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After spending tens or perhaps hundreds of thousands of dollars designing the perfect Web site, a company has every right to view it with pride. Attractive and unique, it brings in many viewers, increased sales, and tens of thousand of dollars a day in advertising revenue. It’s the company’s pride and joy, its crown jewels. So why hasn’t it been protected? One acquires a copyright simply by fixing his or her work in a tangible form. A Web site is fixed when it’s created. The copyright lasts for either the duration of the creator’s life plus 70 years or for 95 years if a company owns it. The first question raised is, Who owns the site? And it’s not necessarily an easy question to answer. If a company hires an outside consultant, Web master, or any other independent contractor to create its Web site, the actual creator of the site will own it, not the commissioning party. Yet the ownership of the Web site can easily be transferred to the commissioning party. A company that hires out the work on its Web site and wants to own it must make sure that all rights are transferred to it. The transfer of ownership to a company is spelled out either in its contract with the Web designer or in a separate document, known as an Assignment. Oral transfers are ineffective for purposes of copyright. An Assignment is a simple document but one necessary for the transfer of ownership. If the Web site was created in-house and the work was done by company employees working within the scope of their employment, then the company will automatically own the Web site. When referring to employees, we are talking about actual employees, not independent contractors or free-lancers working on-site for a few months only to get the Web site up and running. If they don’t receive a W-2 and benefits and the company does not pay FICA, then the commissioning party must get an Assignment from them. Employees who work on the site on their own time or at home can be problematic as well. To be safe the company should get an Assignment for them as well. OK, so now the overall site is company-owned, but what of the components? The company must determine what right it has in its Web site’s content. What ownership was retained by those who provided such content for the site as text, music, or photographs. If these works were created by the company or an employee in the scope of their employment, the company will own these rights. If they were created by an independent contractor, again the company must make sure it has an Assignment from the photographer, writer, painter, filmmaker, or whoever created the contents, or a License (permission) to use the copyright-protected materials on the Web site. Exclusive licenses must be in writing. Nonexclusive licenses can be oral. Yet it is never in a company’s interest to have an oral license. Disagreements and disputes can arise later regarding the scope and nature of the license. As a preventative measure, a company should adopt this rule as a matter of course: If it’s on your Web site, either own it or have a written document granting you the right to post it. The overall design of a Web site, considered a compilation under the copyright law, can also be protected. The layout, the sequencing, the choice of elements, “the look and feel” can be protected. A URL, however, is not protectable under copyright laws. It’s simply an address, no different than a street address or a phone number. A URL may be protected as a trademark if it is used as a trademark. But if it’s simply a URL, it’s not afforded trademark protection. A Web designer in all likelihood will incorporate HTML code, other programs, and Java applications into a Web site. A commissioning party must make sure that the designer owns or has licensed those elements for inclusion on the Web site. Often, Web designers will ask to retain ownership of the items in their tool box (previously created items). It is quite reasonable for them to require this, since they will likely use these items in every Web site they design. Yet what the Web master designs specifically for a company should belong to the company. What Web masters bring to the table from pre-existing experience or Web sites may remain theirs as long as the company has a license in perpetuity to use it and a guarantee that the next site designed by the Web master won’t look too much like the company’s site. WHY REGISTER? Registration of a copyright with the Library of Congress’ Copyright Office is voluntary, and a company will own a copyright in its Web site even if it does not register it. Yet there are several important reasons to do so. Registration provides a presumption of ownership. It’s also a prerequisite to filing suit. If someone infringes on a Web site, its owner may not be able to file suit until its copyright has been registered. The word register has been given two different definitions by courts in the United States. The first definition is that the copyright application not only must be filed with the Copyright Office, but also approved and returned to the applicant. But other courts have interpreted register simply as the filing of the copyright application. Because a copyright application can take more than six months to be processed by the Copyright Office, this distinction is important. If your client finds someone infringing on its copyrights, and it’s in a jurisdiction that has ruled that it’s not entitled to file suit until the return of the application as a certificate, you may find yourself having to wait for six months. That, of course, is unacceptable. The Copyright Office has an expedited process that will provide a turnaround in approximately a week to 10 days. Yet the cost for such quick turnaround time is $500 per application. Another important factor emphasizing the need for early registration is that if at the time of the infringement a company has already registered its Web site, it would be entitled to have the infringers pay its attorney fees as well as statutory damages. In copyright cases without a prior registration, a plaintiff is entitled to its losses and the profits of the infringer. Unfortunately, it can be hard to prove how much you have lost as a result of an infringer copying parts of your Web site. It can also be difficult to ascertain what part of the infringing Web site’s profits can be attributed to the infringing activities. By having filed with the Copyright Office before infringement, a company entitled to statutory damages may collect an award of up to $150,000 per infringement, depending on the judge. A Web site infringement may be a single infringement or may be several, each with 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 one where attorney fees would exceed recoverable sum. So, how do you register a Web site? First of all, either go online ( www.loc.gov/copyright/) or call the Copyright Office and obtain Circulars 65 and 66 ( “Copyright Registration for Automated Databases”and “Copyright Registration for Online Works”). The phone number for forms is (202) 707-9100. For questions, call (202) 707-3000. There are two different registration processes. One, if your Web site is fairly static; the other, if it is an active database and is significantly changed on a daily basis. If it’s being changed very frequently it may be considered an automated database, and if so, look to Circular 65 for advice. 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 Web site is mostly text, you would use Form TX. If it is mostly visual arts, photographs, and the like, you would use Form VA. Each copyright application needs to be accompanied by “deposit materials” to identify what is being registered. Registering an automated database is more complex. The rules say to use Form TX no matter what the submission is made up of along with the $30 fee and the deposit materials. One of the more interesting questions is, What do you use as 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 representative pages. The other option is to provide a printout of the entire work; in this case 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 attempt to file a Web site copyright registration can be daunting. Unfortunately, the staff at the Copyright Office, while trying to be helpful, have been inconsistent in their advice about the registration process and 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. Yet no matter how frustrating it is to figure out, it is worth the effort. Those who put their hearts and souls into a site owe it to themselves to protect it. Joshua Kaufman is an intellectual property partner at D.C.’s Venable, Baetjer, Howard and Civiletti.

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