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 an association owns it. The first question raised is, who owns the site? This is not necessarily an easy question to answer. If an association hires an outside consultant, outside Web master, or 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. An association that contracts 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 an association 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 can be 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 association employees working within the scope of their employment, then the association 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 do not receive a W-2 form at year-end and employee benefits and the association does not pay payroll taxes on their salaries, 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 association should get an assignment from them as well.
Now that the overall Web site is association-owned, what about the individual components? The association 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 employees of the association within the scope of their employment, the association will own these rights. However, if they were created by members, independent contractors, or other non-employees, the association must make sure it has an assignment from the member, photographer, author, filmmaker, or whomever created the contents, or a license (permission) to use the copyright-protected materials on the association's Web site. Exclusive licenses must be in writing; nonexclusive licenses can be oral. Yet it is rarely if ever in an association'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, associations should adopt this rule as a matter of course: If it is 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, also can be protected. The layout, sequencing, choice of elements, and the "look and feel" can be protected. A URL (Web site address), however, is not protectable under copyright laws. It is simply an address, no different than a street address or a telephone number. A URL may be protected as a trademark if it is used as a trademark (e.g., the URLs of many "dot.com" companies also are used as the company's name). But if it is simply a URL, it is not afforded trademark protection.
A Web designer in all likelihood will incorporate HTML code, other programs, and Java applications into a Web site. The commissioning party (such as an association) 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 likely will use these items in every Web site they design. Yet what the Web master designs specifically for an association should belong to the association. What Web masters bring to the table from pre-existing experience or other Web sites may remain theirs as long as the association has an irrevocable license in perpetuity to use and modify it, and a guarantee that the next site designed by the Web master will not look too much like the association's site.
Registration of a copyright with the Library of Congress' Copyright Office is voluntary, and an association 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 is also a prerequisite to filing suit. If someone infringes on a Web site, the Web site's owner generally will 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 an association finds someone infringing on its copyrights, and it is in a jurisdiction that has ruled that it is not entitled to file suit until the return of the application as a certificate, the association may find itself 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 very important factor emphasizing the need for early registration is that if, at the time of the infringement, an association has already registered its Web site, it would be entitled to have the infringer(s) pay its attorneys' fees and court costs, as well as "statutory" damages.
In copyright cases without a prior registration, a plaintiff is entitled to its losses and the profits (if any) of the infringer that resulted from the infringement. Unfortunately, it often can be very difficult to prove how much your association has lost (in quantifiable dollars) as a result of an infringer copying parts of your Web site. It also can 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 prior to infringement, an association entitled to statutory damages may collect an award of up to $150,000 per infringement (regardless of the amount of actual damages). 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). Having a registration in place before an infringement occurs is often the difference between an economically viable claim or one where attorneys' fees likely would exceed recoverable sums.
So how do you register a Web site? First of all, either go online (www.loc.gov/copyright/circs/) or call the Copyright Office and obtain Circulars 66 and 65 ("Copyright Registration for Online Works" and "Copyright Registration for Automation Databases," respectively). The telephone 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 relatively static; the other, if it is an active database and is significantly changed on a daily basis. If it is being changed very frequently, it may be considered an automated database. If so, look to Circular 65 for advice. Most association Web sites, however, will generally fall into the other category. The fee for each registration application is $30.
The first question you need to answer is, which application 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. For automated databases, the rules say to use Form TX no matter what the submission is made up of along with the $30 fee and deposit materials.
One of the more interesting questions is, what do you use as deposit materials to register a Web site? For a typical association Web site, you have two alternatives: you may submit either a computer disk containing the entire work or a 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. Periodic updates of deposit materials may be required. If you are registering an automated database, the deposit is either: (i) the first and last 25 pages of the data, or (ii) 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 Web sites adds to the confusion. Yet, no matter how frustrating it may be to figure out, it is worth the effort. Associations who devote enormous time, effort and resources to their Web sites owe it to themselves to protect them.
Joshua J. Kaufman is an intellectual property partner at Venable, Baetjer, Howard and Civiletti, LLP, Washington, D.C. For more information, contact Mr. Kaufman at (202) 429-6360 or firstname.lastname@example.org.