Protecting Intellectual
Property in the Internet Age
Conference on
Information
Technology Laws
and Related
Intellectual
Property-
Faculty of law,
Delhi University
20th March 2010
Karnika Seth
Cyber-lawyer,
Attorney at law & Partner,
SETH ASSOCIATES
ADVOCATES AND LEGAL
CONSULTANTS
1
Presentation Plan
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Introduction to Intellectual Property Rights
Protecting Copyright in the digital millennium
Passing off, Trademark infringement and dilution
Linking, framing & metatagging
Cybersquatting
Domain name dispute resolution
Trade secrets in software and reverse engineering
Database Protection
Legal remedies
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INTRODUCTION TO INTELLECTUAL
PROPERTY RIGHTS (IPR)
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Intellectual Property (IP) is defined as any
"original creative work manifested in a
tangible form that can be legally protected“
Right associated with intellectual property
which gives legal protection is referred to as
IPR.
When we speak of IP rights, we refer to
controlling the way IP is used, accessed or
distributed.
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Trademark &
domain names
Copyright
Trade secrets
Patent
Categories of
IP rights
Utility model/Designs
Geographical
Indications
Plant Breeder’s
rights
4
Classification of IPR
Intellectual Property
IPR
Trademarks
Broadcasting
Copyright
Patents
Music
Dramatics Works
Literature
Sound Recording
Industrial Design
Works of Art
Geographical
Indications
Computer Programs
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Rights that different IP assets protect
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Intellectual Property can be clearly distinguished from
Goodwill. UK & Australian Generally Accepted Accounting
Principles (GAAP) has specified goodwill as an umbrella
concept consisting of unidentifiable intangible assets and
should not include those Intellectual Properties which are
capable of individual identification and can be sold separately.
Copyright- is a bundle of rights granted to an author of an
original artistic, literary or musical work to print ,publish,
distribute, and sell, lease copies of his work and other allied
rights. Copyright protection also extends to cinematographic
film and sound recordings.
Designs- The designs entitled to protection are new and
original designs having aesthetic value which have not been
previously known or published in India or elsewhere.
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Rights that different IP assets protect
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Trademarks- is an identification symbol which may be a
word, a device, a label or numeral etc. or a combination
thereof used in the course of trade that enables the
purchasing public to distinguish one trader’s goods from
similar goods of other traders
The purpose of Brand is:
• To uniquely identify a company and its product.
• To differentiate them from competitor.
• To enhance the perceived value, the quality and
satisfaction that a customer experiences.
• To evoke distinct associate stands for certain personality
traits and carries emotional
attachment.
• Above all brand is supposed to inspire trust. Trust failure
can lead to brand failure and brand failure can be fatal.
Patents- is the grant of a monopoly right to an inventor who
has used his skill to invent something new.
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Different Acts governing IP assets
Trade Marks
Patents
Copyright
Designs
Geographical Indications
The Trade Marks Act, 1999
The Patents Act, 19 70
The Copyright Act, 1957
The Designs Act, 2000
The Geographical Indications
Of Goods Act, 1999
The Protection of plant varieties and
Plant Varieties
Farmers’ Right Act, 2001
Semi conductor IC layout
Semi conductor IC layout design
Act,2000
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IP- Duration of Term of Protection
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Patents (20 years)
Trademarks (10 years + renewals)
Copyrights in published literary, dramatic, musical, and
artistic works (Lifetime of author +60 years).
Copyright in photographs ,cinematographic film, sound
recordings –(60 years from year in which it was
published)
Broadcast reproduction right-(25 years from the
beginning of the calendar year next following the year in
which the broadcast is made.)
Performers right-(25 years from the beginning of the
calendar year next following the year in which the
performance is made)
Industrial designs (10 years+ renewal permitted once
for 5 years )
Trade-secrets and know how collectively “proprietary
technology” (contract period-protected by contract
provisions, doctrine of breach of trust)
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“Most creations resulting from human endeavors in various fields
of art, literature ,science and technology constitute Intellectual
Property”
Ownership
Valuable Assets
Special Rights
Transferable
Intangibles
Intellectual Property
Time &
cost intensive
Additional Profits
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Why are IP assets important ?
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Its creation is both time and cost
intensive
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Requires an assembled trained workforce for its
creation
Requires building of goodwill through advertising
programs
Generates customer loyalty
Adds to commercial value of organization
Its exploitation brings consistent additional
profits to an organization
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IP adds value at every stage of the
innovation and commercialization process
Patents /
Utility Models
Industrial Designs
Trademarks
Invention
Copyright
All IP rights
Commercialization
Marketing
Financing
Literary / artistic
creation
Trademarks,
Ind. Designs,
Geo. Indications
Exporting
Product Design
Licensing
All IP rights
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Need To Protect IPR
To allow IP creators to benefit from their work
Artists and creators should be able to enjoy the fruits of
their labor for a specified time period, after which the
material becomes available for public use. If a business
comes up with an attractive marketing logo, then no other
businesses should be allowed to use that logo to promote
their own products without permission.
Protecting IP is a method of promoting creativity
If one is not allowed to copy another person's work
without permission then creativity is encouraged .
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Need To Protect IPR (Contd.)
Leads to increased global trade
Example: Jordan- where strengthened patent protection has been
linked to tangible economic benefits. The International Intellectual
Property Institute (IIPI) released a comprehensive report in August
2004 that analysed the establishment of globally competitive
pharmaceutical and biomedical technology industries in Jordan. The
findings of the report indicate that "Jordan's economy has benefited
greatly from the recent adoption of better intellectual property
protections This was reflected in a jump in the health-service
contributions to the Jordanian GDP from 2.8 percent in 1997 to 3.5
percent in 2001. Employment in the health-services sector has
increased 52 percent since 1997.”
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There are multiple perspectives about
intellectual property rights on the Internet
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Nature of internet- Borderless space, ease of flow of
information, promptness, anonymity, easy to share, distribute
and copy information at very less cost.
These multiple perspectives to IPR include:
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"Information Wants to be Free." These people believe there
should be no copyrights or other protections of intellectual
property; everything made publicly available should be public
domain.
"Right of Attribution." These people believe that the only rights
owed to authors and creators is the right of attribution; otherwise,
all information is free.
"Limited Use Rights." These people believe that copyright has
validity but minor infringing behavior, whether "fair use" or not,
should be legal.
"Strong IP Regimes." These people adhere strictly to
intellectual property protections.
(Note that there is also the moral rights perspective, which exists
on a different scale but is most closely aligned with the Strong IP
Regimes category.)
