An Introduction to Intellectual Property by Brian Miller, Trademark Lawyer and IT Solicitor
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A whistlestop tour to protecting your brand and intellectual property by registration of trademarks, design rights and domain names and the consequences of not doing so. Includes guidance on how to deal with cybersquatters, copyright and its exceptions, how to register trade marks, design rights and patents, use of databases and website compliance.
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An Introduction to Intellectual Property by Brian Miller, Trademark Lawyer and IT Solicitor
- 1. Protecting Your Brand: Looking After Your Intellectual Property Brian Miller Senior Associate IP, IT & Commercial Stone King LLP
- 2. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY COPYRIGHT What Is Copyright? Definition • Subsistence – Literary (includes computer programs) – dramatic, – musical and – artistic works • no copyright in idea 2
- 3. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY COPYRIGHT How Do I Protect It? – Unlike trade marks, cannot register copyright – make sure you • save a copy • do not amend • back it up • lock safely away or encrypt 3
- 4. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY COPYRIGHT How Do I Protect It? – use the copyright sign © on all materials – if software, bank with ‘escrow agent’, who will: • Test • Release to named party on certain events 4
- 5. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY COPYRIGHT What Happens if Someone Copies My Work? – Be sure that it is your work that has been copied Has the “Copy Test” Been Satisfied? – Must be “substantial” – General rule of thumb: >50% – If satisfied, do not delay 5
- 6. PROTECTING YOUR INTELLECTUAL PROPERTY COPYRIGHT: Exceptions to Copyright Infringement •Minor infringements •Temporary copies •Fair dealing (inclusion for the purpose of news reporting) •Incidental inclusion (‘passing shot’). •private and educational use (eg instructions and examination) •Public interest (eg. injurious to public life) •Copying for visually impaired •Libraries, archives and public administration •Works permanently situated in public places 6
- 7. PROTECTING YOUR INTELLECTUAL PROPERTY COPYRIGHT: FAIR DEALING •use deemed acceptable (eg. review and criticism, noncommercial research or private study) •quoted material justified, no more than necessary is included. •source of the quoted material is mentioned, along with •the name of the author. 7
- 8. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY COPYRIGHT How Long Does It Last? • original literary, dramatic, musical and artistic works) – life of the author plus 70 years – computer-generated works: 50 years • films: life of principal director plus 70 years • Broadcasts: 50 years • Sound recordings: 50 years • Typographical arrangements: 25 years 8
- 9. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY TRADE MARKS Why Register? • Cannot easily protect a name • Preventing infringements costly without • Protected from the date of registration • No need to prove reputation • Protection nationwide 9
- 10. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY TRADE MARKS How Do I Register? • Easy application process • Supply name and/or mark to IPO • Work out “classes” • £200 per mark plus £50 per class 10
- 11. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY TRADE MARKS How Long Does It Take? • 4 weeks before advertisement • 8 weeks for opposition • 4 weeks for final processing • Total time: 4 months from receipt of application 11
- 12. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY TRADE MARKS What Does It Protect? • Name and logo • In classes for which they are registered Where? • United Kingdom only • If EU or overseas protection required, register: – EU trade mark (EEA protection) – international mark (Madrid Protocol); or – individual mark in the countries of concern 12
- 13. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY TRADE MARKS How Do I Protect My Mark After Registration? • Fundamentally need do nothing (other than renew) • ™ during application, ® after • if mark used or copied, do not delay 13
- 14. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY TRADE MARKS How Long Does It Last? • Ten years • Can renew indefinitely • “Use or lose” 14
- 15. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY DESIGNS AND DESIGN RIGHTS • Process and reasons for registering similar to TMs • For registration to be valid, design must: – be new – have individual character • Period of protection: – five years – Renewable for up to twenty-five years • Unregistered designs similar to copyright 15
- 16. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY INVENTIONS: PATENTS • Process and reasons for registering similar • detailed specification must be: – watertight – reveal process of production – capable of registration: • new • have an inventive step: not obvious • capable of being used in industry • not on a list of excluded items 16
