by Kim Grimsley | Sep 13, 2013 | Contracts, Copyrights, Internet, Technology and Privacy Law, Software, Uncategorized
We meet a lot of clients that fail to obtain a written agreement, or blindly sign the form provided by the developer – and when a dispute arises, only too late realize the problems created by that lack of diligence. This post addresses critical provisions in a website development agreement.
First, you want to make sure you will own the material and content created by the developer. Thus, you want a provision in the agreement (which must be in writing) that recognizes that the developer’s work for you is considered a “work made for hire” and you want a copyright and intellectual property assignment as well. These clauses ensure that, although the developer is not your employee, you are the owner of the website materials and intellectual property rights. You do not want to find that your website designer created something unique for you only to discover the same unique layout on another website. Many businesses are surprised to learn that in the absence of this statement in a written agreement, an independent contractor (in this case the website developer) typically is the owner of work they create, and the business at most would be a licensee of the material. This means you don’t own the work; rather, you only have permission to use it.
Second, you want to have a provision in the contract that states that the work on the website is the website developer’s original work and/or that the developer has the necessary permission/licenses from the owners to use the work on your site. For instance, the website developer may place photographs on your website – you want the developer to represent that the developer has the right to use those photographs on your website (i.e. either the developer took the photos or it has the permission to use them). If the developer uses photographs owned by a third party on your website without the third party’s permission, the third party could claim you are infringing on their copyright by displaying their work on your website without their permission, and would demand you cease use of the photos and may demand damages as well. Thus, have your website developer represent the work is original or that he has permissions to use all work on your website.
Third, make sure to have an indemnification provision in your agreement. This provision should provide that the developer will indemnify you in the event you incur damages or a loss due to a third party claim that you are infringing their intellectual property rights – where they claim the work on your website is actually their material. For example, a business thinks the graphics on its site are original, however, it receives a cease and desist letter from a third party alleging that its use of the works on its website without the third party’s authorization is copyright infringement and demands damages. Under Copyright Law, if the third party is the owner of a registered copyright in the work, the business as an unauthorized user could be subject to statutory damages ranging from $700 to $30,000 for unintentional infringement, and up to $150,000 for willful infringement. Thus, if material placed on your website by your developer is subject to a claim or legal action for infringement, you want your developer to indemnify you for these actions since you are relying on their knowledge, creativity and skill in developing and designing your website.
Finally, it is important that you make sure that the developer periodically delivers all source codes and native files to you, and that you control all passwords and access to critical website assets, such as the domain registration. You want to make sure that such files and access rights cannot be withheld in the event of a dispute. Thus, if a dispute arises, the developer’s sole remedy should be money damages. You should not be prevented from transferring the work done (to the point of a dispute) to a new developer, so you can finish your site, and deal with the dispute separately.
For more information, please contact Kim Grimsley.
by Kim Grimsley | May 3, 2013 | Intellectual Property, International, Trademarks, Uncategorized
More Countries Join the Madrid Protocol – Next Up: India
Effective July 8, 2013, India will join the Madrid Protocol – the international registration trademark system. This is on the heels of Colombia, Mexico, New Zealand and Philippines, which have all joined the Madrid Protocol within the past 12 months.
The Madrid Protocol is one of the two treatises of the Madrid System (or the International Trademark System), which allows a trademark owner to seek international registration with one filing. Businesses are growing worldwide today and as such, more and more businesses are finding they need international protection. Under the Madrid Protocol, international registration is a more simplistic and cost-effective means of providing trademark owners with the ability to obtain trademark protection in up to 90 designated countries with only one trademark application filing. Registration under the Madrid Protocol is beneficial from a management standpoint as well as the international trademark registration can be managed more easily since only one step will serve to record any changes in the trademark registration, such as a change in ownership or even the address of the owner.
Thus, if your company wants to obtain trademark protection in fifteen15 countries, rather than having to file, pay for and manage 15 trademark filings in various countries, a trademark owner can obtain trademark protection in 15 countries with simply one application filing. Not only is this cost effective in filing fees, but also it is also cost-effective in the time spent in preparing and filing the trademark application. Although filing under Madrid Protocol is beneficial to all trademark owners no matter how small or large the company may be, smaller businesses that once thought international trademark protection was just not feasible from a cost perspective can now realistically move toward international trademark registration and protection on a global basis under the Madrid Protocol.
For more information, please contact Kim Grimsley at kim@olivergrimsley.com.
by Kim Grimsley | May 1, 2013 | Business Law, Intellectual Property, Internet, Technology and Privacy Law, LegalEase, Uncategorized
Dilemma: You find out that a company has copied an article that you created from your website, and it is using it on its website as if it had written the article itself. You want to stop them from using your article but you do not have a copyright registration for anything on your website. What can you do to stop them?
Copyright registrations offer numerous benefits, including the benefits of bringing an action for copyright infringement to enjoin the infringing company from using your work and obtaining statutory damages. A copyright registration is required to file a lawsuit for copyright infringement. However, even at this stage where a company is using your work and you do not have a registration, you could file an application for copyright registration on an expedited basis and then file an action for infringement. Regarding damages, those are limited in this situation to actual damages, whereas if you had previously obtained a copyright registration, typically you could obtain statutory damages and be eligible attorneys’ fees, which could be significantly higher than actual damages.
In addition, even without a registration, you are still protected under United States copyright laws, and there are options available to you to stop others from using your material without your permission without filing a lawsuit.
One option is to send the infringer a demand letter stating that you are the owner the work, that they are using your material without your authorization, and that they must take it down immediately. Such a letter could cause the infringer to immediately take down the work. Another course of action is to send a notice and takedown letter to the web hosting company (i.e. GoDaddy) indicating that the site is infringing upon your copyright and requesting that the web hosting company take the work down. Additionally, many web hosting companies have their own policies in place, which can typically be found on their website and which will assist a party when their work has been infringed upon.
Also keep in mind that if the possibility of a working relationship could exist between the of the infringer and you or if the exposure may actually be helpful to you by giving you credit for your work, you could try a telephone call first to see if an arrangement can be made where the company can be given a license to use your work. If that does not work, you can proceed with the other options.
For more information, please contact Kim Grimsley.