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Concerns of protecting intellectual
property.
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The Internet makes it possible to distribute any kind of digital
information, from software to books, music, and video,
instantly and at virtually no cost. The software industry has
struggled with piracy since the advent of the personal
computer, but as recent controversy over file-sharing systems
such as Napster and Gnutella ,Aimster. ( , demonstrates,
piracy is now a serious issue for any individual or business
that wants to be compensated for the works they create. And
since the Internet knows no borders, piracy is now a serious
global problem.
Strong legislation such as the Digital Millennium Copyright
Act (DMCA), cooperation between nations to ensure strong
enforcement of international copyright laws, innovative
collaboration between content producers and the technology
industry, and standards developed by organizations like the
Secure Digital Music Initiative (SDMI) that can prevent or
deter piracy have already made an impact on addressing this
problem. But as more and more digital media becomes easy
to distribute over the Internet, the government and private
sector must work together to find appropriate ways to protect
the rights of information consumers and producers around the
world.
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Protecting Copyright in the digital
millennium
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Copyright is about protecting original expression. In contrast to
traditional analog methods of recording works of intellectual
property - on paper, film , on magnetic tape etc. now is the era of
digitalization.
Digitization converts all words, images, sounds, graphics and
films into some binary numbers, either ones or zeros.
These digitally stored works, disassociated from their physical
form, are then transferred over the networks to be finally
reconstructed into recognizable art by a reference to their binary
values.
This transformation represents that we are no longer transferring
fixed expression of works as we would buy a book or license a
video, but the digital representation of those works.
This liberation of works from their form or media, calls for a
change in the way that we protect and enforce intellectual
property rights and copyright in particular.
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Protecting Copyright in the digital
millennium (contd.)
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With the advent of digital technology some new types of work
came into being and questions arose about how, and to what
extent, they should be protected:
Computer programs have some of the characteristics of a
literary work but are not written to be read directly by another
person; rather a computer program is a set of instructions for
a machine. European approach-to be patentable it should lead
to a technical effect. A technical contribution typically means a
further technical effect that goes beyond the normal physical
interaction between the program and the computer.
Even though the European Patent Convention and its Article 52
excludes the patentability of programs for computers as
such and despite the fact that the European Patent
Organisation (EPO) subjects patent applications in this field to
a much stricter scrutiny when compared to their American
counterpart, that does not mean that all inventions including
some software are de jure not patentable.
T 928/03, Konami, Video Game System -how to make the
computer easier to use .
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Protecting Copyright in the digital
millennium (contd.)
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The question of new, sui generis form of protection was
seriously considered in the 1970s, but copyright
protection became the norm. the TRIPS Agreement
requires that ‘Computer program, whether in source or
in object code, shall be protected as literary works under
the Berne Convention’. Case on point-Ibcos computers v
Barclays FinanceLtd(1994)FSR 275,Apple computer inc
vsFranklin ComputerCorpn714F2d1240(3rd Cir 1983).
India party to Berne convention, Paris convention and
UCC1952.
India-Copyright Act-Section 2(o)-computer programme
is literary work.section 2(ffc) defines computer
programme.,section 2(ffb) defines computer-copyright –
tangible –storage in any medium
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5 Exclusive Rights of a Copyright
owner
Section 14 Copyright Act,1957
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To fix information in any tangible form
To reproduce copyrighted work
To sell, rent, lease or otherwise distribute
copies
Perform and display copyrighted work
To prepare derivatives of a copyrighted
work.
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Making of a RAM copy without authorization
would constitute infringement
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MAI systems corp v Peak computer
991F2d511(9th circuit 1993)
Copyright owner of OS software sued a computer
repair company for infringement, based on repair
company’s turning on a computer running the OS
for servicing the machine. In doing so, the
defendant was able to view the software program
to assist him in diagnosing the problem.
Held, loading of copyrighted computer software
into the memory of a cpu causes a copy to be
made which in absence of permission from
copyright owner constitutes infringement.
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Digital downloads and reproduction &
display rights
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Kelly v Arriba Soft Corp 280 F3d 934(9th
Cir2002)
Plaintiff leslie kelly had copyrighted many images
of American west. Some were located on her
website. Defendant produced thumbnail pictures
in its search engine’s search results and by
clicking on them, larger version could be viewed
within Arriba’s page.
Circuit court held, use of thumbnails is fair use
but display of larger image within its webpages is
violation of author’s exclusive right to publicly
display his works.
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Digital downloads and distribution
rights
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Marobie –Fl.inc v National Association of Fire
Equip Distributors 983 F Suppl1167(NDIll)
Court held that the act of placing unauthorised
copies of Plaintiff’s electronic clip art files on the
defendant’s webpage constitutes an infringement
of distribution rights of the plaintiff as plaintiff’s
files became available for downloading by internet
users.
Another case in point-Playboy enterprises ,inc v
Frena 839 F Supp 1552(M.D.Fla1993)
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Types of Copyright Infringement
Direct Infringement
Contributory Infringement
Vicarious Infringement
It is wholesale reproduction and distribution of
Copyrighted works
It occurs when someone knowingly
encourages infringing activity
When for financial benefit the operator in spite
of his ability to control and check
infringements deliberately restrains from
checking the users from committing such actsplayboy enterprises inc vs webbworld,inc 991 F Supp
543(N.DTex.1997)
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E-Copyright Protection and digital
music
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The MP3 revolution
The Napster story
P2P file sharing technology facilitates 1-store MP3 music files
on individual computer hard drives available for copying by
other Napster users 2-search for MP3 music files stored on
other users computers and 3-transfer exact copies of the
contents of other users MP3 files from one computer to
another via the Internet.
Napster free of charge music share software ,napster internet
site. It provided technical support for indexing and searching
of MP3 files also.-complaint for being contributory and
vicarious copyright infringer. Napster used fair use defence.
Court held Napster is guilty of contributory and vicarious
copyright infringement
DMCA 1998-Section 512-safe harbour doctrine for ISPs-ISP to
prove that it lacks requisite knowledge of infringing activity.
(analogous to Section 79 IT Act,2000)
New avtaars-Gneutella and kazaa.
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Passing off, Trademark
infringement and dilution
Passing off
“No body has any right to represent his goods as the goods of
somebody else”
Lord Halsbury
Passing off action allows trader A to prevent trader B from passing
their goods off as if they were A’s.
