When ‘your’ website isn’t ‘yours’ – IP issues

11 Apr 2018

If you run a business, you need a website, regardless of your niche, sector or industry. That’s just the way it is, especially in the current economic climate. So let’s say you approach a website designer-developer, give her a brief, have regular meetings to discuss the status of your site, and engage on tweaks that need to be made as you go.

Who owns the copyright on that website content when it’s done? You? Not necessarily. This is one of several issues to consider when designing, building and populating your website.

Here’s what you need to know.

There are a number of Intellectual Property Rights (IPRs) that exist in a website. Logos or branding. Database rights. Text, design, graphics, data, layout, and any music, broadcasts, multimedia content, software, and images.

Now, as the content owner, you could assume that – because the content is displayed on your website and there’s a copyright notice in the footer of every page of your site – you’re legally protected. But this isn’t always the case. IP law requires you to be the owner of the content’s copyright, which isn’t the same thing as owning the website itself. As a starting point, be aware that you don’t have to actually register copyright in order for copyright to subsist in your creation. You get copyright automatically when you create a copyrighted work. That’s because, in South Africa, copyright vests automatically, provided that the work satisfies certain criteria, including being ‘original’.

The ‘originality’ requirement is a low-threshold requirement; particularly in comparison to other IPRs, like patent and designs, where, in order to obtain protection, the invention or industrial design must be ‘new’. So, as long as you haven’t copied your work from another source and (according to case law) have inputted sufficient effort, labour, skill and judgment, the ‘originality’ requirement is met.

By this standard, it is conceivable that two independent authors, working on opposite ends of the globe, could own copyright in an identical work. Additionally, your work must be “reduced to some material form”; i.e. ‘the work [must have] been written down, recorded, represented in digital data or signals or otherwise reduced to a material form’ (section 2(2) of the Copyright Act). The manner of reduction to material form includes digital fixation.

It’s advisable to mark your work with the copyright symbol – © – together with the name of the owner of the copyright and the year in which the copyright was created or first published.

Okay, but who’s the creator and owner of the IP?

One of the earliest things for you to focus on is who owns the copyright and other IP related to your website. Depending on the type of IPR, different ownership rules apply. The default position with regard to copyright is that the author of the work is the first owner. But there are exceptions – notable ones including the commissioning or creation of work in the course of employment.

In my opinion, it is safest to have a signed agreement between yourself and the website designer-developer, where he or she assigns (transfers ownership of) their rights in the IP that they have created for you. The best time to sign this agreement is before the work begins – there will be minimal squabbling later if these issues are clearly dealt with upfront.

Now, let’s say that you’ve already engaged a website designer-developer to design your site. Please check your written contract. Make sure it clearly states that you own the website once full payment has been made to the designer. If you don’t have a written agreement (or if your current agreement does not have this clause in it), please re-negotiate with your website designer-developer. Get it in writing. This is no time for verbal agreements.

Remember: In ten years’ time, when you’re making big bucks, you don’t want your website designer-developer to decide they want a piece of that pie and sue you for IPR infringement.

Third-party content on your site

Yes, ‘content is king’. Yes, the more engaging, relevant and regular content you put on your website, the more traction you’ll get in your market. You may even become widely known as a leading supplier or service provider, who’s a thought leader in the industry.

But, are you directly copying content (words, pictures, photos, videos, diagrams, music, voices, artwork or the like?) from other sources? If so, are you citing those sources or claiming them as your own? Be aware that, by ‘curating’ third-party content, you may be infringing on the author’s copyrighted works or even plagiarising those works.

Here’s a rule of thumb: Just because you discover a piece of content on the internet does not mean that it’s a public resource or free for you to use on your own site. Copyright may vest in that content. So, if you decide to use such material, ensure that you obtain the consent or approval of its owner – for which you may have to pay a licence fee or royalty.

Fees or royalties can be paid directly or through a collection society (a body, association or organisation tasked with collecting royalties on behalf of its members). But, either way, you will have safely avoided copyright infringement and any potential plagiarism issues.

Linking to content and framing

‘Linking’ is a phenomenal way to access and share information, allowing users to directly connect from your website to another by clicking on a ‘hyperlink’ or ‘link’. The user can instantly call up a different page, which is great for their experience, and Google’s search engine optimisation algorithms will love you for including external links in your website.

But, you must be cautious when linking to other websites because, in many countries, there is no clear law regulating the use of links. The European IPR Helpdesk (2018) explains that,

“Although no specific legislation exists to allay these concerns, two recent cases of the Court of Justice of the European Union (CJEU) gave useful guidance on how to distinguish a fair linking from a copyright infringement (cf. Svensson, (C-466/12); Bestwater, (C-348/13)).

According to the CJEU ruling, two different cases have to be identified:

• hyperlinking to works already freely available on the Internet (e.g. a video freely available to the general public on a video-sharing website);
• hyperlinking to works that are subject to restrictive accessibility measures and so accessible only to restricted users (e.g. subscribers of an on-demand Internet streaming media service).

In the first case, hyperlinking does not constitute copyright infringement.

In the second case, the link is able to circumvent restrictive accessibility measures, thus making available the contents to the general public. Such linking practice amounts to copyright infringement.”

The most prudent practice, as stated above under third-party content, is therefore to obtain the written consent of the owner of the original website.

Then there’s ‘framing’; a device that is far more controversial than linking. Framing refers to the practice of incorporating large chunks of another website’s content into your own, in a manner that makes it look like it is part of your website and that you own it.

Essentially, your website displays a third-party webpage, usually within a bordered area, and the user visualises the linked third-party content without leaving your website. In this case, the user can be easily misled “in relation to an existent economic or sponsorship relationship between the companies behind the two websites” (European IPR Helpdesk; 2018).

My advice? Always get written consent to use or ‘frame’ website content in this manner.

Trade marks

Trade marks are another IPR for any website owner to keep in mind. Depending on the nature of the trade mark; the goods or services it relates to; the market in which those goods or services are sold or performed; and, most importantly, the way you use it on your website, you could be considered to be infringing on trade mark rights (registered or unregistered).

Then there are your own trade mark rights in relation to your website’s domain name.

The fall-back position is that domain names are registered on a ‘first-come-first-service’ basis – except if, for example, the Alternative Dispute Resolution tribunal (under the regulation of the ECT Act with presiding officers appointed by the South African Institute of Intellectual Property Law) finds the domain name registration to be “abusive” or “offensive”.

It is important that you be aware of your brands/trade marks or similar trade marks being registered by other traders as domain names (.com; .net; .co.za., etc.) and that you take appropriate measures to get are removed or handed over to the rightful owner/s.

Website IPRs: the bottom line

Ensure that you actually own the copyright and trade marks in your website. If you’re unsure, check your agreement with your website designer-developer. If there’s no clause dealing with the issue of ownership, amend the agreement to include an ‘assignment of intellectual property clause’, or have him/her sign an intellectual property assignment agreement.

Also be aware that if you use third-party content, either by ‘linking’ or ‘framing’ without authorisation, the owner of that content could have a case against you based on trade mark infringement, copyright infringement, unlawful competition or passing off. Tread cautiously.

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)