Transcript WIPO-NIFT “TRAINING THE TRAINERS” WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS New Delhi, June 20 to 24, 2005

WIPO-NIFT
“TRAINING THE TRAINERS” WORKSHOP
ON INTELLECTUAL PROPERTY RIGHTS
New Delhi, June 20 to 24, 2005
Intellectual Property and
E-commerce:
Protecting Your Website
Lien Verbauwhede
Consultant, SMEs Division
World Intellectual Property Organization (WIPO)
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1.
Introduction
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• Website can be great tool for promoting
business online and for generating
sales
• Potential benefits:
– Marketing and information tool
– Expose works to worldwide market rather than local
shoppers
– Sell directly online  bypass/reduce transportation and
transaction costs
– Minimize need for middlemen
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Two possibilities:
Using your
own website
Using someone
else’s website
* Goodwill
* Business model, infrastructure
*  Administration
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Example - Online sale of fabrics
Utsavsarees.com
• Utsav Sarees: retail, wholesale,
manufacture and export of Indian Sarees,
Salwar kameez and lehenga cholis
• Vast warehouse in Jaipur: stock > 100.000
designs and patterns
• Utsavsarees.com leverages the power of
the Utsav Sarees brand to offer fabrics
online
• Gives customers easy way to find precisely
the sarees they are looking for
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• Search engine: to locate sarees, salwar
kameez or lehengas by color, fabric,
embroidery work, print or design
• Catalog browser: lets users sift through
hundreds of catalogs to find exactly the right
article
• Shopping cart: shows you all the items you've
collected during a particular shopping session
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• Ordering:
– select the products, click on “Proceed to
CHECKOUT” button
– enter email address, create account
– e-mail confirming each order
• Shipping: to virtually any address in the
world in 3-5 days. ‘Same Day Delivery’ to
Jaipur at no extra charge
• Order Information and Status History:
to review status of your order(s)
• Life chatting
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Example - Online sale of designs
Dakota Collectibles
•1988: twin brothers, embroiders
• Recognized need for a large variety
of stock embroidery designs high in
quality, reasonably priced, and that
could be delivered quickly
•Dakota Collectibles became the first
to enter the large-volume stock design
supplier market.
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• Over 20,000 stock embroidery designs
available
• Browse by category
• Buy per design, package, catalog,
workbook, CD, etc.
• Embroidery showcase: examples of
items embroidered with designs from
Dakota Collectibles
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• Custom embroidery: embroidery pattern on demand
based on a logo, drawing, photograph, etc.
Letterhead icon
Advertising
brochure
Business card
Photograph
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• Other products: software program to
manipulate and customize your
designs; marketing guides
• Information: sewing suggestions,
trade shows, links to machine
manufacturers and trade
associations, etc
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2.
How to take care of your
business’ website
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(a) What elements of your website can
be protected?
–
–
–
–
–
–
–
Software  trade secrets + copyright and/or patent
Business methods  patent
Website design  copyright
Creative content  copyright
Databases  copyright/sui generis
Business names, logos, domain names  trademarks
Computer-generated graphic symbols, screen displays,
graphic user interfaces, web pages  industrial
design/copyright
– Confidential business information  trade secrets
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(b) How to protect your website?
1. Protect your IP rights
• Register trademarks
• Register domain name (+ as TM)
• Think about patenting online business methods, in
countries where possible (not India)
• Register website and copyright material
• Precautions about disclosure of trade secrets
• Consider IP insurance policy
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2.
Let people know that the content is
protected
– “Patent”
– Trademark symbol: ®, TM, SM
– Copyright notice: © + name + year
– Watermark (visible + invisible)
– Time stamp
Example: Utsav Sarees © 2004-2005
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3.