Passing off is available where there is a prospect of confusion of
identity through the unauthorized use of similar marks or get up, and
such use damages, or is likely to damage the goodwill and reputation
of a business. Passing off can apply to virtually any name, mark, logo
or get-up which distinguishes a company, business, product or service
from the other. Passing off attracts doctrine of strict liability: the
intention of the person passing itself off as another trader is irrelevant.
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Attributes of Passing Off
Lord diplock in Erven Warnink v J Townend 1979
(2)AllER 927-To Succeed in an action for passing
off, a claimant should establish that:
The claimant has a goodwill
Passing off is made in the course of trade.
The defendant made a misrepresentation
that is likely to deceive the public.
The misrepresentation damages or is
likely to damage the goodwill of the
claimant.
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Example of passing off action
Domain name similar to that of known companies are
used by persons in order to promote their products or
services.
A company creates a website to promote his business of
soft drinks and deliberately gives it the domain name
www.cocacola.com , now this domain name is bound to
confuse and mislead the customers as that of the well
known Coca-Cola and encourage them to buy the
product which infact is of another company. This can be
termed as passing off.
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Cases on Passing off
Yahoo! Inc. vs Akash Arora(1999)
FACTS: The defendant installed a website Yahooindia.com nearly
identical to plaintiff’s renowned yahoo.com and provided services
similar to those of the plaintiff.
DECISION: The Delhi High Court granted an injunction restraining
defendant from using yahoo either as a part of his domain name
or as a trade mark .It held that trade mark law applies with equal
force on the internet as it does in the physical world.
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Precedents on Passing off
In the case of Marks & Spencer Plc and others v. One in a
Million Ltd. and others, the deputy judge of the English Court
held that:
"Any person who deliberately registers a domain name on
account of its similarity to the name, brand name or trade mark
of an unconnected commercial organization must expect to find
himself on the receiving end of an injunction to restrain the
threat of passing off, and the injunction will be in terms which
will make the name commercially useless to the dealer.“
In the case of Rediff Communication Limited v. Cyberbooth
and Ramesh Nahata of Mumbai (1999), the Bombay High
Court supported an action of passing off when the Defendants
used the term ‘RADIFF’ (similar to the name ‘REDIFF’ of the
Plaintiff) to carry on business on the Internet.
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Passing off action under the Trade
Marks Act, 1999
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A registered Trademark has the backing of
infringement and passing off remedies under the
TMA act.
The Act does not provide for infringement action
in respect of unregistered Trademarks.
Only Passing off remedy is available in case of
unregistered Trademarks.
(Section 27 of TMA Act, 1999).
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Trademark infringement
Section 29 of the Trademark Act states that when a registered trade mark is
used by a person who is not entitled to use such a trade mark under the
law, it constitutes infringement. A registered trade mark is infringed ,if:1. The mark is identical and is used in respect of similar goods or services or
2. The mark is similar to the registered trade mark and there is an identity or
similarity of the goods or services covered by the trade mark
3. And Such use is likely to cause confusion on the part of the public or is
likely to be taken to have association with the registered trade mark.
For example, if you are not the Nike® company or authorized by it, it is
an infringement to sell sports clothes called "Nikestuff “
Legal remedies under Indian Trademarks ActInjunction ,damages, delivery up of infringing goods, destroying infringing
goods and material, etc.
For cases see heading cybersquatting
Satyam infoway vs Sifynet solutions 2004 (6)SCC 145..
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Dilution
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Dilution is a trademark law concept forbidding the use of a famous
trademark in a way that would lessen its uniqueness. In most cases,
trademark dilution involves an unauthorized use of another's trademark on
products that do not compete with, and have little connection with, those of
the trademark owner. For example, a famous trademark used by one
company to refer to hair care products, might be diluted if another
company began using a similar mark to refer to breakfast cereals or spark
plugs.
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A trademark is diluted when the use of similar or identical trademarks in
other non-competing markets means that the trademark in and of itself will
lose its capacity to signify a single source. In other words, unlike ordinary
trademark law, dilution protection extends to trademark uses that do not
confuse consumers regarding who has made a product. Instead, dilution
protection law aims to protect sufficiently strong trademarks from losing
their singular association in the public mind with a particular product,
perhaps imagined if the trademark were to be encountered independently
of any product (i.e., just the word Pepsi spoken, or on a billboard).
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Case law on Dilution
Avery Dennison Corporation
Vs.
Jerry Sumpton, et al.
Facts: Jerry Sumpton and his company Freeview registered thousands of
domain names - primarily typical surnames - and used these domain names
to offer "vanity" email addresses to people who want an address
incorporating their name. Two of the names registered included avery.net
and dennison.net. Avery Dennison brought suit against Sumpton claiming
trademark dilution.
Decision: The Ninth Circuit held that Avery Dennison failed to meet the
required of elements of dilution. The court concluded that the Avery and
Dennison trademarks were not famous. Although the court acknowledged
that the trademarks had reached a level of distinctiveness, dilution requires
that a mark be both distinctive and famous. According to the court for a
mark to meet the "famousness" element of dilution it must be truly
prominent and renowned. Additionally, the court held that Avery Dennison
failed to meet a second requirement for dilution:
commercial
use. Commercial use under the dilution statute requires that the defendant
use the trademark as a trademark, capitalizing on its trademark status.
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Cases on Dilution
Teletech Customer Care Management, Inc.
vs
Tele-Tech Company, Inc
Facts: The plaintiff, a large provider of telephone and
Internet customer care services, had been continuously
using the mark for approximately fifteen years and had
waged an extensive promotion and advertising campaign
for its services. The defendant, a contractor providing
engineering
and
installation
services
to
the
telecommunications industry, registered the domain name
teletech.com.
Decision: The court held that there was no likelihood of
confusion, because the parties’ businesses were so
dissimilar. However, the court found dilution, ruling that
TELETECH was a famous mark, and ordered the
defendant to transfer the domain name to the plaintiff.
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Metatagging
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Metatagging, sponsored listings amount to trademark
infringements
Playboy Enterprises inc v Netscape
Communications corp 55 FSupp2d1070(S.D
Cal1999)-plaintiff trademarks –playboy, playmate
alleged infringement by defendant by marketing selling
450 words including these trademarks to advertisers.,
banner ads on search results page ,diversion of traffic
Held PEI cannot monopolize these words. violates First
amendment rights of netscape, other trademark
holders of these words ,users of search engines.
Playboy Enters v Calvin designer label 985 Fsupp
1220(NDCal1997)-Defendants repeated use of words
‘playboy’ within machine readable code in defendants
internet webpages constituted trademark infringement
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Linking and framing
LINKING
