INTELLECTUAL PROPERTY IN THE DIGITAL ECONOMY Dr. Kristina Janušauskaitė

WIPO TOT Program for SMEs Damascus, Syria

January 16-20, 2011

Outline: What will we know after this session?

• What impact e-commerce makes on IP…

• What challenges e-commerce brings to IP…

• How to create a website for a company…

• How to protect website effectively…

• How to choose a right domain name for a company…

What impact e-commerce makes on IP?

• IP plays a big role in online trade of products and services.

Impact of E-Commerce

on IP

• IP became an important tool in developing new digital technologies.

Impact of E-Commerce

on IP

• Online branding became very important for current businesses.

Impact of E-Commerce

on IP

• Patent licensing is relevant in e-commerce.

Impact of E-Commerce

on IP

• Protection of Software: different IP rights can protect different components of software

Challenges raised by the impact of e-commerce

Copyright → most used form, protects e.g. object code, literal components

Patents → in most countries, only computer-related inventions are protected (which present new technical contributions)

Designs → protect certain features such as icons on computer screen, graphic user interfaces (GUIs), etc.

Trade secrets → source code can be protected as a trade secret

• Online content distribution

Challenges raised by the impact of e-commerce

Illegal downloads are widespread → illegal music, movies, arts, photos, software, etc.

E-commerce businesses should consider:• To protect IP rights on the Internet;

• Do not allow downloads of any content that belongs to third parties and not to a company;

• To build up certain programs, policies, guidelines which ensure that a company’s employees understand IP protection-related rules.

• Issues related to jurisdiction and applicable law

• “World wide web” = international element

• Which court has jurisdiction over e-commerce disputes?

• Which law applies?

Challenges raised by the impact of e-commerce

• Enforcement-related issues

• Finding an infringer

• Enforcing IP rights that are violated on the Internet

• Enforcing IP rights internationally

Challenges raised by the impact of e-commerce

• Domain name issues

• Domain name must be available

• Conflicts between domain names and third parties’ trademarks or personality rights

Challenges raised by the impact of e-commerce

Creating website

1 - Outsourcing website development

2 - Creating a website on your own by using material owned by others

Outsourcing website development

Website components: content aspects

1 - Website design (layout)

2 – Various website elements•Texts, images, logotypes, software, music, videos, trademarks, graphics, databases, website engine tools, etc.

•Computer-generated symbols, screen displays, user interfaces, etc.

3 – Hidden componentsSource code, data flow charts, algorithms

Outsourcing website developmentWebsite components: ownership aspects

4 – Which existed before and were owned by:• By the company

• By the developer

• By the third persons

5 – Specially created for website

→ Ownership should be defined• By an employee of the company: if website is created as a part of the job, in most countries a company would own copyright over website;

• By an outside developer: the outside developer would own copyright over website, unless otherwise agreed in a contract.

Outsourcing website development

Written contract with an outside developer: Topics to be included

Scope of work Ownership of the material used and developed Warranties Maintenance and update Confidentiality Liability and disclaimers Fees and payments Jurisdiction and applicable law

Case Study: Using material owned by others

A company produces sport shoes. In its website, the company would like to use some photos of its shoes, as well as the

photos or images, and logos of the shoes produced by other companies. The company is also eager to start marketing a new model of its shoes to young people who are into sports,

particularly, into football. Therefore, the company wants to add a photo of David Beckham in its website.

Using material owned by others

A permission (assignment, license agreements, ‘click-wrap’ licenses, ‘shrink-wrap’ licenses) from the owner of IP rights is first required.

Copyrighted Works

Trademarks

Personal Information, Others’ Likeness

Technical Tools/Software

•Finding info from CMOs

•Moral rights aspects

•Specifics of using photos

•Public domain material

•Infringing material take-down

•Metatagging, Linking

•Marketing & Advertising online

•Privacy treatment

•Personal information protection

•Database protection

•Checking license-based Terms&Conditions

•Getting permissions

What are protected elements?

• New technological systems• Search engines• Other technical internet tools• Software• Database• Website design• Website content• Business names, domain names• Product names, logos, other signs• Computer-generated graphic symbols,

screen displays, GUIs, webpages• Confidential graphics• Source code, object code, algorithms• Data flow charts, database contents

user manuals, data structures, etc.