- 17. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY INVENTIONS: PATENTS – software generally not patentable in UK and EU unless a “technical effect” can be shown • must renew it every year after the 5th year for up to 20 years protection • Fees vary (generally much more expensive) 17
- 18. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY DATABASES ‘A collection of data or other material arranged in such a way so that the items are individually accessible’ Protection exists in potentially two forms: (i) by copyright* as a literary work; and/or (ii) by a database right**. * must have originality in the selection or arrangement of the contents. ** must have been substantial investment in obtaining, verifying or presenting its contents 18
- 19. ENSURING YOUR ORGANISATION'S IP IS PROTECTING YOUR INTELLECTUAL PROPERLY PROTECTED PROPERTY DATABASES Registration • None necessary Term of Protection • if unpublished, fifteen years from • making • publication (if later) Infringement of database right • Compilers: check permission from each owner • Users: be aware of underlying rights owners, as well as those of the database owner 19
- 20. ENSURING YOUR ORGANISATION'S IP IS WEBSITES, DOMAINPROTECTED HOSTING PROPERLY NAMES AND WEBSITES How Do I Know If I Own the Code In My Website? • Commissioning Developers • Ensure contract watertight on copyright • In absence of agreement, copyright vests in the developer! • Employees • CDPA, s.11(2): employer is first owner BUT • Must be ‘in course of employment’ • Is it the developer’s work? • Possession is 9/10ths… Make sure these rights are in the contract.. 20
- 21. WEBSITES, DOMAIN NAMES AND HOSTING WEBSITES: Key Aspects Own the code Own the content Control the hosting Ensure legal compliance 21
- 22. ENSURING YOUR ORGANISATION'S IP IS WEBSITES, DOMAINPROTECTED HOSTING PROPERLY NAMES AND DOMAIN NAMES How Do I Know If Own My Domain Name? • Ensure your organisation is the registered owner of the domain (check on WHOIS, eg. www.123reg.co.uk/domain-names/) • registrations in employee’s name to be avoided • Don’t forget to keep tabs on renewal 22
- 23. ENSURING YOUR ORGANISATION'S IP IS WEBSITES, DOMAINPROTECTED HOSTING PROPERLY NAMES AND Whois record for nspcc.org.uk Domain name: nspcc.org.uk Registrant: NSPCC Registrant type: UK Registered Charity, (Charity number: 216401) Registrant's address: NSPCC 42 Curtain Road London EC2A 3NH United Kingdom Registrar: Webfusion Ltd t/a 123-reg [Tag = 123-REG] URL: http://www.123-reg.co.uk Relevant dates: Registered on: before Aug-1996 Expiry date: 11-May-2013 Last updated: 08-Jun-2011 23
- 24. ENSURING YOUR ORGANISATION'S IP IS WEBSITES, DOMAINPROTECTED HOSTING PROPERLY NAMES AND DOMAIN NAMES What’s to Stop Someone Registering A Similar Name? • nothing! • buy identical domains for generic and TLD domains • if cybersquatter appears, complain to registrar • allowing cybersquatters can result in – damage to brand – theft of business or donations • register a trade mark relating to domain name 24
- 25. Domain Names Beware the Cybersquatters... Ensure you are registered owner Avoid registration in an employee’s name Keep tabs on renewals 25
- 26. WEBSITES, DOMAIN NAMES AND HOSTING DOMAIN NAMES How Do I Know My Domain Name Does Not Infringe Another’s? • • • • Carry out checks (Google) Check Trade Marks Register and Trade Marks Journal Look on Companies House for similar company names Use a specialised agent if concerned 26
- 27. ENSURING YOUR ORGANISATION'S IP IS WEBSITES, DOMAINPROTECTED HOSTING PROPERLY NAMES AND HOSTING How Do I Know I Control My Hosting Account? • unless account in organisation’s name, you don’t • developers often prefer to use own hosting • agree in contract that: – account in organisation’s name; or – full access to be given, both during and after term – developer to transfer all digital assets/code upon termination 27
- 28. Conclusion Covered a lot of ground: • copyright, trade marks, designs and patents • ensuring your website, domain names and hosting are within its ownership and control Websites: make sure in contract copyright ownership clear you control access to your hosting and domain names For further information on website compliance, please take a look at the following articles by the author: 1. Is Your Website Legally Compliant 2. Copyright in Photographs 28
- 29. Brian Miller Senior Associate IP, IT & Commercial Stone King LLP brianmiller@stoneking.co.uk brianmillersolicitor @theitsolicitor 0207 324 1523
Editor's Notes
- I would like today | to give you a brief introduction of what intellectual property, or IP, is and how to protect it. I would then like to take you through some of the pitfalls of owning a website as far as the IP is concerned. In particular, how the laws of copyright can be determinative as to whether your organisation actually owns its website and consequently, What you can do to ensure that your IP stays within your organisation’s ownership as much as possible. So without further ado, let’s make a start...
