By: Jeffrey E. Jacobson, Esq.

Website development and ownership can raise a number of unique Copyright and Trademark concerns that all potential website owners need to be aware of before they begin the process of creating their website.  From the initial act of choosing a domain name, to the development of a design, and to the display and use of the site, website owners should be aware of the various Copyright issues that may arise in order to prevent costly and unnecessary litigation.

Ownership of the Design of the Website

When a website owner chooses to hire someone to create and design their site, the owner may own the website, but that does not necessarily mean they own the Copyright in the content or design of the site. In fact, the Copyright Law provides that the designer or artist owns the Copyright to the content or design of the site unless the artist is an employee or there is a written agreement to the contrary.  In this context, the “work for hire” doctrine provides that in order for an employer — in this case, the website owner — to own the Copyright, a written agreement stating the parties’ relationship is often required.  On the other hand, if the designer is an employee of the company, and is hired for the purpose of creating and maintaining the website, the website’s owner, rather than the employee, might be able to claim Copyright ownership of the website without a written agreement stating the parties’ relationship.  In the employer-employee context, a written contract demonstrates that the work was created within “the scope of employment” and helps avoid expensive litigation.  Consequently, a written “work for hire” contract between the employer and the designer is usually required, and is always strongly recommended to ensure that the Copyright in the website design belongs to the website owner.  

Once Copyright ownership is established, the website owner is permitted to display a copyright notice on the website.  A notice of Copyright generally includes the Copyright symbol, the Copyright year, and the name of the Copyright owner(s) (e.g., © 2010 The Jacobson Firm, P.C.).  By including the notice of Copyright, as well as complying with other formalities, the website owner can qualify for full monetary damages in the event of infringement.  However, simply declaring Copyright ownership by displaying a Copyright notice on the website is not the best legal protection for the Copyright.  Registering a Copyright not only establishes a public record of the Copyright, but also satisfies the prerequisite for filing an infringement claim in court.  Perhaps more importantly, registering your Copyright generally permits you to receive statutory damages in court, even if you cannot prove actual damages.  In many cases, statutory damages far exceed the actual damages caused by infringement. The current fee for online Copyright registration of a basic claim in an original work of authorship is $35.00 – – a small price to pay for its benefits.

Ownership of Artwork Displayed on a Website

There have been a number of cases involving website-Copyright Law that explore the legitimacy, or lack thereof, of using artistic works or pictures found on other websites.  These cases are generally litigated with the defense that the use of the artistic work or picture was a “fair use.”  If certain conditions are met, the doctrine of fair use allows very limited use of copyrighted material without the permission of its owners.

There are four primary factors that courts look at to determine what constitutes fair use.  First, the court must determine the purpose of the use.  If the use of the copyrighted material is not commercial or exploitative, it is more likely to be considered a fair use.  However, creating a replica, and using it for a different purpose other than what the copyrighted material was originally intended for

makes the replica less likely to be found as a fair use.  Second, courts look at the nature of the copyrighted work.  Creative works are generally given more copyright protection than non-creative or factual works. The third factor courts look at is the amount of copyrighted material being copied.  The greater the percentage of the original work being copied the less likely the court will find the work to be a fair use, and vice versa.  The fourth factor focuses on the economic impact of the second use of the work on the original Copyright owner.  If the owner of the copyrighted work can prove that the subsequent user has affected their profits, the court is less likely to find it a fair use. The current trend is to look at the “transformative” nature of the use.

Kelly v. Arriba Soft Corporation is a particularly compelling case that uses the doctrine of fair use to determine the extent of Copyright infringement when websites incorporate artistic works found on other sites.  The website, Arriba Soft, had a search engine that responded to a user search for photographer Leslie Kelly with thumbnail versions of images found on his website.  Though Kelly’s full pictures were not in fact stored in Arriba’s system, Kelly sued for Copyright infringement with regards to the thumbnails.  The Court applied the fair use test and determined that because the work Arriba Soft displayed was both creative and published, the bar slanted slightly in favor of Kelly.  However, the Court ultimately ruled that Arriba’s use of Kelly’s images as thumbnails in its search engine is a fair use.

Choosing a Domain Name

Just because a domain name is available for purchase does not mean that it has not already been trademarked or owned by someone else.  If all or part of the domain name is trademarked or owned by a different person, the website owner may be sued for Trademark infringement.  The website owner can be forced to pay damages and may even have to change the domain name of the site.  This could

potentially cause tremendous damage to the company’s business and reputation, especially if it has already invested a considerable amount of time and money marketing itself under that domain name.

How You Can Protect Yourself

There are many Copyright and Trademark concerns to be understood when creating a website, and taking a few simple steps can help eradicate any confusion of possible infringement, thereby preventing costly litigation.

When hiring a designer to create your website, be sure to have them sign a written agreement before the creation process starts stating that the designer’s product is a work made for hire under the Copyright Act, and that you are the owner of the Copyright in the final product.

When obtaining images for your website, be sure to check whether your use of the image is permissible use or a fair use.  You can frequently find free licensed images on the Internet, use purchased software images (as found in Microsoft Clip Art, Adobe, and other similar purchased programs), or you can simply create images yourself using graphic design software.  By only using images from these types of sources, infringement of works covered by the Copyright Act can be avoided.

When choosing a domain name, be sure to do a Trademark search to ensure your website name is available for use.  Once you have checked, make sure to register your name using the GoDaddy or any other online registration system to legally obtain rights to your new website name.  And finally, file an application to register the domain name as a Trademark with the United States Patent and Trademark Office.

© 2010 The Jacobson Firm, P.C.

About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.

Leave a Reply