Copyright 

I want to put together an online Christmas and January sales brochure. Can I borrow pictures from other websites to jazz up my brochures? 

If you do this without the copyright owner’s permission, it may land you in hot water.

Copyright amongst other things protects the images and photographs in other people’s websites.

You should not copy the images (in whole or substantial form) without the copyright owner's consent. "Substantial" can be measured both in terms of the quantity and the quality of the part taken. So, even if you were to take a small proportion of the images, if that part taken is fundamental, this could still mean that you are infringing copyright.

Look out for copyright notices on the websites that you visit. These will often set out what you can and can't do with the material on that site.

If you can’t get permission to copy the images, taking your own photos might be an option. Remember, if you commission someone else to take the photos for you, then you’ll need to ask for an assignment or licence of their copyright.

If you fall foul of copyright infringement, you could face a claim for damages; an account of profits; or have an injunction made against you, to name a few sanctions. Obviously not good for business! 

Do I own the copyright in my website? 

No, not necessarily. It’s not as clear cut as you may think.

When creating your website, you need to consider whether you are the owner of or have the right to use, all of the materials that you wish to include in your website, e.g. text, photographs and software.

If you are the owner of the materials, then great! If you are not, you will need a licence from the copyright owner in order to use them, alter them and include them in your website.

Also, if you have commissioned an external consultant (e.g. a website developer) to design your website, you won’t automatically own their copyright. So, you would need to ask for an assignment in order to have full rights to do what you want with their creations. Have a look at your contract with the consultant but if this does not mention copyright, or if you have any queries, feel free to contact us.

If my employee develops my website, do I own the copyright?

Bewarned, you need to deal openly with your employees concerning the ownership of their work.

The general rule is that you will own the copyright in anything your employee creates in the course of their work for you. This covers work carried out for your website too. However, it has been known for employers to get into a wrangle with their staff over this point. So, to avoid misunderstandings, it’s a good idea to have clear clauses in your employment contracts, which deal with copyright ownership. You might also want to supplement your employment contracts with appropriate intellectual property policies and for your employees.            

Can I link to their people’s websites without their permission?

Read the terms.

Some website owners welcome third party website linking, as a means of increasing traffic to their site. But, this is not always the case.

You should check to see if the website owner allows linking to that site or if they want you to ask first. This can usually be found in their online website terms of use.

Where your website does link to other sites and resources provided by third parties, are you adequately protected? You would probably want to disclaim your liability in your own website terms of use, for any loss or damage that may arise from people accessing those linked sites or relying upon the information presented there. 

I want to start selling hand made Easter cards online. I’m thinking of copying a few designs that I have seen online. Is this OK? 

No. You may fall foul of a double whammy - copyright and design rights infringement

The designs you are thinking of copying will have been created by someone, and that someone will have copyright in the design, protecting the work they have put into their creation. Copyright arises automatically (so no need for registration) and it can last for a very long time - generally up to the duration of the author's life plus 70 years.

If you copy the whole or a substantial part of someone else’s copyright (the text and images which make up their cards) you will infringe their rights. Even if you only copy a small proportion, it’s likely that you will still infringe copyright.

If you pause to think about how you would feel if the tables were turned and someone else was copying YOUR card design, you’ll get a feel for whether the other person is likely to object or not. But copyright does not protect general concepts. Sometimes it can be hard to tell if what you are copying is a concept or an aspect of the design. But, as an example, if someone mentions to you in passing the concept of a bunny card with eyes that light up in the dark, you are free to run with that idea yourself. It helps if you don’t see a copy of the original bunny card, or you might find yourself unconsciously copying the style, colour, angle or general look of the original bunny and thereby find yourself in hot water for copyright infringement.

In addition, if you did rip off someone else’s Easter cards, in specific circumstances you could be infringing their design rights (whether registered or not). This would apply for instance where you copy the design of 3D features, i.e. a pop up card.                                   

A website has popped up which looks similar to mine? Can I go after them for copyright infringement? 

Do your homework first

Just because another website looks similar to yours doesn’t mean that copyright in your website has been infringed.

If you have independently created the website then you’ll generally own the copyright in it (i.e. in the layout, text and photos). However if a third party has developed your website for you, the copyright may not even be owned by you. So, check your ownership status first to ensure you own the copyright or have a right to sue for infringement.

