A website is not regarded in law as a single, undivided asset. The graphic design that forms the site’s visual face and the text and materials published on its pages differ in nature from one another, and they therefore fall within the protective scope of different statutes; the registration procedures and protection mechanisms diverge along the same line. As a rule, the graphics used on a site are treated as design works and benefit from the provisions of the Industrial Property Act (SMK). The articles and comparable elements making up the site’s content, by contrast, are accepted as works and are subject to the protection of the Law on Intellectual and Artistic Works (FSEK). This difference in status is decisive both for determining who holds the rights and for selecting the remedy to be pursued in the event of an infringement.
The Industrial Property Act defines a design as the appearance of the whole or a part of a product, or of the ornamentation upon it, arising from features such as line, shape, form, colour, material or surface texture. Since site designs and graphics produced through a serious investment of effort and time may be characterised as “industrial designs”, their protection within the framework of the rights conferred by the SMK may come into play.
For site content the starting point is different. Under Art. 6(11) of the Law on Intellectual and Artistic Works, such content is treated as an adapted work; by virtue of that quality it may benefit from FSEK protection against copying.
Whether a design can benefit from the rights offered by the Industrial Property Act No. 6769 depends on the fulfilment of a number of conditions. First, the design must be new and possess distinctive character. In addition, the design must have been made available to the public by being placed on the market through exhibition or sale, used, described, published, promoted or disclosed for similar purposes. As noted at the outset, the site’s graphics will be treated as designs and protected under the SMK, whereas articles and other content will be treated as works and protected under the FSEK.
The Concept of the Domain Name and Its Legal Position
The part of an internet address that follows “www.” constitutes that site’s domain name. For example, the element “mevzuat” in the address www.mevzuat.gov.tr is a domain name. It is through this domain name that the site’s address on the internet is reached. It is technically possible to access a site without using a domain name; doing so, however, requires knowing the site’s IP address.
The concept of the domain name is defined in Article 3/1-v of the Electronic Communications Act No. 5809:
Electronic Communications Act No. 5809, Art. 3(1)(v)
“Names identifying the internet protocol number used to determine the address of computers or websites located on the internet”
The functions performed by a domain name are manifold; the most striking among them are that it accelerates communication and strengthens advertising and marketing capacity. In a period in which electronic commerce and online ordering have gained such momentum, it has become almost impossible to imagine a business without an internet address. The domain name, which forms the core of that internet address, becomes a decisive element precisely at this point.
Considered in its legal dimension, the domain name shares a great many features with the trade name, the business name and the trade mark. Nevertheless, it does not fall squarely within any of these concepts. Indeed, a domain name is in essence the expression in words of the coded sequence of numbers (the IP address) used to reach an internet address, and it may be used for commercial purposes just as it may be used for non-commercial ones. Because of this sui generis structure, it is possible to say that a domain name has the quality of a distinctive name and sign.
Registration of the Domain Name
Domain names may carry an extension belonging to a particular country, or they may be created without containing any country code. The registration and recording procedures for domain names containing a country code are conducted according to the rules of law of the country concerned. Türkiye’s country code is “.tr”, and the competent authority in our country for “.tr” domain names is the Information and Communication Technologies Authority.
Applications to obtain a domain name are directed to TRABİS (the TR Network Information System), authorised by the BTK, and to the Registrars operating in integration with TRABİS. Domain names are divided into two groups according to the type of extension: those requiring documents to be submitted and those for which no document is required. For instance, the “.com.tr” extension is among the domain names for which no document is required, while “.edu.tr” belongs to the group for which the submission of documents is mandatory. For domain names requiring no documents, the first come, first served principle applies; consequently, the same domain name cannot be allocated to more than one person. Registration is made for a fixed term, and under the relevant regulation domain names may be allocated for periods of not less than one and not more than five years.
Rights and Obligations of the Domain Name Holder
Use and Renewal
The holder of a domain name has the power to use that name throughout the allocation period granted to it. At least three months before the term expires, a notification is sent to the holder by the body with which the record was made, and renewal of the domain name is requested. Accordingly, the power of renewal is likewise among the rights of the domain name holder. The law expressly provides that, following renewal, the allocation period may not exceed five years. Beyond these, the holder may also renounce the name; the renunciation may be effected by applying to the registrar before the allocation period expires.
Transfer and Sale
There is likewise no legal obstacle to the transfer and sale of domain names. These transactions are conducted through the registrar with which the domain name application was made. When a transfer or sale takes place, no change occurs in the period of use granted for the domain name. Where the holder of the domain name is a natural person, the domain name passes to the heirs upon death.
Resolution of Domain Name Disputes
Disputes concerning domain names mostly arise around trade marks. Although trade mark law permits the use of the same mark for goods and services that are not similar, the same domain name cannot be allocated more than once, because the first come, first served principle applies to domain names. This turns into a dispute in the form of companies bearing the same trade mark being unable to obtain the same domain name. Similarly, a domain name containing a trade mark having been taken beforehand by a person with no connection whatsoever to that mark is among the situations that give rise to problems.
In order to resolve disputes of this kind, application may be made to Dispute Resolution Service Providers — UÇHS for short. The aim is thereby to have the dispute settled by arbitrators. An application to a UÇHS is made by completing a form. For the application to be admissible, all three of the following conditions must be met together:
- that the domain name in dispute is identical or similar to a trade mark, trade name, business name or other distinctive sign owned by the applicant or used by it in trade,
- that the person who had the name allocated has no legal right in, or connection with, the name in question,
- that the domain name has been allocated to, or is being used by, its holder in bad faith.
The Legal Position of Website Designs
The Law on Intellectual and Artistic Works No. 5846 defines a work as any product of intellect and art that bears the individual character of its author and is enumerated as a work of science and literature, music, fine arts or cinema. It follows from this definition that two conditions must be present together for a product of the intellect to benefit from FSEK protection. The first is termed the objective condition and denotes that the product of the intellect falls within the scope of one of the four types of work enumerated in the law. The second is the subjective condition; it means that the product of the intellect reflects the individual character of its author. A product meeting both conditions will be treated as a work for FSEK purposes and taken under protection. Conversely, if the graphic designs and other designs appearing on a site fall within none of the four types of work enumerated in the law, their protection under the FSEK is out of the question.
Setting aside content falling within the scope of the FSEK, such as articles and blog posts, the graphic designs used on a site may be assessed as industrial designs. Within this framework, websites accepted as having the quality of an industrial design by virtue of their graphic designs may be registered and taken under protection within the scope of the SMK. Design is, after all, a component not only of art but also of industry, and the same protection is afforded to designs serving industry. Indeed, under Art. 55 of the SMK, a design is the appearance of the whole or a part of a product, or of the ornamentation upon it, arising from features such as line, shape, form, colour, material or surface texture.
As can be seen, the graphics and other visual elements used on a site bear all the qualities required by the definition of design drawn in Art. 55 of the SMK. For that reason there is no obstacle to the registration of those graphics under the said law.
Design Registration and the Powers Conferred by Registration
Persons and organisations wishing to apply for design registration must address themselves to the Turkish Patent and Trademark Office. The application may be made in person or by post, and it may equally be made online using an electronic signature.
Protection of a registered design begins to run from the date of application and lasts 5 years. This period may be renewed in successive 5-year terms until a total protection period of 25 years is reached. Upon registration, the design holder acquires the powers to assign the registered design to third parties, to make it the subject of a licence agreement and to bequeath it. On the other hand, the protection afforded by registration is valid only within national borders.
That said, Art. 69(2) of the SMK expressly provides that unregistered designs may also be protected. Under that provision, unregistered designs are protected for three years from the moment they are made available to the public, without any need to apply to the Turkish Patent and Trademark Office. The scope of the protection afforded to an unregistered design is, however, narrow compared with registered designs, and those limits are set out in Art. 59(2) of the SMK. Accordingly, the holder of an unregistered design may exercise the power to prevent use only where the protected design, or a design so similar to it that it cannot be distinguished from it in overall impression, has been taken by copying. In other words, unregistered protection operates only against imitation; designs developed independently and without knowledge of the earlier design do not count as copying.
All matters relating to designs — including registration, protection, expiry of the right, assignment and the legal mechanisms to be set in motion in the event of infringement — are regulated in Arts. 55-81 of the Industrial Property Act No. 6769.
The Legal Position of Website Content
Content in the nature of articles and writings published on a website may be treated as a “work” under Art. 6(11) of the FSEK. The relevant legislative provision expressly lays down the following:
Law on Intellectual and Artistic Works, Art. 6(11)
“databases which are readable by means of a device, or other databases, resulting from the selection and compilation of data and materials for a particular purpose and in accordance with a specific plan, shall be deemed works.”
Within this framework, content produced and appearing on a site — such as computer programs, works of literature, articles, poems, pieces of music and works of fine art — is accepted as a work for FSEK purposes and protected.
Registration and Protection of Website Content
Site content that qualifies as a work under the FSEK cannot lawfully be registered. Even so, the content benefits from the protections offered by the FSEK independently of registration. The truly critical point here is correctly identifying who will benefit from that protection. Where the content belongs directly to the site owner, no doubt arises. However, as it becomes increasingly common for websites to be prepared by professional web design firms, identifying the rightholder becomes more difficult.
Where the site has been commissioned from third parties acting as web designers, the intellectual rights relating to the design and the content must be assigned to the site owner by a written agreement. If no such assignment takes place, the person or firm that prepared the site remains the owner of the work it has produced.
Since elements found in the site’s content — such as computer programs, articles, poems, images and music — have the quality of works, their use by others depends on obtaining written permission from the author.
Content shared on websites is also expected to be original. If the content involves plagiarism from other works by way of copy and paste, the sanctions provided for in the FSEK may be applied.
Moral Rights in the Content
The FSEK groups the author’s rights under two headings: economic rights and moral rights. The moral rights granted to the author are the following: the right to disclose the work to the public; the power to have the author’s name stated on the work; the power to prevent alterations to the work; and the rights that may be asserted against the owner and the possessor.
For example, publishing a piece of writing on a website is an act of disclosure to the public. The fact that the author has made the work available to the public does not extinguish the author’s power to grant authorisation to third parties; that power remains vested in the author after disclosure as well. Where a work is published online without the author’s consent, the person carrying out the unauthorised publication may face a sanction. In the same way, posts on social media platforms such as Facebook, Twitter and YouTube must be made merely by linking to the content; otherwise, even copying and pasting the content may constitute an infringement.
These moral rights granted to the author under the FSEK are not, moreover, limited to any period of time.
Economic Rights in the Content
The author may benefit from the economic rights by adapting, reproducing, renting out or lending the work. In addition, the performance of the work and/or the rebroadcasting by other organisations of works broadcast by organisations are among the ways in which the economic rights are exercised.
Under Arts. 46-47 of the FSEK, in cases where the State exercises the power to benefit from a work and in cases of dedication to the public, which are treated as exceptions, everyone may benefit from the economic rights once the period has expired. Save for those exceptional situations, the term of protection continues throughout the lifetime of an author who is a natural person and lasts a further 70 years from death.
For detail on the scope and assignment of the rights, reference may be made to our study entitled The Rights of the Author, the Protection and Assignment of the Right; and for the judicial remedies available in the event of infringement, to our study entitled Actions That May Be Brought by the Author under the FSEK.
Independent Legal Assessment
The problem most frequently encountered in protecting digital assets is the failure to clarify from the outset which statute the rights rest on and to whom they belong. Corporate sites are most often commissioned from an agency under a single contract; if that contract contains no express provision on the assignment of intellectual rights, the business may not hold the rights over its own site.
The second critical heading is the domain name. The application of the first come, first served principle can catch out even businesses that have completed their trade mark registration. Devising a domain name strategy in parallel with the trade mark application largely removes the need to resort to a UÇHS procedure later on.
In managing a portfolio of digital assets, we recommend that the following matters be prioritised:
- Including an express provision on the assignment of intellectual rights in web design and software contracts
- Assessing the possibility of registration before the Office for distinctive interfaces and graphic designs
- Planning the timing with regard to the limited scope of the three-year protection afforded to unregistered designs
- Entering the five-year registration terms and the domain name renewal dates in a calendar
- Ensuring alignment between the trade mark and the domain name from the outset, having regard also to the types of extension
- Reviewing the originality of the content published on the site and obtaining written permission for third-party works
Independent Legal provides advisory services and litigation support in the field of industrial property and intellectual rights, from design registration applications to domain name disputes and the procedures to be pursued against infringements of rights.