Protecting website

Type of protection (different IP rights involved)

• New technological systems• Search engines• Other technical internet tools• Software• Database• Website design• Website content• Business names, domain names• Product names, logos, other signs• Computer-generated graphic symbols,

screen displays, GUIs, webpages• Confidential graphics• Source code, object code, algorithms• Data flow charts, database contents

user manuals, data structures, etc.

Protecting website

Patents/Utility Models

Copyright

Sui Generis/Database Laws

Trademarks

Designs

Trade secrets

How to protect websitePrecautionary measures:

1 - To protect IP rights By registering trademarksBy registering domain namesBy registering website and copyright (in case such possibility is provided)Patenting online business methods (in countries where it is available)

2 - To let people know that the content is protected

By using symbolsBy using watermarks for copyright contentBy giving notices that website or business method is patented

3 - To let people know what use they can make from the content

What they can do with the pageWhom to contact to a get a copyright clearance related to website components

How to protect website

Precautionary measures:

4 - To control access and use of website content

By using online agreements to allow accessBy using encryption (keys, etc.)By using access control & conditional access systems

5 – To detect infringements on website

By taking random snippets of text from website and searching for the snippets using search enginesBy using ‘spider programs’ to detect illegal use

Taking actions against violators: Steps

1 - Make screen shots or prints of relevant pages

2 - Print the source code from the infringing website

3 - Assure that you can prove your prior ownership over website content and its originality

4 - Send ‘cease & desist’ letter to the owner of infringing website

5 - If no response received, send: (a) a notice about infringement to any search engine and (b) a request to ISP with a demand to remove the infringing site

What’s a domain name?

Choosing a domain name for a company

There are two parts in domain name:

Top-level domain (TLD) Second-level domain (SLD)

• Generic TLD (gTLD)• Country-code (ccTLD)

Domain names: Basics

Domain name is a user friendly form of Internet address that is used to find websites on the Internet.

Choosing the first level domainThere can be business-related criteria which are linked with a certain country, a region, etc.

Some are open: .com, .info, .net, .orgSome are restricted: .int

Note that there is no big functional difference between gTDLs и ccTDLs: access is worldwide in both cases.

Register your domain name and expose your domain name by registering it with search engines

Choosing the second level domain

Easy to identify and find a company’s website on the Internet

Same or similar to a company’s business name or/and trademark

Distinctive of a company’s business or products

Not identical or similar to business names or trademarks of others

Not controversial in terms of geography, personal names, generic drugs, IGO titles, etc.

Preferably shorter

Domain Names vs. Trademarks

Domain Names Trademarks

Internationally available National/Regional IP rights

One domain name within one first level domain

Possible coexistence of similar or identical TMs

Registration on first-comes first-serves basis without examination

Examination (formal and/or substantive)

Private contract with a register Registration by state/regional authorities

Less expensive and quicker More expensive and longer

• UDRP Rules adopted in 1999• Reasons:

– Protection of trademark owners and legitimate domain name registrants

– Effective fight and prevention against cybersquatting (with less cost, shorter duration, etc.)

• Limited to cases of abusive registration of trademarks as domain names

• More on UDRP procedure: http://www.wipo.int/amc/en/domains/

Uniform Domain Name Dispute Resolution Policy (UDRP)

Abusive registration criteria

Uniform Domain Name Dispute Resolution Policy (UDRP)

1 – Domain name is identical or confusingly similar to the trademark.

2 – Trademark owner has a right or legitimate interest in domain name, and a registrant of domain name does not.

3 – Registrant registered or is using domain in bad faith.

UDRP does not cover:

Uniform Domain Name Dispute Resolution Policy (UDRP)

1 – Disputes regarding registrations which violate business (trade) names, geographical indications or personality rights.

2 – Situations which per se do not fall under the definition of ‘abusive registration’ under UDRP.

IP in the Digital Economy: Checklist

If you want to use protected content in your website (art works, photos, paintings), you need to get permission from their creators or owners.

If you commission to create a website for you, then the company which created that website owns the rights to it, unless it is contractually agreed otherwise.

A registration of another’s trademark as domain name is not a violation of trademark rights.

Domains are unique. Two companies can own and use the same trademark. However, only one company can own a particular domain name.

UDRP is an administrative procedure to solve all disputes between trademarks and domain names.

Thank you! Questions?..