Your web­site users could expose you to copy­right infringement

Your web­site is under your con­trol and you should ensure that all the mate­r­i­al which you place on your web­site does not infringe the copy­right of oth­ers. Reg­u­lar audit­ing of your own web­site con­tent is there­fore advis­able to avoid copy­right infringement.

How­ev­er, in cer­tain indus­tries, such as per­son­nel, edu­ca­tion and adver­tis­ing, it is com­mon prac­tice for web­site own­ers to allow third par­ty users to upload images and lit­er­ary con­tent to their web­sites. This process can expose web­site own­ers to copy­right infringe­ment if those users post infring­ing mate­r­i­al on those websites.

Web­site own­ers are there­fore strong­ly advised to set up web­site user terms under which users under­take not to upload infring­ing mate­r­i­al. The terms should also include pro­vi­sions which allow the web­site own­er to imme­di­ate­ly take down the infring­ing mate­r­i­al and cease future access by the user. It is also pru­dent to include an indem­ni­ty pro­vi­sion in the user terms, requir­ing indem­ni­fi­ca­tion of the web­site own­er by the user against infringe­ment claims.

The ques­tion aris­es as to what extent user terms can pro­tect web­site own­ers against copy­right infringe­ment claims for mate­r­i­al uploaded by third par­ty users. This is not an aca­d­e­m­ic argu­ment. There are a num­ber of over­seas copy­right own­ers who instruct law firms to scour the web­sites of per­son­nel, edu­ca­tion and adver­tis­ing ser­vice providers and threat­en copy­right infringe­ment action based on uploaded mate­r­i­al. Their prime tar­get is gen­er­al­ly the web­site own­er rather than the indi­vid­ual user who has post­ed the infring­ing material.

In Aus­tralia, there are cer­tain pro­tec­tions for the web­site own­er under sec­tion 36(1)(A) of the Copy­right Act (Cth). Under this pro­vi­sion, any assess­ment of the claim of copy­right infringe­ment must take into account the fol­low­ing criteria:

1. the extent (if any) of that person’s pow­er to pre­vent the doing of the act concerned;
2. the nature of any rela­tion­ship exist­ing between the per­son and the per­son who did the act con­cerned; and
3. whether the per­son took any rea­son­able steps to pre­vent or avoid the doing of the act, includ­ing whether the per­son com­plied with any rel­e­vant indus­try code of practice.

In these cir­cum­stances, web­site own­ers may avail them­selves of the above defence by ensur­ing that their user access terms pro­hib­it the upload­ing of infring­ing mate­r­i­al, by tak­ing steps to imme­di­ate­ly delete infring­ing mate­r­i­al and by can­celling the user access of the infringer.

It is impor­tant to remem­ber that under the Berne Con­ven­tion, copy­right in works and non-works can be enforced in vir­tu­al­ly any coun­try around the world. In view of the fact that Aus­tralian web­sites can gen­er­al­ly be accessed by over­seas users, web­site own­ers need to be aware of their legal posi­tion in over­seas jurisdictions.

In the Unit­ed States, sim­i­lar copy­right infringe­ment defences to Aus­tralia are avail­able to web­site own­ers. Under the US Dig­i­tal Mil­len­ni­um Act, web­site hosts can claim a defence against copy­right infringe­ment by web­site users pro­vid­ed that the web­site hosts imme­di­ate­ly take down the infring­ing mate­r­i­al. The exis­tence of infringe­ment pro­hi­bi­tions in the website’s user access terms can also assist the web­site hosts in their defence.

In Ger­many, the posi­tion of the web­site host in an infringe­ment claim is addressed in sec­tion 10 of the Ger­man Tele­me­dia Act. Under this pro­vi­sion, the web­site host is not liable for third par­ty copy­right vio­la­tion on its web­site pro­vid­ed that it com­plies with rea­son­able com­pli­ance oblig­a­tions which gen­er­al­ly involve imme­di­ate­ly remov­ing the offend­ing mate­r­i­al from its website

As a gen­er­al prin­ci­ple, the web­site own­er can take steps to defend itself against claims of copy­right infringe­ment by third par­ty users of its web­site. How­ev­er, each case will need to be decid­ed on its own facts. As a con­se­quence, strict user access terms, reg­u­lar mon­i­tor­ing of user uploads and imme­di­ate dele­tion of offend­ing mate­ri­als are impor­tant ele­ments of any defence to copy­right infringe­ment claims. Cer­tain oth­er defences, includ­ing ​“fair deal­ing” may some­times be avail­able against these claims, but such defences should not pre­clude the main­te­nance of strict user access regimes by web­site owners.

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 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.