Asset Protection: Adequately Copyrighting Your Web Site

[Editor's Note: Given the investment some firms put into their Web site, this advice from A&FP's sibling newsletter Internet Law & Strategy seems pertinent. See also the accompanying commentary by Marketing the Law Firm's Editor-in-Chief Elizabeth Anne "Betiayn" Tursi.]

An often-overlooked component of a company's intellectual property portfolio is the company Web site. This is especially true in the fast-paced world of technology firms, whose primary emphasis is usually core technology in the form of patents or trade secrets. The Web site, as a matter of course, is the most innocuous of assets, but it's an asset nonetheless. The job of the general counsel's office is to protect it.

The Copyright Act of 1976 is the primary component of federal copyright law and protects a wide variety of works, from sound recordings and films to architecture and novels. The U.S. Constitution gives Congress the power to protect such works; the Constitution reserves the ability to “promote the useful arts” solely to the federal government.

Federal copyright attaches to a work, which is the term used for any subject matter that falls under the penumbra of the law and its protection, at the time the work is created. There is, surprisingly, nothing more to do to legally copyright a work; merely creating it, or “fixation in a tangible medium” in copyright parlance, is enough to warrant protection.

Establish Ownership First

However, perhaps not so surprisingly, copyright owners must follow additional steps if they wish to achieve the fullest extent of that protection. By far the most important step, and one that is essential to litigate a claim for copyright in a dispute, is registration with the U.S. Copyright Office.

First ' even before registering the copyright ' the company must establish ownership. If, for example, the company contracts for the development of its Web site by a third-party developer, or even when the work is to be performed by an in-house creative team, counsel should perform an ownership analysis to make sure rights to the content are fully secured.

Generally, the creator of a work owns the work, unless the work is a “work for hire.” A good example of a work for hire is a work an employee creates for an employer during performance of his or her duties in the scope of his or her employment.

In-house counsel should take care when drafting employment agreements for creative personnel, to ensure that all works created during the employment term are works for hire and owned by the company. Likewise, if the GC's company engages an outside agency, in-house lawyers should scrutinize the Web site development agreement carefully to ensure that the contracting company ' not the developers at the outside agency ' owns the work product. It's all too common that companies employ creative agencies to create materials, and those materials then wind up being the subject of litigation to conclusively settle the issue of ownership.

An additional preliminary matter is the addition of notice of copyright to the Web site. Although this notice was once required, the entry of the United States as a signatory to the Berne Convention in 1988 significantly diminished the role of notice. Although a work is technically copyrighted the moment it's created, as a practical matter, notice serves an extremely important function. It is an overwhelmingly strong response to a defense of “innocent infringement,” which, if successfully asserted by the infringing party, could significantly reduce the resulting damages that can be collected.

The notice should contain, at a minimum, the copyright symbol ' ' ' the year of creation and the name of the copyright holder. For purposes relating principally to international copyright, it is also wise to add the phrase “All rights reserved” at the end of the notice. A good example is: “'2005, Michael G. McCoy. All rights reserved.”

Ultimately, however, the copyright holder must register the copyright in order for it to have any practical value. Without a registration, the copyright holder cannot commence an action for infringement. Even if a company seeks registration specifically to enable a suit to proceed, if the acts constituting the infringement took place prior to the registration of the copyright, the copyright holder is barred from recovering statutory damages and attorney's fees.

Form Selection

Registration is a relatively simple and inexpensive procedure that can effectively increase the value of the Web site as part of the company's intellectual property portfolio. Although few things in law are truly simple, the basic procedure is the submission of a form and a small fee, along with the content that comprises the Web site, to the U.S. Copyright Office.

The most arduous task is figuring out which of the myriad forms to fill out and submit. There are different forms for different types of works; these can be, as with all things related to the federal government, quite complex. The litany of form types includes Form TX (literary works), Form VA (pictorial and graphical works), Form PA (audiovisual materials), Form SR (sound recordings), and many others. A full list of forms, along with limited explanations of their function, can be found at the Web site of the U.S. Copyright Office at http://www.copyright.gov/.

Since a Web site typically contains more than one type of work, eg, text and graphics in a particular layout, in-house counsel should use the form that corresponds to the predominant material. If the Web site is principally text-based, register using Form TX. If, on the other hand, the Web site is dominated by graphics, such as the company logo or product photography, register using Form VA.

For complex Web sites, however, creators should file registrations for each individual work to obtain maximum protection for the entirety of the intellectual assets the Web site comprises. That is, companies should submit separate registrations for the text of the site as a literary work, with another registration for the pictorial or graphic works.

Additionally, a frequently updated Web site may constitute an automated database. In such circumstances, the work may qualify for a single registration.

Regardless of the registration methodology, a company's leaders should consider its Web site a core intellectual asset. If not adequately protected, the company may soon discover bits and pieces of its intellectual property scattered across the Internet.

