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1) Ownership of intellectual property: a business developing a website will want to ensure that it owns all rights in the web page (including design and underlying software) relating to aspects of the site which are "unique" to the site. By law, the designer, rather than the business, will be the first owner of the copyright and other intellectual property rights in such materials (text, images, music, software, trade mark) unless the designer has transferred in writing such rights to the business. The business will therefore require the transfer of all intellectual property in the site to it.
In most cases, there is no reason why the developer should not agree to transfer ownership of the intellectual property developed specifically for the business. For all other rights, where the designer is not in a position to grant an outright transfer (such as where third party works are included in the site content), the business should obtain a licence (on a non-exclusive basis) to use the relevant works in the operation of the website. The business should ensure that any such licence is as wide as possible: for example, it should be perpetual and not subject to any territorial restrictions with an obligation to put appropriate source code escrow arrangements in place.
2) A business will most likely have a mark, sign or logo distinguishing its products and services. Where this mark sign or logo is a registered trademark, it will confer on the proprietor the exclusive use of the trademark in connection with the goods or services for which it is registered and the business will want to add this on its site.
Where the trademark is registered, the proprietor can authorise or license others to use the trademark but, most importantly, registration gives the proprietor the right to sue for trademark infringement any person who uses an identical or similar trademark in connection with identical or similar goods without authorisation. There is no requirement to prove reputation or goodwill. The registration acts as notice to the public of the proprietor's rights in a particular trademark and, therefore, has a deterrent effect.
Where a trademark is unregistered, the owner has to rely on a passing off action to prevent infringement of the trademark. Passing off actions, however, are notoriously time-consuming and expensive. To succeed in such an action, the owner of the trademark must produce evidence of its goodwill or reputation in the trademark and evidence that the unauthorised use of its trademark amounts to a misrepresentation which is causing, or is likely to cause, damage.
3) Copyright: most of the site content (and software on which the website runs) will be protectable by copyright. A website owner should consider the following main points in order to protect intellectual property in website content and minimise cases of copyright infringement.
Ensure that works comprising the website (or used in its operation or which are provided through it), which must be original in order to attract copyright protection, can be shown to have been created as a result of the application of skill and effort. For this purpose, the owner should keep accurate records of the amounts of financial, human or technical resources invested in the work. The same applies to any designs that may be included on the site.
Keep accurate records of when and by whom works were created, as this provides evidence which may be needed in the event of any infringement action.
Include a copyright notice on the website for each copyright work and for the website generally, stating the name of the owner (or owners) and the first year of publication (for example, "© ABC Ltd 2010"). Although not legally required in most countries, they act as warnings to potential infringers and put them on notice of the owner's rights. The website owner should ensure that such notices are prominently displayed or are properly brought to the attention of visitors to the site. Ideally, they should be displayed "above the fold" (that is, that section of the screen which is immediately visible to the user when he enters the website) so that they are clearly visible without users having to scroll down or across the website page. Aim to place copyright notices on all pages of the site but if all pages are accessed through the homepage, a notice there is likely to be sufficient.
Use your website terms and conditions to include clear restrictions on use and copying on the site.
Think twice before putting valuable information, drawings and other work on the website at all (even if accompanied by clear restrictions on use and copying) if there is no effective technical restraint on copying. This is because in practice it may be difficult to enforce such restrictions, as digital works can be copied and distributed very quickly and widely. An alternative might be to release versions of content which are of sufficient quality to enable users to determine whether they would be useful (for example, for use in online advertising) but without enough detail to make them worth copying.
4) Be vigilant and do not be afraid to take appropriate action where required but also be careful so that you do not make groundless threats.
5) Speak with your legal advisor to agree your intellectual property strategy.
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