A company’s Website is a valuable asset that should be carefully protected. Failure to do so could severely limit what rights a company has in the content of its own Website, may result in others retaining rights in the same content, or may lead to lawsuits.
Independent Web Designers and Ownership
Protecting the content of a Website starts at the design stage. A company typically engages an independent Web design company or a graphic artist to design its Website. These outside firms create various designs, logos and other artwork, which eventually become the content of a Website. Each of these works may be afforded copyright protection, whether they are registered with the U.S. Copyright Office or not.
Copyright law grants the owner of a copyright the exclusive rights of reproduction, adaptation, distribution, performance and display. Each of these rights may be owned and enforced separately, as well as sold or licensed to third parties. So, who is the owner of the copyright in these works? There is a common misconception that the company owns these works, but this is not true. Under copyright law, the author of a work is deemed to be the owner of the copyright unless otherwise agreed to in writing.
If there is no written assignment of the copyright in these works to the company, then the author (i.e., Web design firm, graphic artist, etc.) will retain ownership, thereby leaving the company with only the right to use or display these works and little else. Therefore, a company should always obtain a written assignment of all original works incorporated into its Website before work is commenced.
Employee-Designed Websites and Ownership
If a work is created by an employee within the scope of employment, the employer is considered the author and thus, the copyright owner of that work. However, as with any law, there are always exceptions, so it is vital that companies require their employees to make written assignments of all intellectual property rights to the company.
Once the Website is completed, each page of the Website, as well as the Website as a whole, should be registered with the U.S. Copyright Office and contain proper copyright notices. Registration not only allows a copyright owner to file a lawsuit to enforce its rights, but also allows recovery of statutory damages and attorneys’ fees. Where infringement occurs prior to registration, only an injunction and actual damages may be obtained.
Another situation confronted in this area is the risk of incorporating a third party’s trademark or service mark into a Website. These marks comprise not only words, phrases and slogans, but also designs, logos, symbols, moving images, colors and sounds. Before any proposed marks are incorporated into a Website, it is highly recommended that a complete trademark search be performed to determine the existence and use of any conflicting marks.
Although this article focuses primarily on Websites, many of these issues apply similarly to any form of marketing media, whether used over the Internet, in print or on television. Failure to take these necessary precautions may result in the company having to cease use of or pay for works that it once thought it owned, and/or face liability for copyright or trademark infringement.