Minimizing Copyright Problems in Website Activities

Websites have become an important part of the day-to-day lives of people throughout the world. To avoid unforeseen copyright problems, however, website users and website owners should have a fundamental understanding of certain major considerations of copyright law.

When one creates, or has another create a website, a threshold question is, who will own the copyright in the website both as originally created and as modified periodically? If the website is created by an employee within the scope of his or her employment as a“work for hire,” copyright ownership vests instantaneously in the employer.

When a third party, who is not an employee, creates the website as a work for hire, attention must be directed to ownership. Perhaps the easiest way of taking care of this issue is to have a simple written agreement that identifies the rights and obligations of the parties, including the compensation of the creator, the timing of completion and acceptance of the website, and an assignment of all worldwide intellectual property rights, including, but not limited to, copyright. In this fashion, one does not get into what may be a difficult issue of whether the third party was a part-time employee and his work was a “work for hire” and, therefore, owned by the employer, or whether the third party is an independent contractor with the one hiring the contractor not having any ownership rights in the copyright. In the absence of an effective transfer from the third party, the one
funding the work may end up with merely a naked license to employ the copyrighted material, but leave the creator with the freedom to employ the work for others.

A website owner must also be careful that the content of the website does not violate a copyright of others. The owner of a copyright, by statute, has the exclusive right to reproduce and distribute the copyrighted work, make derivative works of the same, and to publicly perform or publicly display certain types of work. A derivative work is a work based upon one or more
pre-existing works, which carries over a portion of the original work and makes changes or additions to the work.

The Internet has raised a number of copyright issues with respect to what had been traditional copyright considerations related to hard-copy publications. For example, in a relatively recent decision, the U.S. Supreme Court ruled that the New York Times infringed the copyrights of independent writers by placing their works on the Internet, as its agreement with the writers did not grant them the electronic rights.

It is important, therefore, before placing material on one’s website, to ascertain whether the work is protected by copyright. If it is, another question that needs to be considered is whether the particular use might be a “fair use.” Fair use is a statutory limited defense to engage in what that might otherwise be deemed a copyright infringement. For example, uses such as criticism, comment, news reporting, teaching, scholarship, or research are within certain limitations deemed to be fair use and not a violation of copyright. There is no hard and fast rule for determining whether a given proposed use is a fair use. The statute sets forth four tests, which are employed in making the evaluation. The tests are: (a) the purpose and character of the use; (b) the nature of the copyrighted work; (c) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (d) the effect of the use upon the potential market or value of the copyrighted work

Turning to users of websites, one cannot assume that because the material is on the website it is not copyrighted or that the copyright is that of the website owner and that an implied license for use has been granted. The same standards with respect to the exclusive rights of the copyright owner and the applicability of the fair use doctrine need to be considered. If one is accessing or downloading a limited amount of material merely for the purpose of research, and will not be publishing the accessed material, this tends to move the activity more toward fair use. This again depends on an application of all of the tests of fair use to the particular facts. If in doubt as to whether the proposed activity is legal or not, one can seek consent of a copyright owner.

In summary, it is helpful to be aware of these potential risks and when contemplating conduct that may subject someone to problems with respect to copyright ownership or infringement, it is best to seek advice of an attorney knowledgeable in this field.

Arnold B. Silverman is chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail abs@escm.com.