Let people know what use they can
make
– Copyright statement or legal notice:
terms of use
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Example: Dakota Collectibles’ LEGAL NOTICE
Dakota Collectibles copyrights its artwork. The copyrights cover all
the designs displayed in its catalogs, flyers, home embroidery
collections, all promotional advertising, this website and the design
software which reproduces those designs. Dakota Collectibles is
prosecuting copyright infringements […]. You cannot copy Dakota
Collectibles' artwork or design software, by any means, such as, for
example, scanning, photocopies, or electronic transfer. […].
When you purchase a Dakota Collectibles' stock embroidery design,
you only obtain a license to embroider that design on fabric at one
location. Buying, selling, trading, sharing or copying our artwork or
design software is a violation of copyright law. […].
Making a copy, by any means, of Dakota Collectibles' artwork or
design software is a violation of copyright law. […].
See: http://www.dakotacollectibles.com/comm/terms.asp
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4.
Control access and use of website
content
Interest, e.g. if you sell fabric designs online
Technological protection measures
• limit access to works on website only to visitors who accept
conditions and/or have paid for such use
 Online agreements
 Encryption
 Access control or conditional access systems
 Releasing versions of insufficient quality
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5. Detect violations
• Random snippets of text / graphics
• Spider programs
• Fingerprints
6. Take actions against violations
• 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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(c) Can you use material owned by
others on your website?
– 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 owned by others
• E-commerce system, search engine, other technical
Internet tool  written license agreement
2. Using software owned by others
• License
• Shrink-wrap license (packaged software)
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3. Using copyright works owned by others
• Photos, videos, graphics, music, software, buildings,
clips, text, paintings, images, etc
• Written permission (license)
• Even just a part of a work
• Material stored on the Internet is protected!
• Free uses/fair use
• Clipart, freeware
• Finding the copyright owner
– Collective Management Organization
• Don’t forget the moral rights
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4. Using photographs owned by others
• Permission from copyright owner
• Permission to use subject matter?
– Building (architect)
– Artwork (artist)
– Image of person (publicity and privacy rights)
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5. Using works in public domain
• Where to find:
– libraries
– national archives
– collective management organizations
– online portals
L. da Vinci
George
Castaldo
Botero
Warhol
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6. Using freeware
• Software
• Images (e.g. www.epicture.com)
• Artwork, photos (e.g. creativecommons.org)
• Backgrounds, wallpapers
• Embroidery designs, fabric designs
• Etc
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Free embroidery designs
• Do not assume that you can use freeware
without limitation
• Often certain conditions
– e.g. not allowed to change the designs
– e.g. required that some type of credit is given to
the designer
– e.g. use for non-commercial purposes only
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6.
Using trademarks owned by others
• Identifying competitor’s products is all right
• Don’t use trademarks that might cause
confusion
• Beware of using trademarks in
– metatagging
<NIFT>
– linking
NIFT
– framing
– domain names
niftindia.com/
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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 story about a 'council cock-up',
browsers could be passed on to the rival 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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“visit Utsavsarees.com”
linking
linking
framing
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(d) Who owns IP rights in your website?
– Typical website is collage of components owned
by different persons
• navigation software
• photographs, graphics, text
• 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
• INDIA : copyright < employer (unless otherwise agreed)
• OTHER COUNTRIES: different rules
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– Website developed by freelance web developer
• INDIA : copyright < author (unless otherwise agreed)
• OTHER COUNTRIES: different rules
“I paid for it, so I own it”
is not always true !
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(e) What to keep in mind when negotiating a
web development agreement?
– 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
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(f) What to keep in mind when creating
your website?
1.Linking
– illegal content
– logo
– deep links
– framing
2.Metatagging
3.Domain name
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4. People’s personal data
• Data protection laws & privacy laws (esp. E.U.)
• Privacy policy
5. Online agreement: enforceable?
• Person must agree to the terms
• Terms must be reasonable apparent
• Mechanism to indicate assent
• Click-wrap agreement
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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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3.
Conclusions
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• The Internet provides totally new
opportunities for promoting your
business
• 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
www.wipo.int/sme/
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