- COPYRIGHT So what is it? Copyright is a legal concept which gives the creator of an original work exclusive rights to it, usually for a limited time. Generally, it is "the right to copy", but also gives the copyright holder the right to: be credited for the work determine who may adapt the work to other forms perform the work; or financially benefit from it, eg. a performer’s right to a royalty in the case of a sound recording Copyright subsists in literary, dramatic, musical and artistic works. These are things like books, plays, songs, recordings, software and sculptures. There is no copyright in an idea- you must write it down [NEXT SLIDE]
- How Do I Protect Copyright? Unlike trade marks, you cannot register copyright in this country (in America, you can submit copyright works to the Library of Congress) The old fashioned method used by musicians of “posting the tape to yourself” only serves as evidence of ownership (but frankly, that is better than doing nothing at all) Given today’s methods of communicating, make sure with any digital works that you: save a backup copy do not go back and amend the backup (create a new version if need be) back it up on to a separate disk or USB key (and to the cloud or virtual storage provider, if desired) lock it safely away (or encrypt it sufficiently if in the cloud) This will ensure that, in the event of any dispute about copyright ownership, you will (hopefully) be able to show that you or your organisation created the work on a certain date. [NEXT SLIDE]
- [How Do I Protect Copyright (cont’d)?] use the copyright sign © on all materials, including your website, eg. © ABC Charity (but note: this is not a legal requirement) In the case of software, if your software developer is reluctant to assign the copyright over to you, it is possible to ask the developer to bank a copy of the software with an independent third party called an ‘escrow agent’ (a bit like placing your software in an interactive safe deposit box). The escrow agent will: test it is working (if required) receive further updates, if requested; and 3) only release it to a named third party (eg. your organisation) upon the happening of certain events (eg. death or insolvency of the copyright owner) [NEXT SLIDE]
- What Happens if Someone Copies My Work? First, be sure that it is your work that has been copied- sometimes you can find that, for instance, the website your developer built for you consists of unlicensed materials belonging to others! Look At How much has been Copied •Must be “substantial”. General rule of thumb: >50% •If <50% has been copied, an infringement is probably not worth pursuing, unless something fundamental (eg. chorus of a song, plot of a book) has been copied •If the above tests are satisfied, do not delay: •Can lose right to bring injunction if you do not act swiftly to prevent any further infringements •Court looks at ‘balance of convenience test’: not indicating urgency is a sign that: •the infringement does not need to be stopped quickly; and •the convenience falls in favour of the other party, which essentially means embarking upon a full trial to determine the issues. This will take a long time and much more money than the not insubstantial costs of getting an injunction [NEXT SLIDE]
- COPYRIGHT: Exceptions to Copyright Infringement There are a number of exceptions to the general rule that making a copy of a copyright work will infringe the copyright in it. These include: Minor infringements Making temporary copies (eg. caching a copy to your hard drive when browsing the internet) Fair dealing (eg. inclusion for the purpose of news reporting). [I shall touch further upon this in a moment] Incidental inclusion (eg. ‘passing shot’ in a photo of a copyright work). private and educational use (for example, for instruction and examination) Public interest (material injurious to public health) Copying for visually impaired Libraries, archives and public administration Works permanently situated in public places (such as famous monuments, buildings)
- SO HOW DOES THE FAIR DEALING EXCEPTION (that I mentioned earlier) WORK? Under the ‘fair dealing’ rules, it may be possible to use quotations or excerpts from a copyright work, where the work has been made available to the public (i.e. published), provided that: the use is deemed acceptable under the terms of fair dealing (eg. for review and criticism, non-commercial research or private study) the quoted material is justified, and no more than is necessary is included. the source of the quoted material is mentioned, along with the name of the author. So, for example, a journalist quoting extracts from a book for the purposes of reviewing it would not be infringing copyright.
