Intellectual Property on the Internet

Kuwait Forum on Digital Contents
March 25-27, 2006

Charles Sha’ban
(cshaban@agip.com)
Abu-Ghazaleh Intellectual Property (AGIP)

Contents
- Intellectual Property Rights (IPRs)
- IPR & Domain Names (including IDNs)
- IPR & Website Contents
- International Organizations and Treaties
- Domain Names Study Cases
- Precautions
- Internet Governance - WSIS/WGIG/IGF

 

I- Intellectual Property Rights (IPRs)

Copyrights
Is a right of literary property given to author or originator of a certain literately or artistic production (broad definition).

Trademarks
A trademark is a distinctive sign, which identifies certain goods or services as those produced or provided by a specific person or enterprise.

Patents
Is a certificate given by an authority in which an inventor is granted the right for a limited period to stop others from making, using or selling an invention without his/her permission.

Designs
A design refers to the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture or materials of the product or its ornamentation

Geographical Indications
Products which refer to a certain geographical area, such as Champagne (Wines from Champagne area) or Rockford cheese.

 

Non-traditional marks
Although the laws in most of the Arab countries still lack the protection of these marks like smell or sound; some countries have started to amend these laws to include them. The latest example is the Law which was recently issued in Morocco February 2006.
 
Domain Names are:

- generic Top Level Domain Names (gTLDs)
Such as .com, .net, .org, .biz, .info… that do not refer to a certain jurisdiction, and anyone can reserve a domain name in these TLDs.

- country code Top Level Domain Names (ccTLDs)
Which are related to a certain country, for example: .kw for Kuwait, .jo for Jordan, .uk for the United Kingdom …etc

II- IPR & Domain Names Issues

Phishing / Spoofing
Webopedia has a good definition of phishing: The act of sending an e-mail to a user falsely claiming to be an established legitimate enterprise in an attempt to scam the user into surrendering private information that will be used for identity theft.

The e-mail directs the user to visit a website where they are asked to update personal information, such as passwords and credit card, social security, and bank account numbers that the legitimate organization already has. The website, however, is bogus and set up only to steal the user’s information. For example, the year 2003 saw the proliferation of a phishing scam in which users received e-mails supposedly from eBay claiming that the user’s account was about to be suspended unless he clicked on the provided link and updated the credit card information that the genuine eBay already had. Because it is relatively simple to make a website look like a legitimate organization’s site by mimicking the HTML code, the scam counted on people being tricked into thinking they were actually being contacted by eBay and were subsequently going to eBay’s site to update their account information. By spamming large groups of people, the “phisher” counted on the e-mail being read by a percentage of people who actually had listed credit card numbers with eBay legitimately.

Phishing, also referred to as brand spoofing or carding, is a variation on “fishing,” the idea being that bait is thrown out with the hopes that while most will ignore the bait, some will be tempted into biting.

Cyber Squatting & Typo Squatting
Cyber Squatting is to have a domain name similar to a trademark or trade name, and typo squatting to have a domain name resembles a trademark or trade name. The Uniform Dispute Resolution Policy (UDRP) adopted by ICANN and enforced on the gTLDs - and some ccTLDs use it - is usually capable in solving this in favour of the trademark owner.

Cyber smearing
A domain name indicating dissatisfaction from a trademark or a trade name (such as the suck sites).

Un-registered trademarks
A domain name contains a famous name, such as personal names. A lot of cases of this type appeared in the last few years carrying the names of famous actors and celebrities.

Intellectual Property and International Domain Names
At present, multilingual trademarks are protected in one of two ways: ‘transliteration’ or ‘translation’. Whether translation or transliteration of a mark is possible will depend on the culture and language of the country in which the trademark is registered. Regardless, trademark proprietors frequently register the trademark in its original script. The key to the registration process is to ensure that local consumers are able to recognize the trademark and the related goods and services.

So far, trademark owners have had only to consider the Latin script when protecting their trademarks as domain names. With the multilingual domain name system trademark owners will have to carefully assess how to best protect their trademarks as domain names in non-Latin scripts.

