An overwhelming number of companies, irrespective of size, industry or location, utilize Web sites to promote their businesses.
Since a Web site is often the first place visited by prospective customers, it should come as no surprise that the first impression of a business is based on the quality and appearance of its Web site.
This first impression could be the difference between gaining a new customer and losing one.
Therefore, a company's Web site is an important and valuable asset that should be carefully protected.
Certain steps must be taken to protect the content of a Web site before it is designed and operational, not afterwards.
Failure to do so could severely limit what rights a company has in the content of its own Web site,may result in others retaining or acquiring rights in the same content, or worse yet,may lead to lawsuits against the company for copyright or trademark infringement or other causes of action.
The first step in protecting the content of a Web site starts at the design stage.
Companies typically engage an independent Web design company, a graphic artist or marketing/advertising firm to design a Web site.As part of this process, these outside firms create various designs, logos and other artwork (collectively referred to as "works"), which eventually are incorporated into and become the content of a Web site.
It is important to understand that each of these works may be copyrightable and, thus, 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 on the basis that they were created by the design firm at the direction of the company.
This is not true.
Under copyright law, the author of a work is deemed to be the owner of the copyright in that work 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.
For example, if a company wanted to slightly modify or alter some of these works in the future, it may be unable to do so unless it receives permission from the author and/or pays additional remuneration.
Therefore, a company should always obtain a written assignment of all original works incorporated into its Web site that the designer specifically developed for the company before work is commenced on the Web site.
If an assignment is not possible, for whatever reason, then the company should, at the very minimum, obtain a license in such works so that the designer cannot use these same works in another party's Web site.
Similar precautions apply when works are independently developed by the company and then delivered to a designer for incorporation into its Web site.
Prior to delivery, these works should be registered with the U.S.
Copyright Office and contain proper copyright notices.
Companies should also be aware that content from other parties may sometimes be used by designers in the development ofWeb sites.
As such, the designer should warrant to the company in the Web design agreement that it has a license to use such third-party content.
Likewise, the company may want to incorporate copyrighted material from other parties or sites, such as graphics or software programs, in which case prior permission should always be obtained.
Sometimes Web sites are designed by employees of a company.
There is an exception to the above copyright ownership rules when employees, as opposed to independent contractors (i.e., outside design firms), are the authors of such works.Under the work-made-for-hire doctrine, 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, rule or doctrine, there are always exceptions that could nullify or weaken the protections afforded to employers under this doctrine.
This doctrine also does not protect other forms of intellectual property that may be developed by employees, such as trade secrets or patentable subject matter like inventions and discoveries.
To avoid these issues altogether, it is vital that companies require their employees, as a condition of employment, to make written assignments of all intellectual property rights to the company.
This is particularly important for technology-based companies and those that are in the business of designing, creating or inventing.
Once the Web site is completed, each page of the Web site, as well as the Web site 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.Moreover, displaying copyright notices not only identifies the company as the copyright owner of such works, but also advises potential infringers that such works are copyrighted, thereby deterring copyright infringement.
Another situation confronted in this area is the risk of incorporating a third party's trademark or service mark into a Web site.
These marks consist of not only words, phrases and slogans, but also designs, logos, symbols,moving images, colors and sounds.
Trademark law provides protection to trademark owners from the unauthorized and confusing use of these marks by others in connection with the same or related goods and services.
Therefore, before any proposed marks are incorporated into a Web site and used by a company, 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 Web sites,many of the issues discussed apply similarly to any form of marketing media used, whether 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 in owned, and/or subject itself to liability for copyright or trademark infringement.
Paul Deyhle is a senior associate in the Reno office of the McDonald Carano Wilson Law Firm .
His practice focuses on corporate, commercial and business transactions, intellectual property and employment law.
