Meet our Expert

Ben EvansBen Evans – Solicitor

Ben is a solicitor specialising in intellectual property matters at Blake Lapthorn, a leading full service firm in the South East of England. Ben advises clients on trade mark clearance searching, brand strategy and world-wide trade mark prosecutions as well as dealing with a range of intellectual property disputes including trade mark, passing off, design right and copyright related disputes.

 

“Our favoured website designer has sent a contract through which gives us ownership of the content we provide but not of his work in designing the site. Can you advise us about where ownership lines should be drawn?”

 

The answer

This is a very common problem and there is an important distinction that needs to be made between code that the web designer is creating for your website and code that they may wish to use for other projects or indeed may not own themselves i.e. generic code.

As the client you will want ownership of:

  • the content that you provide to the web designer;
  • any content created by the web designer for your website; and
  • any bespoke code that the web designer creates for your website

You can however draw the line in respect of any generic code that the web designer incorporates in your website as well as any code that the web designer does not actually own. There are for example certain buttons, forms, templates etc that the web designer may incorporate in your website that they may either have used on many other websites (and thus if you were given ownership of copyright in those elements of code then any other websites using that code would likely be infringing your copyright) or which they may have taken from their development software etc (i.e. they do not own it in the first place).

Any code that falls under the two examples above should, in the web development agreement, be licenced to you in order for you to use such code (or indeed content) on your website. It is also advisable that you obtain appropriate warranties and indemnities from the web designer to protect against any claims of copyright infringement by third parties in relation to the use of such code in particular and the website as a whole.

If you fail to obtain the appropriate transfer (known as an ‘assignment’) and/or licence of copyright in the website then there is the danger that should you fall out with the web designer then they could take action against you for using the website. It is therefore very important that you stick to your guns in respect of, at least, the above bullet pointed content/code and that the website development agreement is crystal clear as to who owns what parts of the website and that any parts of the website that you do not own are licenced to you appropriately.

One further issue that I often see is where the web designer (often with good intentions at the outset) registers the clients domain name on its behalf. This is often seen as an added service however it can cause issues in the future should the parties fall out and the web designer refuse to transfer the domain to the client (or request an additional sum to transfer the domain). In such circumstances the client’s only option is often to file a complaint with the relevant registry’s dispute resolution provider (for example Nominet for .uk domains or WIPO for .com etc domains) which can be extemely costly. It is therefore advisable that you ensure that any domain names are, even if the web designer takes the practical steps of registering the domain, registered in the name of the charity, this keeps you in control at all times.