Unless you create your websites yourself, there are many ways to find someone else who would do it for you.
You may hire an established company with an army of designers, programmers, copywriters and artists; you may crowdsource the job; you may find someone who will do it as inexpensively as it gets through websites like FIVERR.COM; you may use templates; you may ask a friend, a co-worker or an employee.
For simplicity’s sake, by “web design” I will be referring to the combination of graphic design, interface design, HTML coding, database programming and scripting, in other words, everything that is involved in creation of modern websites.
This post is not about what makes a good web designer. It assumes that you have found someone who can do the job according to your liking and your budget. This post focuses on issues that you must consider before having someone design a website for you.
I. Who Will Own It?
Just because you paid to have your website designed, does not mean that you own copyright in it.
According to Canadian Copyright Act, it is the person who actually created the work that is the author of the work. The author of the work is also the first owner of copyright in the work, unless the author happens to have created the work in the course of employment, in which case it is the employer who is the first owner of copyright.
Unless a true employment relationship exists between you and the web designer and the creation of the design is within employment duties of the employee, the only way for you to obtain property interest in the copyright to what the designer creates is to enter into a written assignment or license agreement with the copyright owner. Otherwise, the copyright will remain with the designer or his employer. At best, you will be said to have acquired a nonexclusive license to use the design. The scope of the license will be limited to simple use, which may or may not include further alterations by you or a third party.
This means that the website is not your asset, it is not something that you can offer an investor to buy a share of.
Unless the website has absolutely no value to you and you can quickly replace it without using any of the elements of the old design in your new design, always make sure that you have a written agreement with the web designer assigning all rights in the design to you.
This will also ensure that the designer will not have a legal right to “design” the same website for somebody else.
While the agreement does not necessarily have to be printed and signed, it is still the preferred way of documenting contractual relationships. If you should need to enter into the agreement over email, make sure you can properly identify the other party to the transaction.
II. Did the designer really create it?
Make sure that web designer does not use other people’s content without proper authorization.
Unauthorized use of images, scripts, commercial fonts or content will likely infringe copyright of someone who created them. And if you have a successful business, it is you (or your company), not the web designer, that will be sued if the copyright owner decides that you have enough money to go after.
Your contract with the designer should include a provision that would disallow the use of third-party content other than with your prior approval.
It should also contain indemnification provisions. In other words, the designer must undertake to compensate you for any losses that you may incur if you get sued by someone whose works the designer used for your website.
A different side of the same issue is when you enter into a contract with a company, rather than an individual. You need to make sure that the company has properly contracted with all humans who are going to take part in development of your web design. These may be employees, independent contractors or outsourced force. The goal is to make sure that the company indemnifies you if you are sued by these individuals claiming that they have not properly transferred their copyright to the company that you contracted with.
Remember, you cannot tell the copyright owner to sue the party that you dealt with. It is you (or your company) that is using the work without permission. It is you (or your company) that will get sued. All you can do is request compensation from the party that you dealt with. This is one of the few problems with outsourcing work to someone in distant jurisdictions. If you get sued, it is very unlikely that you will be able to recover your money from someone in Pakistan whom you have never met.
III. What are you allowed to do with the design?
Unless you are prepared to be stuck for life with the same designer, make sure you have the right to hire others to modify the work of your designer.
Once a copyrightable work is created, the owner of copyright has a bundle of separate rights in it. One of such rights is to modify or to allow others to modify the work. Make sure that you have obtained the right to keep using the website created by your designer if you were to make changes to it.
You should be able to take some elements of the design and use them as you see fit. You should be able to use these elements in your offline marketing materials (brochures, booklets, business cards). You should also be able to use elements of the design to apply for a trademark.
Otherwise, you may find yourself hostage to a difficult dilemma – either to continue using the services of your initial designer forever or to be forced to redesign the whole website and derivative materials from scratch.
If you think that it is a hypothetical scenario that never happens in real life, think again. See for yourself.
Another issue in this respect is whether you will be required to retain notices about the designer’s authorship of the design. There is no right and wrong answer here, but it is certainly an issue that you need to resolve with the designer before you agree to hire him or her.
So, let’s recap:
1. Always have your agreements with the designer in writing (in hardcopy or at least electronically);
2. Make sure the contract properly identifies the other party (is it an individual or a company? the party’s full name and address? if the other party is an individual, consider taking a copy of their ID);
3. Make sure you own the right to what you are paying for;
4. Make sure the designer undertakes not to create copies of your website for others;
5. Make sure the designer undertakes not to use third party materials (including images, scripts and fonts) unless you OK each such use;
6. Make sure the contract contains a provision that will allow you to recover your losses from the designer if you are sued by a third party whose materials the designer used without your approval;
7. If you are entering into a contract with a company, make sure the company indemnifies you if you are sued by the company’s own disgruntled employees or contractors;
8. Make sure you have the right to make modifications to the website without having to hire the same designer;
9. Make sure you have the right to use materials used in the website in your offline marketing materials without having to hire the same designer.
10. Make sure to settle the issue of whether you should identify the name of the designer on your website and marketing materials.
If a designer that you are planning to hire, or a web design company, or a design crowdsourcing website refuses to address these issues in a formal agreement, think twice whether it is a good idea to put yourself in the position when you would be paying for the privilege of being taken hostage by the designer’s whim.
A side note to designers, design companies and crowdsourcing websites: if you do not address these issues in your agreements with clients (or if you don’t even use written agreements with your clients), you are doing your clients a great disservice. In fact, offering your clients not only great design services but also legal peace of mind will be an important competitive differentiator for your business.
A thorough agreement drafted by an experienced copyright lawyer will cover all of these and many other issues. You see, the negotiation process tends to go much smoother before any work have been done and before the money has changed hands. Typically, the cost of helping parties resolve a dispute is much higher than the cost of preventing it by proactively answering all the “what ifs” and “how comes” in the text of a contract. That’s in addition to the indirect costs of the time wasted on unproductive activities rather than what brings you pleasure or generates money.
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Tags:Small BusinessNew Copyright ActFair DealingCollectivismPhilosophy