National Rights, Global Internet New ways to defend trade marks online
90th PTMG conference
Jonas Kölle, Merck
Agenda
2
1.
Introduction
2.
Online exploitation of territorial rights?
3.
Targeted websites in the pharmaceutical industry
4.
Influence of geo IP solutions to jurisdiction
5.
Effect on WIPO Joint Recommendations
6.
Conclusion
1.
Introduction
2.
Online exploitation of territorial rights?
3.
Targeted websites in the pharmaceutical industry
4.
Influence of geo IP solutions to jurisdiction
5.
Effect on WIPO Joint Recommendations
6.
Conclusion
Digitalization of pharmaceutical market
•
Digitalization follows globalization, even highly regulated businesses like the
pharmaceutical industry becomes more and more digital
© strategy& 2013
Territorial TM rights in world wide web – a conflict?
•
Trademark rights are territorial rights - internet content is usually published globally
•
Conflicts arise between trademarks and domain names or website content
•
The issue is not new:
•
On July 1, 1997, as part of the Clinton Administration's Framework for Global Electronic
Commerce, the President directed the Secretary of Commerce to privatize the domain
name system:
•
“8. The Trademark Dilemma. When a trademark is used as a domain name without
the trademark owner's consent, consumers may be misled about the source of the
product or service offered on the Internet, and trademark owners may not be able to
protect their rights without very expensive litigation.
•
For cyberspace to function as an effective commercial market, businesses must
have confidence that their trademarks can be protected.”
•
US Government with international support called WIPO to initiate a balanced and
transparent process to develop a uniform approach
•
to solve domain name disputes,
•
to ensure protection of famous and well-known trademarks and
•
to evaluate the effects of adding new gTLDs on trademark and IP holders
WIPO Domain Name Process Results
WIPO activities
UDRP (1999)
Joint Recommendations on the Protection of IP-Rights
on the Internet (2001)
Purpose
•
•
Arbitration Proceeding for cases of bad
faith, abusive registration of domain
names that violate trademark rights
(“cybersquatting”)
•
•
Remedies
•
Transfer or deletion of affected domain
name
•
•
Benefit for Trademark Owners
•
•
Effective measure to fight cybersquatting
in domain name space
50.000 domain name disputes in more
than 30.000 cases resolved
•
•
Recognizing that a sign used on the Internet is
simultaneously and immediately accessible
irrespective of territorial location… the JR aim at
Providing a clear legal framework for trademark owners
who wish to use their marks on the Internet and to
participate in the development of electronic commerce
Facilitating application of existing laws relating to marks
in online conflicts
criterion of „commerial effect“ to determine trademark
infringement in certain jurisdiction:
Use of Disclaimers, reference to 3rd party right holder,
gateway web pages, etc… to reduce commercial effect
Clear framework & orientation for online trademark use
Defense of trademark rights depends on implementation
of Joint Recommendation into national jurisdictions
1.
Introduction
2.
Online exploitation of territorial rights?
3.
Targeted websites in the pharmaceutical industry
4.
Influence of geo IP solutions to jurisdiction
5.
Effect on WIPO Joint Recommendations
6.
Conclusion
Exploitation of territorial rights online
•
Owners of broadcasting rights, copyrights and other territorial rights use geo ip solutions
for the online exploitation of such rights.
•
Licenses for protected content are usually granted for a territory and they include the duty
to limit online uses to the respective territory.
•
From the right owners‘ perspective there seems to be no conflict between territorial rights
and their exploitating in the world wide web as today‘s technical solutions allow territorial
allocation of contents depending on license situation
•
Users sometimes complain about the effects:
How do geo IP solutions work
• IP addresses are geographically allocated. Based on IP addresses an internet
user‘s location can be identified on country, state and city level
• Geo IP technologies are crucial to run effective online businesses in different
territories
• Geo IP technology is used for the following purposes:
• Online Advertisement
• Content localization
• Enhance online analysis
• Mobile tagging
• Digital rights management
• Fight online fraud
Industry examples:
“It is imperative that the BBC ensures compliance with licensing agreements,” explained
Matthew Wood, Head of Software Engineering for BBC Future Media, Online Technology Group.
“By using accurate IP geolocation technology, we are able to ensure we abide by geographic
licensing rights agreements.”
Geolocation technology helps badoo.com members build local social dating networks across
the globe
“We may have promotions and events specific to a certain geographic location, so we have
zones on the page that actually tie into the IP intelligence data and will display the appropriate
messaging,” Schionning from American Apparel says. “For example, we may be running a
specific type of promotional event only in Honolulu, so only customers that come to our web
site from Honolulu are going to see that.”
10
© digitalelement.com customers
Agenda
1.
Introduction
2.
Online exploitation of territorial rights?
3.
Targeted websites in the pharmaceutical industry
4.
Influence of geo IP solutions to jurisdiction
5.
Effect on WIPO Joint Recommendations
6.
