NGU & CO LAW FIRM
NGU & CO LAW FIRM
ADVOCATES OF THE CAMEROON BAR
Barristers and Solicitors : Supreme Court of Cameroon
OAPI PATENT AND TRADEMARK ATTORNEYS
An Analysis of the Impact of Electronic Commerce On Intellectual Property
By
SIMON N. CHE (Managing Partner, Ngu and co law firm , Cam Cameroon Building Akwa P. O. BOX 2250 Douala Cameroon, Tel: +(237)33431273 Fax +(237) 3431273 E-mail: simon@nguandco.com
website : www.nguandco.com
Intellectual property law is the area of the law that deals with legal rights
associated with the creative effort or commercial reputation and goodwill.
The law deters people from copying or taking unfair advantage of the work
or reputation of others and provides remedies should this happen. There are
several different forms of rights or areas of law giving rise to rights that
together constitute what is jointly referred to as intellectual property.
These are as follows: trademarks, patents copyright, rights in performances,
the law of confidence, registered designs, design rights passing off, trade
libel and rights associated with plant and seed varieties protection. [2]
For the purposes of this project, I will treat only the intellectual property
rights that are remarkably affected by the explosion of the web in general
and electronic commerce in particular. These are: trademarks, patents, copyright
and related rights. However, although the concept of domain names is protected
under a different set of laws, I will for the purposes of this dissertation
treat it because of the crucial role it plays in the arena of both electronic
commerce and the protection of trademarks. Cybersquatting is the term that
has been coined for the ever increasing confusion and tension that exist between
the use of domain names on the internet and the protection against the copying
or taking undue advantage of the rights of registered trademark holders. [3]
Trademarks
A trademark is defined as any sign capable of being represented
graphically, which is capable of distinguishing goods or services of one undertaking
from those of other undertakings. [2] Therefore the main functions of a trademark
are: protection against confusion or deception in the market place; protection
against unfair competition, indicator of the origin of products or services;
distinguishing of the function of products or services; protection against
the dilution of well known products and services; product identification;
indicator of quality; advertising; distinguishing social status and for commercial
exploitation of products and services. Intellectual Property by David Bainbridge
[2] provides a more detail discussion of trademarks.
Domain names
Domain names are a simple form of an Internet address, designed to serve the
function of enabling users to locate sites on the Internet in an easy manner.
They may be registered in spaces known as “ generic top-level domains”
(gTLDs) such as .com, .org, .net, or in the “country code top-level domains”
(ccTLDs) such as .ch for Switzerland , .fr for France, .cm for Cameroon or
.uk for the United Kingdom etc.
The use of the domain name system has grown and is continuing to grow very
rapidly. Since domain names are easy to remember and use, the domain name
system (DNS), the central system for routing traffic on the Internet has assumed
a key role in electronic commerce. On the one hand, it facilitates the ability
of consumers to navigate the internet to find web sites they are looking for,
and on the other hand, it facilitates businesses’ ability to promote
and an easy to remember name or word which may, at the same time, serve to
identify and distinguish the business itself or it’s goods or services
and to specify its corresponding online, Internet location. [2]
Following the increase of commercial activities on the Internet, domain names
have acquired increasing significance as business identifiers and consequently
have come into conflict with the traditional system of business identifiers
that existed prior to the Internet and that are protected by intellectual
property rights, namely, trademarks and other rights of business identification,
geographical indications and the developing field of personality rights. The
tension between domain names and intellectual property rights has led to many
problems that raise challenging questions.
On the one hand the Domain Name System (DNS) is largely privately administered
and gives rise to registrations that result in a global presence, accessible
from anywhere in the world. On the other hand, the intellectual property rights
system is publicly administered on a territorial basis and gives rise to rights
that are exercisable and enforceable only within the territory concerned.
This lack harmony between the two systems has been exacerbated by some predatory
and parasitical practices that have been adopted by some people to exploit
the lack of connection between the purposes for which the domain name system
was designed and those for which intellectual property protection exists.
Example of such practices include but are not limited to the deliberate, bad
faith registration as domain names of trademarks in the hope of being able
to sell the domain names to the owners of the trademarks, or simply to take
unfair advantage of the reputation attached to the trademarks in issue. [3]
Copyrights and related rights
Copyright is concerned with the protection of literary and artistic works.
Copyright is therefore a property right, which subsists in various works,
for example literary works, artistic works, musical works, sound recordings
films and broadcast. Copyright gives the owner of a work that is protected
by copyright the exclusive right to do certain things in relation to the which
include but are not limited to making a copy, broadcasting or giving a public
performance. Anyone else who does any acts restricted by copyright without
the permission of the copyright owner may be subject to legal action taken
by the owner of the copyright for copyright infringement. However, ownership
of copyright is alienable and it can be transferred to another or a licence
may be granted by the owner to another, permitting him to do one or more specified
acts with the work in question. [2]
Copyright does not protect an idea; it is the expression of an idea that is
protected i.e. a tangible form – painting, book etc.
International protection of copyright works is affected mainly through two
international conventions i.e. the Berne Copyright Convention [4] and the
Universal Copyright Convention [5]. The United Kingdom is a member of both
conventions. Both conventions lay down minimum standards of protection to
be attained and reciprocity of protection between member countries. The conventions
have been responsible for the high level of harmony that now exist on the
world stage. Therefore because of agreements under the conventions it is possible
for a foreign citizen to take legal action in the United Kingdom for copyright
infringement occurring there, as if he or she was a British citizen. The author
of copyright is the person who creates the work in which copyright subsists,
however, for some type of works, the author is the person by whom the arrangements
necessary for the creation of the work are undertaken i.e. an employer. [2]
Patents
A patent is a monopoly right to the exclusive use of an invention and can
last for a maximum of 20 years. A patent is a property, which like any other
business commodity, may be bought, sold, hired or licensed.
Generally the purpose of a patent is to provide a form of protection for technological
advances. The idea is to provide a reward not only for the creation of an
invention, but also for the development of an invention to the point at which
in is technologically feasible and marketable. The protection and reward is
also aimed at promoting additional creativity and encourage companies to continue
their development of new technology to the point at which it is marketable,
useful to the public and desirable for the public good.
To obtain patent protection the applicant must also show proof of the following:
That the invention is new or novel. The invention should be capable of being
considered a new solution of a technological problem. However, there is no
requirement for the invention to be represented in a physical embodiment.
That it is non – obvious, that is to say, it must involve an inventive
step. The invention must be enough of an advancement to be considered non
– obvious by a person having ordinary skills in the art over the state
of technology before the invention.
That it is useful, that the invention should be capable of industrial application.
[2] The invention must be able to be used on a certain scale in practice i.e.
exploitable in industry.
Not all inventions are patentable, to be able to obtain a patent, the applicant
must proof that the invention concerns the composition, construction or manufacture
of a substance, article or apparatus, or with an industrial type of process,
as distinct from artistic creations.
Some categories of inventions are specifically excluded from patentability.
These include the following:
Things that exist in nature, which are discovered and not invented,
Machines that defy the laws of nature
Scientific theory,
Mathematical methods,
Schemes, rules or methods, such as those for doing business,
performing purely mental acts or playing games,
Methods for medical treatment for humans or animals or diagnostics
methods, however, products used in making diagnostics are patentable.
The advantages of taking out a patent are the rights granted the patent owner
by law to exclude all others in the territory covered by the patent from making,
using, selling or importing the invention. This however, does not give the
inventor or the owner of the patent the right to use the invention if it’s
use is illegal. The inventor or the owner of a patent can prevent others from
marketing and profiting from the invention for a period of 20 years from the
date on which the application is filed. What this right, granted by the law
to the owner of the patent does is give the developer of the technology the
right to have it to himself for 20 years in exchange for full disclosure to
the public of how to use it. When the patent expires, the technology becomes
public property, and the public is free to use it. [2]
Patent protection can be obtained and enforceable only on a country-by-country
basis with the exception of some regional arrangements that permit a regional
protection such the European Patent Organisation. [6]
There is also an International Agreement administered by the World Intellectual
Property Organisation (WIPO), called the Patent Cooperation Treaty (PCT) for
the filing, searching, publication and examination of international applications.
However, the Patent Cooperation Treaty only makes it easier to obtain patents
in the Contracting States by providing for the filing of one international
application, which may be subsequently prosecuted in the different designated
National or Regional Offices of the States party to the Patent Cooperation
Treaty. The granting of patent protection in the respective countries designated
in the international application is left to the respective designated Offices.
They would require the applicant of the international application to enter
a regional phase in the designated Offices concerned and to pay the relevant
filing and maintenance fees, with the only exceptions being that the date
when the international application was made would be considered as the official
filing date and the application will not be re-examined for novelty, inventive
step and industrial applicability. The designated Offices will take the filing,
search, examination and publication of the international application into
consideration. [7]
There is unfortunately no single world patent. Filing, examination, granting
of protection, maintenance and the payment of the relevant fees, and enforcement
of infringement have to be done on a country-by-country basis. This is generally
not only very expensive but is also a very difficult thing to do. Mere failure
to pay yearly maintenance fee in one country will cause the patent to lapse
in that country, meaning any one in that country is free to use it as he or
she pleases. With the advent of the Internet, patent disclosure could now
be done on the Internet; this would mean a global disclosure of the invention,
with all its direct and indirect consequences. Therefore a person who is resident
in any country in the world in which the owner of the invention has not been
able to seek and obtain protection of the invention can easily have access
to a full disclosure through the Internet and proceed to exploit the invention
without the consent of the owner of the invention. Worst still he or she may
wish to use the knowledge acquired from the disclosure to obtain patent protection
in his or her country of residence without the consent or even the knowledge
of the rightful owner of the invention. This posses major problems both for
intellectual property in general and patent protection in particular.
This project is aimed at attempting an analysis of some of these problems
and providing guidelines for companies involved in on-lines businesses and
owners of intellectual property rights in general and patents in particular
on how to identify and deal with these problems.