Both national and international laws are capable of providing protection for multilingual trademarks. In particular, several international treaties protect translated and transliterated words. These include; The Paris Convention, TRIPS, The Trade Mark Law Treaty, and The Madrid Agreement Protocol. Whether these treaties are found capable of providing protection for multilingual trademarks will be tested upon dispute of multilingual domain names.

This Chart shows the diversity of the languages, scripts and countries (Arabic for example is one script that is used by many languages and many countries) and how this usually affects the policy issues including IPR according to the different jurisdictions:

 

Uniform Dispute Resolution Policy (UDRP)
To be able to file a UDRP case for any domain name that is identical or similar to a trademark, the following should be correct:
• The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• Domain owner has no rights or legitimate interests in respect of the domain name;
• The domain name has been registered and is being used in bad faith.

Complainant can choose between either one referee or three referees (price will vary).

There are four accredited centers that offer UDRP:
• World Intellectual Property Organization (WIPO)
• National Arbitration Forum (NAF)
• Asian Domain Name Dispute Resolution Center (ADNDRC)
• CPR Institute for Dispute Resolution (CPR)

First-to-File vs. Sunrise
When new gTLDs are usually approved, part of the process used now that registries open registration first for the trademark owners (sunrise period) to help them protect their trademarks then registries open registrations for the public.
This has proved to be good in some cases but might not apply for others, for example with Multilingual domain names sunrise is extremely difficult if not impossible, the following points describes why:
• Worldwide nature of IDNs (no single searchable database)
• If a DB exists: difficult for a single registrar to manage foreign characters
• Sunrise will complicate the registration; TM owners will be faced with a sunrise for each trademarked gTLD, especially in significant languages, like Chinese and Arabic
• If TM owners do not support this, cybersquaters will loose interest
• Sunrise worked in some ASCII gTLDs (like .us), in general on a cost/benefit analysis, TM owners will reconsider sunrise period in future roll-outs
Conclusion regarding IDNs: Focus more on continued access to real-time bulk Whois and preserve dispute resolutions policies

The INTA DNS subcommittee did not suggest amending the existing UDRP policy, instead it decided to rely on experts with knowledge of the relevant languages

III- IPR & Website Contents

Copyrights

The legal systems protecting copyrightable works have been constantly developing towards improving such protection. The international treaties for the protection of copyright are widely ratified, and the public knowledge of such protection is gradually improving. The present challenge is in the implementation and enforcement.

Existing legal systems on copyrights:

The Berne International Union for the Protection of Literary and Artistic Works (1886) (Berne Convention) has been one of the most successful IPRs conventions in history. The Berne Convention has been ratified by 160 countries. As a result of the Berne Convention there is no need to register a copyright in any other signatory country once the owner has registered in his home country.

The Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961), extended copyright protection for the first time from the author of a work to the creators and owners of particular, physical manifestations of intellectual property, such as audiocassettes CDs or DVDs.

The Trade Related Intellectual Property Rights (TRIPs) Agreement (1996) is the intellectual agreement of the World Trade Organization (WTO) arising out of the Uruguay Round. TRIPs has adopted and, amongst other things, furthered the Berne and Rome Conventions. TRIPs is very significant to software exporters because the Agreement explicitly adds computer software to the scope of the Berne Convention and thus obligates WTO members to protect computer programs as copyrighted literary works.

The two “Internet Treaties” of the WIPO Copyright Treaty (WCT) (1996) (which up till February 2006 had 58 parties) and the WIPO Performances and Phonograms Treaty (WPPT) (1996) (which up till February 2006 had 57 parties) entered into force on March 6, 2002, and May 20, 2002 respectively. These two treaties were drafted with the purpose of updating and supplementing the existing international treaties on copyright and related rights, namely, the Berne Convention and the Rome Convention. These treaties have the following features relevant for IP protection on the Internet:

a) The Right of Reproduction in the digital environment

Most notably the two Internet treaties adapt laws to the digital age by deeming any uploads into a computer memory (with a controversy of whether this includes Random Access Memory) to constitute a reproduction of that work for the purposes of the Berne and Rome Conventions. Therefore the existing Berne Convention’s ‘three step test’ exceptions being permitted “in certain special cases” that “do not conflict with a normal exploitation” of the work and “do not unreasonably prejudice the legitimate interests of the author” with Member States being allowed to expand these exceptions as they deem fit.

b) Interactive Transmissions on the Internet

The WCT and the WPPT also clarify the extent of the control of the rights holders when works, performances and phonograms are made available to the public for downloading or access on the Internet on pull-based technology as opposed to traditional push-based broadcasting.