- [So that’s all on fair dealing. Let’s turn now to] The Term of Copyright: How Long Does Copyright Last? The duration of copyright protection depends on the nature of the protected work. For literary, dramatic, musical or artistic works, copyright expires 70 years after the end of the year in which the author died. * For films, copyright expires 70 years after the death of the principal director. For sound recordings, it’s 50 years after the end of the year in which it was made or published. ** For broadcasts, it’s 50 years after the broadcast was made; AND For typographical arrangements, it is 25 years after the edition was first published. [NEXT SLIDE] [*In 1996, copyright term was extended from fifty to seventy years after author’s death. Lord Callaghan successfully proposed amendments to the Act, given Gt Ormond St Hospital’s unique right to royalties from the stage performance of Peter Pan (and any adaption of the play), as well as from publications, audio books, e-books, radio, broadcasts and films of the story of Peter Pan in perpetuity. [** There is currently a bill working its way through Parliament to extend it to seventy years (at first reading stage, House of Commons)
- TRADE MARKS Why Register? There are a number of reasons: Cannot easily protect a name or mark without a registered trade mark Preventing infringements of an unregistered mark (known as ‘passing off’) is costly and difficult: actions often fail A trade mark is protected from the date of registration No need to prove reputation in a mark which has been registered Protection of a registered trademark is nationwide, although passing off (which is where someone uses your brand to ‘pass themselves off’ as you) is often only actionable locally where the infringement took place. One of the most infamous branding problems suffered by a charity was the World Wide Fund for Nature's long-running trademark battle with the World Wrestling Federation over the use of the WWF initials. In the end, the charity succeeded in forcing the federation to change its name to World Wrestling Entertainment. The main reason the charity succeeded was that it had registered WWF as a trademark. Many charities have not taken this basic and inexpensive step in brand protection, making it difficult to protect their names from misuse. [NEXT SLIDE]
- How Do I Register? Easy application process: Decide upon your name and/or mark Work out in which areas (technically, “classes”) you want to protect your brand in. Eg. if the goods on which you wish to apply the mark are pens, the category is “stationery”, which is Class 16 Send it all to a solicitor specialising in trade marks or trade mark attorney and they will prepare an application and send it off for you. the Intellectual Property Office (or IPO) charges a fixed fee of £200 per mark plus £50 per class over and above one Don’t forget solicitors and attorneys fees are on top NB. Registration of a name and logo counts as two applications, so two separate sets of fees will be payable to the IPO. [NEXT SLIDE]
- How Long Does It Take? It generally takes 4 weeks before your trade mark is advertised in the Trade Marks Register. This tells the world that you are intending to register this mark and giving anyone who wants to object an opportunity to do so, Eg. because they own a competing mark. The IPO then allows 8 weeks for opposition by aggrieved or interested parties There is then a further 4 weeks for final processing, giving a total time of 4 months from receipt of your application by the IPO before it is registered. Note: it can take up to six months if there is opposition. Once the application is with the IPO, you do have a degree of protection and will rank prior to anyone who tries to : register the same trade mark in the same classes after you [NEXT SLIDE]
- What Does A TM Registration Protect? A trade mark registration protects two things: The name and any logo you have registered In the classes in which you have registered them So copying a trade mark for a category of goods or services for which is it not registered will not generally infringe any rights in that mark. Details of the classes can be found on the IPO’s website or your solicitor can supply them to you Where is Your Mark Protected? In the United Kingdom only If European or overseas trade mark protection is required, you need to register an: EU trade mark (for EEA protection); or International mark (under (what is called) the Madrid Protocol) for protection in the countries who are party to the Protocol. If there is a particular country you are interested in which is not part of the EU or Madrid schemes, an individual mark can be registered in the country concerned. This is much more expensive than using a combined application through the EU process or the Madrid Protocol. Costs: EU mark €1050 (up to 3 classes); €150 ea extra class (€900 and €150 if filed electronically) Madrid: €653 basic; + standard fee of 73 Swiss Francs per country or whatever the country charges (unknown) + 73CH per class Don’t forget again that solicitor or attorney fees are on top. [NEXT SLIDE]
- How Do I Protect My Trade Mark After Registration? Fundamentally need to do nothing When your trade mark is passing through the application process, you can use the ™ symbol; After it has been officially registered, use the ® sign If somebody copies your trade mark, again, do not delay in taking action by either sending a letter before action or instructing your solicitor to do so Failure to take swift action can mean a court might refuse an injunction preventing further infringements of your mark (the “balance of convenience” test). If that happens: the only remedy then is to bring an action for damages or an account of profits this will take a long time injunctions, whilst not cheap to obtain, are usually effective in stemming further infringements [NEXT SLIDE]