Aims of the project
The use of electronic transactions through the Internet which provide a global
medium, not in any manner limited by territorial boundaries is increasingly
posing serious problems for acquisition, exploitation and enforcement of well
known forms of intellectual property rights which are enshrined in different
pieces national legislations and international conventions.
The main aims of this project are:
Undertake an analysis of the impact of electronic Commerce transactions
on some forms of intellectual property rights i.e. trademarks, domain names,
copyright and related rights and patents.
Provide guidelines for companies involved or wishing to set up on-line businesses,
on how to identify and handle issue s relating to intellectual property.
To critically appraise the problems and conflicts experienced in the on-line
business community as a result of the overlap between the utilisation of the
medium provided by the Internet for on-line businesses to access global markets
at minimal cost and the legal and regulatory restrictions imposed on them
by national legislations and international conventions that accord protection
to owners of intellectual property rights such as trademarks, copyright and
related rights and patent law.
To attempt to provide guidelines on the level of legal compliance required
of on-line businesses by national legislations and international conventions
dealing with intellectual property law. Compliance will be accessed on the
lines of remedies and recommendations so far provided by the world Intellectual
Property Organisation (WIPO) [8].
Overview of electronic commerce
The evolutions in Internet technologies and its use by an every increasing
number of people and businesses in the world as led to rapid expansion and
vulgarisation of electronic commerce. This has forced not only businesses
but almost all other areas of human activities to try to adjust to the new
exigencies and opportunities brought about by Internet and the related technologies.
The term electronic commerce is commonly used in common parlance to refer
to a broad class of activities, which are generally understood to be associated
with the use of a computer and the Internet to buy and sell goods and services
in a new, direct and electronic manner. The Internet provides the virtual
market place for buying and selling, trading, advertising and transactions
of all kinds. Like with most other areas this expansion of electronic commerce
has had a very significant impact on intellectual property.
The concept of electronic commerce is better explained by addressing separately
it’s two constitute words i.e. “Electronic “ and “Commerce”.
The term electronic refers to the global infrastructure of computers and telecommunication
technology and networks upon which the processing and transmission of digitised
data takes place. This could be private and proprietary networks or open networks
with non-proprietary protocols such as the Internet. [1]
The Internet unlike the private and proprietary networks allows communication
and transactions to take place over an “open network” with no required
security apparatus between potentially unlimited numbers of participants who
may have had no pre-existing contacts. The open nature of the Internet along
with its multifunctional character and the increasingly low cost of accessing
it has galvanized the potential for electronic commerce.
The Internet also provides access to a digital medium in which many perfect
copies of text, images, and sound can be easily made and transmitted and therefore
making it possible for material that is protected by intellectual property
laws such as trademarks, copyright and related rights, patents etc to be easily
misused and thus posing new challenges for intellectual property owners and
law makers concerned with legislating in the area of intellectual property.
The word “commerce” as used in electronic commerce refers to an
expanding array of activities taking place on the open-networks. Examples
include but are not limited to buying, selling, trading, marketing, advertising
and transactions of all kinds that lead to an exchange of value between two
parties. On-line auctions, sale of software, music, pornography are just a
few of the millions of products that are commercialised in the virtual market
place provided by Internet technology. [1]
Overview of intellectual property
Intellectual property law is the area of the law that deals with legal rights
associated with the creative effort or commercial reputation and goodwill.
The law deters people from copying or taking unfair advantage of the work
or reputation of others and provides remedies should this happen. There are
several different forms of rights or areas of law giving rise to rights that
together constitute what is jointly referred to as intellectual property.
These are as follows: trademarks, patents copyright, rights in performances,
the law of confidence, registered designs, design rights passing off, trade
libel and rights associated with plant and seed varieties protection. [2]
For the purposes of this project, I will treat only the intellectual property
rights that are remarkably affected by the explosion of the web in general
and electronic commerce in particular. These are: trademarks, patents, copyright
and related rights. However, although the concept of domain names is protected
under a different set of laws, I will for the purposes of this dissertation
treat it because of the crucial role it plays in the arena of both electronic
commerce and the protection of trademarks. Cybersquatting is the term that
has been coined for the ever increasing confusion and tension that exist between
the use of domain names on the internet and the protection against the copying
or taking undue advantage of the rights of registered trademark holders. [3]
Trademarks
A trademark is defined as any sign capable of being represented graphically,
which is capable of distinguishing goods or services of one undertaking from
those of other undertakings. [2] Therefore the main functions of a trademark
are: protection against confusion or deception in the market place; protection
against unfair competition, indicator of the origin of products or services;
distinguishing of the function of products or services; protection against
the dilution of well known products and services; product identification;
indicator of quality; advertising; distinguishing social status and for commercial
exploitation of products and services. Intellectual Property by David Bainbridge
[2] provides a more detail discussion of trademarks.
Domain names
Domain names are a simple form of an Internet address, designed to serve the
function of enabling users to locate sites on the Internet in an easy manner.
They may be registered in spaces known as “ generic top-level domains”
(gTLDs) such as .com, .org, .net, or in the “country code top-level domains”
(ccTLDs) such as .ch for Switzerland , .fr for France, .cm for Cameroon or
.uk for the United Kingdom etc.
The use of the domain name system has grown and is continuing to grow very
rapidly. Since domain names are easy to remember and use, the domain name
system (DNS), the central system for routing traffic on the Internet has assumed
a key role in electronic commerce. On the one hand, it facilitates the ability
of consumers to navigate the internet to find web sites they are looking for,
and on the other hand, it facilitates businesses’ ability to promote
and an easy to remember name or word which may, at the same time, serve to
identify and distinguish the business itself or it’s goods or services
and to specify its corresponding online, Internet location. [2]
Following the increase of commercial activities on the Internet, domain names
have acquired increasing significance as business identifiers and consequently
have come into conflict with the traditional system of business identifiers
that existed prior to the Internet and that are protected by intellectual
property rights, namely, trademarks and other rights of business identification,
geographical indications and the developing field of personality rights. The
tension between domain names and intellectual property rights has led to many
problems that raise challenging questions.
On the one hand the Domain Name System (DNS) is largely privately administered
and gives rise to registrations that result in a global presence, accessible
from anywhere in the world. On the other hand, the intellectual property rights
system is publicly administered on a territorial basis and gives rise to rights
that are exercisable and enforceable only within the territory concerned.
This lack harmony between the two systems has been exacerbated by some predatory
and parasitical practices that have been adopted by some people to exploit
the lack of connection between the purposes for which the domain name system
was designed and those for which intellectual property protection exists.
Example of such practices include but are not limited to the deliberate, bad
faith registration as domain names of trademarks in the hope of being able
to sell the domain names to the owners of the trademarks, or simply to take
unfair advantage of the reputation attached to the trademarks in issue. [3]
Copyrights and related rights
Copyright is concerned with the protection of literary and artistic works.
Copyright is therefore a property right, which subsists in various works,
for example literary works, artistic works, musical works, sound recordings
films and broadcast. Copyright gives the owner of a work that is protected
by copyright the exclusive right to do certain things in relation to the which
include but are not limited to making a copy, broadcasting or giving a public
performance. Anyone else who does any acts restricted by copyright without
the permission of the copyright owner may be subject to legal action taken
by the owner of the copyright for copyright infringement. However, ownership
of copyright is alienable and it can be transferred to another or a licence
may be granted by the owner to another, permitting him to do one or more specified
acts with the work in question. [2]
Copyright does not protect an idea; it is the expression of an idea that is
protected i.e. a tangible form – painting, book etc.
International protection of copyright works is affected mainly through two
international conventions i.e. the Berne Copyright Convention [4] and the
Universal Copyright Convention [5]. The United Kingdom is a member of both
conventions. Both conventions lay down minimum standards of protection to
be attained and reciprocity of protection between member countries. The conventions
have been responsible for the high level of harmony that now exist on the
world stage. Therefore because of agreements under the conventions it is possible
for a foreign citizen to take legal action in the United Kingdom for copyright
infringement occurring there, as if he or she was a British citizen. The author
of copyright is the person who creates the work in which copyright subsists,
however, for some type of works, the author is the person by whom the arrangements
necessary for the creation of the work are undertaken i.e. an employer. [2]
Patents
A patent is a monopoly right to the exclusive use of an invention and can
last for a maximum of 20 years. A patent is a property, which like any other
business commodity, may be bought, sold, hired or licensed.
Generally the purpose of a patent is to provide a form of protection for technological
advances. The idea is to provide a reward not only for the creation of an
invention, but also for the development of an invention to the point at which
in is technologically feasible and marketable. The protection and reward is
also aimed at promoting additional creativity and encourage companies to continue
their development of new technology to the point at which it is marketable,
useful to the public and desirable for the public good.
To obtain patent protection the applicant must also show proof of the following:
That the invention is new or novel. The invention should be capable of being
considered a new solution of a technological problem. However, there is no
requirement for the invention to be represented in a physical embodiment.
That it is non – obvious, that is to say, it must involve an inventive
step. The invention must be enough of an advancement to be considered non
– obvious by a person having ordinary skills in the art over the state
of technology before the invention.
That it is useful, that the invention should be capable of industrial application.
[2] The invention must be able to be used on a certain scale in practice i.e.
exploitable in industry.
Not all inventions are patentable, to be able to obtain a patent, the applicant
must proof that the invention concerns the composition, construction or manufacture
of a substance, article or apparatus, or with an industrial type of process,
as distinct from artistic creations.
Some categories of inventions are specifically excluded from patentability.
These include the following:
Things that exist in nature, which are discovered and not invented,
Machines that defy the laws of nature
Scientific theory,
Mathematical methods,
Schemes, rules or methods, such as those for doing business, performing purely
mental acts or playing games,
Methods for medical treatment for humans or animals or diagnostics methods,
however, products used in making diagnostics are patentable.