A link is simply a connection between the content of two different files
(or between different parts of a single file). It is a technique through
which the author of a website connect his text with others and enable
web browsers to quickly move from one page to another. A link may
lead either to another page in the same web site, or to a page on a
different computer located elsewhere on the Internet.
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TYPES OF LINKING.
Surface linking:
Deep linking:
When the home page of a site is linked, it is the
case of surface linking.
When a link bypasses the home page and goes
straight to an internal page within the linked site,
it is the case of deep linking.
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PRECEDENT ON LINKING
Ticketmaster vs. Microsoft
Facts: In April, 1997, Ticketmaster filed a complaint in federal court in the Central District
of California alleging that "Microsoft's actions diluted their trademarks; created a false,
deceptive and misleading representation that there was a formal relationship between
the two of them; constituted unfair competition and business practices; and constituted
a commercial misuse of their trademarks.“
Microsoft at that time operated Sidewalk, a recreational and cultural guide Web site. What
Microsoft was doing was simple -- if a Sidewalk user wanted to buy a ticket to a
particular event mentioned on the site, Sidewalk offered them a link to Ticketmaster's
ticket purchase page. They were actually promoting Ticketmaster sales and sending
them customers. A month after the suit was filed; Ticketmaster blocked Sidewalk users
from their site. Links set up from Sidewalk then took users to a Ticketmaster page that
read, "This is an unauthorized link and a dead end for Sidewalk.“
Status: In February of 1999, the 2-year-old lawsuit was settled out of court. "Details of the
settlement were not made public, but the deep links were removed, directing Sidewalk
users to the Ticket master homepage.
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Universal vs Movie-List
Facts: Movie-List , a collection of links to over 900 movie trailers, was deep linking
to trailers within the Universal Web site. Originally, they were actually running
the trailers, which were the property of Universal Studios, on the Movie-List
server. Not only were they deep linking to trailers, Movie-List was also selling
CD-ROMS with trailers they had downloaded. Universal then sent them a cease
and desist, stating, "You are not permitted to link to other sites that contain our
copyrighted material without our authorization. Accordingly, you must remove
all images from our films as well as links to other sites that have our servers.“
Status: All trailers have been removed from the Movie-List server, and the owner no
longer sells the CD-ROMS. He has removed all of the deep linking to Universal
pages.
Case law on framing- Washington post Co v Total news inc97Civ1190(SDNY)
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Shetland Times vs. Shetland News
Facts: The first deep linking case was filed in 1996 in Scotland, involving
The Shetland Times, a newspaper and The Shetland News, a news
delivery Web site. The News posted headlines from the Times, using
actual Times headlines as the text of the hypertext link. For example, one
such link on the Shetland News home page was "New Prime Minister
Elected," which linked directly to a story in the Shetland Times with the
exact same headline. The links also bypassed the Shetland Times home
page which carried large volumes of advertising.
Decision: In October, 1996, Scotland's Court of Session banned the links,
"finding it plausible that a headline is a literary work and that the News
practice of incorporating the Times headlines verbatim in its link lines
violated the latter's copyright" (Kaplan). The Scottish Court did not rule
on the matter of deep linking.
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CASES ON FRAMING
The Washington Post Company et al.
vs.
Total News, Inc.
Facts: As a one-stop news site, TotalNews.com linked to many news
sites, but kept a frame, or border around them, which the news sites
argued made it look like the content was from TotalNews.com,
changed the ad layout on the page, and kept totalnews.com as the
address for book marking purposes.
In the complaint the news companies claimed that TotalNews
misappropriated their trademarked and copyrighted material, thereby
engaging in a host of crimes including unfair competition, federal
trademark dilution, and trademark and copyright infringement. The
news organizations said that their websites, as they appeared within
the Totalnews frames, were substantially altered from the form in
which they intended them to appear to users and that it was done
solely for Totalnews' profit.
TotalNews argued that the case was in essence about its freedom to link,
which it claimed was a fundamental right on the Internet.
Status: The court never decided the TotalNews case because the parties
settled. Totalnews agreed to remove the frame.
42
Framing
Hard Rock Café International (USA) Inc.
vs.
Morton
Facts: Peter Morton was a founder of the Hard Rock Café who sold his interests in
the business to the parent company. Morton retained ownership of a Hard Rock
Hotel and Casino and was granted a license to use certain service marks and
trademarks. The parent company later sued Morton, claiming that he violated
the license agreement by illegally framing the site to sell CDs.
Decision: The court pointed out that the framing made it unclear to a user whether
he or she had left the Hard Rock Hotel website, especially since, though the
content on the page changed, the bookmark able domain name stayed the same.
This use was found to violate the license agreement and Morton was ordered to
either permanently cease framing the CD store’s website or present evidence
that it can frame that site in accordance with the terms of the license agreement.
43
Cyber squatting
Cybersquatting is registering, trafficking in, or using a
domain name with bad-faith intent to profit from the goodwill
of a trademark belonging to someone else. The
Cybersquatter then offers the domain to the person or
company who owns a trademark contained within the name at
an inflated price, an act which some deem to be extortion
44
Cybersquatting
Panavision International
vs.
Toeppen
Facts: Toeppen engaged in dilution by cyber squatting in
registering the domain panavision.com offered to sell
the domain to the plaintiff for $13,000. Mr. Toeppen
put a map of Pana, Illinois up on his panavision.com
website.
Decision: The Ninth Circuit upheld the lower court’s
conclusion that Mr. Toeppen was engaged in extortive
efforts and was diluting the famous PANAVISION mark.
Mr. Toeppen’s cause was not helped by the fact that he
had registered many domains containing known
brands, such as deltaairlines.com, neimanmarcus.com,
eddiebauer.com and lufthansa.com.
45
Domain name dispute resolution policy
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Judicial
dispute
resolution
under
Federal
Trademark dilution Act-Comp examiner agency vs
juris inc
Judicial
Dispute
Resolution
under
Anti
cybersquatting Consumer Prevention Act,
Dispute resolution under UDRP-ICANN approved
domain
name
dispute
resolution
service
providers.3 elements identical/deceptively similar
mark,no legitimate use, bad faith registration
ADNDRC,CPR institute for dispute resolution,
National arbitration forum, WIPO example Tata
sons ltd case,Bennett coleman and co case, Asian
paints.com case
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Domain name dispute resolution
This .IN Domain Name Dispute Resolution Policy (the "Policy") sets out the
terms and conditions to resolve a dispute between the Registrant and the Complainant,
arising out of the registration and use of the .in Internet Domain Name.
The .IN Registry shall appoint an Arbitrator out of the list of arbitrators
maintained by the Registry. The Arbitrator shall conduct the Arbitration Proceedings in
accordance with the Arbitration & Conciliation Act 1996 as amended from time to time
and also in accordance with this Policy and rules provided there under.
The remedies available to a Complainant pursuant to any proceeding before
an Arbitrator shall be limited to requiring the cancellation of the Registrant's domain
name or the transfer of the Registrant's domain name registration to the Complainant.
Costs as may be deemed fit may also be awarded by the Arbitrator.
47
Protection of Software in the e-world


