INTELLECTUAL PROPERTY RIGHTS AND E-COMMERCE – WHO OWNS YOUR WEBSITE CONTENT?

Contributed By: Serena Minott, Esq., Managing Attorney at FlatFeeTrademark.com

Chances are your business has a website (or it should). With the proliferation of websites and web content comes questions of who actually owns the material we find online, how can we use that material and how do we protect the intellectual property (IP) of our own websites.

If you've ever pulled a photograph off the Internet without paying royalties, or used a software program without the proper license, read on. This month we discuss the intersection of e-commerce and IP rights and we turn to the World Intellectual Property Organization (WIPO) for guidance.



What elements of your website can be protected?

Many parts of your website may be protected by different types of IP rights. For example:

• 

E-commerce systems, search engines or other technical Internet tools may be protected by patents or utility models;

• Software (e.g., HTML code) can be protected by copyright and/or patents;
• Your website design is likely to be protected by copyright;
• 
Creative website content, such as written material, photographs, graphics, music and videos, may be protected by copyright; 

• Business names, logos, product names, domain names and other signs posted on your website may be protected as trademarks;
• 
Hidden aspects of your website can be protected by trade secret law, as long as they are not disclosed to the public and you have taken reasonable steps to keep them secret.



How to protect your website

Some precautionary measures are necessary to protect a website from abusive use. To protect your IP rights early on, you should:



• Register your trademarks;

• Register a domain name that is user-friendly and reflects your trademark, business name or character of your business. If your domain name can also be registered as a trademark, then it is advisable to do so, since it strengthens your power to enforce your rights against anyone else who tries to use the name to market similar products and services, and prevents someone else from registering the same name as a trademark;

• Think about patenting online business methods, where possible;
• 
Register your website and copyright material where possible;

• Post notices and IP symbols (the registered trademark ®, and/or copyright © symbols) to let others know your content is subject to IP protection.

• Take precautions when disclosing your trade secrets. Make sure that all who might get to know about your confidential business information are bound by a confidentiality or non-disclosure agreement.


Who owns the IP rights in your website?

A typical website is a collage of components often owned by different persons. If your website has been developed by your employees, then, in most countries, you (as the employer) would own the copyright over the website, unless you otherwise agreed with your employees. However, for a small business, this is rarely the case.

Most companies outsource the creation of their website design and/or content to an outside contractor, and assume they own IP rights in it because they paid for the work. Beware! You may be surprised to find out that you do not own the IP rights in what has been created for you.

Independent contractors (contrary to employees) usually own IP rights in the works they create – even if you have paid for it - unless otherwise agreed in a written contract. Without a valid, written agreement transferring these rights to you, you may end up owning only a non-exclusive license to use your own site.



Can you use material owned by others on your website?

Current technology makes it fairly easy to use material created by others - film and television clips, music, graphics, photographs, software, text, etc. - in your website. The technical ease of using and copying these works does not give you the legal right to do so. Consider the following:



(a) Using technical tools owned by others – If you are using an e-commerce system, search engine or other technical Internet tool for your website, make sure that you have a written license agreement, and get it checked over by a lawyer before you sign it and before any design or installation of the site begins.



(b) Using software owned by others – Packaged software is often licensed to you upon purchase. The terms and conditions of the license (called “shrink-wrap licenses”) are often contained in the package, which can be returned if you do not agree with them. By opening the package you are deemed to have accepted the terms of the agreement.



(c) Using copyrighted works owned by others – If you want to put up any written material, photos, videos, music, logos, art work, cartoons, original databases, training manuals, drawings, etc. on your website that do not belong to you, you usually need a written permission from the copyright owner. Even if you use just a part of a copyrighted work, you will generally need authorization. Note also that material on the Internet or stored on web servers is protected by copyright in the same way as works published through any other means. Just because you obtain material from the Internet does not mean that you can download or reproduce it freely.



(d) Using trademarks owned by others – Many websites contain discussions of products and services of other companies. There is usually nothing wrong with identifying competitors’ products on your website by using their trademarks. However, you should avoid using a trademark in a way that might cause confusion among consumers as to the source or sponsorship of the webpage. Such use might well constitute trademark infringement or an act of unfair competition.



(e) Using others’ likenesses – In many countries, the name, face, image or voice of an individual are protected by publicity and privacy rights. The area of protection is regulated differently by country. Before using such elements on your website, it would be advisable to check the applicable laws and request permission, if needed.

There is much more to keep in mind when using IP on your website and to properly protect your own IP content. If you have specific questions about your website, we're happy to talk with you about it. Give us a call at 800.769.7790 or send us an email at info@flatfeetrademark.com.

Portions of this publication reproduced with permission from the World Intellectual Property Organization (WIPO), the owner of the copyright.

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