This article first appeared in World Intellectual Property Review, published by Newton Media Ltd.
The first IP tool that may be considered is a design application, aimed to protect the overall appearance and layout of the site. A registered Community design application can be filed before the European Union Intellectual Property Office as well as under Italian IP law.
Designs can protect the overall appearance of a website as defined by the contour lines, the colours, and the arrangement of the text or graphic elements. The protection of the site’s layout allows the owner to block a copy of the layout itself, independently from the programming code in which a website is written.
Under Community and Italian design law, the owner has a one-year grace period after the first presentation to the public to validly file the design application. Therefore, the design owner can file an application within one year after the website has started running.
If the website has some kind of function or intelligence inside it, the proper IP tool to activate is the filing of one or more patent application related to an invention carried out by software. The European Patent Office calls these computer-implemented inventions.
Care should be taken to evaluate the operations by which the website is running, considering that operations used for the presentation of information may constitute non-patentable subject matter. Further, mere automation of manual operations within the reach of the skilled person in the art may incur a finding of lack of inventive step.
Copyright protection is another IP tool which can be used to protect a website. The act of writing source code or software can allow copyright to arise, with the right belonging to the website author (or it can be transferred to the company charged with the development of the layout).
Copyright is found in Italian law and is recognised in many countries via the Berne Convention.
When a new layout is being developed or a website being redesigned, it is important to adopt some simple rules which can allow protection against any website copiers:
Keep a record of any content uploaded to the website, as well as the date of uploading; and Request advice from an IP counsel or attorney. As far as Italy is concerned, it can be useful to file the source code with the SIAE, a society that manages authors’ rights, under its OLAF or PRS sections. This leaves traces of the contents and guarantees the date of filing, making it easier to prove copyright.
Please note that a website obtained through development by a graphic designer with a computer program, the result of which is a website consisting of a defined sequence of images, is to be considered an autonomous human intellectual creation and is protectable by copyright.
Copying a website is considered illegal if the source codes of the site have been replicated without any authorisation and the new site differs from the original only in some marginal aspect.
When a website has been copied, the profit of the infringer can arise from the lack of remuneration to the graphic designer charged with development of the site. Referring in particular to duplicating a website to allow purchase of products, the infringer’s profits result from advertising and selling products, thereby free-riding at the expense of the original site.
Italian IP does not protect only a single tool used for a website—there are several IP possibilities and each of these has to be evaluated on the basis of the characteristics of the site.