[Editor's Note: Given the investment some firms put into their Web site, this advice from A&FP's sibling newsletter Internet Law & Strategy seems pertinent. See also the accompanying commentary by Marketing the Law Firm's Editor-in-Chief Elizabeth Anne "Betiayn" Tursi.]

An often-overlooked component of a company's intellectual property portfolio is the company Web site. This is especially true in the fast-paced world of technology firms, whose primary emphasis is usually core technology in the form of patents or trade secrets. The Web site, as a matter of course, is the most innocuous of assets, but it's an asset nonetheless. The job of the general counsel's office is to protect it.

The Copyright Act of 1976 is the primary component of federal copyright law and protects a wide variety of works, from sound recordings and films to architecture and novels. The U.S. Constitution gives Congress the power to protect such works; the Constitution reserves the ability to “promote the useful arts” solely to the federal government.

Federal copyright attaches to a work, which is the term used for any subject matter that falls under the penumbra of the law and its protection, at the time the work is created. There is, surprisingly, nothing more to do to legally copyright a work; merely creating it, or “fixation in a tangible medium” in copyright parlance, is enough to warrant protection.

Establish Ownership First

However, perhaps not so surprisingly, copyright owners must follow additional steps if they wish to achieve the fullest extent of that protection. By far the most important step, and one that is essential to litigate a claim for copyright in a dispute, is registration with the U.S. Copyright Office.

First ' even before registering the copyright ' the company must establish ownership. If, for example, the company contracts for the development of its Web site by a third-party developer, or even when the work is to be performed by an in-house creative team, counsel should perform an ownership analysis to make sure rights to the content are fully secured.

Generally, the creator of a work owns the work, unless the work is a “work for hire.” A good example of a work for hire is a work an employee creates for an employer during performance of his or her duties in the scope of his or her employment.

In-house counsel should take care when drafting employment agreements for creative personnel, to ensure that all works created during the employment term are works for hire and owned by the company. Likewise, if the GC's company engages an outside agency, in-house lawyers should scrutinize the Web site development agreement carefully to ensure that the contracting company ' not the developers at the outside agency ' owns the work product. It's all too common that companies employ creative agencies to create materials, and those materials then wind up being the subject of litigation to conclusively settle the issue of ownership.

An additional preliminary matter is the addition of notice of copyright to the Web site. Although this notice was once required, the entry of the United States as a signatory to the Berne Convention in 1988 significantly diminished the role of notice. Although a work is technically copyrighted the moment it's created, as a practical matter, notice serves an extremely important function. It is an overwhelmingly strong response to a defense of “innocent infringement,” which, if successfully asserted by the infringing party, could significantly reduce the resulting damages that can be collected.

The notice should contain, at a minimum, the copyright symbol ' ' ' the year of creation and the name of the copyright holder. For purposes relating principally to international copyright, it is also wise to add the phrase “All rights reserved” at the end of the notice. A good example is: “'2005, Michael G. McCoy. All rights reserved.”

Ultimately, however, the copyright holder must register the copyright in order for it to have any practical value. Without a registration, the copyright holder cannot commence an action for infringement. Even if a company seeks registration specifically to enable a suit to proceed, if the acts constituting the infringement took place prior to the registration of the copyright, the copyright holder is barred from recovering statutory damages and attorney's fees.

Form Selection

Registration is a relatively simple and inexpensive procedure that can effectively increase the value of the Web site as part of the company's intellectual property portfolio. Although few things in law are truly simple, the basic procedure is the submission of a form and a small fee, along with the content that comprises the Web site, to the U.S. Copyright Office.

The most arduous task is figuring out which of the myriad forms to fill out and submit. There are different forms for different types of works; these can be, as with all things related to the federal government, quite complex. The litany of form types includes Form TX (literary works), Form VA (pictorial and graphical works), Form PA (audiovisual materials), Form SR (sound recordings), and many others. A full list of forms, along with limited explanations of their function, can be found at the Web site of the U.S. Copyright Office at http://www.copyright.gov/.

Since a Web site typically contains more than one type of work, eg, text and graphics in a particular layout, in-house counsel should use the form that corresponds to the predominant material. If the Web site is principally text-based, register using Form TX. If, on the other hand, the Web site is dominated by graphics, such as the company logo or product photography, register using Form VA.

For complex Web sites, however, creators should file registrations for each individual work to obtain maximum protection for the entirety of the intellectual assets the Web site comprises. That is, companies should submit separate registrations for the text of the site as a literary work, with another registration for the pictorial or graphic works.

Additionally, a frequently updated Web site may constitute an automated database. In such circumstances, the work may qualify for a single registration.

Regardless of the registration methodology, a company's leaders should consider its Web site a core intellectual asset. If not adequately protected, the company may soon discover bits and pieces of its intellectual property scattered across the Internet.