Biggart Baillie Solicitors

Websites Can Leave You In A Tangle

Monday, April 30, 2007

by Douglas McLachlan

Websites are very important to businesses these days. Whether yours is just an online brochure or a full-blown all singing, all dancing e-commerce site, the chances are that you consider your website to be a critical asset of your business.

In that case, would it surprise to you know that you might not own (or even have a right to use) all or parts of your website? In fact, you might not even own the domain name. If you don't watch out, this could cost you. Big time.

As a solicitor specialising in intellectual property (IP) law, I am often consulted by clients after things have gone wrong, but as we all know, prevention is better than cure.

Copyright
Most of what you see when you look at a website is protected by copyright.  Copyright subsists automatically in the UK in the first author of the text on the website, the designer of the graphics and the photographer who took the photographs.

If they are employed by you then the copyright in that text, graphic or photo will belong to you.
However (and here’s the rub) if you have commissioned a third party to write the text, design the graphics or take the photo, the copyright will be owned by them, even if you have paid them
for doing so.

You may have an implied licence to use the material, but the scope of that licence may be limited to the area that the material was originally intended for.  For example, if you commission someone to design a hard copy brochure and don’t mention the fact that you might want to post a copy on your website, the designer could ask for more money.

Another common mistake is where someone “lifts” a picture or a graphic or logo or from someone else’s website and puts it on his own.  This is, of course, incredibly easy to do, yet it could cost you thousands of pounds. Companies like Getty Images and Corbis routinely scan the Internet to track down people who are using their copyright images on websites without a licence. If you are going to use an image on a website you really should know where you got it. If you took the photograph
yourself, then rest easy. If not, who did? Have they assigned the copyright to you? If not, do you have a valid and subsisting licence to use it on your website?

Databases
If your website uses a database then you’ll be pleased to know that the rule is reversed for database rights: the commissioner of the database will own the rights in the database unless this is otherwise agreed.

However, a database can sometimes amount to a literary work and also be protected by copyright, in which case you will need an assignation of the copyright in the database or a licence to use it.

Domain Names
The glory days of “cybersquatting” are probably now over thanks to the uniform dispute resolution policy (UDRP) of ICAAN – which runs the .com domain – and its equivalent for .co.uk domain names. The UDRP is a set of rules which govern domain name ownership.

If you find someone has registered an identical or confusingly similar domain name to your business name or trade mark, it is possible to force them to transfer it to you through arbitration rather than through the courts.

That works both ways: check carefully that the domain name you want is not too similar to another business’s and do not be tempted to register domain names to try to divert Internet traffic to your website.

A common mistake is not making sure that your domain name is registered in the name of the business.
There are thousands of businesses in which the official registrant of the domain name is either the IT director or the web design and hosting company. The latter group have been known to do this so that they can cause trouble if there is any dispute about the bill.

That is viewed as sharp practice these days and most reputable companies will make sure the domain name is registered in your name.  Otherwise, if there’s a dispute your best bet may be the UDRP and that can cost time and money.

Dodge That Bullet!
As always, its easier to deal with these sorts of issues while relations with the IP owner are good. By simply applying a bit of rigour to the management of your website content and putting the necessary licences or assignations in place, it is easy to avoid legal pitfalls.

This article was also published in the April 2007 issue of CA Magazine.

The information contained in this article is given for general information only and does not constitute legal advice on any specific matter.