The advantages of taking out a patent are the rights granted the patent owner
by law to exclude all others in the territory covered by the patent from making,
using, selling or importing the invention. This however, does not give the
inventor or the owner of the patent the right to use the invention if it’s
use is illegal. The inventor or the owner of a patent can prevent others from
marketing and profiting from the invention for a period of 20 years from the
date on which the application is filed. What this right, granted by the law
to the owner of the patent does is give the developer of the technology the
right to have it to himself for 20 years in exchange for full disclosure to
the public of how to use it. When the patent expires, the technology becomes
public property, and the public is free to use it. [2]
Patent protection can be obtained and enforceable only on a country-by-country
basis with the exception of some regional arrangements that permit a regional
protection such the European Patent Organisation. [6]
There is also an International Agreement administered by the World Intellectual
Property Organisation (WIPO), called the Patent Cooperation Treaty (PCT) for
the filing, searching, publication and examination of international applications.
However, the Patent Cooperation Treaty only makes it easier to obtain patents
in the Contracting States by providing for the filing of one international
application, which may be subsequently prosecuted in the different designated
National or Regional Offices of the States party to the Patent Cooperation
Treaty. The granting of patent protection in the respective countries designated
in the international application is left to the respective designated Offices.
They would require the applicant of the international application to enter
a regional phase in the designated Offices concerned and to pay the relevant
filing and maintenance fees, with the only exceptions being that the date
when the international application was made would be considered as the official
filing date and the application will not be re-examined for novelty, inventive
step and industrial applicability. The designated Offices will take the filing,
search, examination and publication of the international application into
consideration. [7]
There is unfortunately no single world patent. Filing, examination, granting
of protection, maintenance and the payment of the relevant fees, and enforcement
of infringement have to be done on a country-by-country basis. This is generally
not only very expensive but is also a very difficult thing to do. Mere failure
to pay yearly maintenance fee in one country will cause the patent to lapse
in that country, meaning any one in that country is free to use it as he or
she pleases. With the advent of the Internet, patent disclosure could now
be done on the Internet; this would mean a global disclosure of the invention,
with all its direct and indirect consequences. Therefore a person who is resident
in any country in the world in which the owner of the invention has not been
able to seek and obtain protection of the invention can easily have access
to a full disclosure through the Internet and proceed to exploit the invention
without the consent of the owner of the invention. Worst still he or she may
wish to use the knowledge acquired from the disclosure to obtain patent protection
in his or her country of residence without the consent or even the knowledge
of the rightful owner of the invention. This posses major problems both for
intellectual property in general and patent protection in particular.
This project is aimed at attempting an analysis of some of these problems
and providing guidelines for companies involved in on-lines businesses and
owners of intellectual property rights in general and patents in particular
on how to identify and deal with these problems.
Trademarks
A trademark is defined as any sign capable of being represented graphically, which is capable of distinguishing goods or services of one undertaking from those of other undertakings. [2] Therefore the main functions of a trademark are: protection against confusion or deception in the market place; protection against unfair competition, indicator of the origin of products or services; distinguishing of the function of products or services; protection against the dilution of well known products and services; product identification; indicator of quality; advertising; distinguishing social status and for commercial exploitation of products and services. Intellectual Property by David Bainbridge [2] provides a more detail discussion of trademarks.
Domain names
Domain names are a simple form of an Internet address, designed to serve the
function of enabling users to locate sites on the Internet in an easy manner.
They may be registered in spaces known as “ generic top-level domains”
(gTLDs) such as .com, .org, .net, or in the “country code top-level domains”
(ccTLDs) such as .ch for Switzerland , .fr for France, .cm for Cameroon or
.uk for the United Kingdom etc.
The use of the domain name system has grown and is continuing to grow very
rapidly. Since domain names are easy to remember and use, the domain name
system (DNS), the central system for routing traffic on the Internet has assumed
a key role in electronic commerce. On the one hand, it facilitates the ability
of consumers to navigate the internet to find web sites they are looking for,
and on the other hand, it facilitates businesses’ ability to promote
and an easy to remember name or word which may, at the same time, serve to
identify and distinguish the business itself or it’s goods or services
and to specify its corresponding online, Internet location. [2]
Following the increase of commercial activities on the Internet, domain names
have acquired increasing significance as business identifiers and consequently
have come into conflict with the traditional system of business identifiers
that existed prior to the Internet and that are protected by intellectual
property rights, namely, trademarks and other rights of business identification,
geographical indications and the developing field of personality rights. The
tension between domain names and intellectual property rights has led to many
problems that raise challenging questions.
On the one hand the Domain Name System (DNS) is largely privately administered
and gives rise to registrations that result in a global presence, accessible
from anywhere in the world. On the other hand, the intellectual property rights
system is publicly administered on a territorial basis and gives rise to rights
that are exercisable and enforceable only within the territory concerned.
This lack harmony between the two systems has been exacerbated by some predatory
and parasitical practices that have been adopted by some people to exploit
the lack of connection between the purposes for which the domain name system
was designed and those for which intellectual property protection exists.
Example of such practices include but are not limited to the deliberate, bad
faith registration as domain names of trademarks in the hope of being able
to sell the domain names to the owners of the trademarks, or simply to take
unfair advantage of the reputation attached to the trademarks in issue. [3]
Copyrights and related rights
Copyright is concerned with the protection of literary and artistic works.
Copyright is therefore a property right, which subsists in various works,
for example literary works, artistic works, musical works, sound recordings
films and broadcast. Copyright gives the owner of a work that is protected
by copyright the exclusive right to do certain things in relation to the which
include but are not limited to making a copy, broadcasting or giving a public
performance. Anyone else who does any acts restricted by copyright without
the permission of the copyright owner may be subject to legal action taken
by the owner of the copyright for copyright infringement. However, ownership
of copyright is alienable and it can be transferred to another or a licence
may be granted by the owner to another, permitting him to do one or more specified
acts with the work in question. [2]
Copyright does not protect an idea; it is the expression of an idea that is
protected i.e. a tangible form – painting, book etc.
International protection of copyright works is affected mainly through two
international conventions i.e. the Berne Copyright Convention [4] and the
Universal Copyright Convention [5]. The United Kingdom is a member of both
conventions. Both conventions lay down minimum standards of protection to
be attained and reciprocity of protection between member countries. The conventions
have been responsible for the high level of harmony that now exist on the
world stage. Therefore because of agreements under the conventions it is possible
for a foreign citizen to take legal action in the United Kingdom for copyright
infringement occurring there, as if he or she was a British citizen. The author
of copyright is the person who creates the work in which copyright subsists,
however, for some type of works, the author is the person by whom the arrangements
necessary for the creation of the work are undertaken i.e. an employer. [2]
Patents
A patent is a monopoly right to the exclusive use of an invention and can
last for a maximum of 20 years. A patent is a property, which like any other
business commodity, may be bought, sold, hired or licensed.
Generally the purpose of a patent is to provide a form of protection for technological
advances. The idea is to provide a reward not only for the creation of an
invention, but also for the development of an invention to the point at which
in is technologically feasible and marketable. The protection and reward is
also aimed at promoting additional creativity and encourage companies to continue
their development of new technology to the point at which it is marketable,
useful to the public and desirable for the public good.
To obtain patent protection the applicant must also show proof of the following:
That the invention is new or novel. The invention should be capable of being
considered a new solution of a technological problem. However, there is no
requirement for the invention to be represented in a physical embodiment.
That it is non – obvious, that is to say, it must involve an inventive
step. The invention must be enough of an advancement to be considered non
– obvious by a person having ordinary skills in the art over the state
of technology before the invention.
That it is useful, that the invention should be capable of industrial application.
[2] The invention must be able to be used on a certain scale in practice i.e.
exploitable in industry.
Not all inventions are patentable, to be able to obtain a patent, the applicant
must proof that the invention concerns the composition, construction or manufacture
of a substance, article or apparatus, or with an industrial type of process,
as distinct from artistic creations.
Some categories of inventions are specifically excluded from patentability.
These include the following:
Things that exist in nature, which are discovered and not invented,
Machines that defy the laws of natureScientific theory,
Mathematical methods,
Schemes, rules or methods, such as those for doing business, performing purely
mental acts or playing games,
Methods for medical treatment for humans or animals or diagnostics methods,
however, products used in making diagnostics are patentable.
The advantages of taking out a patent are the rights granted the patent owner
by law to exclude all others in the territory covered by the patent from making,
using, selling or importing the invention. This however, does not give the
inventor or the owner of the patent the right to use the invention if it’s
use is illegal. The inventor or the owner of a patent can prevent others from
marketing and profiting from the invention for a period of 20 years from the
date on which the application is filed. What this right, granted by the law
to the owner of the patent does is give the developer of the technology the
right to have it to himself for 20 years in exchange for full disclosure to
the public of how to use it. When the patent expires, the technology becomes
public property, and the public is free to use it. [2]
Patent protection can be obtained and enforceable only on a country-by-country
basis with the exception of some regional arrangements that permit a regional
protection such the European Patent Organisation. [6]
There is also an International Agreement administered by the World Intellectual
Property Organisation (WIPO), called the Patent Cooperation Treaty (PCT) for
the filing, searching, publication and examination of international applications.
However, the Patent Cooperation Treaty only makes it easier to obtain patents
in the Contracting States by providing for the filing of one international
application, which may be subsequently prosecuted in the different designated
National or Regional Offices of the States party to the Patent Cooperation
Treaty. The granting of patent protection in the respective countries designated
in the international application is left to the respective designated Offices.
They would require the applicant of the international application to enter
a regional phase in the designated Offices concerned and to pay the relevant
filing and maintenance fees, with the only exceptions being that the date
when the international application was made would be considered as the official
filing date and the application will not be re-examined for novelty, inventive
step and industrial applicability. The designated Offices will take the filing,
search, examination and publication of the international application into
consideration. [7]
There is unfortunately no single world patent. Filing, examination, granting
of protection, maintenance and the payment of the relevant fees, and enforcement
of infringement have to be done on a country-by-country basis. This is generally
not only very expensive but is also a very difficult thing to do. Mere failure
to pay yearly maintenance fee in one country will cause the patent to lapse
in that country, meaning any one in that country is free to use it as he or
she pleases. With the advent of the Internet, patent disclosure could now
be done on the Internet; this would mean a global disclosure of the invention,
with all its direct and indirect consequences. Therefore a person who is resident
in any country in the world in which the owner of the invention has not been
able to seek and obtain protection of the invention can easily have access
to a full disclosure through the Internet and proceed to exploit the invention
without the consent of the owner of the invention. Worst still he or she may
wish to use the knowledge acquired from the disclosure to obtain patent protection
in his or her country of residence without the consent or even the knowledge
of the rightful owner of the invention. This posses major problems both for
intellectual property in general and patent protection in particular.