There is some technology and logistical processes, of uncertain
efficacy, in the pipeline that could result in extra-judicial prospective
protection of software. These measures are legitimate as per Article
11WCT,Article 18WPPT, Some examples:
Technical Support


Limit technical support to registered users. This is the philosophy of
many (all?) shareware companies offering technical support, including
most prominently Netscape. This is a corollary of the principle of
deriving value from ancillary services: Unregistered users can use the
product for free, but will have to pay for support.
Limit technical help built into the software and rely instead on hardcopy documentation. Many shareware companies also offer hard-copy
documentation as part of the benefits of registration. There is nothing to
prevent photocopying or scanning of the documentation to defeat this
decidedly low-technology approach, but it will require infringers to go
through some extra steps that may not be worth the effort.
48
Usage Metering and Encryption


"Super distribution" (Cox). Cox's approach is to use a
hardware component that calculates fees based on usage and
then submits periodic reports to a home base. (This could
also be done as a debit card approach--each use would offset
credits on a card; when the credits are zero, the user would
have to recharge the card). This approach's advantages
include that it would encourage free distribution of software
and allow appropriate royalties to flow to creators of
components. However, some serious concerns exist: the
approach would impose hardware costs, misuse of the
metering information could result in privacy invasions, and
the hardware would be potentially subject to tampering.
Authorization codes. Software would require an
authorization code that would permit the software to operate
for a certain period of time. Authorization codes would be
obtained (for a fee, of course) from a home base. While this
does not impose hardware costs, the concerns about privacy
and tampering exist here as well.
49


