Transcript UNIDO-WIPO National Seminar on Managing IP of SMEs in the High-Technologies Park Minsk, Belarus, January 23-25, 2007

UNIDO-WIPO
National Seminar
on
Managing IP of SMEs
in the High-Technologies Park
Minsk, Belarus, January 23-25, 2007
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Intellectual Property Issues in
a Company Website
Lien Verbauwhede Koglin
Consultant, SMEs Division
World Intellectual Property Organization (WIPO)
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1.
Introduction
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(1)
What elements of your website
can be protected?
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Elements of website
software
Website design
Business names, logos,
domain names
Creative content
Confidential buss. info
TS, ©, patent
©
trademarks
©
Trade secrets
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Elements of website
Business method
database
Web pages, screen displays,
GUI, graphic symbols
Patent?
©, sui generis
©, industrial design
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(2)
How to protect your website?
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1. Protect your IP rights
• Register trademarks
• Register domain name (+ as TM)
• Register website and © material
• Measures to protect trade secrets
• Patent business methods?
Gather proof of
ownership + date
watermark, time stamp,
fingerprints
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Register Domain Name
• gTLD (.com,.net,.org) not associated with specific
country. Refers to character/nature of the site
• ccTLD (.by) associated with specific country.
• Search :
www.whois.net; www.tld.by
• Registration
– domain name registries (e.g. VeriSign)
– national registries (tld.by for Belarus)
– agents: represent requests in many countries (e.g. Marcaria)
• Price: (for .by) 70 USD, renewal 50 USD p/y
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2.
Let people know that the content is
protected + what use they can make
• Notices
- TM, ®, “Patent”, ©, “Confidential”
- e.g. LienPak™ software
• Warning and user statements
– restrictions on use
– allowed use
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Example
Confidentiality Notice
for Unpublished materials
This is an unpublished work containing LIEN’s
confidential and proprietary information.
Disclosure, use, or reproduction without
authorization of LIEN is prohibited.
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Example
Restrictions on Use of Trademarks
Listed below are trademarks for the company LIEN Inc., plus
other recognized trademarks that you are likely to encounter.
Nothing contained on this site should be construed as
granting any license or right to use any trademark
displayed on this site without the express written permission
of LIEN or such third party that may own the trademark.
• LienCORP® is a registered trademark of LIEN
• Minsknet® is a registered trademark of Company. Inc., used
under license
• ...
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Example
Restrictions on Use of Copyright Material
• All materials contained on this site are protected by
copyright law. Copyright © 2007 LIEN.
• No part of the materials, including graphics or logos,
available through the lien.com site may be copied,
photocopied, reproduced, translated or reduced to any
electronic medium or machine-readable form, in whole or in
part, without prior written consent of LIEN. Any other
reproduction in any form without the permission of LIEN is
prohibited. Distribution for commercial purposes is prohibited.
• Written requests for reprint or other permission should
be mailed, faxed or E-mailed to: ...
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Example
Permission Certain Uses of
© Material
• All materials contained on this site are protected by
copyright law. Copyright © 2007 LIEN.
• The materials contained on this site may be copied for
non-commercial personal use only.
Or
• The materials contained on this site may be freely copied
and distributed so long as our copyright notice and
website address are included.
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Example
Statement Used in Software
• This software is protected by copyright law. Copyright
© 2007 LIEN.
• The software may not be copied, reproduced, translated or
reduced to any electronic medium or machine-readable
form without prior written consent of LIEN, except that you
may make one copy of the program disks solely for back-up
purposes.
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3.
Control access and use of website CONTENT
Interest: e.g., if you sell software online
Limit access to works on website only to visitors
who accept conditions and/or have paid
Online agreements
Technological protection measures
 Encryption
 Access control or conditional access systems
 Versions of lower quality
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4. Monitor violations
• Random snippets of text / graphics
• Web crawler or spider programs
• Fingerprints
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(3)
Can you use material owned by others
on your website?
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Current technology  easy to use material
created by others
• Film, TV clips
• Music
• Graphics
• Photographs
• Software
• Text, etc
Using material without getting permission
(assignment or license) can have dire
consequences!
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1. Using technical tools or software
owned by others
• E-commerce system, search engine, technical
Internet tool, software  written license
agreement
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2.