This project is aimed at attempting an analysis of some of these problems
and providing guidelines for companies involved in on-lines businesses and
owners of intellectual property rights in general and patents in particular
on how to identify and deal with these problems.
Aims of this project
The use of electronic transactions through the Internet which
provide a global medium, not in any manner limited by territorial boundaries
is increasingly posing serious problems for acquisition, exploitation and
enforcement of well known forms of intellectual property rights which are
enshrined in different pieces national legislations and international conventions.
The main aims of this project are:
Undertake an analysis of the impact of electronic Commerce transactions
on some forms of intellectual property rights i.e. trademarks, domain names,
copyright and related rights and patents.
Provide guidelines for companies involved or wishing to set up on-line businesses,
on how to identify and handle issue s relating to intellectual property.
To critically appraise the problems and conflicts experienced in the on-line
business community as a result of the overlap between the utilisation of the
medium provided by the Internet for on-line businesses to access global markets
at minimal cost and the legal and regulatory restrictions imposed on them
by national legislations and international conventions that accord protection
to owners of intellectual property rights such as trademarks, copyright and
related rights and patent law.
To attempt to provide guidelines on the level of legal compliance required
of on-line businesses by national legislations and international conventions
dealing with intellectual property law. Compliance will be accessed on the
lines of remedies and recommendations so far provided by the world Intellectual
Property Organisation (WIPO) [8].
Problems and difficulties brought about by the coexistence between traditional intellectual property rights and electronic commerce.
BACKGROUND
Electronic Commerce has brought along profound changes in many
if not all areas of life. It has had an extraordinary impact on the architectonics
of markets and regulatory structures. Some of the highly challenging and hotly
debated issues cut across different sectors of legal interest both at national
and international levels. Also the international dimensions of electronic
commerce complicate the development of solutions to the various legal subjects
affected by e-Commerce at national level. This is due to the extra caution
of not ignoring potential cross-border impacts. Although the Intellectual
Property field is the most affected by electronic commerce, changes brought
about by electronic commerce also have far reaching implications for other
areas of law and policy. Some of these issues include but are not limited
to Paperless Environment Electronic Contracts, The Internet Jurisdictions
and Applicable law and Digital Technology Issues of Enforcement and Privacy.
PROBLEMS
E-Commerce and Intellectual Property law
In view of the vast and ever expanding nature of the impact of electronic
commerce on the above-cited areas of law and policy, I will for the purposes
of this project be limiting myself to the impact of electronic commerce on
the intellectual property field. My focus is on examining problems and difficulties
brought onto the traditional legal systems in general and intellectual property
law in particular by the international and global character of electronic
commerce. While traditional legal systems and intellectual property law are
based on notions of sovereignty and territoriality, the Internet on contrast
largely ignores these notions. This dissertation addresses the impact of the
digital economy in general and electronic commerce in particular on the intellectual
property system, namely, trademarks, copyright and related rights, patents,
and domain names. Each of these intellectual property disciplines is currently
confronted with new issues generated by the emergence of the Internet and
electronic commerce. Each of them is now bound to coexist with the rapidly
expanding practice of electronic commerce. As would normally be expected this
coexistence is not without problems.
Coexistence between electronic commerce and trademarks
The use of trademarks in the content of web sites
Although there has been growing tension as to whether or not a trademark should
be registered as a domain name by an on-line business, person or company that
is not the owner of the trademark, it can be argued that it is the use made
of domain names, and the content of Web sites, which can lead to more infringements
and not just registration i.e. registration in itself does not prevent infringement.
For example once content is well established and referenced properly by search
engines, customers or users will usually arrive at Web site containing the
alleged infringing material i.e. trademark or even domain name without using
or even noticing the existence of the Domain name.
This therefore is a serious problem for owners of intellectual property rights
such as trademarks who are trying to avoid or check infringements of their
intellectual property rights over the Internet. In some cases this would mean
policing the content of all suspected Web sites on the Internet.
Even if any infringement were found the second and most important problem
would be how to enforce such a right, not withstanding problems related to
territorial jurisdictions, given that the infringing Web site’s location
might not even be known by the owner of the infringed intellectual property
right and even if known the intellectual property right infringed might not
be registered in the jurisdiction in which there is infringement. Worst still
it is not certain whether the insertion of the alleged intellectual property
right in the content of the Web site would legally be considered as an infringement
under the relevant legal system under consideration.
The use of trademarks as links to web sites
The use of trademarks as links on Web sites also posses a serious threat of
abuse and infringement of the rights of owners of trademarks i.e. it could
lead to confusion and or dilution of the registered trademark or enable the
owner of the Web site on which the link is created to take undue advantage
of the trademark.
Electronic commerce is closely linked to the Internet. Internet technology
is based on hypertext links from one Web site to another, allowing the user
to glide smoothly from one set or form of information to another. Usually
in creating links the names of companies or trademarks of companies are used
on the site on which the link is created. This kind of usage may take many
forms i.e. it can be part of the Uniform Resource Locator or may be the actual
registered logo or device of a particular business. Owners of intellectual
property rights would also be keen in policing the Internet for this kind
of usage so as to make sure that whenever, their trademark is used as a link
on other Web sites, it is not used in such a way as to render it generic and
therefore losing it’s value as a trademark or cause confusion or take
undue advantage of the reputation of the trademark.
The use of trademarks as META TAGS
META TAGS provides one of the most used form through which intellectual property
rights in general and trademarks in particular are infringed on the Internet.
A Meta tag is hidden information within a Web site that broadly contains a
synopsis of the information contained in the Web site, either in the form
of single words, or as sentences. It contains for example all the important
words that could be used to search for pages. The information in Meta tags
is used mostly by search engines to search how highly the search for a particular
term matches the content in the page. Search engines work by sending out spiders
to crawl over information in the web and index web pages. A database is then
created consisting of a list of words and information on where the words are
to be found. The hits are usually rated with the highest scoring hits displayed
at the top of the list of hits found by the search engine. If a word is found
in the Meta tags it is likely to be rated by the search engine as more relevant
and so displayed more prominently in the search result.
Because of the popularity of trademarks, some businesses have been known to
use trademarks both registered and unregistered belonging to others in their
Meta tags in order to generate business.
The use of Meta tags provides a means for possible trademark infringement
and even enables the infringing user to hide the trademark so that it does
not appear on his Web site but yet is available for identification by search
engines. It is however, possible for a diligent trademark owner to identify
hidden usage of his trademark. He can for example search for the trademark
by using search engines, and then note the Web sites on which the trademark
does not visibly appear. Once he finds the pages with the use of the search
engine, he can then view the HTML version of the pages by using the view option
on his browser in order to see the terms included in the meta tags i.e. the
hidden trademark.
The use of trademarks in e-mails messages
Electronic mailing is also being used to infringe intellectual property rights
in general and trademarks in particular. Using trademarks to send Spam e-mail,
and therefore falsely indicating that the e-mail emanated from the trademark
owner is now a very common form of trademark infringement on the Internet.
This posses a serious problem for trademark owners given that their trademarks
can be used by third parties to their own advantage and also to destroy the
reputation of the rightful owner in the public eye by giving recipients of
unauthorized junk e-mail (pornography) the impression that it was sent to
them by the trademark owner i.e. hotmail.com or American Online etc. when
in fact it is not
The sale of trademarks by search engines – advertisement.
One of the most recent developments in the trademark infringement on the Internet
relates to the ways, which search engines work and display advertisements.
For example when one types a word into the search engine, banner advertisements
automatically appear on the site, most of the times advertising a competitor’s
products. The search engine sites make advertising revenue from this form
of activity i.e. they sell certain search terms to the highest bidder. When
such terms are trademarks the owners of such trademarks contest such use and
argue that such practices amount to an infringement of their trademark rights.
Coexistence between electronic commerce and domain names
Domain names are often confused with electronic mail addresses or address
references on the World Wide Web, commonly known as Universal Resource Locators
(URL). Domain names form a key part of both an e-mail address and a Universal
Resource Locator. For example “sbu.ac.uk” is the domain name in
both the electronic mail address chengus@sbu.ac.uk and in the Uniform Resource
Locator www.sbu.ac.uk.
Domain names are registered in a hierarchical system with a limited number
of country code and generic Top Level Domains.
These Top Level Domains are then divided into Second Level Domains, which
are further divided into Third Level Domains and so on all in a tree-like
structure. At each level of the tree, a computer called a name server is operated
to maintain a table of all the names registered under the level. The name
server operator has as principal responsibility to direct all enquirers to
the desired name on the name server.
Therefore when an Internet user in the United States of America makes a request
to view the South Bank University website i.e. www.sbu.ac.uk he is first of
all rooted on the World Root (name server) to establish the address of the
.uk Top Level Domain server. A subsequent request is then made to the .uk
server for the address of the .ac.uk server. A further request at the .ac.uk
server for the address of the sbu.ac.uk server will then link the user to
www.sbu.ac.uk and enable him to view the content of the desired address and
then to link on the other pages of the South Bank University by using the
links provided in the content of www.sbu.ac.uk
Over the years and with the rapid expansion of electronic commerce, on-line
businesses have because of the obvious marketing and business advantages strongly
attached a lot of importance on using words that are associated with the goodwill
or popularity of their business such as their business names or their trademarks
as part of their domain names. They have also for the same reasons taken positive
measures to claim ownership of words that are associated with their businesses
and to enforce their rights over such words by stopping other people from
taking undue advantage through the use of such words as part of their domain
names. This has given raise to clashes between on-line business over a series
of issues concerning domain names such as; the legal significance of a domain
name registration, cybersquatting and the quest for a clear cut legal solution
to the clashes between the rights protected under the notions of domain names
and trademarks.
