Transcript INTELLECTUAL PROPERTY IN THE DIGITAL ECONOMY Dr. Kristina Janušauskaitė WIPO TOT Program for SMEs Damascus, Syria January 16-20, 2011

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?
Impact of E-Commerce
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.
Challenges raised by the impact of e-commerce
• Protection of Software: different IP rights can protect
different components of software
Copyright → most used form, protects e.g. object
code, literal components
Patents → in most countries, only computerrelated 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
Challenges raised by the impact of e-commerce
• Online content distribution
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.
Challenges raised by the impact of e-commerce
• 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
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 components
Source code, data flow charts, algorithms
Outsourcing website development
Website 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
Technical
Tools/Software
Trademarks
Personal
Information, Others’
Likeness
•Finding info from CMOs
•Moral rights aspects
•Specifics of using photos
•Public domain material
•Infringing material take-down
•Checking license-based Terms&Conditions
•Getting permissions
•Metatagging, Linking
•Marketing & Advertising online
•Privacy treatment
•Personal information protection
•Database protection
Protecting website
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.
Patents/Utility
Models
Copyright
Sui Generis/Database
Laws
Trademarks
Designs
Trade secrets
How to protect website
Precautionary measures:
1 - To protect IP rights
By registering trademarks
By registering domain names
By 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 symbols
By using watermarks for copyright content
By giving notices that website or business
method is patented
3 - To let people know what What they can do with the page
use they can make from the Whom to contact to a get a copyright clearance
related to website components
content
How to protect website
Precautionary measures:
4 - To control access and
use of website content
By using online agreements to allow access
By 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
engines
By 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
Choosing a domain name for a company
What’s a domain name?
Domain names: Basics
Domain name is a user friendly form of Internet
address that is used to find websites on the Internet.
There are two parts in domain name:
Top-level domain (TLD)
• Generic TLD (gTLD)
• Country-code (ccTLD)
Second-level domain (SLD)
Choosing the first level domain
There can be business-related criteria
which are linked with a certain country, a
region, etc.
Some are open: .com, .info, .net, .org
Some 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- Examination (formal and/or
serves basis without examination substantive)
Private contract with a register
Registration by state/regional
authorities
Less expensive and quicker
More expensive and longer
Uniform Domain Name Dispute Resolution
Policy (UDRP)
• 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
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.
Uniform Domain Name Dispute Resolution
Policy (UDRP)
UDRP does not cover:
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?..