Using copyright works owned by others
• Photos, videos, graphics, music, software, clips,
text, paintings, images, (HTML code)
• Written permission
• Even if just part of a work
– 14 lines of source code out of a total of 186,000 lines
• Material stored on the Internet is protected!
• Free uses/fair use
• Finding the copyright owner
– Collective Management Organization (BELAT)
• Don’t forget the moral rights
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3.
Using photographs owned by others
• Permission from copyright owner
• Permission to use subject matter?
– Building (architect)
– Artwork (artist)
– Image of person
(publicity & privacy rights)
Marc Chagall
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4.
Finding works in public domain
– libraries
– national archives
– collective management organizations
– online portals
L. da Vinci
George
Castaldo
Botero
Warhol
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5.
Using freeware
• Software
• Images
– e.g. www.epicture.com
• Clipart, artwork, photos
– e.g. creativecommons.org
• Backgrounds, wallpapers
• Etc
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Freeware
• Do not assume that you can use freeware
without limitation
• Often certain conditions
–
–
–
–
e.g. not allowed to change the images
e.g. must give some type of credit to the author
e.g. use for non-commercial purposes only
e.g. derivative works must also be open source
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6.
Using trademarks owned by others
• Identifying competitor’s products is all right
• Don’t use TM that might cause confusion
• Beware of using TM in
– meta-jacking
– linking & framing
(below)
– domain names
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Cybersquatting
• Cybersquatters register names of trademarks, famous
people or businesses with which they have no
connection
• Exploit first-come, first-served nature of domain name
registration system
• gTLD: Trademark holder can initiate proceeding under
Uniform Domain Name Dispute Resolution Policy
(UDRP)
www.wipo.int/amc/en/domains/
• Registrant of gTLD domain name must submit to such
proceedings (< Terms & Conditions for registration).
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ADMINISTRATIVE PANEL DECISION
Beiersdorf AG v. Alecsey Sorokin
Case No. D2000-1760
• Beiersdorf AG = leading cosmetic product company.
Owns trademark "NIVEA"
• Individual from Minsk registers <nivea.org>
• Decision: No rights or legitimate interests in respect of
the Domain Name. Domain Name has been registered
and is being used in bad faith.
• Domain name transferred to Beiersdorf AG
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(4)
Who owns IP rights in your website?
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– Typical website is collage of components owned
by different persons
• navigation software
• photographs, graphics, text, sound
• design
• etc
FIND OUT
• WHAT YOU OWN
• WHAT YOU HAVE RIGHTS TO USE
• AND IN WHAT WAY !
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Website developed by your employees
who are employed for this purpose
– Belarus Copyright Law Art. 14:
• Moral rights < employee
• Economic rights < employer (unless otherwise
provided)
– OTHER COUNTRIES: different rules
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Belarus Copyright Law - Article 14
Copyright in Service-Related Works
(1) The moral rights in a work created in the course of an
assignment or service obligation (service-related work)
shall belong to the author of the work.
(2) The economic rights in service-related works shall
belong to the employer, unless otherwise provided by the
contract concluded between the employer and the author.
(3) The author of a service-related work may not prohibit
the employer from disclosing the work.
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Website developed by freelance web developer
(work for hire)
– Belarus Copyright Law ??
– OTHER COUNTRIES: different rules
“I paid for it, so I own it”
is not always true !
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(5)
What to keep in mind
when negotiating a
web development agreement?
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Web Development Agreements
– Scope of work
• Maintenance and update
• Consulting services
• Registering domain name
– Ownership of material
• Material created by web developer
• Material provided by you
• Who owns copyright in the web design?
• What can you do with elements in which website designer
owns rights?
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– Who obtains clearances for “third party”
material incorporated in the web design?
– Liability
• Designer’s warranty that it is their original work
– Confidentiality
– Timetable for delivery of the website
– Payment
– Website Escrow?
• Deposit e.g. source code & related computer files
(executable program files, cgi script, graphic image
files, etc.) used by website developer to create and
maintain Client’s website
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(6)
What to keep in mind
when creating your website?
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1. The idea is free
• The idea of creating a website about how to
invent wisely in the stock market is not
protected by copyright
• Question: Can you copy the functionality or
‘look and feel’ of another website?