Coexistence between electronic commerce and copyright and related rights
The purpose of this section would be to examine the various forms of practices
that are disallowed on grounds of infringement of copyright or related rights
in the light of the WIPO Copyrights Treaties and the European Copyright and
E-Commerce Directives. It will also examine the liability of Internet Service
Providers.
The rapid development of the Internet and the prospects of the information
super highway, world – wide telecommunication systems which permit the
rapid, indeed virtually instantaneous, transmission of information and entertainment
in all media – print, pictures (still and moving) sound and combinations
thereof now posses the biggest ever threat on the existence of copyrights.
The question now being asked by many owners of copyrights, as well as legal
critics is whether the ease of perfect reproduction and manipulation of material
in the digital form currently being used by advanced communication systems
and the continuous improvement of technology in this area will eventually
lead to a fundamental change in copyright law. Also given the almost instantaneous
flow of copyright protected material across national boundaries, the intensification
of international harmonization of copyright laws is now of major concern to
all stakeholders in the area of copyright. However, it should be noted that
a large amount of copyright material is placed on the Internet by its authors
so that it can be accessed and used freely by others. This is common with
government, commercial and other organisations and individuals that wish to
draw the attention of others to themselves and their products and to freely
provide information about the copyright material to the public. The reasons
for such free offers are many and varied i.e. on-line marketing with the aim
of acquiring and maintaining customers. As a general principle the existence
or otherwise of copyright in what is placed on the Internet will be of no
or very little relevance to parties that whose aim is to provide free advertisement
of their products or services. Such Internet publication may either contain
express permission to access, use and reproduce, or such permission can be
implied from the circumstances in which the material is made available.
This is unfortunately not true in all cases. Many people or institutions that
publish material on the Internet consider the Internet as a medium of publication
and expect that the copyright in the material so published would be protected.
To these group of people copyright helps to make a market that would otherwise
be limited to those who were unaware of their rights or abilities to copy
and is in other words, a vital strand in the creation of a legal environment
appropriate for electronic commerce, just as it has always been for those
whose business is the creation and publication of entertainment and information
products in analogue form such as books, records and films. Therefore, author,
designers and publishers of digital material such as scripts and codes for
web sites are a new class of owners of intellectual property rights i.e. copyrights
with the same rights over their works as an author or a publisher will have
over a book.
My main concern with copyright as it relates to electronic commerce is to
investigate the protection which the creator of a website is accorded under
copyright law. I have also considered the position if the creator of a website
has infringed someone else’s copyright in assembling or designing his
or her website. The laws protecting the copyright of the creator of a website
are the same as the laws protecting copyright in any other kinds of works
in which copyrights subsists. For the purpose of this section, I will use
the laws of the United Kingdom as examples.
The main piece of legislation in the United Kingdom on copyright is the Copyright
Designs and Patents Act 1988 as amended (CDPA) [9]. Under section 16(1) of
this Act there are now 6 main exclusive rights arising from ownership of copyright
in any protected work. These are as follows; copying, issuing copies of the
work to the public, renting or lending the work to the public, performing,
showing or playing the work in public, broadcasting the work or including
it in a cable programme service and making an adaptation of the work. Section
16(2) of the same Act further provides that any person who without right to
do so authorises another to do any of the above acts is himself and infringer
as well. Section 16 (3) of the Act precise that acts of infringement may be
in relation to the whole of the work or to any substantial part of it. Measuring
the substance of what has been taken depends much more on the quality than
on the quantity. It follows therefore that if the acts are shown to have been
in relation to an insubstantial part of a work then, there is no infringement.
The question that I find relevant to owners of on-line businesses or persons
involve in electronic commerce that is my main concern in this project is
to find out the effect of the various forms of exclusive rights attributable
to owners of copyright material in relation to activities on the Internet.
COPYING
Section 17 (2) of the Copyright Design and Patent Act 1988 as amended makes
it clear that copying in relation to literary, dramatic, musical and artistic
works means reproduction of the work in any material form and includes storage
of the work in any medium by electronic means as well as making of copies
that are transient or incidental to some other use of the work. This is generally
accepted as covering the loading of software into a computer’s RAM and
therefore readily extended to the user on the Internet who calls up a web
page on a computer screen. Theoretically it also covers the reproduction which
occurs on the various computers and servers through which the web page travels
as it finds it’s way across the networks to the user’s machine,
although if this is not allowed it has the remarkable result that the technical
basis of the operation of the Internet itself is illegal. The concept of transient
reproduction also embraces activities such as proxy server caching, where
by deploying appropriate software technology Internet service providers, librarians,
archivists and others make and store on their own servers temporary and regularly
updated copies of materials contained on other servers with the purpose of
making the information more readily available to their own clients by avoiding
congestion at the “live” site. These kind of operations may also
amount to the infringing act of storage by electronic means [10].
Consequently there seems to be no doubt, that under the present United Kingdom
(UK) law browsing and caching are infringements of copyright unless either
there is some form of licence for that act or it can be brought under one
of the statutory permitted acts. Since downloading material from a website
leads to the production of a fixed and not transient copy, i.e. whether in
digital form in one’s computer or floppy disk, or as a hard copy by way
of a printout, it is more readily recognised in most legal systems as an infringing
reproduction.
Issuing copies of the work to the public.
Section 18 of the CDPA 1988 defines issuing to the public as putting copies
into circulation for the first time. This right is however, exhausted by initial
sale. The “on demand” nature of the Internet does not look much
like the issue of copies to the public, although it might be seen as a form
of circulation. The reason for this position is based on the fact that Section
I8 of the CDPA 1988 which deals with making copies to the public unlike Section
17 which deals with copying does not make any mention or reference to the
notion of “transient copy”. Therefore the copies required for the
purposes of Section 18 may therefore be limited to those which are non-transient,
which would go beyond mere on – demand transmission. It therefore follows
that a user who accesses material and passes it on to another user is not
guilty of infringement under Section 18 so long as the transmission is electronic.
Rental or Lending of a work to the Public
Section 18 A (2)(a) of the CDPA 1988 defines rental as making a copy of a
work available for use, on terms that it will or may be returned for direct
or indirect economic or commercial advantage. i.e. videos or games rental
stores. Section 18 A (2)(b) of the CDPA 1988 provides a similar definition
for the notion of lending except that unlike with rental the restricted act
is performed otherwise than for direct or indirect economic or commercial
advantage, and is carried out through an establishment which is accessible
to the public. A good example is a library that operates a Public Lending
Rights scheme. Also it is important to note that according to Section 18 A
(3) of the CDPA 1988, rental and lending do not cover making copies available
for the purpose of performance, showing, playing or exhibiting in public or
for the purpose of on – the – sport reference use.
The question of main concern to the project as regards rental and lending
rights is to find out whether they are applicable to Internet activities.
Like with copying, there are again difficulties because of the use of the
concept of a “copy”, which is what must be made available, and this
is further underlined by the expectation that the copy will be returned. This
makes it difficult to fit in with the ordinary usages of the Internet. The
requirement that for rental some sort of economic or commercial advantage
is necessary while for lending there must be an establishment accessible to
the public is not easily applicable in the context of normal Internet services.
Also the browser or user on the Internet may be said to be making an on-the-sport
reference use of the service, which would mean that the provider was not engaging
in rental or lending activities. A further discussion of rental and lending
restrictions as they apply to the Internet can be found in the, the European
Community (EC) Directive on Rental and Lending Rights and on Piracy [11]
Public performance, showing or playing
Section 19 (2)(b) of the CDPA 1988 defines performance to cover any mode of
virtual or acoustic presentation, including by means of a cable programme.
There is nothing in this definition that prevents an unauthorised display
on a computer screen of the texts of a literary work being a “performance”
of that work, and thus constituting infringement provided that it takes place
in public. In the case of sound recordings, films, broadcasts and cable programmes,
the equivalent form of infringement is playing or showing the work in public
[12]. What would prevent this form of infringement from being of much relevance
to the Internet, at least in it’s present pattern of usage, is merely
the fact that most displays of material do not take place in public. Therefore
if a display of such material can be proven to constitute a public display
then it would constitute copyright infringement if done without the consent
of the copyright owner. It should also be noted that the definition of “public”
for this particular copyright purpose is very wide [13]. Therefore the decision
of the Spanish Supreme Court in the case of Telstra Corporation Ltd. against
Australasian Performance Right Association Ltd. [14] that the non-simultaneous
transmission of copyright material to different persons in individual hotel
bedrooms require copyright licences is likely going to be the position to
be adopted by many other jurisdictions . Gathering together is therefore most
likely not going to be required in order to proof a public performance.
Broadcasting or inclusion in a cable programme service
Neither accessing a website nor incorporation of other people’s copyright
material thereon can constitute broadcasting, since broadcasting is a wireless
technology. However, a question which is of direct relevance is whether enabling
a user of one website to link to another site means that the second website
is included within the first site or whether the two are simply connected
but otherwise independent sites. If they are not independent sites then infringement
can be established. For example in has been suggested that the concept of
inclusion is apt to catch the situation where one website is linked to another
but the first site continues in view on screen by way of a “frame”
around the image from the second site [15].
Authorisation to infringe – Internet Service Provider’s
liability
Section 16(2) of the CDPA 1988 as amended provides that authorisation of another
to infringe any form of copyright is itself infringement. Authorisation is
understood to mean sanctioning, approving or countenancing where there is
authority or control over those who actually infringe. This form of liability
is of obvious relevance to undertakings of businesses such as Internet service
providers, universities and other bodies including companies, which set up
the facilities on which infringing Internet activity take place. The questions
whether such bodies are liable will depend mainly on whether they give express
warning to users or customers against use of the equipment for infringing
copyright. Therefore in the cases of CBS Inc. v Ames Records & Tapes Ltd.
and SBS Songs Ltd v Amstrad Consumer Electronics Plc. it was held that commercial
libraries renting out sound recordings and manufacturers of double-headed
audio tape decks were not liable despite the fact that their services and
products rendered infringement easy and probable [16]. In contrast, in Moorehouse
v University of New South Wales, the university which provided photocopying
facilities for staff and students in it’s library was found to have authorized
infringement of copyright because it had taken no steps to deter such activity.