Software envelopes (Griswold). Copyrighted material would
be contained in an encrypted software envelope that would
periodically communicate with a home base upon use. The
software would require authorization from the home base to
continue functioning. If the user has not paid for the use,
authorization would be denied and the software would be
disabled. (This is somewhat analogous to the process used
for satellite transmission feeds). The periodic communication
could be counted to determine a metering charge. Again, the
privacy and tampering concerns remain.
Centralized software. Software could be centralized in one
location and users access the program remotely via the Net
on a subscription or per-use basis. This is analogous to the
old timeshare models. Once again, there are privacy and
tampering concerns. It also remains to be seen if consumers,
accustomed to walking out of a software store with a tangible
product, will adapt to lacking any possessory interest in
software.
50



Note that in the metering models, there will be a tremendous increase in
the amount of information transmitted back and forth on the Net. These
transmission demands will create costs that must be borne by someone-ultimately, the user.
Software-based controls

Limited functionality programs. These are frequently used in
software programs today, with limits such as disabled printing and
saving or "time bombs." Chances are that these limited functionality
approaches will merge with the metering approaches described above,
since the Net will be an efficient way to remove the limits. As with the
other proposals, these are subject to tampering.

Build "bugs" into the software, requiring users to get updated, bugfree versions (suggested and rejected by Dyson). This is a crude way
to disable software and likely to produce ill-will. Furthermore, without
other protections there is nothing to prevent the dissemination of the
non-buggy versions once released.