The WCT and WPPT further entrench and broaden the concepts of moral rights of attribution and integrity and allow a right holder to object to modifications of her performances that would be prejudicial to her reputation.

c) Technological Measures for Protection; and Rights Management Information

The WCT and WPPT further strengthen the enforcement and management of rights by obligating member states to implement ‘anti-circumvention’ measures; provide adequate legal protection and effective remedies to protect Berne Convention rights; provide protections for rights management information; and enable Digital Rights Management (DRM).

Trademarks

Cyberspace has raised a new concern for trademark owners concerning the protection of their trademarks and trade names.

A- The use of trademarks in search engines & Internet advertising

Introduction:
The Internet has become the most vital place for advertising. It became the main entity in any advertising campaign; companies use the Internet advertising to increase the web traffic to their sites. This leads to an increase in their revenues, therefore companies are more and more concentrated on having a place on the Internet to sell their product or services and to compete in the market.

The most commonly used applications on the Internet are the email services followed by search engines and portal sites as the main sources of information for Internet users. Companies therefore participate to obtain high rankings in these search engines to be able to advertise their products or services to increase their revenues. Portal sites and search engines have an opportunity to increase their revenues by selling keywords ("The keyword is the main entity that is used in the search engine") and false advertising that customers need to market its company product or service over the Internet.

Definitions of related terms:

Advertising is the attempt to disseminate information in order to affect buyer-seller transactions.
Keyword banners: Banner ads that appear when a predetermined word is queried from a search engine.

Using trademarks as keywords (as advertising tool) in the search engines and portal sites:
Search engines have a huge share of total Internet browsing usage. Users make use of search terms to find their needs; this search term could be a group of searchable keywords.

When you create your website, your main concern is to get listed in the top search results, and to increase the number of audience visiting your website. Search engines and most portal sites have created a way to increase the number of audience of websites and to increase their revenues by selling keywords.

To get listed at the top of the search results in the search engine, or to view your banner that match the search term, companies purchase keywords (search terms) relevant to their website and type of businesses. One of the selected keywords could be a famous trademark and this always works as there is no trademark key wording validation system.

 

Websites, whose owners have purchased keywords will be listed at the top of the search results and on the sponsors’ area, are ignoring the fact of counterfeited chosen keywords.

Key wording between legality and ethics:
There are two major parties involved in the key wording and false advertising issues from ethical point of view.  The first party is the customer, website creators, and advertising networks since they select the required keywords to be place in their advertising campaigns and are ignoring the fact that this keyword could be a trademark and its owner have only the right to use it. Therefore ethics are the strong barrier and could be a preventive way to stop misusing of the trademarks owned by others without asking their permission.

And the other party is the service providers such as the search engines, portal sites in which their main concern is to increase their revenues regardless the way they will pass and the harm they will cause for others who should be the first party to benefit from selling its own keyword (Trademark).

Conclusion:
Online advertising became one of the main entities of advertising campaigns. Search engines and portal sites are considered as one of the top Internet locations that has a high volume of audience.

Search engines, portal sites and advertising networks impose a huge demand on Internet advertising to increase there revenues by selling keywords (sometimes trademarks) to any customer ignoring the right of the real owner to exclusive use of its trademark.

Maybe a service center should be established to control and monitor Internet advertising and prevent infringements on IP rights.

B- Meta tagging: including the famous trademarks into the Meta tags of the websites

Introduction:
Internet helped many companies to advance their businesses. Each day companies’ websites touch almost every area in the world.
Huge numbers of Internet users often use the search engine to find their needs. Therefore business owners concentrate on reinforcing their availability on the web and search engines using Meta tags and site submission into the search engine database to be in the first viewed in the search results.
Some website owners tend to include famous trademarks in their Meta tags, which gives them the advantage of getting their websites listed in the results when someone searches for a specific trademark.