[17]
The appropriate measure of liability for those who provide Internet facilities
such as the Napster indices, or machinery such as Rio MPMan player, which
enable members of the public to use and enjoy material obtained from the Internet,
therefore appears to be whether or not they took measures to keep users aware
of the existence of copyright and warned against its abuse either by putting
material on the service or downloading it.
Coexistence between electronic commerce and patents
The patent system has played a vital role in promoting the development of
the underling technical infrastructure for electronic commerce. Electronic
commerce relies principally on the various computer and network technologies,
both hardware and software. The market exclusivity provided by the patent
protection system has provided a reward for investment and has justified the
expenditure in research and development to achieve further technological progress.
However, the new technologies notably the Internet now pose challenges to
the conventional legal scheme for patent protection. This will be illustrated
by examining some of the many issues associated with digital media and electronic
commerce in the context of patent protection.
As noted in chapter 1, patents are granted only to inventions that are novel,
involve an inventive step and are useful or industrially applicable. The general
rule is that to determine if the requirements of novelty and inventive step
are met, the claimed invention is compared with the existing state of the
art. The existing state of the art is also referred to as prior art. Prior
art or existing art, in electronic form, which exists in cyberspace i.e.,
published only on the Internet, raises serious questions as to its availability
as “prior art” and thus whether it can be applied against an invention
for which a patent is sought in determining novelty or inventive step. The
questions include, whether that kind of information has become prior art even
if it was disclosed on the Internet for only a limited time. Although similar
questions have been addressed with respect to prior art published on papers,
publication on the Internet may have different implications. Authenticity,
veracity and integrity are the critical issues for prior art in cyberspace,
because cyber art is considered to be more vulnerable to alterations and modification.
The determination of the timing of the disclosure and accessibility of the
cyber art to the public, given the networks ‘s capacity for instantaneous
dissemination on the international scale, is another major concern. Furthermore,
national laws may extend the concept of the prior art to include prior uses.
Under such national laws the concept of use of prior art in electronic form
will pose problems. Also the above-mentioned questions can also be extended
to cover the context of a grace period for public disclosure of an invention
before filing a patent application.
Many countries as well as Organisations will have to make modifications to
their patent laws in order to cover the problems pose by electronic commerce.
For example Japan recently amended its patent law to expressly provide that
an invention which was made publicly available online, for example via the
Internet, prior to the filing of an application for a patent would constitute
a novelty defeating bar. The amendment was also extended to cover, the problem
posed by the six months grace period by expressly providing that an invention
that was publicly disclosed online would fall within the six-month grace period
providing an exception to novelty-destroying disclosures. These amendments
to Japan’s patent law became enforceable in January 1, 2000 [18]. Japan’s
example is likely going to be followed by many other jurisdictions.
The Internet also raises complex jurisdictional issues as regards patent protection.
Conventionally patent protection is provided on a country-by-country basis
and the therefore the patent laws of each country or region are enforceable
only within the borders covered by the laws in question. However, electronic
commerce now provides a means by which patented software for example can be
sold and delivered over the Internet internationally. Any infringement action
for such a patent would therefore be confronted with serious jurisdictional
and choice of law issues. Worst still the first practical issue may be that
of even detecting or identifying the infringement of such a patent, given
that the unauthorized importation of such a software by means of the Internet,
unlike the importation of tangible goods, cannot be detected and stopped by
the custom or trading standards authorities.
Other questions particular to patent protection on the Internet may arise
in the case where a patented product invention consists of elements that are
physically located in different territories. For example in the case of process
patents, for a method or process, distinct elements in the claimed process
could be performed in different territories. If an alleged infringer operates
a system containing all the claimed elements within the territory in which
the invention is protected i.e. in the United Kingdom, there would be a straightforward
claim / case for infringement. However, the questions of infringement and
jurisdiction would be more difficult where a patented invention involves activities
in several countries by several individuals. Given this situation, it may
not be clear in which jurisdiction the accused infringers are actually using
the patented invention. [19]
Coexistence between electronic commerce
and trademarks
The use of trademarks in the content of web sites
Although there has been growing tension as to whether or not a trademark should
be registered as a domain name by an on-line business, person or company that
is not the owner of the trademark, it can be argued that it is the use made
of domain names, and the content of Web sites, which can lead to more infringements
and not just registration i.e. registration in itself does not prevent infringement.
For example once content is well established and referenced properly by search
engines, customers or users will usually arrive at Web site containing the
alleged infringing material i.e. trademark or even domain name without using
or even noticing the existence of the Domain name.
This therefore is a serious problem for owners of intellectual property rights
such as trademarks who are trying to avoid or check infringements of their
intellectual property rights over the Internet. In some cases this would mean
policing the content of all suspected Web sites on the Internet.
Even if any infringement were found the second and most important problem
would be how to enforce such a right, not withstanding problems related to
territorial jurisdictions, given that the infringing Web site’s location
might not even be known by the owner of the infringed intellectual property
right and even if known the intellectual property right infringed might not
be registered in the jurisdiction in which there is infringement. Worst still
it is not certain whether the insertion of the alleged intellectual property
right in the content of the Web site would legally be considered as an infringement
under the relevant legal system under consideration.
The use of trademarks as links to web sites
The use of trademarks as links on Web sites also posses a serious threat of
abuse and infringement of the rights of owners of trademarks i.e. it could
lead to confusion and or dilution of the registered trademark or enable the
owner of the Web site on which the link is created to take undue advantage
of the trademark.
Electronic commerce is closely linked to the Internet. Internet technology
is based on hypertext links from one Web site to another, allowing the user
to glide smoothly from one set or form of information to another. Usually
in creating links the names of companies or trademarks of companies are used
on the site on which the link is created. This kind of usage may take many
forms i.e. it can be part of the Uniform Resource Locator or may be the actual
registered logo or device of a particular business. Owners of intellectual
property rights would also be keen in policing the Internet for this kind
of usage so as to make sure that whenever, their trademark is used as a link
on other Web sites, it is not used in such a way as to render it generic and
therefore losing it’s value as a trademark or cause confusion or take
undue advantage of the reputation of the trademark.
The use of trademarks as META TAGS
META TAGS provides one of the most used form through which intellectual property
rights in general and trademarks in particular are infringed on the Internet.
A Meta tag is hidden information within a Web site that broadly contains a
synopsis of the information contained in the Web site, either in the form
of single words, or as sentences. It contains for example all the important
words that could be used to search for pages. The information in Meta tags
is used mostly by search engines to search how highly the search for a particular
term matches the content in the page. Search engines work by sending out spiders
to crawl over information in the web and index web pages. A database is then
created consisting of a list of words and information on where the words are
to be found. The hits are usually rated with the highest scoring hits displayed
at the top of the list of hits found by the search engine. If a word is found
in the Meta tags it is likely to be rated by the search engine as more relevant
and so displayed more prominently in the search result.
Because of the popularity of trademarks, some businesses have been known to
use trademarks both registered and unregistered belonging to others in their
Meta tags in order to generate business.
The use of Meta tags provides a means for possible trademark infringement
and even enables the infringing user to hide the trademark so that it does
not appear on his Web site but yet is available for identification by search
engines. It is however, possible for a diligent trademark owner to identify
hidden usage of his trademark. He can for example search for the trademark
by using search engines, and then note the Web sites on which the trademark
does not visibly appear. Once he finds the pages with the use of the search
engine, he can then view the HTML version of the pages by using the view option
on his browser in order to see the terms included in the meta tags i.e. the
hidden trademark.
The use of trademarks in e-mails messages
Electronic mailing is also being used to infringe intellectual property rights
in general and trademarks in particular. Using trademarks to send Spam e-mail,
and therefore falsely indicating that the e-mail emanated from the trademark
owner is now a very common form of trademark infringement on the Internet.
This posses a serious problem for trademark owners given that their trademarks
can be used by third parties to their own advantage and also to destroy the
reputation of the rightful owner in the public eye by giving recipients of
unauthorized junk e-mail (pornography) the impression that it was sent to
them by the trademark owner i.e. hotmail.com or American Online etc. when
in fact it is not
The sale of trademarks by search engines – advertisement.
One of the most recent developments in the trademark infringement on the Internet
relates to the ways, which search engines work and display advertisements.
For example when one types a word into the search engine, banner advertisements
automatically appear on the site, most of the times advertising a competitor’s
products. The search engine sites make advertising revenue from this form
of activity i.e. they sell certain search terms to the highest bidder. When
such terms are trademarks the owners of such trademarks contest such use and
argue that such practices amount to an infringement of their trademark rights.
Coexistence between electronic commerce and domain names
Domain names are often confused with electronic mail addresses or address references on the World Wide Web, commonly known as Universal Resource Locators (URL). Domain names form a key part of both an e-mail address and a Universal Resource Locator. For example “sbu.ac.uk” is the domain name in both the electronic mail address chengus@sbu.ac.uk and in the Uniform Resource Locator www.sbu.ac.uk.
Domain names are registered in a hierarchical system with a limited number of country code and generic Top Level Domains.
These Top Level Domains are then divided into Second Level Domains,
which are further divided into Third Level Domains and so on all in a tree-like
structure. At each level of the tree, a computer called a name server is operated
to maintain a table of all the names registered under the level. The name
server operator has as principal responsibility to direct all enquirers to
the desired name on the name server.