Copy protection. Among other approaches, software could have a
sensor that causes the software to self-destruct if user tries to copy
(Barlow). While highly effective when it works, copy protection has
fallen into disfavor with consumers and is rarely seen now.
Post hoc infringement control

Agents could scour the Net looking for publicly available infringing
copies. This will not prevent private piracy but could be extremely
effective at preventing unauthorized public distribution. Of course, as
in the Cold War, we could see countermeasures by the pirates, leading
to a classic arms race--the person with the mightiest agent wins!
51


One other approach to revitalize existing copyright laws is to
recognize the ability of copyright holders to impose
"shrinkwrapped" online use licenses on content. These might
say, "I give the right for distribution for educational and
research purposes only." Infringement of such licenses would
give holders a right of action; one that would probably rarely
be enforced, but would enhance the power of motivated
holders.
Finally, there may be technology solutions to assist in
preventing infringement. For example, Bell Labs has created a
method to insert "serial numbers" for documents. This would
imbed unique codes in documents, so that each and every
copy could be traced to the original source, without being
immediately obvious to any infringer. While this would not
disable copying, it would provide disincentives if everyone
knew the risk that the infringing copy could be traced back to
them. (Voss). (See also Jim Warren, proposing a similar
concept.).
52
The CSS and DeCSS




CSS- Content Scramble system is an access control
and copy prevention system for DVDs developed by
motion picture studios.
Encryption based system. Jon Johansen in 1999
devised a computer programme that circumvents CSS
called deCSS on 2600.com
Led to 2 complaints-copyright infringement under
DMCA and trade secret misappropriation-US Courts
granted permanent injunction. Universal city studios
inc v corley 273 F 3d 429(2d Cir 2001)
Superior court enjoined defendants from disclosing or
distributing on their websites or elsewhere the Decss
and master keys or algorithms of Content Scrambling
system.
53
Reverse engineering



Process of moving backwards in order to
understand the ideas, principles, and
algorithm, contained or expressed in
computer programme. Processes used are
disassembly and decompilation.
Sega Enterprises ltd vs Accolade inc
977F2d1510(9th Cir 1992)-held access
code part of interface between console
and game cartridge was a functional
element unprotected by copyright
India
protects
this
right-copyright
Act,Section 52 (1)(ab),(ac)
54
Database Protection




Copyright protection to tables, compilations and computer databases
does not extend to any data itself, but only to the way in which it is
organized. This fundamental copyright principle is expressed in
Article 10.2 of the TRIPS Agreement: Compilations of data or other
material, whether in machine readable or other form, which by reason
of the selection or arrangement of their contents constitute intellectual
creations shall be protected as such. Such protection, which shall not
extend to the data or material itself, shall be without prejudice to any
copyright subsisting in the data or material itself.’
UK Database Protection Act, EU Directive on Data base protection
India has no separate legislation on database protection. Provisions of
copyright Act, IT Act, IPC prevail.
The WIPO Copyright Treaty (WCT), although not binding on WTO
members that have not joined the WCT, similarly provides in Article 4:
 "Computer programs are protected as literary works within the
meaning of Article 2 of the Berne Convention. Such protection
applies to computer programs, whatever may be the mode or form
of their expression."
55
Legal remedies-Copyright
infringements
There are three types of remedies against copyright infringement
Civil
Criminal
Administrative
Sections 54 to 62 deals with civil remedies for infringement of copyright. Civil
remedies include injunction, damages and accounts, delivery of infringing copies and
damages for conversion.
Costs: The costs of all parties in any proceedings in respect of the infringement of
copyright shall be at the discretion of the court.
56
Legal remedies-copyright
infringement
The Law provides civil and criminal remedies in case of infringement of copyright.
Copyright infringement is a cognizable offence where a Police Officer not below the
Rank of a Sub-Inspector can arrest the offender without the warrant and conduct the
search even without prior authorization of a Court.
Copyright infringement if proved in a Court of Law carries a minimum mandatory
sentence of imprisonment of six months and minimum fine of Rs. 50,000 which can
extend up to Rs. 2 lakh. The Act further provides that there will be an enhanced penalty
in case of second and subsequent convictions.
In Civil Cases, the District Court can be persuaded not only to give an interim
injunction without notice to the other party but also usually gives a direction under
Order 39 Rule 7 of C.P.C. where a Commissioner appointed by the Court will visit the
premises of the infringers and will be empowered to conduct a search of the inventors
premises and cease infringing material from the infringers premises. The seized
material can be used at a later point of time to establish infringement.
In UK these types of orders are called ANTON PILLOR ORDERS
57
Section 63 defines what constitutes a criminal offence-copyright
infringements.
Any person who knowingly infringes or abets the infringement of-
(a) the copyright in a work, or
(b) any other right conferred by the Act (except the right conferred by
section 53A, which is the right to share in the resale price of the
original copy will be punished with imprisonment for a minimum term
of six months and a maximum of three years and with a fine which may
vary from a minimum of 50,000 rupees to two lakh rupees.
58
Legal remedies-copyright infringements
Administrative Remedy –Against Importation of infringing copies:
The Act provides for an effective administrative remedy to prevent
importation into India of copies of a copyright work made outside India,
which if made in India, would infringe the copyright in the work.
Section 53 of the Copyright Act empowers the Registrar of Copyright to
make an order prohibiting the importation into India of such copies on the
application of the owner of the copyright in any work, or his duly authorized
agent, after making such enquiry as he deems fit. The Registrar’s order
prohibiting such import brings into play the provisions of the Customs Act as
goods the importation of which is banned in the Act. The only difference is
that the copies confiscated under this provision do not vest in the
Government of India but are to be delivered to the owner of copyright in the
work.
Section 64 Copyright Act -power to police to seize infringing copies and
plates for purpose of making infringing copies of the work
Possession of plates to make infringing copies-bailable offenceimprisonment upto 2 years and fine (Section 65)
59
Copyright Infringement
Kind of Infringement
Copy in a work will be considered
infringed1. when any person, without a licence
granted by the owner of the copyright, or
the Registrar of Copyrights, or in
contravention of the conditions of a
licence so granted, or of any condition
imposed by a competent authorityi.
does anything, the exclusive right
to do which is by this Act
conferred upon the owner of the
copyright, or
ii.
permits for profit any place to be
used for the communication of the
work
to the public where such
communication
constitutes
an
infringement of the copyright in
the work, unless he was not aware
and had no reasonable ground for
beleiveing
that
such
communication to the public would
be
an
infringement
of
the
copyright; or

