vices you should reg­is­ter your domain name as a trade mark in class­es 41 and 45 respec­tive­ly. It is also impor­tant to remem­ber that if you are sell­ing goods via your web­site, you should also reg­is­ter your domain name in class 35 for retail­ing services.

Lay­out and Content

When you decide to set up a web­site, you are like­ly to com­mis­sion a web­site design agency to design the for­mat and lay­out you require. It is impor­tant to remem­ber that the pro­vi­sion of such mate­r­i­al may involve the cre­ation of artis­tic works. In addi­tion, if the agency also pro­vides you with writ­ten con­tent, this may involve the cre­ation of lit­er­ary works. The copy­right in such artis­tic and lit­er­ary works gen­er­al­ly vests in the agency, even though you have paid them to cre­ate these works. As a client of the agency, you will only acquire an implied right to use the cre­at­ed works for pur­pos­es envis­aged by the par­ties. As a con­se­quence, it is wise to arrange for the writ­ten assign­ment of the copy­right in the cre­at­ed works from the agency to you, If such an assign­ment is not avail­able, you should at least ensure that your implied rights of copy­right are express­ly broad­ened so that you are enti­tled to use these cre­at­ed works for any purpose.

In many sit­u­a­tions, you may your­self cre­ate artis­tic or lit­er­ary works which may form a major part of the con­tent of your web­site. If these works are cre­at­ed by your employ­ees in-house, the copy­right in such works will gen­er­al­ly vest in your busi­ness. It is there­fore advis­able to include a clear state­ment on your web­site in which you specif­i­cal­ly reserve your rights of copy­right in such mate­r­i­al. You might also con­sid­er pro­tect­ing any patent rights you may hold in web­site mate­r­i­al such as dig­i­tal inven­tions and soft­ware which you may have developed.

Even if you cre­ate works for your web­site in-house, your employ­ees may be enti­tled to claim moral rights which are per­son­al to the authors of such works. Such moral rights include the non-den­i­gra­tion and author attri­bu­tion of works cre­at­ed by employ­ees. Moral rights may not be assigned, so it is wise to include a pro­vi­sion in your stan­dard employ­ment con­tracts under which your employ­ees under­take not to assert their moral rights in any works they may cre­ate on your behalf. In deal­ing with your web­site design agency, you should also require that they under­take in writ­ing that their own employ­ees will not assert moral rights in rela­tion to the works they cre­ate for your website.

2. The IP of Others

If you include the works of third par­ties on your web­site, it is impor­tant to ensure that you obtain their writ­ten per­mis­sion to do so. Oth­er­wise, any repro­duc­tion, adap­ta­tion or com­mu­ni­ca­tion of such works may con­sti­tute an infringe­ment of the copy­right of these third par­ties. There are pro­vi­sions in the Copy­right Act for Fair Deal­ing with all or part of third par­ty works but such rights are like­ly to be very lim­it­ed in the con­text of com­mer­cial web­site content. 

As a gen­er­al rule, links to third par­ty web­sites gen­er­al­ly do not con­sti­tute copy­right infringe­ment because they are per­ceived to be mere­ly pro­vid­ing a ​“sign post” to those web­sites. How­ev­er, in pro­vid­ing such links it is impor­tant not to imply any endorse­ment or affil­i­a­tion with these third par­ty web­sites. In some cas­es, web­site own­ers may decide to pur­chase AdWords from providers such as Google under which a ref­er­ence to the own­er’s own site will pop up when searchers nom­i­nate a key word in their search instruc­tions. Such key words often include well-known brands and this sit­u­a­tion has been the sub­ject of fre­quent lit­i­ga­tion in Aus­tralia and over­seas. In Aus­tralia, the use of such AdWords has gen­er­al­ly been found not to con­sti­tute trade mark infringe­ment because this pro­ce­dure does not involve ​“use” of a trade mark under sec­tion 120 of the Trade Marks Act.

3. Upload­ing by Users

When you invite users to access your web­site, it is essen­tial to make such use strict­ly sub­ject to your for­mal terms of access. These terms of access should include pro­vi­sions which pro­tect you as the web­site own­er in rela­tion to third par­ty mate­r­i­al uploaded to your web­site by users. Such pro­vi­sions can include the fol­low­ing required under­tak­ings from the web­site user:

(a) that the uploaded mate­r­i­al includes no defam­a­to­ry state­ments, IP infring­ing con­tent or any oth­er ille­gal material;
(b) that the user grants a roy­al­ty-free per­pet­u­al licence for the web­site own­er to repro­duce, adapt and com­mu­ni­cate the uploaded materials;
(c) that the web­site own­er has the right to remove any uploaded mate­r­i­al with­out notice and to ter­mi­nate the user agree­ment at will; and
(d) that the user indem­ni­fies the web­site own­er against any claim by third par­ties con­cern­ing the uploaded material.

Although the above under­tak­ings should be manda­to­ry for web­site users, it is impor­tant to remem­ber that indi­vid­ual users may have lim­it­ed finan­cial means and that their indem­ni­fi­ca­tion of the web­site own­er may there­fore be of lit­tle prac­ti­cal val­ue. As a con­se­quence, a strict terms of access régime does not obvi­ate the neces­si­ty for strict scruti­ny by the web­site own­er of any uploaded mate­r­i­al which may be of ques­tion­able legal­i­ty. Such enforce­ment pro­ce­dures may also serve to reduce exem­plary dam­ages which may be claimed in the event of lit­i­ga­tion by third parties.

Con­clu­sion

Your web­site is a win­dow to your busi­ness and a show­piece for your IP and the autho­rised IP of oth­ers. How­ev­er, your web­site can also rep­re­sent a sig­nif­i­cant dan­ger to your own IP and a poten­tial source of expo­sure to lit­i­ga­tion by oth­ers. It is there­fore impor­tant to do your IP home­work before final­is­ing the devel­op­ment and oper­a­tion of your website. 

The pro­tec­tion of the intel­lec­tu­al prop­er­ty in your web­site should be part of a wider strat­e­gy of iden­ti­fy­ing, pro­tect­ing and exploit­ing all the intel­lec­tu­al prop­er­ty in your busi­ness. Swaab Attor­neys can offer you a free IP Health Check as the first step in devel­op­ing a com­pre­hen­sive intel­lec­tu­al prop­er­ty pro­gram. You are wel­come to give us a call at any time.