Therefore when an Internet user in the United States of America makes a request
to view the South Bank University website i.e. www.sbu.ac.uk he is first of
all rooted on the World Root (name server) to establish the address of the
.uk Top Level Domain server. A subsequent request is then made to the .uk
server for the address of the .ac.uk server. A further request at the .ac.uk
server for the address of the sbu.ac.uk server will then link the user to
www.sbu.ac.uk and enable him to view the content of the desired address and
then to link on the other pages of the South Bank University by using the
links provided in the content of www.sbu.ac.uk
Over the years and with the rapid expansion of electronic commerce, on-line
businesses have because of the obvious marketing and business advantages strongly
attached a lot of importance on using words that are associated with the goodwill
or popularity of their business such as their business names or their trademarks
as part of their domain names. They have also for the same reasons taken positive
measures to claim ownership of words that are associated with their businesses
and to enforce their rights over such words by stopping other people from
taking undue advantage through the use of such words as part of their domain
names. This has given raise to clashes between on-line business over a series
of issues concerning domain names such as; the legal significance of a domain
name registration, cybersquatting and the quest for a clear cut legal solution
to the clashes between the rights protected under the notions of domain names
and trademarks.
Coexistence between electronic commerce
and copyright and related rights
The purpose of this section would be to examine the various forms of practices
that are disallowed on grounds of infringement of copyright or related rights
in the light of the WIPO Copyrights Treaties and the European Copyright and
E-Commerce Directives. It will also examine the liability of Internet Service
Providers.
The rapid development of the Internet and the prospects of the information
super highway, world – wide telecommunication systems which permit the
rapid, indeed virtually instantaneous, transmission of information and entertainment
in all media – print, pictures (still and moving) sound and combinations
thereof now posses the biggest ever threat on the existence of copyrights.
The question now being asked by many owners of copyrights, as well as legal
critics is whether the ease of perfect reproduction and manipulation of material
in the digital form currently being used by advanced communication systems
and the continuous improvement of technology in this area will eventually
lead to a fundamental change in copyright law. Also given the almost instantaneous
flow of copyright protected material across national boundaries, the intensification
of international harmonization of copyright laws is now of major concern to
all stakeholders in the area of copyright. However, it should be noted that
a large amount of copyright material is placed on the Internet by its authors
so that it can be accessed and used freely by others. This is common with
government, commercial and other organisations and individuals that wish to
draw the attention of others to themselves and their products and to freely
provide information about the copyright material to the public. The reasons
for such free offers are many and varied i.e. on-line marketing with the aim
of acquiring and maintaining customers. As a general principle the existence
or otherwise of copyright in what is placed on the Internet will be of no
or very little relevance to parties that whose aim is to provide free advertisement
of their products or services. Such Internet publication may either contain
express permission to access, use and reproduce, or such permission can be
implied from the circumstances in which the material is made available.
This is unfortunately not true in all cases. Many people or institutions that
publish material on the Internet consider the Internet as a medium of publication
and expect that the copyright in the material so published would be protected.
To these group of people copyright helps to make a market that would otherwise
be limited to those who were unaware of their rights or abilities to copy
and is in other words, a vital strand in the creation of a legal environment
appropriate for electronic commerce, just as it has always been for those
whose business is the creation and publication of entertainment and information
products in analogue form such as books, records and films. Therefore, author,
designers and publishers of digital material such as scripts and codes for
web sites are a new class of owners of intellectual property rights i.e. copyrights
with the same rights over their works as an author or a publisher will have
over a book.
My main concern with copyright as it relates to electronic commerce is to
investigate the protection which the creator of a website is accorded under
copyright law. I have also considered the position if the creator of a website
has infringed someone else’s copyright in assembling or designing his
or her website. The laws protecting the copyright of the creator of a website
are the same as the laws protecting copyright in any other kinds of works
in which copyrights subsists. For the purpose of this section, I will use
the laws of the United Kingdom as examples.
The main piece of legislation in the United Kingdom on copyright is the Copyright
Designs and Patents Act 1988 as amended (CDPA) [9]. Under section 16(1) of
this Act there are now 6 main exclusive rights arising from ownership of copyright
in any protected work. These are as follows; copying, issuing copies of the
work to the public, renting or lending the work to the public, performing,
showing or playing the work in public, broadcasting the work or including
it in a cable programme service and making an adaptation of the work. Section
16(2) of the same Act further provides that any person who without right to
do so authorises another to do any of the above acts is himself and infringer
as well. Section 16 (3) of the Act precise that acts of infringement may be
in relation to the whole of the work or to any substantial part of it. Measuring
the substance of what has been taken depends much more on the quality than
on the quantity. It follows therefore that if the acts are shown to have been
in relation to an insubstantial part of a work then, there is no infringement.
The question that I find relevant to owners of on-line businesses or persons
involve in electronic commerce that is my main concern in this project is
to find out the effect of the various forms of exclusive rights attributable
to owners of copyright material in relation to activities on the Internet.
COPYING
Section 17 (2) of the Copyright Design and Patent Act 1988 as amended makes
it clear that copying in relation to literary, dramatic, musical and artistic
works means reproduction of the work in any material form and includes storage
of the work in any medium by electronic means as well as making of copies
that are transient or incidental to some other use of the work. This is generally
accepted as covering the loading of software into a computer’s RAM and
therefore readily extended to the user on the Internet who calls up a web
page on a computer screen. Theoretically it also covers the reproduction which
occurs on the various computers and servers through which the web page travels
as it finds it’s way across the networks to the user’s machine,
although if this is not allowed it has the remarkable result that the technical
basis of the operation of the Internet itself is illegal. The concept of transient
reproduction also embraces activities such as proxy server caching, where
by deploying appropriate software technology Internet service providers, librarians,
archivists and others make and store on their own servers temporary and regularly
updated copies of materials contained on other servers with the purpose of
making the information more readily available to their own clients by avoiding
congestion at the “live” site. These kind of operations may also
amount to the infringing act of storage by electronic means [10].
Consequently there seems to be no doubt, that under the present United Kingdom
(UK) law browsing and caching are infringements of copyright unless either
there is some form of licence for that act or it can be brought under one
of the statutory permitted acts. Since downloading material from a website
leads to the production of a fixed and not transient copy, i.e. whether in
digital form in one’s computer or floppy disk, or as a hard copy by way
of a printout, it is more readily recognised in most legal systems as an infringing
reproduction.
Issuing copies of the work to the public.
Section 18 of the CDPA 1988 defines issuing to the public as putting copies
into circulation for the first time. This right is however, exhausted by initial
sale. The “on demand” nature of the Internet does not look much
like the issue of copies to the public, although it might be seen as a form
of circulation. The reason for this position is based on the fact that Section
I8 of the CDPA 1988 which deals with making copies to the public unlike Section
17 which deals with copying does not make any mention or reference to the
notion of “transient copy”. Therefore the copies required for the
purposes of Section 18 may therefore be limited to those which are non-transient,
which would go beyond mere on – demand transmission. It therefore follows
that a user who accesses material and passes it on to another user is not
guilty of infringement under Section 18 so long as the transmission is electronic.
Rental or Lending of a work to the Public
Section 18 A (2)(a) of the CDPA 1988 defines rental as making a copy of a
work available for use, on terms that it will or may be returned for direct
or indirect economic or commercial advantage. i.e. videos or games rental
stores. Section 18 A (2)(b) of the CDPA 1988 provides a similar definition
for the notion of lending except that unlike with rental the restricted act
is performed otherwise than for direct or indirect economic or commercial
advantage, and is carried out through an establishment which is accessible
to the public. A good example is a library that operates a Public Lending
Rights scheme. Also it is important to note that according to Section 18 A
(3) of the CDPA 1988, rental and lending do not cover making copies available
for the purpose of performance, showing, playing or exhibiting in public or
for the purpose of on – the – sport reference use.
The question of main concern to the project as regards rental and lending
rights is to find out whether they are applicable to Internet activities.
Like with copying, there are again difficulties because of the use of the
concept of a “copy”, which is what must be made available, and this
is further underlined by the expectation that the copy will be returned. This
makes it difficult to fit in with the ordinary usages of the Internet. The
requirement that for rental some sort of economic or commercial advantage
is necessary while for lending there must be an establishment accessible to
the public is not easily applicable in the context of normal Internet services.
Also the browser or user on the Internet may be said to be making an on-the-sport
reference use of the service, which would mean that the provider was not engaging
in rental or lending activities. A further discussion of rental and lending
restrictions as they apply to the Internet can be found in the, the European
Community (EC) Directive on Rental and Lending Rights and on Piracy [11]
Public performance, showing or playing
Section 19 (2)(b) of the CDPA 1988 defines performance to cover any mode of
virtual or acoustic presentation, including by means of a cable programme.
There is nothing in this definition that prevents an unauthorised display
on a computer screen of the texts of a literary work being a “performance”
of that work, and thus constituting infringement provided that it takes place
in public. In the case of sound recordings, films, broadcasts and cable programmes,
the equivalent form of infringement is playing or showing the work in public
[12]. What would prevent this form of infringement from being of much relevance
to the Internet, at least in it’s present pattern of usage, is merely
the fact that most displays of material do not take place in public. Therefore
if a display of such material can be proven to constitute a public display
then it would constitute copyright infringement if done without the consent
of the copyright owner. It should also be noted that the definition of “public”
for this particular copyright purpose is very wide [13]. Therefore the decision
of the Spanish Supreme Court in the case of Telstra Corporation Ltd. against
Australasian Performance Right Association Ltd. [14] that the non-simultaneous
transmission of copyright material to different persons in individual hotel
bedrooms require copyright licences is likely going to be the position to
be adopted by many other jurisdictions . Gathering together is therefore most
likely not going to be required in order to proof a public performance.
Broadcasting or inclusion in a cable programme service
Neither accessing a website nor incorporation of other people’s copyright
material thereon can constitute broadcasting, since broadcasting is a wireless
technology. However, a question which is of direct relevance is whether enabling
a user of one website to link to another site means that the second website
is included within the first site or whether the two are simply connected
but otherwise independent sites. If they are not independent sites then infringement
can be established. For example in has been suggested that the concept of
inclusion is apt to catch the situation where one website is linked to another
but the first site continues in view on screen by way of a “frame”
around the image from the second site [15].