Even where you own the copyright, copyright will only stop someone pinching the whole or a substantial part of your website contents, but they do need to copy. You can’t stop someone coming up with the same website idea as you independently.

To prove copyright infringement, you’d need to show that:

  • You own the copyright in your website (i.e. you can prove that things such as the text and photos and website layout are your own creation; or you have been assigned the copyright; or even that the copyright has been exclusively licensed to you);
  • that the other person has produced the whole or a substantial copy of the material on your website; and
  • that the other person had access to your website, or the material on it; and they have copied your material.

So you should spend time getting these issues straight first, before you go after someone - the fallout from an incorrect allegation can be embarrassing and damage your reputation. A good IP lawyer can help you identify whether you have a claim worth pursuing.     

Domain Names

What is an internet domain name and how does it work? 

Do you use a name in the internet address of your website (eg. “sghmartineau.com”)?

If so, this is your domain name. Essentially, your domain name lets other people find your website. Each domain name has two parts. The first part of the domain name can be a combination of letters and numbers, though most businesses try to choose a name that relates to them, such as the name of their company or product.

The second part of the name shows which domain name registrar has issued the domain name. Some domain names are available to be registered by any person or organisation (such as co.uk domain names which are issued by Nominet). Others can only be registered by certain organisations (such as .ac.uk domain names which are only available to academic institutions).

Be warned - you do need to take care when choosing and registering your domain name. You wouldn’t want to unwittingly use the trade mark, company name or trading name of another business or organisation. A legal adviser can help you with the necessary searches. This could go some distance in curbing the risk of someone coming after you for infringing their trade mark or alleging that you are encroaching on their unregistered rights!

I have been approached by a company who says that someone is trying to register an domain name similar to my name. What should I do? 

You may have received an email saying that the domain name registry knows that you have rights in the name and offering you the chance to buy the domain name. The email will probably say that you have to respond within a very limited time scale, otherwise the domain name registry will have to sell the domain name to the other party.

The chances are this is a scam. Domain name registries do not generally carry out checks before domain names are registered - they have dispute resolution procedures in place if there is a problem. If you do decide to purchase the domain name (or names) in question, you will often find that you are expected to pay a premium for the name.

Unless you are very concerned about the domain names in question, our advice is to ignore this kind of approach. If you do want to purchase those domain names, it is worth looking into the matter before rushing back to the company to say yes. You may find that there are cheaper ways of securing the domain name that you want.

What should I do if I get into a domain name dispute? What is it and is going to court the only answer? 

Good news! Court is not the only answer!

Domain name disputes usually arise when someone has registered and is using a domain name similar to your trade mark, company name or trading name. This may take unfair advantage of your rights, it may cause confusion to your customers, or it may otherwise damage your brand and/or business (for example if the content of their website is unsuitable or inappropriate).

Domain name dispute resolution procedures offered by third party providers are an alternative to having a court battle. They generally offer a cheaper and more efficient way of resolving domain name disputes rather than resorting to court action, which can be expensive.

Different dispute resolution policies and procedures apply to different domain names. We can advise on the rules that apply in your case. We can also help by drafting your complaint to give you the best possible chance of success. Alternatively, if a domain name complaint made against you, we can advise on your defence and reply to the complaint if required.

I want to start an online business. Do I need to register a domain name? 

If you want people to find your website - it’s a good idea.

You’ll need to have an internet address. A domain name is the “name” part of your internet address (e.g. “my company.co.uk”).

You’ll want to make your domain name fit for purpose and need to carry out searches to make sure that no one else is using your domain name. It is advisable to use the services of a good domain name provider who will ensure that your domain name is properly registered.

If you decide not to register a domain name, the alternative is to take an address offered by your Internet Service Provider (ISP) - if in fact you are offered one! These domain names usually relate to your ISP’s business, with your brand as a URL extension (e.g. myISP.co.uk/mycompany).

There are pitfalls in going for a domain name which includes the name of your ISP. To name a few:

  • It won’t do the professional image of your business much good. People might think you’re a tin pot player.
  • What if you go with another ISP? You might have to change your website address all over again.
  • You’ll make the job of your customers finding you tough. You shouldn’t aim for it to be like finding a needle in a haystack.
  • You can’t prevent someone else from buying your preferred domain name first and using it in an objectionable manner.

