Author: Christopher Hamel-Smith
Having examined how we can identify, register and use strong trademarks and domain names to support our e-commerce strategy, we now turn our attention to another species of intellectual property - copyright - that is also of great strategic value and importance in a commercial environment dominated by the Internet. Particularly since almost all types of material presented on the Web (including text, graphic images, software, sound and video) can attract copyright protection, we need to understand how to protect and exploit these valuable business assets to gain strategic advantage as we begin to conduct e-commerce.
To be protected by copyright, a work must be original (in the sense that it must be the result of our skill and labor and not a copy of another's creation) and it must be expressed in some material form, such as in writing or by recording. Once this is the case, then copyright protection arises automatically. No formal steps, such as registration, are necessary.
Nevertheless, although protection arises automatically, every business should introduce procedures designed to pro-actively manage its copyrights and to avoid the risk of costly disputes. This is particularly as our Web sites move center stage as part of our business strategy for e-commerce.
A critical step that should be included in our plans for e-commerce (and which of us can afford not to be making such plans) is the development of an inventory of persons with whom we interact in the area of content creation. These parties are likely to include directors, employees, consultants, web designers, graphic artists, software contractors and advertising agents. When we have done this, we can then set about negotiating (and carefully documenting) the parties' respective rights to all materials that may be subject to copyright protection.
With respect to our employees, companies will be pleased to note that, subject to any express agreement, Trinidad & Tobago Copyright legislation provides that the original owner of the copyright in a work created by an employee in the course of his employment is the employer and not the employee. This provision does not, however, eliminate all difficulties. For example, it may not always be obvious whether a work was "created in the course of employment". Moreover, it is for the company to prove that the work was created in the course of the employee's employment.
Disputes about these matters can be expensive and disruptive, particularly if they affect our right to use material that is important to our evolving e-commerce business strategy. As usual, "an ounce of prevention is worth a pound of cure" in dealing with these matters. All businesses preparing to conduct e-commerce should take the relatively simple and inexpensive step of introducing clear and specific contractual terms covering ownership of intellectual property (including copyright works) created by employees.
To achieve this objective in the most cost-effective manner, we can and should develop standard terms for insertion into all new contracts or letters of employment. And existing contracts and letters of employment should be reviewed and amended to cover these matters. For example, such terms can spell out that intellectual property (including copyright) created by the employee during the period of his employment belongs to the company. They can also identify specified exceptions, such as where the employee is able to prove that the work is not related to any of his duties as an employee and was created entirely outside his normal working hours.
Companies using consultants or other third parties to help them to develop their Web sites, software, business plans or any other works that can be protected by copyright should also seek to negotiate suitable contractual terms to the effect that the intellectual property rights associated with these works belong to the company.
Having put in place a program to secure copyright protection for the range of works that will be created as we establish a commercial presence on the Web, we also need to make use of our copyrighted works in ways that preserve and maximize our rights. For example, although it is not obligatory under Trinidad and Tobago law, we should appreciate that a copyright notice should appear on our Web sites to give reasonable notice of ownership of copyright. Indeed, such a notice is required to obtain protection in some countries. We should also use such a notice whenever we communicate copyrighted works electronically, including via e-mail. The form of notice comprises the symbol "©" followed by the year of first publication of the work, and the name of the copyright owner (e.g. © 1999, Christopher Hamel-Smith).
Further information about copyright protection in Trinidad & Tobago that may be relevant to our efforts to establish our commercial presence on the Web - including information about using, assigning and licensing copyrighted works - can be found in the section on Frequently Asked Questions on Intellectual Property at www.trinidadlaw.com. In my next article, however, we shall focus on specific issues that arise when we provide links from our Web sites to those owned by third parties. In particular, we shall examine some of the legal risks - including exposure to claims of copyright infringement - that these links can pose, as well as the practical steps that we can take to manage and mitigate these risks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
