Australia: Protect the intellectual property in your website

Last Updated: 8 May 2018
Article by Eric Ziehlke

In setting up a website, it is essential to include standard terms which address such issues as liability disclaimers, user access terms and privacy policy. However, it is also important to ensure that your own intellectual property is fully protected and that you do not infringe the IP rights of others.

  1. YOUR OWN IP

DOMAIN NAMES

Domain name registration constitutes a licence to use that name for a particular domain level for a set period. Nonetheless, like business names and company names, domain names provide no proprietary rights in those names. The only way to obtain proprietary rights in a name is to register it as a trade mark. Unless your domain name is quite descriptive, it is vital that you register it as a trade mark for all the goods and services which you will promote on your website. For example, if you are promoting education and legal services you should register your domain name as a trade mark in classes 41 and 45 respectively. It is also important to remember that if you are selling goods via your website, you should also register your domain name in class 35 for retailing services.

LAYOUT AND CONTENT

When you decide to set up a website, you are likely to commission a website design agency to design the format and layout you require. It is important to remember that the provision of such material may involve the creation of artistic works. In addition, if the agency also provides you with written content, this may involve the creation of literary works. The copyright in such artistic and literary works generally vests in the agency, even though you have paid them to create these works. As a client of the agency, you will only acquire an implied right to use the created works for purposes envisaged by the parties. As a consequence, it is wise to arrange for the written assignment of the copyright in the created works from the agency to you, If such an assignment is not available, you should at least ensure that your implied rights of copyright are expressly broadened so that you are entitled to use these created works for any purpose.

In many situations, you may yourself create artistic or literary works which may form a major part of the content of your website. If these works are created by your employees in-house, the copyright in such works will generally vest in your business. It is therefore advisable to include a clear statement on your website in which you specifically reserve your rights of copyright in such material. You might also consider protecting any patent rights you may hold in website material such as digital inventions and software which you may have developed.

Even if you create works for your website in-house, your employees may be entitled to claim moral rights which are personal to the authors of such works. Such moral rights include the non-denigration and author attribution of works created by employees. Moral rights may not be assigned, so it is wise to include a provision in your standard employment contracts under which your employees undertake not to assert their moral rights in any works they may create on your behalf. In dealing with your website design agency, you should also require that they undertake in writing that their own employees will not assert moral rights in relation to the works they create for your website.

  1. THE IP OF OTHERS

If you include the works of third parties on your website, it is important to ensure that you obtain their written permission to do so. Otherwise, any reproduction, adaptation or communication of such works may constitute an infringement of the copyright of these third parties. There are provisions in the Copyright Act for Fair Dealing with all or part of third party works but such rights are likely to be very limited in the context of commercial website content.

As a general rule, links to third party websites generally do not constitute copyright infringement because they are perceived to be merely providing a "sign post" to those websites. However, in providing such links it is important not to imply any endorsement or affiliation with these third party websites. In some cases, website owners may decide to purchase AdWords from providers such as Google under which a reference to the owner's own site will pop up when searchers nominate a key word in their search instructions. Such key words often include well-known brands and this situation has been the subject of frequent litigation in Australia and overseas. In Australia, the use of such AdWords has generally been found not to constitute trade mark infringement because this procedure does not involve "use" of a trade mark under section 120 of the Trade Marks Act.

  1. UPLOADING BY USERS

When you invite users to access your website, it is essential to make such use strictly subject to your formal terms of access These terms of access should include provisions which protect you as the website owner in relation to third party material uploaded to your website by users. Such provisions can include the following required undertakings from the website user:

  1. that the uploaded material includes no defamatory statements, IP infringing content or any other illegal material;
  2. that the user grants a royalty-free perpetual licence for the website owner to reproduce, adapt and communicate the uploaded materials;
  3. that the website owner has the right to remove any uploaded material without notice and to terminate the user agreement at will; and
  4. that the user indemnifies the website owner against any claim by third parties concerning the uploaded material.

Although the above undertakings should be mandatory for website users, it is important to remember that individual users may have limited financial means and that their indemnification of the website owner may therefore be of little practical value. As a consequence, a strict terms of access regime does not obviate the necessity for strict scrutiny by the website owner of any uploaded material which may be of questionable legality. Such enforcement procedures may also serve to reduce exemplary damages which may be claimed in the event of litigation by third parties.

CONCLUSION

Your website is a window to your business and a showpiece for your IP and the authorised IP of others. However, your website can also represent a significant danger to your own IP and a potential source of exposure to litigation by others. It is therefore important to do your IP homework before finalising the development and operation of your website.

The protection of the intellectual property in your website should be part of a wider strategy of identifying, protecting and exploiting all the intellectual property in your business. Swaab Attorneys can offer you a free IP Health Check as the first step in developing a comprehensive intellectual property program. You are welcome to give us a call at any time.

For further information please contact:

Eric Ziehlke, Partner
Phone: + 61 2 9233 5544
Email: ejz@swaab.com.au

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions