Intellectual property of website (ex employer)

Tracing copyright owners and asking permission.
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Intellectual property of website (ex employer)

Post by trevor123 »

Letter 1 :

During employment, and within working hours, you managed for our client a website with the domain name XXXX. This domain name was owned by our client and registered in our clients name.

The website incorporated our clients on-line shop1 through which electronic customer orders and related sales were facilitated and made. In consideration for your management of the website you received a percentage of the net profits from the online shop sales. This was in addition to your salary.

Subsequently without any reference to or authorisation from our client you registered in your name two further domain names YYYY and ZZZZ and relocated2 the online shop from the XXXX website to the other websites.

Notwithstanding your unauthorised action and in the interest of an amicable settlement, or client entered into discussions with you for the purchase of the domain names and a price of £AA for each name was agreed and paid. It was a condition of the agreement that you would make the complete and necessary arrangements with the relevant registrar to have the domain names transferred from our name to our clients name. We are instructed that to date you have not completed the transfer of the domain names to our clients name. Accordingly you are in breach of contract. In fact you have only just recently provided our client the passwords relating to the YYYY and ZZZZ websites.

You have had more than sufficient and or reasonable time to perform your obligations under the agreement. Our client requires that within fourteen days after the date of this letter you take action to complete the transfer the domain names to our clients name and liaise with our client in this regard. Our client requires that the transfer of the domain names is completed within 21 days after the date of this letter.

Our client hopes that this matter can be resolved amicably and quickly without the need to take formal legal action. Our client has been advised that it is entitled to make a claim for damages and/or specific performance. Further, our client may, if necessary, make an application for an injunction seeking to prohibit you from dealing with the domain names. You will appreciate formal legal action will be costly and in the event this becomes necessary our client will seek to recover its legal costs from you. Lastly, we reserve our clients right to any other remedy or procedure to which it may have recourse against you arising from your unauthorised action and the content of this letter is ‘without prejudice’ to the same.

We look forward to receiving your acknowledgement to this letter as soon as possible together with your confirmation that you are taking appropriate action to transfer the domain names to our client.

Reply 1 :

After receiving this, I called up and explained how this had caused many arguments and my boss had asked me to sign it across on many occasions and I refused to. I asked to cease communications with myself as I didn’t appreciate the threats of legal actions etc.

Letter 2 :

We write further to your telephone conversation with our offices on the DATE. We enclose a copy of our attendance note recording what you said. (They made a mistake here and sent me an attendance note of what my ex employer said)

We note your assertion that you have not sold the domain names. We enclose copies of letters from our client to you dated JUNE2008 a OCT2009 (this later letter signed by you)3 as evidence of the agreement to sell the domain names to our client and that you accepted payment for them. There is a legally binding contract between you and our client the terms of which are set out in previous correspondence. You are in breach of the contract.

Our clients will seek to recover from you all its legal costs incurred in enforcing the contract through the court.

Further as you unlawfully took control of our clients online shop which was located on its own website and which you then relocated to your own website, you have by doing so usurped our clients trading title and or name. The legal implications for you arising from this are potentially serious and costly.4

Our client is suffering loss and damages as a consequence of your actions and will seek the legal remedy or remedies available to it.5

Our client now gives you one final opportunity to transfer the domain names to it. You must do this within 14 days of the letter.

Reply 2 :

Dear Sir,

After a letter dated DATE I called your secretary and explained that I have expressed to NAME (MY BOSS) on a number of occasions that I have not sold anything to him.

I also requested that I didn't want letters or in fact any further communication with yourselves.

Threatening me with legal action if I do not comply with what your client wants isn't appreciated, in fact I consider it harassment.

For your information, the first letter has a number of inaccurate statements and I have never agreed to transfer ownership verbally or in a written document. Your client has had multiple meetings with myself, discussing various possibilities in which I might sell the website to him subsequent to the letter dated 6th October 2009 - to which I have not agreed.

I would like to reiterate that the letter this morning has caused distress and I would not like any further communication from NAME (solicitor) or your client.

Letter 3 :

We acknowledge receipt of your email on DATE.

To date our correspondence has attempted to achieve an amicable conclusion and settlement to the dispute in a manner consistent with the Practice Direction (Pre-Action Conduct).

In keeping with the Practice Direction our client is prepared and willing to engage in Alternative Dispute Resolution (ADR) and invites you to do likewise. Given the nature of the dispute it reasonable that ADR should take the form of a “Without Prejudice” meeting at which there can be frank and open discussion of the issue/s with a view to either narrowing those and/or settling the dispute. Our client proposes the meeting takes place at a neutral venue and shall be attended by the parties themselves without
their legal representatives.

Please let us have your confirmation that you are willing to attend and take part in the proposed ADR. If so we can then agree a date, time and venue.

We refer you to paragraph 4 of the Practice Direction which deals with the Court’s power to impose sanctions for failure to comply with the Practice Direction. Such sanctions may include, but are not limited to, Orders about who should pay costs. An example of non-compliance includes unreasonable refusal to consider ADR.

We are instructed that you have admitted to our client that you failed to account to HMRC for tax due and payable by you for your income deriving from other work. Given this our client has serious concerns about your ability to satisfy any judgment (including an Order for Costs) made in its favour. If proceedings become necessary because of your failure to comply with the Practice Direction, it is our client’s intention to make an application for Security for Costs.

We look forward to receiving your reply within 7 days after the date of this letter.

There are a number of problems I have…

I created the website in my own time, outside of my job description, completed in my house, updated outside of working hours etc.

My boss made a few additional payments to me for integrating additional features, which was separate from my normal salary.

We had a commission share on the website but now I am no longer with the same employer we both want to split.

1 The e-commerce was not incorporated, I set up an additional domain and set up on there (as their hosting didn’t have database facilities)
2 See 1
3 I was asked to sign a letter to say I had read it, not to confirm receipt of an order. Usually we issue purchase orders at work…
4 As mentioned previously, I never relocated any website.
5 I am actually losing at the moment, I have continued to pay google adwords and they haven’t paid me the 50% which we had initially agreed on.
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Post by AndyJ »

Hi Trevor,
Thanks for the detailed background information. As I am sure you are aware the copyright issue is not really the heart of this dispute. The solicitor's letters note (and you have confirmed it here) that you carried out this work in addition to your normal duties, but clearly that was at the request of your employer, rather than on your own initiative. On that basis I think there may be a presumption in favour of the employer being the first owner of copyright since he tasked you and gave you additional payment (although not an actual increase in salary) for the work you did (ie it was in the course of your employment). Set against this it the fact that you did the work at home and outside normal hours. Did you have a contract of employment at the time? This may be significant.
However, as I have said, irrespective of whether you or the employer owns the copyright in the site (or online shop part of it) the dispute appears to be about what you did or did not agree to do subsequently about transferring the online shop etc. In other words it hinges on whether there was a contract (verbal or otherwise) in place.
I strongly suggest you seek proper legal advice. Initially the Citizen's Advice Bureau should be able to help. The ADR route will buy you time but you should take proper advice on your position.
Best of luck.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Post by trevor123 »

Hi Andy,

Thanks for your reply.

It was my suggestion / initiative that brought about the website - I was the one who approached my boss.

I will follow the ADR as you suggest, and am seeking advice as the local CAB were not able to advise on the matter.

I didnt have a contact at the time, which was a gripe, but was offered a contract of employment that included me handing over the website - which on multiple occasions I refused to sign (as it clearly stated that it was a contract where I had to sign over the website)

Thanks again for your advice, I will update all information on here to keep everyone in the loop and hopefully help others out in the future.
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