Definition:
Hypertext Markup Language (HTML) optional and essential lines of codes that are embedded into the web page are not displayed to the web page visitors and are technically invisible as they run at the back of the website. Meta tags are placed at the header section of any web page and it provides formatting information about the website contents as users can view it by viewing the HTML source of the website. This formatted information is inspected by the search engines and used to index and maintain the web page rank in user's searches.

Some Meta tags types:
• Description: describes the purpose of the site and content in a small paragraph to be viewed in the search result site description
• Keywords: searched keywords to be used by search engines to match it with the user search term.
• Robots: It’s a simple mechanism to indicate to visiting Web Robots if a page should be indexed, or it links on the page should be followed.
• Author: Identify the site author
• Copyright: Text of copyright.

Meta tags and Search Engines

When you create your website, and submit or subscribe your website URL to a search engine, only the crawler of the search engine visits your website, searching for a specific content to try to index it, this content is the Meta tags and entire site content, the search engine software most often use the meta tags to indexing instead of the content of the website.

Each Search engine crawlers runs in different ways, each concentrates on some element more than others according to the algorithm used, for example some search engine crawlers focus on the description tags, others on the keyword tag, and other, ignore the tags and use the website content.

 

 

Example how some Meta tag displayed and used in the search engine:

 

Misusing Meta tags and its association with the trademarks:
Widespread misuse of types of trademark appeared on the Internet such as cyber squatting, typo squatting, Cybermearing, Meta tagging, false trademark advertising and many more.

Misuse of Meta tags leads to trademark infringement when the website creator adds a famous competitors’ trademark or trade name in its website’s Meta tags.

Such action causes the search engine to divert the users searching for the trademark from the authorized website and the user may consider the competitor alternative product in favor of the trademark owner’s product.

Another form of misuse of Meta tags appears when a website creator places a well known trademark or trade name in its Meta tags on purpose to increase the traffic on the website. We can also find that some products from different owners have the same trademarks but with differences in goods or services. Also, we can find the same product in different countries which have the same trademarks and the same goods or services; for example, trademark "BEE" in Class 34 registered in Brazil as local owner, and another trademark also "BEE" in the same Class 34 registered in Algeria, and both owners have the right to use the trademark on Meta tags, and both websites will appear in the search engine, which may confuse users.

Improper use of Meta tags could confuse customers, and provide them with wrong information that may affect the market, trust and loyalty of the company.

This type of infringement is dangerous, as consumers have no knowledge related to the meta-tag. Improper use of Meta tags allows the unauthorized user to build up rights over a period of months or years, making the infringement more difficult to solve.

Examples:
 
• A website could be selling computer parts and equipment, but the keywords tags would refer to irrelevant keywords terms like "BMW", "Mercedes - Benz", "mp3". They figured that if enough people visited their site, some would buy.

• Suppose that Company X added in its Meta tag keywords of Company Y trademarks ("A","B" or "C"), then when the Internet user searches for the keyword A, the official website X would appear, and the user will be confused with this unexpected result, and start thinking that Company X is the owner of "A","B" or "C" goods or services.

To avoid such kind of abuse of Meta tagging, some search engines have stopped using keywords tag as part of the site ranking, however they check the keywords to ensure that they match the content of the site. If the tags are irrelevant, they must have another purpose. When keywords tags are completely unrelated to the content and no other purpose is found, some search engines ignore keywords tags, or ban that website from their database.

Legal issues related to Meta tags:
The use of trademarks as Meta tags in ways, which cause search engines to improperly link websites with those trademarks, have created allegations of intellectual property violations.
The court found that the likelihood of confusion may be mitigated by less restrictive measures than initially sought by the plaintiff. It asked the defendant to prominently display a statement identifying the websites as being affiliated with it, and a statement disclaiming any affiliation with the plaintiff, and identifying the location of the plaintiff’s website on the first page of its website.

It should be pointed out that this is a preliminary injunction case. The defendants had co-existed for almost a decade, and while there may be some overlap in their businesses, in the above example the plaintiff is primarily an automobile manufacturer, whereas the defendant offered computer-related services.