So in short, registering your domain name, can help you to jump over these hurdles.

Jurisdiction

What do I need to do if I am selling to customers through my website?

Comply with the law and protect yourself.

If you are selling goods and services to your customers through your website, then you will need to comply with the Distance Selling Regulations. Essentially, these Regulations give consumers (who do not have face-to-face contact with you when they buy your goods and services) a number of rights. This includes:

  • the right to receive clear information about goods and services before deciding to buy them;
  • confirmation of this information in writing (this can be provided in email form);
  • a cooling off period of seven working days in which the consumer can withdraw from the contract; and
  • protection from credit card fraud.

To protect yourself, it’s a good idea to have a well-drafted set of Terms and Conditions clearly placed on your website. Also, if you are advertising on your website, with the view to attracting customer sales, then your content needs to be clear, accurate and certainly not misleading. There are also more specific requirements with which you will need to comply with, depending on the nature of your business and what activities you carry out on your website.

I’ve excluded all liability if anything goes wrong when customers order on my website - am I safe? 

No, you are not 100% safe.

While it is a good idea to have a disclaimer on your website, it won’t cover you for every eventuality and you won’t be able to exclude all liability. The law doesn’t allow it. In particular, consumer law will give your non-business customers a number of extra rights when they order through your website. For example, you’ll have to make sure that your goods are fit for purpose and of satisfactory quality. They’ll also need to correspond with their description. You can’t exclude your liability if you fall short in these areas.

It is also worth remembering that if your disclaimer is too wide then it is unenforceable and can be just as bad as having none. So adding a suitable disclaimer, won’t mean that you can exclude all liability is something goes wrong, but it will help to protect your business. 

Online advertising/sales

I want to run an online sales promotion to cash in on the January sales. Can I say anything I like in my online ads to get people to buy my products? 

No! Even though you are advertising on the internet, rules and regulations still apply. For example, if you are using banner or display adverts or sponsored links, you should comply with the UK Code of Non-Broadcast Advertising, Sales Promotion and Direct Marketing (otherwise known as the CAP Code). This sets out a number of rules that your advertisement should follow. To name a few, your online adverts must:

  • be "legal, decent, honest and truthful" – so your adverts should not include anything that is likely to cause offence.
  • not be misleading. You need to ensure that all claims in your adverts are accurate, unambiguous and can be substantiated. Can you back up the claims that you are making?
  • avoid unnecessarily disappointing customers - you should make a reasonable estimate of the demand for your products. If the advertised product sells out, you should stop advertising it.

I’m a retailer and want to hold seasonal sales promotions. Does it matter how long my goods are on sale for, before I offer them at a reduced price? 

Yes, you need to be careful when advertising sale prices. You wouldn’t want to be faced with a £5,000 fine, would you?

The Government has produced some handy guidance in its Pricing Practices Guide. This sets out what you need to do to comply with the various pieces of consumer law on the topic of prices. Failure to comply can lead to imprisonment or a fine of up to £5,000 so it is definitely worth getting it right.

So, before your reduced prices kick in, the Guide asks you to consider the following points:  

  • Make the basis of your price comparison clear, and state both the higher and lower price.
  • The higher price must be a genuine price. In other words, you should have had a significant number of goods on sale at that price before you discount it. Ideally, your products should have been available at that price for 28 consecutive days or more before you offer your reduced price.
  • If you want to make further reductions, ideally you should set out all the prices, including any intermediate prices, so the customer can see what has happened to the price at each stage. Another option is to provide the customer with an explanation as to how the discounts have been calculated.

The key is to ensure that the customer is not misled. There are lots of rules and regulations in this area so take care.

I’m going to have an online seasonal sale. I expect to be swamped with orders. Do I have to accept returns? 

Well yes and no.

The Sale of Goods Act states that consumers may be entitled to a refund, replacement, repair and/or compensation if the goods you sell are faulty or do not fit their description.

