This article is written by Shambhavi Tripathi, a 3rd-year student of LL.B. in Panjab University, Chandigarh. The article discusses copyright, trademark and other IPR issues in Cyber Space and International Regimes related to the same.
With the advancement and popularity of e-commerce and e-business, it has become important for companies and organizations to protect their intellectual property rights online. These days cyber crimes are not only limited to committing fraud and identity thefts but extend to copyrights and trademarks infringement as well. There are various kinds of IPR related cyber crimes that are committed in order to make money or to draw traffic to their sites. IPR related cyber space issues can be of various kinds:
Copyright issues in cyber space
- Linking: “Linking” allows a website user to visit another website on the Internet without leaving that particular website. By clicking on a word or image in one web page, the user can view another Web page somewhere else in the world, or on the same server as the original page. Linking may damage the rights or interests of the owner of the page that is linked to in two ways:
- linked-to sites can lose income as their revenues are often tied to the number of viewers who visit their home page, and;
- it may create the impression in the minds of users that the two linked sites endorse each other or are somehow linked to each other.
For example, A makes a homepage for his website, and on the homepage he places some advertisements, from which he can make some money and it contains links to various subordinate pages. Then, B creates his website, which contains links to A’s subordinate pages. This is called deep linking. Because of this, the website visitors to B’s site will be able to gain access to A’s material, without even visiting or seeing A’s advertisements.
Copyright infringement occurs when one site contains links to copyrighted materials contained in another site against the wishes and knowledge of the copyright owner. Though the person who provides the link may not be making copies themselves, some courts have found the link provider to be partially responsible for copyright infringement.
In Shetland Times, Ltd. v. Jonathan Wills and Another, the Shetland News’s “deep link” to embedded pages of the Shetland Times’s web site, through the use of Times’ web site’s news headlines, was held to be an act of copyright infringement under British law and an injunction was issued for the same.
- Inlining: “Inlining” is the process of displaying a graphic file on one website that originates at another. In inlining, a web site user at a certain site can, without leaving that site, view a particular video featured on some other site.
- Framing: “Framing” is the process of allowing a user to view the contents of one website while it is framed by information from another site. Framing may trigger a dispute under copyright and trademark law, because a framed site alters the appearance of the content and creates the impression that its owner endorses or is associated with the framer.
Trademark issues in cyber space
A domain name dispute is a conflict that arises when more than one individual believe they have the right to register a specific domain name. A “domain name dispute” arises when a domain name similar to a registered trademark is registered by another individual or organization who is not the owner of registered trademark. All domain name registrars must follow the ICANN‘s Uniform Domain-Name Dispute-Resolution Policy (UDRP).
- Cyber squatting: Cyber squatting is a kind of Domain name dispute. It includes registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trademark.
Yahoo! Inc v. Akash Arora & Anr (1999 IIAD Delhi 229) the defendants were using “yahooindia.com” for providing internet services. The petitioner here was the owner of the trademark “Yahoo!” and had registered its domain name with different countries like “yahoo.in” for India. Hence, the domain name “yahooindia.com” could be mistaken as an extension of “Yahoo!”. The Court treated the matter as passing off and granted an injunction restraining the defendant from using the domain name “yahooindia.com”.
- Mate-tags: Meta tagging is a technique in which a word is inserted in the keywords field of the site in order to increase the chances of a search engine returning the site, even though the site may have nothing to do with the word which was inserted. Trademark infringement occurs when companies include in their own websites meta tags containing the names or descriptions of other companies. For example, Coca Cola used the keyword “Pepsi” in its meta tags, now the web surfers who used search engines in order to obtain information about Pepsi would be directed to Coca Cola’s web site due to these meta tags.
As happened in the case Oppedahl & Larson v. Advanced Concepts (D. Colo. Feb. 6, 1998), the law firm of Oppedahl & Larson, owner of the domain name <patents.com>, filed a trademark infringement action against three companies and the corresponding ISPs after discovering that the companies inserted the words “Oppedahl” and “Larson” in the keywords field of their web pages in order to draw traffic to their sites.
International legal regimes relating to IPRs
- Berne Convention: The Berne Convention, 1886, deals with the protection of works and the rights of their authors. It provides creators (authors, musicians, poets, painters etc.) with the ways to control how their works are used, by whom the works are used, and terms of such usage. It contains a number of provisions determining the minimum protection that is to be granted and certain special provisions available to developing countries that want to use them. It is based on three basic principles and the three basic principles are the following:
- Principle of National Treatment- Works originating in one of the Contracting States must be given the same protection in each of the Contracting States as the protection latter grants to the works of its own nationals. “Work originating” means works of the author who is a national of that particular State or works first published in that State.
- Principle of Automatic Protection- Protection must not be conditional upon compliance with the formalities.
- Principle of Independence of Protection- Protection is independent of the existence of protection in the country of origin of the work.
- Rome Convention: The Rome Convention, 1961 secures protection in performances for performers (actors, singers, musicians, dancers and those who perform literary or artistic works), in phonograms for producers of phonograms and broadcasts for broadcasting organizations.
- WIPO Copyright Treaty: The WIPO Copyright Treaty reemphasizes that copyright protection extends only to expressions and not to underlying ideas, procedures or related methods of operation or mathematical concept. It provides that the relevant provisions of the Berne Convention related to reproduction and the exceptions apply in the digital environment and the use of works in digital form. Article 4 of the treaty guarantees the protection of computer programs as literary works in all modes and forms of expression. Article 5 of the treaty recognizes that all forms of compilations of data or other material, by reason of the selection or arrangement of their contents constitute intellectual creations and thereby are protected. WIPO Copyright Treaty addresses three specific rights namely:
- Right of distribution: The right of distribution confers on the authors an exclusive right of authorizing the making available to the public of the original and copies of their works.