Courts have ruled that the use of a trademark as a Meta tag is likely to cause ‘initial interest confusion’. Such confusion arises when a person is searching for a trademark owner’s website by using one of their trademarks as part of an inquiry. The person may be diverted to another website and may consider the alternative product in favor of the trademark owner’s product.

C- Linking and framing

Linking is to direct the user to another website (link out mainly), and framing may get other pages of a website (probably include trademarks or trade names) inside the website the user is navigating, which may give the impression that the website has the authorization from the trademark owner.

There is a technical solution to allow only authorized websites to frame special contents, although simple linking maybe hard; some believe that linking itself is harmless, but the ability to link to any internal page of a website, bypassing its homepage may confuse the users that some trademarks belong to the original website.

D- Jurisdiction & applicable law:

This is a procedural issue, but an important one. It is not very clear yet which jurisdiction/laws will be used when an infringement occurs to a website in a different country from the trademark owner.

IV- International Organizations and Treaties

The Internet Corporation for Assigned Names and Numbers (ICANN)
Mechanisms to protect IPRs (adopting the UDRP)

World Intellectual Property Organization (WIPO)
Treaties on Copyrights and the performances and phonograms 1996
Development of the UDRP
Survey of issues related to IP on the Internet

World Trade Organization (WTO)
TRIPs
Programs on e-Commerce

Multilingual Internet Names Consortium (MINC)
MINC ICMC
Local empowerment (through local workgroups)

V- Domain Names Study Cases

• TalalAbuGhazaleh (com/net/org), September 2001: Someone reserved the name claiming that he has rights in it and after filing a UDRP the result was to move the domain names to the complainant (Talal Abu-Ghazaleh Organization).

• bellsouthvoip.com, February 2006: This is a recent case and although it is known that through UDRP the trademark or trade name owner will get the name, seems they thought adding voip after the name will protect them, but again it was clear that this is a cyber squatting and the name was returned to Bell South Company.

A full list of the cases handled by the WIPO can be found at:
http://arbiter.wipo.int/domains/cases/index.html

VI- Precautions

Although it might be expensive to try to register domain names in all gTLDs and ccTLD, sometime the damage on a trademark owner might be even more expensive.

I will try to list some of the precautions a trademark owner can apply to try to minimize the chance that his trademarks be abused in domain names:

• Register your trademark as a domain name in the gTLDs and ccTLDs you are interested in.
• May want to consider reserving names that maybe confusingly similar to your trademarks.
• Domain Names need a dedicated person or even a department that is related to IPRs more rather than IT.

 

 

VII- Internet Governance

World Summit on Information Society (WSIS)
After the end of the first phase meetings in Geneva, December 2003, a lot of resolutions had been issued and only two items needed more work. The Summit decided that these two items must be studied and reports should be ready before the second phase meetings in Tunisia, November 2005.
These two items are:
• Internet Governance: Where the decision was that the UN secretary general assembles a working group to study this and send a report before the second phase, this result was the Working Group on Internet Governance (WGIG) and the report was published August 2005. Although IPRs was not one of the main disputed issues but it was mentioned in the report and that IPRs should be protected online.
• Financial Mechanisms: This issue is not related to IPRs, but the report was published before the deadline and included creating a fund to help narrow the digital divide between developed and developing countries.

Working Group on Internet Governance (WGIG)
This was a multistakeholder group consisted of representatives from governments, private sector and civil societies. Four meetings with open consultations were held and the report was issued August 2005 and approved by the Summit November 2005, mainly to create a forum to discuss the issues related to the Internet. IPRs can be one of the issues to be tackled by the forum.

Internet Governance Forum (IGF)
Until now, discussions are still going on to decide on the issues that should be handled by this forum and the structure of it. Recent consultations in Geneva (February 2006) agreed that the first meeting of the forum will be on October/November 2006 in Athens, and the current online consultations to determine which issues to tackle in the first meeting are still taking place. IPRs issues are not expected to be one of these items.

References:
Work of some groups and taskforces my firm and I are members in:
• International Chamber of Commerce (ICC) joint Task Force on IPRs on the Internet
• Intellectual Property Constituency of ICANN
• The Multilingual Internet Names Consortium (MINC)

 

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