Ask the Lawyer @ Silicon.com

Q: Who really owns a domain name? What can you do if someone registers it and lays a claim to it unless you pay up? What if you have been trading as a company of the same or similar name? Does this have any bearing on the brand reputation/goodwill you have built up?

A: A domain name is owned by the person who first registers it with the appropriate registrar, e.g. Nominet is the registrar for dot-co-dot-uk domain names and Internic is the registrar for dot-com domain names. These entities are not statutory, like the Patent Office, but commercial entities with whom you have contractual rights. Domain names are dealt with on a 'first come, first served' basis, although most registrars do oblige applicants to demonstrate that they have a connection with the domain names that they are seeking. On the whole, Nominet and Internic are more laissez-faire than registries in mainland Europe.

Because the rights are contractual, where conflicts over domain names arise, there is no substitute for reading the contract rules, which are usually posted on the registry's Web site. However, the courts do apply a measure of control through the interplay with trade mark law. Most conflicts fall into one of two categories. Either it has been registered by a "cybersquatter" or the existing domain name owner has a perfectly legitimate reason to use the name itself.

A "cybersquatter" is someone who registers a domain name comprising a well-known name or trade mark in order to later sell it at a profit to someone already trading under that name. If this is the case, and the trade mark or name is famous enough, the courts are likely to order the domain name owner to assign that domain name to the legitimate applicant.

The situation is different if the domain name owner has a legitimate reason to use that name. One problem arises because, while a word can be used as a trade mark by multiple businesses in different fields, there is only one domain name available. Likewise, the dot-com registry is seen as international, while trademark registrations work on a national basis. As domain names are granted on a first come, first served basis, in such a situation, the courts are likely to hold in favour of the original domain name owner, even if the second applicant has been trading as a company of the same or similar name and even if it has built up brand reputation and goodwill.

It may also be difficult to prevent someone else from registering a domain name which is the same as your brand name, if they are not making commercial use of that name. The important factor in this situation will be the existence of evidence which demonstrates the intention of the domain name owner at the time of the registration. Does the evidence show that it was an attempt to hold the trade mark owner to ransom, or was there a legitimate intention to use the domain name at a later date?

A business should therefore take appropriate steps to protect brand value by registering its key brand names as domain names at an early stage.

Q: I work for an international organisation. I surf the net to see what's new and would like to copy news items across multiple sources (varying each day) and copy them to the rest of my team across the globe. These articles are simply used to keep us abreast of technologies and strategies in the IT industry. Now it seems to me that I cannot do this without breaking copyright laws. Is this correct? It seems that I could email the URLs of the pages, but not the content of the pages themselves.

A: Unauthorised copying of all or a substantial part of copyright material from the Internet, just like copying from any other material form, is prohibited in the UK under the Copyright Designs and Patents Act 1998. So unless you have express or clearly implied consent by the site operator, you are well advised to just copy the URL, in which there is no copyright.

There are parallel controls on copying in almost every other country. The Berne Convention of 1886 attempted to create common rules of copyright amongst its member countries, whose number currently stands at 125. If an author has copyright protection in one member country, then he will have protection in all member countries. In this way, an author will often have copyright protection stemming from his own country's national laws and also from the Berne Convention. Therefore, surfing the Net and copying news items from multiple sources to the rest of your team across the globe would usually be an infringement of copyright law, even where the material is hosted on non-UK Web sites.

There are, however, certain exceptions to this. There will be no infringement of copyright if the use made of the copyright work in the UK is fair, for example, if it is for the purposes of research and private study or for the purposes of review and criticism. Your activities would only fall into this category, however, if you are doing this for non-commercial purposes. Each country makes slightly different exceptions to the general prohibition on copying. However, the statutory position can be varied by the consent of the copyright owner or under contract. Therefore, you need to look at any terms and conditions displayed on any sites. Each Web site, from which you take material will usually display the terms and conditions governing its use.

Note that in some sites, the site operator will not own the copyright in the material displayed, in which case you will be infringing the rights of two other entities by copying - the copyright owner and also the site operator, who is displaying the material under a limited licence from the copyright owner.

Of course, you can always seek a specific licence for your activities, or make use of established arrangements. For example, if you are copying material from newspaper sites, you will need to get a licence from the newspaper licensing agency. This would involve obtaining an electronic extension to the basic licence (which permits organisations to photocopy articles from certain paper newspapers and circulate them internally for educational purposes). The licence fee for this basic licence is assessed according to the number of personnel at the organisation or turnover, whichever works out at the lower fee. By paying for the electronic extension, you can copy articles from newspaper sites onto intranets or firm-wide emails.

** Network Multimedia Television Ltd/Silicon.com give no warranties as to the accuracy of the information and advice contained herein and can take no responsibility for any acts or omissions resulting from reliance upon the information provided. Commentary is intended only as general guidance on legal issues arising from the circumstances described, and specific legal advice based on all relevant facts should always be sought.