- Other points to note: A trademark must be renewed after ten years, otherwise it will lapse It can be renewed indefinitely, but note There is a risk after the first five years that, if you do not use the mark, it can be challenged by a third party and if successful, expunged from the Trade Marks Register. [NEXT SLIDE]
- DESIGNS Process and reasons for registering a design are similar to those for trade marks, resulting in a ‘design right’ Period of protection is: five years; and renewable for up to twenty-five years Unregistered designs are protected and enforced in the same way as copyright. [NEXT SLIDE]
- INVENTIONS AND PATENTS Again, the process and reasons for registering an invention are similar to trade marks, resulting in a ‘patent’. But it is a much more detailed application process, involving preparation and submission of a detailed specification which: must be watertight i.e. not infringe other patents must reveal the process of production (thereby “publishing your idea to the world”) be capable of registration be new have an inventive step that is not obvious to someone with knowledge and experience in the subject be capable of being made or used in some kind of industry; and finally must not be on a list of excluded items (eg. a mathematical discovery) [NEXT SLIDE]
- Software generally not patentable in the UK and EU It is more easier to do so in the US. This is because patent law in Europe and UK has put software on the list of excluded items which are not regarded as inventions. If you have a patent granted, you must renew it every year after the 5th year for up to 20 years protection. Fees vary: generally patents are much more expensive to register than trade marks, owing to their complexity and therefore the need to get a patent attorney to draft a detailed specification. [You are unlikely to be looking at less than £5K.] [NEXT SLIDE]
- I wanted to touch now briefly on databases and what is known as the ‘database right’. A collection of data or other material arranged in such a way so that the items are individually accessible, otherwise known as a database, may be protected in two ways: by copyright as a literary work; and/or by what is called the database right. This protection can apply to both paper and electronic databases. For copyright protection to apply, the database must have originality in the selection or arrangement of the contents. For the database right to apply, there must have been a substantial investment in obtaining, verifying or presenting its contents. It is possible that a database will satisfy both these requirements so that copyright and the database right subsist contemporaneously in the work. [NEXT SLIDE]
- There is no registration required for a database right - it is an automatic right like copyright and commences as soon as the material that can be protected exists in a recorded form. However, the term of protection under the database right is much shorter than under copyright: the database right lasts for fifteen (15) years from making but, if published during this time, the term is extended to fifteen (15) years from the date of its publication. Many databases are a collection of copyright works, such as a database of poetry, where each poem will also be protected by copyright. So people compiling databases need to make sure that they have permission from the copyright owners for use of their material and people using databases need to be aware of the rights of the owners of underlying works as well as database right owners. [NEXT SLIDE]
- WEBSITES, DOMAIN NAMES & HOSTING (1) Websites How Do I Know If My Organisation Owns the Copyright in the Code of Its Website? When developers are commissioned, you must ensure the contract with them is watertight on copyright In absence of written agreement, copyright in the website vests in the developer! If, on the other hand, an employee creates a website for your organisation: CDPA, s.11(2): employer is first owner of copyright BUT any creation of that website: Must be ‘in course of employment’ in order to qualify as such (so if your employee says he created it all at home in his spare time, you may get into difficulties) The work delivered must also be original. Therefore get appropriate PROMISES (or warranties, as we lawyers like to call them) in your development agreement, in case it turns out that the developer acquired the work elsewhere and doesn’t actually own it. Possession is 9/10ths…: Get physical possession of the code (eg. CD, DVD, or access to the hosting account where your website’s code is). If you have no right to access your website’s code under your contract with the developer, don’t expect to be able to access it when the agreement comes to an end, particularly if there is a dispute! Getting control by owning the hosting account is the best thing. The moral of the story is: make sure all of these rights are in the contract….[NEXT SLIDE]
- As an example of how rights in content can cause you a problem, let’s look at the following court case… A charity commissioned a web agency to build a website for it, which used copyright images belonging to another. The charity’s web agency put the images on the charity’s website thinking that they were Crown copyright. In fact, copyright in the images belonged to a photographer. The photographer took the charity to the Patents Court alleging copyright infringement. The court decided that the charity was guilty of the infringement. It said, among other things: The charity was still liable for the infringement, even though it was the web agency that had sourced the images because, as owner of the site, the charity was responsible for what was on it. The charity could not rely on the ‘innocent copying’ defence in copyright law. That would only apply if the charity did not believe there was any copyright in the images. The charity had to pay the copyright owner £10,000 for copyright infringement, even though it genuinely believed the images were Crown copyright and could lawfully be used.
