Business mentor: Check before launching that website

Q: We want to set up a website for our business but are overwhelmed by stories we have heard. Our friends spent a fortune on a professional website developer but ended up arguing about who owns copyright. Then they got threatening legal letters from another business claiming the new website infringed trademark rights and demanding that our friends transfer their domain name. Should we bother?

* Small business sector specialist Sarah Trotman asked Kim McLeod, intellectual property lawyer and partner at A J Park, for some information.

A: A website provides extensive opportunities for a business to grow and expand. Setting up a new website should be an exciting step and, with proper care and preparation, rewarding.

A host of technical and design issues are involved and employing a professional will make it easier. But website developers are not always familiar with the legal issues about using trademarks in domain names, or using trademarks and copyright in web content. To minimise risk and expense, consult a lawyer who specialises in intellectual property to cover some basic legal issues.

Before launching yourself on the internet, the first step is to ensure that your business name and brand is yours exclusively.

Many small businesses are registered companies. Companies make the common mistake of assuming that a registered company name gives them exclusive rights to use that name as a domain name. But the Companies Office and the .nz Registry operate on a first come, first served basis. This means that an identical name or one similar to your company name might already be registered.

Neither company nor domain name registrations will protect you from infringing someone else's rights or gives you rights to stop someone from using your name.

Before registering a domain name, search the companies and domain name registers to make sure someone has not registered your name (or some other confusingly similar name) as a domain name.

The most effective way to avoid a dispute is to register your business name or brand as a trademark before securing the corresponding domain name. You can rely on your trademark rights to assert ownership in your domain name.

Before launching your website, it is important to search the trademark register as well because, if a competitor has a prior registration for the same or a similar trademark to the one you will use in your website, then you may be infringing their rights.

There is no alternative to resolving a domain name dispute other than legal action, so having a trademark registration to back up your claim will strengthen your position.

You must also ensure that you have a proper written agreement with your website developer. Your agreement should confirm that you are the owner of any copyright in the web content developed on your behalf. Also, if the website developer registers your domain name on your behalf, you should state that the registration must be in the name of your business and not the web developer.

Copyright exists automatically in the text, art work and other graphic features of a website. So long as all the page content on your website is original, there is no problem. If you use another person's copyright material or trademark in your website, you must have their permission first or you risk infringing their rights.

Any reference in your website to your own trademark should be identified by using the trademark or registered symbol.

Also, you should alert others to your copyright claim in your web content by having a suitable copyright notice and by using the symbol.

* Any more inquiries about websites can be directed to Kim McLeod, partner, AJ Park, Intellectual Property Lawyers, at (09) 356 7684