- Right of rental: The treaty specifically recognizes the exclusive right of authors of certain types of works in authorizing the commercial rental of their works to the public.
- Right of communication to the public: The treaty provides the authors with an exclusive right of authorizing any communication to the public subject to relevant provisions of the Berne Convention.
Article 10 provides the signatory countries the freedom to impose other limitations or exceptions to the authors’ rights granted under the treaty. Further, the treaty requires signatory countries to provide legal remedies against circumventing of technological measures imposed by authors in order to exercise their rights and to restrict unauthorized use or acts not permitted by law.
- WIPO Performance and Phonograms Treaty: WIPO Performances and Phonograms Treaty, 1996 (WIPO PPT) is a relatively comprehensive regime in comparison with the WIPO Copyright Treaty. The WIPO PPT imposes a ‘National Treatment’ obligation on the signatory countries to guarantee exclusive rights specifically recognized under the treaty, including the right to equitable remuneration.
The treaty deals with a range of rights of performers including moral and economic rights and the related rights of reproduction, distribution, rental etc. The treaty also addresses a range of rights related to producers of phonograms. This treaty also deals with the right to remuneration for broadcasting and communication to the public, obligations related to technological measures and rights management.
- UDRP: The Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) sets out the legal framework for the resolution of disputes between a domain name registrant and a third party over the abusive registration and use of an Internet domain name in the generic top- level domains (gTLDs) (e.g.,. biz,. com,. info,. net,. org), and country code top- level domains (ccTLDs) that have adopted the UDRP Policy voluntarily.
According to Paragraph 4(a) of the UDRP Policy, the UDRP Administrative Procedure is only available for disputes related to abusive registration of a domain name. For a domain name registration to be abusive, certain conditions are needed to be fulfilled. The conditions are:
- The domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
- the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
- the registered domain name is being used in bad faith.
OECD Convention on Data Protection: In 1980, in an effort to create a comprehensive data protection system throughout Europe, the Organisation for Economic Co-operation and Development (OECD) issued its “Recommendations of the Council Concerning Guidelines Governing the Protection of Privacy and Trans-Border Flows of Personal Data”. This laid down seven principles governing the OECD’s recommendations for the protection of personal data. However, the OECD Guidelines were non-binding and data privacy laws still vary across Europe. The seven principles were:
- Notice: Notice to be given to the data subject when their data is being collected;
- Purpose: Collected data should not be used for any other purposes other than already mentioned and informed;
- Consent: Collected data should not be disclosed without the consent of data subjects;
- Security: Collected data should be protected from any kind of abuses;
- Disclosure: Data subjects should be informed as to who is collecting their data;
- Access: Data subjects should be allowed to have access to their data and make corrections to it; and
- Accountability: Data collectors should be held accountable for not following these principles.
Cyber space is becoming a hub for intellectual property rights infringement of various e-businesses. Certain practices by web site operators have resulted in violation of intellectual property rights or other entitlements of other websites operators. Hence, it has become important that people are aware of the illegal usage of their websites and pages. With the advancement of Cyber space, copyright and trademarks are not limited to the conventional intellectual property but has extended to intellectual property over the internet. There are various guidelines provided by international conventions and treaties to protect IPRs online which are helping e-commerce and e-businesses to expand without any harm to them.
- WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP); WIPO; Date of Access: 24.10.2019 <https://www.wipo.int/amc/en/domains/guide/>
- Summary of the Berne Convention for the Protection of Literary and Artistic Works (1886); WIPO; Date of Access: 24.10.2019< https://www.wipo.int/treaties/en/ip/berne/summary_berne.html>
- Summary of the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (1961); WIPO; Date of Access: 24.10.2019 <https://www.wipo.int/treaties/en/ip/rome/summary_rome.html>
- Aurélie Pols, Ewa Bałazińska, Karolina Lubowicka: OECD Guidelines: 8 Privacy Principles to Live By; PiwikPro Dated: 21.09.2018; Date of Access: 24.10.2019 < https://piwik.pro/blog/oecd-guidelines-8-privacy-principles-to-live-by/>
- Linking, Framing, Meta Tags, and Caching; Date of Access: 24.10.2019 < https://cyber.harvard.edu/property00/metatags/main.html>
- Linking, Framing, and Inlining by Richard Stim; Nolo; Date of Access: 24.10.2019 < https://www.nolo.com/legal-encyclopedia/linking-framing-inlining-30090.html>
- India: Legality Of Metag-ing, Linking & Framing by Himanshu Sharma and Martand Nemana; Singh & Associates; Dated: 08.09.2016; Date of Access: 24.10.2019 < http://www.mondaq.com/india/x/525188/Trademark/Legality+Of+Metaging+Linking+Framing>
- Cybersquatting: What It Is and What Can Be Done About It by Stephen Elias and Richard Stim; Nolo; Date of Access: 25.10.2019 < https://www.nolo.com/legal-encyclopedia/cybersquatting-what-what-can-be-29778.html>
- Himani Makkad: Trademark Law in Cyberspace: Protection to Internet Address <jlsr.thelawbrigade.com>
- R. Muruga Perumal: Copy Right Infringements in Cyberspace: The Need to Nurture International Legal Principles; Faculty of Law; University of Macau
- Sally M. Abel: Trademark Issues in Cyberspace: The Brave New Frontier; 5 Mich. Telecomm. & Tech. L. Rev. 91 (1999)
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