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Navitaire vs. easyJet
U.K.,30 July 2004
• easyJet engaged online development company
Navitaire to develop online ticketless booking
system for their flights.
• Relationship with Navitaire ended. easyJet engaged
other developer to create system with exact same
command structure and ‘look and feel’.
• New developer no access to source code. Did not
decompile.
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No copyright in a pudding ...
• Navitaire: easyJet copies functional idea of the system,
its ‘business logic’
– same ‘look and feel’ of the software (way of setting
out the computer screen)
– same commands entered by the users
• Judge: computer program cfr. secret recipe
for pudding. While recipe itself could be
literary work, if someone eats and makes
similar pudding without access to the recipe
 no copyright infringement in the recipe
even though similar result was achieved.
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2. Linking
– Linking
» visitor from lien.com visits other website
» visitor from lien.com visits other page within lien.com
– Deep links
» visitor from lien.com visits page other website, but
not its homepage
– Framing
» visitor from lien.com view content from other site
inside a frame supplied by lien.com
– Inlining
» visitor of lien.com can view a graphic file that comes
from another website, without leaving lien.com
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Get Website Linking Agreement
• Links to illegal content / software
• Link uses fanciful logo as its pointer
• Deep links to advertising-rich commercial sites
• Framing may trigger disputes under Copyright (alters
content) and TM (confusion) law
• Inline links:
– Fan website displays Dilbert
cartoons from official site
– search engine displays
full-size photographs
Dilbert
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Deep Linking
The Shetland Times v. The Shetland News
• Shetland News offered his readers a menu that
contained a mix of his own headlines and the
headline texts from Shetland Times.
• So by clicking on a headline about a 'council cockup', browsers could be passed on to the rival
Shetland Times’ site and read their copy.
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• The Shetland Times sued the Shetland News,
alleging breach of copyright. They claimed the
Shetland News were seeking to earn money from
their website by selling advertising on their front
page.
• Judge held that headline text had copyright. Actions
of The Shetland News in copying them for
reproduction on its own website is infringement.
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3. Domain name
What is a good domain name?
http://www.wipo.int/sme/en/documents/
wipo_magazine/08_2003.pdf
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4. People’s personal data
• User privacy : data protection laws &
privacy laws (especially in the E.U.)
• Privacy policy
5. Online sales
• Enforceable agreement:
– Terms must be reasonable apparent
– Mechanism to indicate assent
• Shrink-wrap agreement
• Click-wrap agreement
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Click-wrap
• SW downloaded, airline
ticket booked online, etc.
• customer clicks “I accept”
button which is preceded
by terms and conditions
Accept
Decline
Shrink-wrap
• SW sold in comp.store
• terms on outside of
package
• enforceable if customer
had chance to see the
terms either prior to the
sale or prior to opening
and accessing the
product.
• "By breaking this seal
you agree to abide by
the following terms and
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conditions"
6. Don’t disclose trade secrets
7. Don’t prematurely disclose patent
related information or new designs
8. Immediately remove infringing material
• Liability for subsequent violations
• Liability for persons who facilitate violation of
copyright
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9. Other legal issues:
• Advertising
• Marketing practices (comparative advertising,
unsolicited emails, discount schemes, etc)
• Distance selling regulations
• Regulations to protect children
• Tax regulations
• Jurisdiction, applicable law
• Dispute resolution
• Etc.
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(7)
What to do when someone infringes
your trademark / copyright
on his website?
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• Screen shots of all relevant pages
• Cease and desist letter (demand removal)
• Notice of infringement to search engine
(demand removal)
• Notice of infringement to website hosting
company or ISP (demand removal)
• Prosecution
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Conclusions
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• Websites are common target for
infringement lawsuits :
– Others may copy the look and feel, some features or contents
of your website  if you are not cautious, you may lose
your IP rights
– You may be accused of unauthorized use of other people’s
intellectual assets  if you are not cautious, you may be
liable for infringement
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1. Before going online, consult with
specialized Internet attorney
- IP is just small piece of the big legal pie
2. Regularly: website audit
3. Key person responsible
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Thank you !
Lien Verbauwhede Koglin
www.wipo.int/sme/
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