In other cases, for example, if your customers have bought your product(s) (i.e. clothing ) in the wrong size; or they have simply changed their minds; or where pehaps, an item is an unwanted gift, there is normally no automatic right to return goods to you. You should set out your returns policy clearly in your terms and conditions.

There are a few exceptions to this rule, including goods sold by mail order or over the Internet. For example, if you are selling goods via your website you’ll need to factor in the Distance Selling Regulations. Consumers have a number of rights, including a cooling off period of seven working days in which to withdraw from the contract. In this case, your customers will be able to return their goods and get a refund of the purchase price, together with any delivery charges that they paid to get the goods delivered to them. You do not have to pay the cost of the customer returning the goods to you.

I’m going to mark my online January sale items as “SOLD AS SEEN”, is that OK? 

Ignore consumer law at your peril.

You can’t take away or restrict consumers legal rights. So, your goods will need to be of satisfactory quality; fit for purpose and match their description. If they aren’t, and you use a disclaimer to try and avoid liability, your contracts of sale won’t stand up. It’s also worth remembering that under consumer protection law, it’s a criminal offence to mislead a consumer about his or her legal rights. If you fall foul of this, your company could face an unlimited fine!

Examples of statements that are likely to mislead consumers about their rights are:

  • "No refunds given".
  • "Goods can only be exchanged".
  • "Only credit notes will be given against faulty goods".
  • "Sold as seen".

For example, while you may not offer refunds when someone simply changes their mind, you cannot refuse to give a refund if the goods are faulty. Therefore, saying “No refunds given” could mislead a customer about their legal rights.

So, while it is a good idea to have a disclaimer on your website, it won’t cover you for every eventuality and you won’t be able to exclude all liability. The law doesn’t allow it.

I’m aiming to sell a load of Easter merchandise online. Do I have to give customers a refund for any faulty goods? 

Absolutely!

Your goods could be the wrong side of the legal line if they do not match their description, are not of satisfactory quality, or are not fit for purpose.

If this is the case, then your customers are entitled to:  

  • reject your goods and claim a full refund, or
  • request a repair or replacement.

As a retailer, you can offer a repair, a replacement or a credit note, but you can’t insist on any one of these.

As you’re selling your goods to your customers through your website, you’ll also need to comply with the Distance Selling Regulations.

A competitor business is using my registered trade mark as a Google AdWord, to promote their Easter sales. Can they do this? 

Know your rights. They may be infringing your trade mark.

Case law currently says that that the likes of Google (as a search engine operator) can’t be liable for trade mark infringement by selling keywords to advertisers of similar goods or service to yours. Google, for these purposes would not be using your sign “in the course of a trade” - a key point for establishing trade mark infringement.

But, if the person purchasing the adwords is offering identical/similar goods and/or services under your trade mark, then you may be able to make a case against them for trade mark infringement instead.

The law in this area is particularly complex and so it’s a very wise step to get a good IP lawyer on board, who can advise you on your rights before you allege trade mark infringement. You wouldn’t want to end up in trouble for making “groundless threats”.

Privacy policy and website terms of use

Do I need to be sure that information on my website is 100% accurate? 

It’s a good idea! But if you can’t be sure, adding a disclaimer to your website would help. It won’t cover you for every eventuality because the law doesn’t allow it - in fact if your disclaimer is too wide then it is unenforceable and can be just as bad as having none.

Adding a suitable disclaimer will help to protect your business. For example, you could say that commentary and other materials posted on your site are not intended to amount to advice on which reliance should be placed. It is important that disclaimers are obvious and visible, ideally on every page of your site and typically at the bottom of a page. If people can’t find it, they won’t read it and it may not offer you the necessary protection.

How can I ensure that users ‘use’ my website in the way that I want them to? 

The best way of dong this is to have an ‘Acceptable Use Policy’ (AUP) clearly posted on your website. The AUP should set out what users can and cannot do when using your site, and the consequences of non-compliance. For example, will you immediately, temporarily or permanently withdraw rights to use your site? This becomes really important if you have interactive features of your site or parts of your site which can only be accessed by certain people such as forums, bulletin boards, or chatrooms. Whatever form your AUP takes, you should clearly state to whom the policy applies. It is also important that the AUP is obvious and visible, ideally on every page of your site and typically at the bottom of a page. If people can’t find it, they won’t read it and it may not offer you the necessary protection.

