Web development, intellectual property, e-commerce & legal issues. Presented By: Lisa Abe

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1 Web development, intellectual property, e-commerce & legal issues Presented By: Lisa Abe October 8, 2005

2 Web development, intellectual property, e-commerce & legal issues 1. what intellectual property can exist in web development and design work? 2. what legal terms are required on a web site? 3. are on-line contracts enforceable? 4. what legal risks does a web developer/designer face? 5. can you be sued in other countries for on-line work or activities? 6. best methods for selling your work?

what legal terms are required on a web site? 3. are on-line contracts enforceable? 4.

3 1. What intellectual property can exist in web development and design work? Types of Intellectual Property, e.g.: Copyrights Trade-marks Patents Industrial Designs Trade Secrets Integrated Circuit Topographies

4 1. What intellectual property can exist in web development and design work? Copyrights bundle of rights: produce, reproduce, perform, publish, translate, transmit, record, present, communicate by telecommunication, etc., and moral rights (anonymity, association, integrity of work) subject matter: original literary, dramatic, musical and artistic works protect the form of the expression, not the idea require fixation and authorship in Canada, automatic, no need to register or mark with a last for life of author plus 50 years

5 1. What intellectual property can exist in web development and design work? Examples of copyrightable works in design: text, lyrics pictures, photos, paintings, drawings, maps, charts, plans, graphics, buttons, GUIs engravings, sculptures, architectural works music, songs, musical compositions video, movies, multimedia, acoustical or visual performances, sound recordings, communication signals software code, computer programs, tables and databases (considered to be written/literary works) compilations

buttons, GUIs engravings, sculptures, architectural works music, songs, musical compositions video, movies, multimedia,

6 1. What intellectual property can exist in web development and design work? Trade-mark rights bundle of rights: exclusive right to mark or associate with wares at the time of transfer; or use or display in performance or advertising of services subject matter: word or design marks used to distinguish source of wares (including printed publications) or services, including distinguishing guises (shaping of wares, containers, packaging) protect the mark, not the associated wares or services can t be merely descriptive of character or quality in Canada, can arise nationally by registration or locally by usage; should be referenced with or renewable; last as long as being used

subject matter: word or design marks used to distinguish source of wares (including printed publications) or services, including distinguishing guises (shaping of wares,

7 1. What intellectual property can exist in web development and design work? Examples of trade-marks in design: word or symbol used to distinguish the design work from someone else s, signature, logo, statement business/company names, product names beware of using trade-marks in meta tags and hyperlinks avoid confusion with other trade-marks in the same area or famous marks

8 1. What intellectual property can exist in web development and design work? Patent rights bundle of rights: make, construct, use, sell, subject to adjudication subject matter: invention = new and useful art, process, machine, manufacture or composition of matter or any such improvement protect the invention; must be new (not previously disclosed to public) and useful (will work as promised by patent) and can t be obvious to someone skilled in the art in Canada, arise only by registration last up to 20 years

art, process, machine, manufacture or composition of matter or any such improvement protect the invention; must be new (not

9 1. What intellectual property can exist in web development and design work? Examples of patentable inventions: hardware, mechanical or electrical devices mode of operation, process (e.g. new design tool) any new thing made by humans, provided it has some utility

10 2. What legal terms are required on a web site? ownership notices disclaimers and limitations of liability for use terms of use (especially if interactive or risk of liability) terms must be up-front; user given opportunity to read privacy policies and procedures when dealing with consumers, provincial consumer protection legislation mandates Internet sales contract terms and processes Tip: analyze the target audience and type of usage to determine the risks more risk requires more legal structure

liability) terms must be up-front; user given opportunity to read privacy policies and procedures when dealing with

11 3. Are on-line contracts enforceable? Yes, but still need to apply traditional contract law principles, i.e., need offer, acceptance, consideration, meeting of the minds, and specific statutory requirements for consumer sales several Canadian court decisions have enforced click-wraps Canadian federal and provincial e-commerce legislation specifies when electronic documents and signature requirements under law will be treated as equivalent to paper versions Tips: when designing web sites, make sure legal terms are presented at the top of the page, and not buried in footnotes, and that user understands the intention is to create a binding legal obligation acceptance procedure should be more than just a mere click who are you contracting with and can they read English?

12 4. What legal risks does a developer/designer face? IP infringement liability for criminal and regulated activities, e.g. porn, gambling, tobacco, etc. contract liability for failure to deliver loss of own IP rights (e.g. if use open source or if assign or exclusively license rights); can t reuse work

contract liability for failure to deliver loss of own IP righ

13 5. Can you be sued in other countries for on-line work or activities? global reach of Internet not always clear which jurisdiction s laws will apply depends on the facts and type of liability many courts have found that they can assert jurisdiction if the commercial activity is targeted to that jurisdiction needs to be some real and substantial connection often protection of public is deciding factor

and type of liability many courts have found that they can assert jurisdiction if the commercial

14 6. Best methods for selling your work? License it, don t sell or assign it make sure what you acquire upstream is sub-licensable downstream collect royalties many different formulas, e.g. fixed, timed, variable infinite combinations for licenses by type of IP, type of right by territory, market, user, machine by time by purpose know the difference between: exclusive - even you can t exercise the right sole - only you and customer can exercise the right non-exclusive - you can license to multiple customers and exercise the same right

15 Conclusion multiple layers of IP rights can exist in the same piece of work know what you have and how to best commercialize it try to be original, and beware of the risks of reusing other people s work, or work of unknown/public origin IT and IP are becoming more important assets to organizations and therefore more risk exposure people will fight over it if it has value doing business on the Internet is like exporting or opening up virtual offices around the world you have to be prepared to deal with local laws get early involvement of experienced IT counsel to help minimize your risks and maximize your profits

therefore more risk exposure people will fight over it if it has value doing business on the Internet is like exporting or opening up virtual offices

16 This presentation contains statements of general principles and not legal opinions and should not be acted upon without first consulting a lawyer who will provide analysis and advice on a specific matter. Fasken Martineau DuMoulin LLP is a limited liability partnership under the laws of Ontario and includes law corporations.

opinions and should not be acted upon without first consulting a lawyer who will

The Basics of Intellectual Property. Mala Joshi, Blaney McMurtry LLP

The Basics of Intellectual Property Mala Joshi, Blaney McMurtry LLP 2 The Canadian Intellectual Property Office (CIPO) CIPO is responsible for the administration of the intellectual property (IP) system