Protecting your intellectual property online can be a legal minefield, so it's important for anyone operating or posting their work on the web to be aware of where they are most vulnerable. As a partner solicitor at Blacks Solicitors LLP in Leeds, specialising in media, music and entertainment law, I regularly work with clients in the web development, graphic and web design sectors.
In this article, I will advise you on some of the legal procedures to put in place to ensure that your work, brand and identity are protected should you be the victim of copyright infringement, or find yourself caught up in a dispute of ownership surrounding web-based assets.
01. Who owns my website?
There are several different components to a website and it is quite possible (and, in fact, common) for different parts of a site to have different owners. This is usually unintentional and due to a lack of understanding of the legal position on ownership of intellectual property.
A web domain name belongs to the registered proprietor. If you instruct a third party to register the domain as part of general web development, it is essential that you are named as the registered proprietor (with your own address details so you receive requests for all subsequent renewals).
The actual appearance or 'skin' of the site will include all designs, text, artwork, video, branding and navigation on a site, which will generally be protected by copyright. The copyright owner is the author or inventor of the work (unless created in the course of employment). A slogan, logo or other branding element may be protected by way of trademark registration. Again, if a third party designer creates this, you should ensure ownership is transferred by way of a written Deed of Assignment.
The coding (or the DNA behind the website) may have been built using open source software, or it may be tailor-made. It is unlikely that a developer will sell the ownership to such software outright, but a license for its use should be obtained wherever possible.
02. What can I do to protect my website?
The most effective thing you can do is to register your business logo, branding and designs as trademarks wherever possible. Once an intellectual property right is registered it is much easier to prove ownership, assert your rights and to deal with any instances of unauthorised copying (infringement).
It is not possible to register certain types of intellectual property, such as copyright that arises automatically on creation of an artistic design or text, so it's important to keep evidence of when such works are created by using things like date stamps and secure back-ups. This will help evidence that you created the work first, and prevents third parties from claiming you copied the work from them.
It is good practice to include the universal copyright symbol (©) symbol together with your name and the year of creation on any work you value and wish to protect, to show others that action will be taken against anyone who copies it.
03. I'm thinking of selling some of my designs, what do I need to consider?
First of all, you need to decide if you intend to sell the artwork outright, meaning you will no longer be entitled to use it yourself. Alternatively, you may wish to just allow permission for someone else to use the artwork for a specific purpose – and keep the ability to use it yourself and/or sell it on again.
It is important to use the correct legal document for the sale of your designs so the intention is properly recorded. To sell the work outright you would use a Deed of Assignment, but to sell to another person you can use either an 'exclusive' , 'non-exclusive' or 'sole' licence permission, each of which puts into effect a different type of permitted use.
Turning the scenario around, if you decide to purchase some intellectual property works from another party (for example, where you engage a developer or designer), whether you buy outright or take a licence only, be aware that the agreement must be in writing and signed by the transferor.
04. I've found out that someone is using my artwork without my consent, what can I do?
Firstly, gather evidence of the infringement – this may be screenshots of the offending website. It is then usually a good idea to get in touch with the offender and politely ask them to take down the offending material. If that does not work then you can instruct a solicitor to send what is commonly known as a 'cease and desist' letter, which would essentially threaten court action should the infringement not stop.
The final option is apply to court for an injunction to make the infringer destroy any copies of your work in their possession. This can be an expensive process and is used as a last resort. You can also claim damages from the infringer, which may require them to account to you for any profits they have made from using your work.
If you think that someone is infringing your intellectual property rights then you should always seek legal advice. There are statutory provisions that make it unlawful in some circumstances to threaten someone with court proceedings for alleged infringement of intellectual property.
05. Are there any checks I can carry out?
Whilst there is no need to be paranoid about IPR infringement, it is wise to remain vigilant. Online, it is very easy for your assets to be used without your knowledge. It is worthwhile setting aside time once every three months to do simple Google searches for key terms that you use, as well as making regular, secure backups of your work. The following simple checks can also be taken:
- Companies House Web Check - Visit the Companies House site to search for any other companies that have been registered with a similar name to yours. Since the introduction of the 2006 Companies Act, this risk has been reduced, but things have been known to slip through the net. If a company is registered with a similar name and it provides similar goods or services, then there is a danger that it may be 'passing-off' as being aligned to your business. This could lead to it trading off the goodwill that you have worked hard to build.
- Domain Name Checks - A simple Google search on "domain name checks" will provide you with a number of useful tools such as WhoIs Search that will enable you to see if similar domain names to your own have been recently acquired by potential competitors. This search will also reveal who the owner of the domain is, their correspondence address and when any renewals are due.
- Trademark Search - A search on the Intellectual Property Office site will enable you to identify if anyone is using a similar word, phrase or logo to those used in your business. There are 45 classes under which protection can be obtained. Ideally, you need to search within your particular field, and if required a more detailed search can be carried out to analyse if there are any similar aspects. It's worth looking at those marks that already exist before creating your own.
Words: Asad Ali
Asad Ali is a media lawyer for Blacks Solicitors. He specialises in music, media and commercial law. Visit Blacks' site to find out more about how to protect your business online, and obtain further legal advice. This article first appeared in net magazine issue 258.