- (2) Domain Names How Do I Know If I Own My Own Domain Name? Ensure your organisation is the registered owner of the domain. You can check this on what is called WHOIS, a database containing details of ownership of all domains names around the world. A typical tool for doing this can be found by Googling WHOIS) [see link on screen for an example] registration in an employee’s name is to be avoided, since whilst your organisation will arguably own the domain name if it can show the registration was made during the course of the employee’s employment, that may be hard to show after an employee has left the organisation. These things always get forgotten about! Ensure you know when your domain name is coming up for renewal: if you miss the deadline, it is expensive to renew; and you can also lose the domain altogether to someone else, and possibly a cybersquatter! [NEXT SLIDE]
- A typical print out from WHOIS might look like this (I have picked on NSPCC’s domain name). You can see that: The domain name nspcc.org.uk is registered in the name of NSPCC The registrant’s address is clearly shown as the registered office of NSPCC (I happen to know that is the address) Note the expiry date of the domain when I printed this: 11 May 2013 (I expect (and hope) it has been renewed by NSPCC (and not a cybersquatter) since then!). [NEXT SLIDE]
- What Is To Stop Someone From Registering A Similar Domain Name? Short answer: nothing! Ensure you buy up identical domain names for the generic and country-specific top level domains (eg. .com, .org, .co.uk, .org.uk) to avoid cybersquatters getting them. (A cybersquatter is somebody seeking to appropriate a domain from another with a view to selling it back to that person at a high price) If a cybersquatter pops up saying, “Hallo, would you like to buy [in this example] NSPCC.org” (because NSPCC didn’t register it): seek to get the domain transferred to your organisation; and complain (if you are NSPCC) to the relevant registrar (eg. Nominet in the UK).* Allowing cybersquatters to use your domain name in bad faith can result in: damage to your brand and reputation and, in the worst case, theft of business or of donations in the case of a charity Registering a trade mark of your domain name gives good reason to the domain name registrar to transfer it back to you if there is a problem, as it provides excellent evidence of brand ownership [NEXT SLIDE] *basic test is “bad faith”
- As an example of what can go wrong, let us turn to the story of the Poetry Society. In 2002, The Poetry Society failed to renew registration of its poetrysoc.com domain, and the domain was purchased by a Hong Kong-based search directory company. The charity was forced to buy and register a new domain, and print more than 30,000 leaflets at short notice to promote the new site. Fortunately for the Society, the lawyer it hired was able to resolve the issue in their favour within ten days, with the Society paying a small fee to recover the domain. But you can see from the failure by the charity to keep tabs on its domain the great inconvenience and expense this caused (and these stories do not always have a happy ending).
- How Do I Know My Organisation’s Domain Name Does Not Infringe Another’s? Carry out checks (eg. on Google) to see what is out there Check the Trade Marks Register and Trade Marks Journal Look on the Register of Companies for similar company names Use a specialised agent if concerned (eg. the National Business Register), who will check to see if the name is already in use [NEXT SLIDE]
- How Do I Know My Organisation Controls Its Hosting? Unless your organisation has opened in its name the hosting account where your website’s code is resident, your organisation does not own the account developers often prefer to use their own hosting account for any code they are building for you (and therefore control access to it) You should ideally agree in your contract with them that: The account will be in organisation’s name; or full access to the account will be given, both during the expiry or termination of the term of your agreement with them (but note this is not as good as getting full control through ownership); and The developer agrees to transfer all digital assets and code upon termination to your organisation [NEXT IS LAST SLIDE]
- CONCLUSION We have covered a lot of ground today, looking at: Copyright ownership and how to avoid copyright infringement Trade marks, design rights and patents: how to register and protect them; and lastly How to ensure your website and domain names are within your organisation’s ownership and control Particularly in the case of websites, the two key things to remember are: in respect of copyright, make sure everything is in the contract, whether it be with your web developer, consultants or employees both in relation to ownership of and access to your code. With domain names, makes sure you trade mark your brand name or names so that you can easily recover domain names registered by cybersquatters. [NEXT SLIDE]
- Thank you all for listening. Does anyone have any questions?