How To Protect Your Website From Copyright Infringement

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1 Intellectual Property Protection for Websites By Donika Ilieva, IP and ICT lawyer Nowadays companies cannot afford to ignore the internet, which provides a global market where they can place their products and services. Internet is one of the means companies get in touch with their clients and because of this the creation of websites is continuing to increase globally. Using this opportunity, companies increase their recognition and competitiveness on the market, but most importantly their sales. This is why websites play an important role in the businesses development and expansion. This article will address all the elements which are related to IP rights over websites in general and will examine the methods of their protection. The article is aimed at companies and individuals planning to launch a new website, but also at owners of already existing ones. The Bulgarian and European Union legislation regulating the IP protection of websites are: the Patent and Utility Registration Act, the Marks and Geographical Indications Act, the Copyright and Related Rights Act, the Protection of Competition Act, Directive 91/250/EEC on the legal protection of computer programs, Directive 2005/29/EC on unfair commercial practices, etc. Being so, it is vital to have in mind all the intellectual property ( IP ) rights deriving from websites in order to protect your business against unfair competition. What should be protected? There are different elements in a website which are protected by different IP rights. Listing these elements is important in order to reveal the differences in their protection. The elements are the following: Technical innovations; Software; Website design; 1

2 Website content; Databases; Domain name, product name, logo and others; Algorithms, programs or technical descriptions, logic flow charts, etc.; Hidden aspects, such as confidential graphics, source and object code, algorithms, data flow charts, etc. IP rights methods of protection for different elements of a website Domain name and Trademark protection The domain name is one of the most important elements of a website, because most of the time it is the first encounter of a potential client with a company. One of the initial steps for consideration of IP protection is the business name, i.e. domain name of the website. The choice of domain name should include both a distinctive business name (name of the company or the product) and type of the domain (Top-Level Domains). The most common TLDs are generic TLDs, i.e..com,.edu,.gov,.int,.mil,.net, and.org, and country-code TLDs, e.g..bg,.de,.mx, and.jp. The choice of the TLDs type shall affect the procedures and rules that shall be applicable in a possible domain name dispute. Having in mind the domain names are not considered as IP rights they should be protected by registering a trademark. A domain name should be distinctive and not descriptive. This will allow a trademark registration to be sought in order to protect the IP rights over the domain name. You can choose the domain name to be registered as a trademark with the BPO, thus obtaining national protection, with the Office for Harmonization of the Internal Market ( OHIM ) for protection on European Union level, or with the World Intellectual Property Organization ( WIPO ) for obtaining 2

3 protection worldwide 1. We recommend considering a registration of the domain name as a trademark on an early stage of the process of developing and launching a website. This is an efficient method of protection against the usage of an identical or similar name for other products or services on the market and will be considered in the event of a domain name/trademark dispute or during unfair competition proceedings. In addition, the Bulgarian Competition Protection Act provides for protection of the domain name under art. 35, para. 3. According to the latter the use of a domain or outer appearance of a website, identical or similar to those of other persons in a manner which may mislead a person and/or damage the competitors interests, shall be prohibited. It is very important for the domain name to be distinctive for two reasons: The first reason is to prevent registration of a similar or identical domain which could represent unfair The other one is because the domain name can be registered as a trademark only if the name is distinctive. Copyright protection The website s content, such as images, texts, photographs, software, etc. are automatically protected by copyrights, as long as the work is original. This means that no other party can use your website s content. However, the owner of another website may redirect internet users via hyperlinks on his own website to contents of your website, without your authorization as a copyright holder. This is possible, if the works on your website are available on a freely accessible basis in your website. The latter has been established according to the resolution of the European court of justice ( ECJ ) on court case C- 1 States under Madrid Agreement Concerning the International Registration of Marks; Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks; WIPO Copyright Treaty; Paris Convention for the Protection of Industrial Property 3

4 466/12. Although there is no need for registration in order to obtain copyrights, it is considered a good practice to obtain a date stamp through certain organizations. This can be used as evidence in potential litigation cases, if someone is trying to take credit for your work. In the event you consider your website s content should be further protected and not considered as a freely accessible, an IP licensing and/or prohibiting provision should be implemented in the General Terms and Conditions of the website. IP protection could be established by registering an industrial design over the website (web design, logos you display, computer icons, etc.). The registered industrial design protection lasts 25 years. There is one year grace period to fill in application for registration, i.e. you have 1 year after disclosure to seek registration without losing the novelty associated with the design. In spite of the latter unregistered industrial designs are protected only for 3 years as of their disclosure to the public. Copyright protection of works created by employees or subcontractors Software created by an employee in execution of his work belongs to the employer according to art. 14 of the Bulgarian Copyright and Related Rights Act. However, regarding all other types of works, such as images, texts, etc. the copyright belongs to the employee who has created it, pursuant to art. 41, para. 1 of the Bulgarian Copyright and Related Rights Act, but according to the following paragraph the employer is entitled to use this work for his own purposes. If your company is considering hiring a 3 rd party for developing the website it is highly recommended an explicit agreement (respective explicit provisions in the existing agreement inclusion is an opportunity as well) to be concluded, provisioning the former to be the copyrights holder. Some of the provisions to be considered are scope of the work to be developed, ownership of the work, confidentiality, warranties. IP protection information displayed on the website and restriction to 3 rd parties How to display information regarding the protected IP rights on the website? It is advisable to provide website users and the general public with the website s General Terms and Conditions and/or by copyright notices or disclaimers on the website. Thus numerous users will be 4

5 reminded that the website contains information, protected by IP rights. Further to the IP rights notice it is essential to provide information regarding any restriction on users, e.g. if you want the website content to be shared, a Creative Commons License may be made applicable. In cases of advertisement and online sale the company has to provide for an agreement before the clients make purchase. The clients must clearly accept the terms and conditions of the said online shop prior making the order, respectively purchasing the products. There are specific mandatory regulations pursuant to the Bulgarian Consumer Protection Act with regards to online sales and shops. Meanwhile as important as it is not to allow any infringing activity by 3 rd parties to your IP rights the vice versa may have substantial legal implications on your business. To avoid infringement of 3 rd party IP rights you should always use materials with explicit permission either by obtaining an assignment or by a license. To protect your website from infringing 3 rd party rights and further legal disputes you should consider the following aspects and if necessary to consult with an IP lawyer: technical tools, software, copyright works, trademarks, webdesigns, linking, meta-tags etc. BWSP Ilieva, Voutcheva & Co. Law Firm provides a full-range service regarding IP rights protection of websites. Our team consults and provides preliminary advice on IP rights protection strategy, registration of gtlds and cctlds, industrial designs and trademarks on national and international level. Our IP and IT law team advises on General Terms and Conditions, Online Agreements and their applicability, Creative Common license, employees and subcontractors rights and agreements, public domains, Collective Management Organizations, legal notices and disclaimers, personal data, liabilities for the website content, advertising on the website, tax regulations, distance selling regulations, alternative methods of dispute resolution, etc. Our industrial representatives register trademarks and industrial designs before BPO, OHIM and WIPO. We represent our clients in domain name, trademarks and industrial designs disputes and protection from infringements before national and international authorities. We help our clients in developing an IP protection structure allowing the creator of the website to strengthen its business and market position thus leading to a sustainable business model. 5

6 The article above is intended for information purposes only by drawing your attention to the applicable IP rights protection of websites. It should not be construed as binding legal advice. For a thorough understanding of the subjects covered and prior acting on any issue discussed we kindly recommend Readers consult BWSP Ilieva, Voutcheva & Co. Law Firm attorneys at law. 6