How do I make sure that my website is data protection compliant? 

Are you collecting names, email addresses and other personal information? If so, there are two or three things you need to do. One is to provide a form of ‘Privacy Policy’ which will explain what personal information you have collected and what you will do with it. You will also need a policy if you use cookies. Secondly you will have to make sure that you comply with the eight data protection principles set out in the Data Protection Act. For example, any transfer of personal data outside Europe may be subject to additional conditions. Thirdly, you’ll probably need to register with the Information Commissioner’s office; its easy and cheap to do - just look at the ICO website or our website for details.                                   

Can I use cookies to monitor the activities of users of my website? 

Don’t forget your privacy policy.

Tracking the activities of visitors to your website by using cookies? If so, you’ll need to tell them what you’re up to. This is so that you don’t breach data protection and privacy legislation.

You should certainly:

  • include a link to your privacy policy on all of your web pages (particularly where you’re collecting personal information);
  • explain in your policy how and why you use cookies; and
  • tell them how they can delete or control your cookies.

Watch this space regarding the law on cookies. The law may be changing this year. It is likely that you will need your visitors’ consent before serving cookies to their computers. This is unless the cookie is "strictly necessary" to provide a service "explicitly requested" by your visitors. We’ll let you know in due course if you need to make any changes regards your use of cookies. 

Easter is coming. I want to send Easter e-cards to my (non-business) customers with marketing info about my products. Is that OK? 

No. Not unless you comply with the law.

There are important regulations which tell you what you can and can’t do when you are contemplating sending out marketing messages by email.

The general rule is that you can’t send unsolicited marketing messages (i.e. ones that your customers have not invited or specifically agreed to) by email.

There is a complicated exception which says that you CAN send marketing emails to customers who meet these criteria:

(a) You’ve obtained the customer’s details during a negotiation or sale where you offered them the chance to opt-out and they failed to take it; (b) you now want to market similar products or services; and (c) you again provide an opportunity for them to opt out of receiving your messages. On top of this, when you’re sending your marketing messages:  

  • Remember not to conceal your identity.
  • Provide a valid address for any opt-out requests.

I’ve got an online business. Can I collect my customers’ names and addresses and other personal details through my website? 

You can, but you need to have privacy safeguards.

Protecting your customers information is incredibly important. You’ll need to make sure you comply with data protection law. If you don’t and your customers’ personal information if used incorrectly or goes astray, you could face a hefty fine by the Information Commissioner: http://www.ico.gov.uk/.

So to stay on the right side of the law, make sure you are registered with the ICO; have an adequate “Privacy Policy” on your website; make sure your customers see and agree to your policy before giving you their details; and make sure you comply with your own policy.

A Privacy Policy is a legal document that discloses the way you gather and use information you collect from customers. Also, don’t forget that if you’re using cookies, you’ll need to cover your use in your Policy. A Privacy Policy is a useful tool for a number of other reasons, e.g.:

  • It can help to build trust - your customers may feel more confident to provide their personal information, if you have a Privacy Policy clearly evident on your website.
  • Improve quality of information collected - Improved confidence amongst your customers and reduced concerns may in turn improve the quality of personal information that is collected by your website.

Trade marks - general 

Someone is using my trade mark on their website without asking me, so can I just write to them and tell them to stop? 

No. They could end up suing you for “unjustified threats” if you do that. To avoid this problem, there is no real alternative to seeking legal advice and setting out your rights in exactly the required way, as the law on this is particularly complex.

If you go ahead without advice, the recipient of the letter or email could ask a Court for a declaration that the threats are unjustifiable, plus an injunction against the continuance of the threats, plus importantly damages in respect of any loss from the threats such as lost sales. Therefore it is critical to ensure that any approach to an infringer is worded correctly to protect you from any backlash.

Is there a difference between using TM and ®, and which should I use online? 

There is a difference. Generally it is better to use ® but it is a criminal offence to use it in the wrong way. You can use a name without registering it, which automatically gives you certain limited rights in the UK. Marking your name with a “TM” is an indication that you see the mark as your unregistered trade mark. If you want to obtain stronger rights then you can register the mark.

