Protect Your Website - Register It!

Joshua Kaufman, Esq. © 2000

Your company has spent tens, perhaps hundreds of thousands of dollars designing the perfect website. You view it with great pride and believe it is thoroughly unique. Because of its attractive and uniqueness, it is bringing you many viewers, a great number of sales and tens of thousand of dollars a day in advertising revenues. It is your pride and joy, your crown jewels! So why haven't you protected it?

One acquires a copyright by simply fixing their work in a tangible form. A web site is fixed when it is created. The copyright lasts for either the duration of the creators' life plus seventy-years or for ninety-five years, if owned by a company. The first question raised is, who owns the site? This is not necessarily an easy question to answer. If a company hires an outside consultant, webmaster, or any other independent contractor to create their website, the actual creator of the website will own the website, not the commissioning party. Not what you had in mind! Fear not, the ownership of the website can easily be transferred to your company, the commissioning party. When you hire out the work on your web site and you want to own it make sure that either in your contract with the web designer or in a separate document that all rights are transferred to you. The separate document known as an Assignment. The Assignment must be in writing. Oral transfers of ownership are ineffective for purposes of copyright. An Assignment is a simple document but a necessary one for the transfer of ownership.

If your web site was created in-house and the work was done by employees working within the scope of their employment then you will own the website automatically. When referring to employees we are talking about actual employees not independent contractors or freelancers who are working in your office for a few months while the get the web site up and running. If you don't give them a W-2, benefits and pay FICA then you must get an Assignment from them . Employees who work on the site on their own time or at home can be problematic. To be safe you should get an Assignment for them as well.

Ok, so now you own the overall site, but what of the components. You must determine what right you have in your web site's content. What ownership was retained by those who provided the content for the web site such as text, music and/or photographs. If these works were created by you or an employee in the scope of their employment you will own those rights. If they were created by an independent contractor again, it is incumbent upon you to make sure that you either have an Assignment from the photographer, writer, painter, film maker or whoever created the contents for you or a License (permission) to use the copyright protected materials on your website. Exclusive licenses must also be in writing. Non-exclusive licenses can be oral. However, it is never in your interest to have an oral license when you are incorporating something in your website as disagreements and disputes can arise later as to the scope and nature of the license. As a preventative measure, a rule that you should adapt as a matter of course is, if it is on your website either own it or have a written piece of paper granting you the right to post it to your site. The overall design of your website can also be protected. It is consider a compilation under the copyright law. The layout, the sequencing, the choice of elements, "the look and feel" are able to be protected. However, your URL is not protectble under copyright laws. It is simply an address no different then your street address or your phone number. Your URL may be protected as a trademark if it is used as a trademark. But if it's simply used as a URL it is not afforded trademark protection either.

Your web designer in all likelihood will be incorporating the HTML code, other programs and Java applicants into your website. You need to make sure that the designer owns or has licensed those elements for you so that they can be included in your web site. Don't be surprise if your web designer asks to retain ownership of those items used in your web site which he or she has in their tool box (previously created items). It is quite reasonable for them to require this as they will be using those material in every website they design. What the web master designs specifically for you should be yours. What the web master brings to the table from pre-existing experience or web sites may remain theirs as long as you have a license in perpetuity to use it and a guarantee that the next web site, they design won't look too much like yours.

Why register? Even though registration of a copyright with the Library of Congress' Copyright Office is voluntary and you will own a copyright in your web site even if you don't register it you really do want it registered. There are several important reasons. Registration provides you with a presumption of ownership. It is also a prerequisite to filing suit. If someone infringes on your website, you may not file suit against them until you register your copyright. The word "register" has been given two different definitions by courts in the United States. The first definition is that the copyright application must not only be filed with the copyright office, but that it must be approved and returned to you. Other courts have interpreted "registered" simply as the filing of the copyright application. In light of the fact, that copyright application can take over six months to be processed by the Copyright Office that distinction is very important. If you find someone infringing on your copyrights, file your registration and you are in a jurisdiction which has ruled that it is not until the return of the application as a certificate that you are entitled to file suit, you may find yourself having to wait for six months. That, of course, is unacceptable . The copyright office has an expedited process which you can use in which they will provide a turn around in approximately a week to ten days. However, the cost for the quick turn around time is $500.00 dollars per application. Another important factor emphasizing the need for an early registration is that if at the time of the infringement you have already registered your web site you would be entitled to have the infringers pay your attorney's fees as well as statutory damages. In copyright cases without a prior registration you are entitled to your loses and the profits of the infringer. Unfortunately, it can be very difficult proving how much you have lost as a result of an infringer copying parts of your web site. Unfortunately, it can also be very difficult to ascertain what part of the infringing websites profits can be attributed to their infringing activities. If you were entitled to statutory damages, by having filed with the copyright office before infringement, the Judge can, based on his or her gut, award you up to $150,000 per infringement. A website infringement may be a single infringement or may be several each with a separate a potential for an award of up to 150,000 (e.g. scanning , uploading, downloading, public display, etc.). Having a registration in place before an infringement occurs is often the difference between an economically viable claim or either having to spend more on attorney's fees than you recover.

So, how do you register your web site? First of all, you should either go on line or call the copyright office and obtain Circular 65 and 66, (Copyright Registration for Online Works and Copyright Registration for Automation Databases). The web site is www.loc.gov/copyright.com. The phone number for forms is (202) 707-9100. For questions call (202) 707-3000. There are two different registration processes. One, if your website is fairly static the other if it is an active database and it is being significantly change on a daily basis. If it is being changed very frequently it may be considered an automated database (if so you need to look at circular number 65 for advise).

The first question you need to answer is, which form do you use? Copyright law states that if the work contains more than one type of authorship (usually the case in a web site), use the form that corresponds to the predominant type of material. If your website is mostly text you would Form TX. If it is mostly visual arts, photographs and the like, you would use Form VAOf course you included the $30 filing fee. Each copyright application needs to be accompanied by, "deposit materials" to identify what is being registered. If you are registering an automated database it is more complex. The rules say use a form TX no matter what the submission is comprised of along with the $30 fee and the deposit materials.

One of the interesting questions is, what do you use as your deposit materials to show a web site? For a regular web site you have two alternatives; you may submit a computer disk containing the entire work and representative portion in a format that can be examined by the copyright office. That would generally be a printout of five(5) representative pages. The other option, is to provide a printout of the entire work and then a computer disk is not required. If you are registering an automated database the deposit is either: a) the first and last 25 pages of the data or b) 50 data records from each file. For updates the deposit is 50 pages from the last three months.

The first time you attempt to file a web site copyright registration it can be a daunting task. Unfortunately, the staff at the Copyright Office, while trying to be very helpful, have not been consistent in their advice on the registration process or on filling out the forms. It is all new and the use of pre-existing forms rather then custom forms designed for a web site adds to the confusion

However, no matter how frustrating it is to figure out it is worth the effort. You have to put your heart and soul in your site, you owe it to your self to protect it.

Joshua Kaufman is an Intellectual Property partner in the Washington, D.C. office of Venable, Baetjer, Howard and Civiletti, LLP