Protecting your website
Many businesses use external designers to create their websites – but can sometimes find themselves getting unstuck later on.
The Copyright, Designs and Patents Act 1988 gives the creators of original works the automatic right to control the ways in which their material is used. The design and development of a website is likely to involve the creation of copyright works, for example the computer code needed to make the website function and the content of the website (for example text, photographs and graphics and the layout/look and feel).
If a business outsources the work of designing and building its website it is important to think about the issue of copyright ownership from the outset, when appointing the designer, as failing to do so can create problems later on – for example if the owners of the business come to sell it and the purchaser regards the website as an important asset of the business it is buying.
A contract for the design of the website may include many details of what it is expected from the developer in terms of the work requirements and website functionality but does it also include appropriate provisions as to who owns the intellectual property (or IP) in what is created?
We often see problems arising where the business commissioning the website has not had all of the copyright in the design of the web pages (and any software that was created specifically for the website) specifically transferred (or “assigned”) to it.
If the contract with the developer does not contain an appropriate assignment provision then, by default, the impact of UK legislation is that the developer will own the copyright, and the business owner will simply have a licence (permission) to use the copyright.
The website contract may include a licence provision but, depending on its terms, it may not give the business owner all of the rights it needs – both in terms on freedom to alter the website and/or to transfer it to a third party. In contrast, an outright assignment of all of the intellectual property in the website will give the business owner the best position and maximum flexibility so that it has everything it might need in the future (including any software code created for the website).
The case of HJ Systems Limited and another v Daniel Sheridan and another [2023] is a recent example of the courts finding that copyright has been infringed in relation to computer software. Although that case involved two parties entering into an LLP agreement (rather than one party commissioning software to be developed by another), the principles concerning copyright and infringement are similar. Mitchell (the owner of THJ Systems) and Sheridan had founded a business in 2010 which combined Mitchell’s software and Sheridan’s options trading mentoring business. The relationship between the two later broke down after which Sheridan continued to use the software which had been provided by Mitchell, and screenshots of content generated by Mitchell’s software.
The High Court judge acknowledged that Mitchell’s work was protected by copyright given its original nature but did not make a finding of copyright infringement. When the case recently came before the Court of Appeal, the judges found that the copyright had been infringed and of particular note were their observations as to the original aspects of the work (which were protected by copyright):
- Mitchell had carefully designed the display in all aspects.
- He had made selections as to the amount of information displayed and how it was laid out.
- He had decided on the size of the font and the colours used.
While these processes may not be as creative as, say, producing a painting or other work of art, Mitchell had nonetheless employed creativity in producing the software and the defendants’ use of the work constituted infringement of Mitchell’s copyright.
The takeaways from this are, first, not to make the mistake of assuming that the creativity in a website is not something which can be protected by copyright and, second, for any business commissioning a website to ensure that its contract with the developer contains appropriate terms so that the business owns all of the IP in the website and is free to do whatever it wants with the website in the future.
If you have any questions as a result of this article, please contact [email protected]