Conclusion
Pharma industry examples:
Disclaimers
Pharma industry examples:
Disclaimers & Gateway Webpages:
Pharma industry examples:
Disclaimers & Gateway Webpages
Pharma industry examples:
• Pharma industry uses measures described in WIPO’s 2001 Joint
Recommendations (mainly disclaimers, gateway pages) to
• ensure compliance with different national regulatory framework
• adapt to nationally differing possibilities for online advertisement
• reflect territorial limitations based on license agreements
• Despite good reasons for technical improvement of online presences pharma
industry seems to be reluctant in adopting new technical solutions available
Pharma industry examples:
Joint Websites:
Pharma industry examples:
Geo IP solutions:
Merckgroup.com as displayed for users
outside of US and Canada
•
Merckgroup.com as displayed for US and
Canadian users
Geo IP solutions allow Merck to use online services respecting the balance achieved
with territorial co-existence agreement with third party right holder for MERCK name
and trademark
Need for geo intelligence in pharma industry?
•
Digitalization of further industries will lead to greater demand for brand owners to
implement geo IP solutions as
•
•
Global brands will struggle with maintaining and establishing a solid, worldwide
presence
•
Brands have the opportunity to create a new type of consumer relationship to help
transfer the brand equity they have built offline to the online world
Potential restrictions for trademark use online:
1
Regulatory framework
2
3
National rules for drug
advertising
LE
4
Limited territorial
licenses
1.
Introduction
2.
Online exploitation of territorial rights?
3.
Targeted websites in the pharmaceutical industry
4.
Influence of geo IP solutions to jurisdiction
5.
Effect on WIPO Joint Recommendations
6.
Conclusion
Copyright: Kino.to
Copyright: Kino.to – Liability of ISP?
• Film industry tried to obtain blocking order against Austrian Internet Service Providers (ISP) from courts in
Austria
• ECJ decided that where a protected copyright work is made available to the public on a website without
authorization - i.e. the infringement is by the website operator - the ISP is a relevant intermediary against
whom a website blocking order can be sought. However the measures imposed on the ISP need to be
proportionate.
• An injunction against an ISP that does not specify the measures that it is required to take are legitimate but the
national court must ensure that the implementation and enforcement of the injunction strikes a fair balance
between competing fundamental interests of right owner, ISPs, users and website operators
• This will require an assessment of whether (1) the measures taken by the ISP do not unnecessarily deprive
internet users of the possibility of lawfully accessing the information available and (2) those measures have the
effect of preventing unauthorized access to the protected subject-matter or at least of making access difficult;
they must also seriously discourage internet users from accessing the relevant material
Copyright: h33t.com
Copyright: h33t.com – Liability of Domain
Name Registrar?
• LG Saarbrücken holds domain registrar liable for copyright infringements users
of h33t.com commited.
• For case domain name registrar is informed about a clear copyright infringment
provider has obligation to investigate and implement blocking measures if
necessary
• Right holders profit from effective leverage on ISPs in case of online
infringements
• Operator of h33t.com switched to h33t.eu which had been blocked shortly
thereafter by interim injunction as well
• Today the service uses h33t.to, i.e. a domain name registered in Tonga with
help of an American Domain Name Registrar
• Based on kino.to judgement right owners might consider blocking measures
against ISPs to prevent use of h33t.to for European users
Trademark: cartierlove2u.com
Trademark: cartierlove2u.com – Liability of ISP
• London High Court granted blocking injunction for the website as
claimants had a legitimate interest in curtailing trade mark infringement
and that there was also a public interest in preventing trade mark
infringement, especially where counterfeit goods were involved
• Court acknowledged that costs to the ISPs were justified by the likely
efficacy of the blocking measures and the benefit to the Claimants having
regard to the other measures available to them
• UK decision provides a new option for trade mark holders seeking to limit
the online sale of counterfeit goods
• Judge’s comments about the effectiveness of alternative measures and
the proportionality of imposing the obligation on ISPs may well encourage
rights holders to seek site-blocking injunctions.
1.
Introduction
2.
Online exploitation of territorial rights?
3.
Targeted websites in the pharmaceutical industry
4.
Influence of geo IP solutions to jurisdiction
5.
Effect on WIPO Joint Recommendations
6.
Conclusion
Adaption of WIPO’s Joint Recommendation needed?
•
2001 Joint Recommendations preamble states as follows:
•
“Recognizing that a sign used on the Internet is simultaneously and immediately
accessible irrespective of territorial location…”
•
Due to the technical development such assumption is no longer true!
•
However, Joint Recommendations allow additional measures to be imposed on
infringers as long as those take into account limitations of use:
•
(i) to avoid a commercial effect in the Member State, or
•
(ii) to avoid infringement of the right or to avoid the act of unfair competition
•
Inclusion of blocking measures against ISPs and Domain Name registrars show
adjustment of measures with technical progress
•
Users of protected rights possess effective tools to avoid territorial infringements
which leads to alignment for determination of “commercial effect” by national
jurisdictions
1.
Introduction
2.
Online exploitation of territorial rights?
3.
Targeted websites in the pharmaceutical industry
4.
Influence of geo IP solutions to jurisdictione
5.
Effect on WIPO Joint Recommendations
6.
Conclusion
Online Brand Use
•
Ensure online compliance with third party’s rights and regulatory environment by
•
Regulating access according to license situation
•
Ensuring users in prohibited or highly regulated areas are restricted from
accessing your digital contents
Online Brand Infringements
•
Effective Defense of your brands online needs to take into consideration:
1
Measures against
Infringer
LE
2
3
Measures against ISP
4
Measures against
Domain Name
Registrar
QUESTIONS