Authorisation to infringe – Internet Service Provider’s liability
Section 16(2) of the CDPA 1988 as amended provides that authorisation of another
to infringe any form of copyright is itself infringement. Authorisation is
understood to mean sanctioning, approving or countenancing where there is
authority or control over those who actually infringe. This form of liability
is of obvious relevance to undertakings of businesses such as Internet service
providers, universities and other bodies including companies, which set up
the facilities on which infringing Internet activity take place. The questions
whether such bodies are liable will depend mainly on whether they give express
warning to users or customers against use of the equipment for infringing
copyright. Therefore in the cases of CBS Inc. v Ames Records & Tapes Ltd.
and SBS Songs Ltd v Amstrad Consumer Electronics Plc. it was held that commercial
libraries renting out sound recordings and manufacturers of double-headed
audio tape decks were not liable despite the fact that their services and
products rendered infringement easy and probable [16]. In contrast, in Moorehouse
v University of New South Wales, the university which provided photocopying
facilities for staff and students in it’s library was found to have authorized
infringement of copyright because it had taken no steps to deter such activity.
[17]
The appropriate measure of liability for those who provide Internet facilities such as the Napster indices, or machinery such as Rio MPMan player, which enable members of the public to use and enjoy material obtained from the Internet, therefore appears to be whether or not they took measures to keep users aware of the existence of copyright and warned against its abuse either by putting material on the service or downloading it.
Coexistence between electronic commerce
and patents
The patent system has played a vital role in promoting the development of
the underling technical infrastructure for electronic commerce. Electronic
commerce relies principally on the various computer and network technologies,
both hardware and software. The market exclusivity provided by the patent
protection system has provided a reward for investment and has justified the
expenditure in research and development to achieve further technological progress.
However, the new technologies notably the Internet now pose challenges to
the conventional legal scheme for patent protection. This will be illustrated
by examining some of the many issues associated with digital media and electronic
commerce in the context of patent protection.
As noted in chapter 1, patents are granted only to inventions that are novel,
involve an inventive step and are useful or industrially applicable. The general
rule is that to determine if the requirements of novelty and inventive step
are met, the claimed invention is compared with the existing state of the
art. The existing state of the art is also referred to as prior art. Prior
art or existing art, in electronic form, which exists in cyberspace i.e.,
published only on the Internet, raises serious questions as to its availability
as “prior art” and thus whether it can be applied against an invention
for which a patent is sought in determining novelty or inventive step. The
questions include, whether that kind of information has become prior art even
if it was disclosed on the Internet for only a limited time. Although similar
questions have been addressed with respect to prior art published on papers,
publication on the Internet may have different implications. Authenticity,
veracity and integrity are the critical issues for prior art in cyberspace,
because cyber art is considered to be more vulnerable to alterations and modification.
The determination of the timing of the disclosure and accessibility of the
cyber art to the public, given the networks ‘s capacity for instantaneous
dissemination on the international scale, is another major concern. Furthermore,
national laws may extend the concept of the prior art to include prior uses.
Under such national laws the concept of use of prior art in electronic form
will pose problems. Also the above-mentioned questions can also be extended
to cover the context of a grace period for public disclosure of an invention
before filing a patent application.
Many countries as well as Organisations will have to make modifications to
their patent laws in order to cover the problems pose by electronic commerce.
For example Japan recently amended its patent law to expressly provide that
an invention which was made publicly available online, for example via the
Internet, prior to the filing of an application for a patent would constitute
a novelty defeating bar. The amendment was also extended to cover, the problem
posed by the six months grace period by expressly providing that an invention
that was publicly disclosed online would fall within the six-month grace period
providing an exception to novelty-destroying disclosures. These amendments
to Japan’s patent law became enforceable in January 1, 2000 [18]. Japan’s
example is likely going to be followed by many other jurisdictions.
The Internet also raises complex jurisdictional issues as regards patent protection.
Conventionally patent protection is provided on a country-by-country basis
and the therefore the patent laws of each country or region are enforceable
only within the borders covered by the laws in question. However, electronic
commerce now provides a means by which patented software for example can be
sold and delivered over the Internet internationally. Any infringement action
for such a patent would therefore be confronted with serious jurisdictional
and choice of law issues. Worst still the first practical issue may be that
of even detecting or identifying the infringement of such a patent, given
that the unauthorized importation of such a software by means of the Internet,
unlike the importation of tangible goods, cannot be detected and stopped by
the custom or trading standards authorities.
Other questions particular to patent protection on the Internet may arise
in the case where a patented product invention consists of elements that are
physically located in different territories. For example in the case of process
patents, for a method or process, distinct elements in the claimed process
could be performed in different territories. If an alleged infringer operates
a system containing all the claimed elements within the territory in which
the invention is protected i.e. in the United Kingdom, there would be a straightforward
claim / case for infringement. However, the questions of infringement and
jurisdiction would be more difficult where a patented invention involves activities
in several countries by several individuals. Given this situation, it may
not be clear in which jurisdiction the accused infringers are actually using
the patented invention. [19]
Possible solutions to the problems and difficulties
The position of the World Intellectual Property Organisation
Trademarks
WIPO has taken measures to study the problems relating to the
use of trademarks on the Internet. It set up a Standing Committee on the Law
of Trademarks, Industrial Designs and Geographic Indications to study the
desirability and feasibility of harmonizing national rules concerning the
circumstances in which use of a trademark on the Internet constitutes use
of a trademark or trademark infringement. The said Standing Committee met
in June 1999 to discuss the results of its study. As an out come of the discussions
during the meeting of the Standing Committee, the International Bureau prepared
a questionnaire with hypothetical situations concerning legal issues relating
to the use of trademarks on the Internet. The questionnaire was to be answered
by each delegation on the basis of its national law on trademarks and the
Internet. The responses received showed a wide divergence of views on the
issues raised. The International Bureau has also prepared and issued a paper
on the same subject matter aimed at identifying areas where international
cooperation in the framework of WIPO appears to be both necessary and realistically
achievable.
Well-known trademarks have been given the special attention that they deserve
by WIPO. Well-known trademarks enjoy special protection under Article 6bis
of the Paris Convention [20] as well as other regional and international agreements.
While there is an international obligation under the above-cited Article 6bis
of the Paris Convention to accord protection to Well-known trademarks, there
exist no establish treaty definition of what constitutes a Well-known mark.
It is left to the appreciation of the competent authority in the country where
protection is asserted. Consequently Well-known marks have been the special
target of a variety of abusive practices on the Internet. WIPO has been working
to develop provisions on the protection of Well-known marks. The proposed
solutions were on the issue were adopted as a Joint Recommendation by the
WIPO General Assembly and Paris Union Assembly in September 1999. The provisions
clarify, consolidate and supplement the existing international protection
of Well-known mark as established by Article 6bis of the Paris Convention
and Articles 16.2 and 16.3 of the TRIPS Agreement. Article 2 of the Joint
Recommendation contain a list of factors that may be used by a competent authority
to determine whether a mark is well-known in its territory. Although the Joint
Recommendation does not have the force and effect of a treaty, member States
may consider the use it’s provisions as guidelines for the protection
of Well-known marks.
Article 6 of the Joint Recommendation expressly addresses the hotly debated
issue of conflict between trademarks and domain names. According to this provision
a domain name shall be deemed to be in conflict with a Well-known mark at
least where that domain name, or an essential part thereof, constitutes a
reproduction, an imitation, a translation or a transliteration of the Well-known
mark, and the domain name has been used or registered in bad faith. It goes
on to precise that it shall be understood that bad faith shall include the
cases that are currently known as “cybersquatting”, that is, the
registration of a Well-known mark as a domain name, with the intention of
selling it to the trademark owner. [20]
Domain names
In July 1998, WIPO commenced an extensive international process of consultation
commonly referred to as “the WIPO Internet Domain Name Process”.
The purpose of the process was to make recommendations to the corporation
established for the technical management of the domain name system, the Internet
Corporation for Assigned Names and Number (ICANN) on the issues arising out
of the coexistence or interface between domain names and intellectual property
rights. A report containing the recommendations has been published by WIPO.
It is also available online at WIPO’s website [21] Copies have been sent
to all member States of WIPO as well as all the non-governmental organizations
that are accredited with WIPO as observers. Some of the main recommendations
were as follows:
1. The adoption of a number of improves, minimum “best practices”
by registration authorities i.e. registrars of domain names, when registering
domain names in the generic top level domains (gTLDs). Other recommended practices
included, the establishment of a formalized agreement clearly setting forth
the rights and obligations of the parties, the collection and availability
of accurate and reliable contact details of domain name holders as an essential
tool for facilitating the protection of intellectual property rights on the
borderless or otherwise anonymous medium of the Internet. These contact details
were thought to provide the principal means by which intellectual property
owners can contact infringers in order to be able to take the necessary measures
aimed at enforcing their intellectual property rights.
2. The report recommended what it referred to as the “take-down”
procedure to be used by registrars. Under this procedure, if the contact details
of a domain name holder prove to be inaccurate or unreliable, making it impossible
to be used to establish contact with the domain name owner a third party should
have the right to serve a notification to this effect on the responsible registrar.
Upon independent verification of the impossibility of establishing contact,
the registrar should be required to cancel the domain name registration.
3. The report recommended that ICANN should adopt a uniform dispute resolution
policy under which an administrative dispute-resolution procedure is made
available for domain name disputes in all gTLDs. The scope of the administrative
procedure will cover cases of bad faith, abusive registration of domain names
that violate trademark rights. All other disputes arising within parties will
have to be covered by court litigation or other private disputes settlement
mechanisms such as arbitration. Also the administrative procedure should be
quick, efficient and cost effective. Determination under it would be limited
to orders for the cancellation or transfer of domain name registration. Decisions
arrived at, would be enforced directly, by registration authorities under
the dispute-resolution policy, without the need for a court order.
4. It was recommended as a solution to the famous and well-known marks problem
that, prior to the introduction of any new gTLDs , a procedure should be established
whereby the owner of a famous well-known mark can obtain an exclusion in some
or all the gTLDs for the name of the mark - where the mark is famous or well-known
on a widespread geographic basis and across diffe