The ® symbol indicates that your mark is registered. However, it is a criminal offence to falsely represent your trade mark as being registered when it is not. If found guilty you could face a fine up to £1000.

It is generally a good idea to use the ® symbol (if you legally can) online to warn others against using it.

Can I claim on my website that my trade marks and or designs are registered if they are not?

As you may imagine - the answer to this no. It is a criminal offence under trade mark and design right legislation, to falsely represent your trade mark and/or design as being registered when it is not. If found guilty you could face a fine up to £1000.

If you want stronger protection for your trade mark and/or design, then you should consider seeking registration. Simply applying for a trade mark is not the same as registration and many people inadvertently use ® incorrectly.

Someone is using my trade mark on their website without my permission. Can I just try and tell them to stop infringing my trade mark? Would this be OK? 

Well the answer is no. You could incur liability for your business and you could be personally liable.

There is a fine line between notifying the other side of your rights, and making a threat. In fact, the recipient (of your letter) and anyone else aggrieved by it, could end up suing you for making “groundless threats”.

What amounts to a threat is judged objectively. The question is: would an ordinary person in the shoes of the recipient perceive your communication as a threat? A threat can be express or implied; made orally or in writing. It’s so incredibly easy to make an implied threat, especially in conversation.

So, why are “groundless threats” taken so seriously? Well, there are a number of reasons. To name a couple, threats to sue for trade mark infringement can cause harm to the reputation of the recipient’s business; or cause loss of sales and profit.

Who may bring an action for threats? This action is not only available to the recipient of the threat. It is open to anyone who feels aggrieved by the threat.

The sphere of “groundless threats” is a complex minefield which can often defy most peoples’ idea of common sense. For instance and bizarrely, even a letter stating that you’ll be taking no action can be deemed to be a threat! To avoid falling foul, there’s no real alternative to you seeking legal advice before talking to a potential infringer.

I’ve been trading online for a while. My website shows off my trade mark. Should I register it?

Absolutely!

The strongest form of protection for brand elements such as a name of logo is generally a registered trade mark.

Your trade mark is your badge of origin which distinguishes your goods or services from other traders. So, when people see it, they’ll think of you. There’s no such thing as a ‘worldwide’ trade mark. Most people start off by getting a UK or Community registered trade mark before thinking about other territories overseas, but filing internationally in selected countries from day one may be the right thing for your business.

Trade mark registration can help you in a number of ways. To name a few, a registered trade mark:

  • will give you an exclusive right to use your mark for the goods and services that it covers in the territory in which it is registered;
  • will usually allow you to take legal action against anyone who uses your trade mark without permission;
  • will enable you to use the ® symbol to warn others that you have a registered trade mark, but you can only use the ® symbol in jurisdictions where your trade mark is registered;
  • is your property, so you can sell it or license it; and
  • will help to protect your online identity.

It is perfectly possible to continue to trade without registering your trade mark (subject to prior rights of others), but it can be more expensive and complex to stop others with only an unregistered trade mark.

Performance rights

I’ve recorded some concerts and theatre productions I want to put these on my website. Are there any problems with this? 

It’s not all about copyright. What about performers’ rights? Think about those as well.

Copyright ownership in appropriate works will generally belong to the “author” (i.e the person who has created the works). So, in the case of a film, the author is the producer, and they will own the copyright - not the performers. There are of course exceptions to the general rule. For example, copyright in works created by employees will generally belong to the employer.

But, the law gives performers a number of rights in their performance, and in any recording, film or broadcast of that performance. These rights are personal to the performer and are separate from copyright.

A performer’s rights can be infringed where someone records the whole or a substantial part of his/her performance; or makes a copy of the recording, without the performer’s consent.

So, you shouldn’t have filmed those performances unless you had permission to do so in the first place.

Also, in some circumstances performers are entitled to “equitable remuneration”. For example, equitable remuneration would apply where you communicate to the public (for commercial use) a sound recording of the performance. But, this “communication” would need to be by push distribution (e.g. by DVD) and not pull distribution (e.g. by iplayer or podcast).

There is also another sting in the tail. If you don’t make your “use” of your recording clear to the performers upfront, and obtain appropriate consents, then you’ll probably be also breaching data protection law.