Relief


Civil Remedies:

Injunction

Damages

Account of profit

Delivery of infringing copies

Damages for conversion
Criminal Remedies:

Imprisonment of the accused or
imposition of fine or both

Seizure of infringing copies.
60
Copyright Infringement (Contd.)
Kind of Infringement
2. when any personi.
makes for sale or hire,
or sells or lets for hire, or
by
way
of
trade
displays
or
offers
for
sale or hire, or
ii.
distributes either for the
purpose of trade or
to
such an extent as
to
affect
prejudicially
the
owner of the copyright, or
iii. by way of trade exhibits
in public, or
iv. Imports into India, any
infringing copies of the
work.
Relief
Administrative remedies:
 Administrative
remedies
consist of moving the
Registrar of Copyrights to
ban
the
import
of
infringement is by way of
such importation and the
delivery of the confiscated
infringing copies to the
owner of the copyright and
seeking the delivery.
61
Trade Mark Infringement
Kind of Infringement





The taking of any essential feature of the
mark or taking the whole of the mark and
then making a few additions and
alterations would constitute infringement.
The infringing mark must be used in the
course of trade, i.e, in a regular trade
wherein the proprietor of the mark is
engaged.
The use of the infringing mark must be
printed or usual representation of the mark
in advertisements, invoices or bills. Any
oral use of the trade mark is not
infringement.
Advertising with the unauthorized use of
the registered trade mark is also an act of
infringement.
Any or all of the above acts would
constitute infringement if the same is done
in such a manner as to sender the use of
the mark likely to be taken as being used
as a trade mark.
Relief




Sec 135
Relief in suits for infringement or for
passing off, includes injunction and
at the option of the plaintiff, either
damages or an account of profits.
In brief, the relief to which a
plaintiff is entitled are
An injunction restraining further
use of the infringing mark.

Damages or an account of
profits.

An order for delivery-up of
infringing labels and marks for
destruction or erasure.
Injunction may be of the following
types:
Anton Piller Order

Mareva Injunction

Interlocutory Injunction

Perpetual injunction.
62
Geographical Indications of Goods
- Infringement
Kind of Infringement


Sec 22- A registered geographical
indication is infringed by a person
who, not being an authorized user,
uses such indication on the goods
or suggests that such goods
originate
in
some
other
geographical area other than the
true origin of the goods which
mislead the public.
A
registered
geographical
indication is infringed by a person
who, not being an authorized user,
uses such indication to the goods
which although literally true as to
the territory, region or locality in
which goods originate, falsely
represents to the public that the
goods originate in the region,
territory or a locality in respect of
which such registered geographical
indication relates.
Relief
In
case
false
geographical
indication is established, it carries
penalty with imprisonment for a
term which shall not be less than
six months but which may extend
to three years and with fine which
shall not be less than fifty
thousand rupees but may extend
to two lakh rupees.
63
Legal remedies for infringement of
Patent





Indian Patent Act-Section 108
Injunction
Damages or account of profits
Infringing goods and materials be
destroyed.
Suit be filed in district court or high
court having original civil jurisdiction
64
Patent Infringement
Kind of Infringement





Where any person threats any
other person with proceedings
for infringement of a patent.
The colorable imitation of an
invention.
Immaterial variations in the
invention.
Mechanical equivalents.
Taking essential features of the
invention.
Relief



Section 106. Court has the power to grant
following relief in cases of groundless threats of
infringement proceedings:

A declaration to the effect that the threats
are unjustifiable.

An injunction against the continuance of the
threats and

Such damages, if any, as he has sustained
thereby.
Section 108-The relief which a court may grant
in any suit for infringement includes an injunction
and at the option of the plaintiff, either damages
or an account of profits.
In brief, the relief which may be awarded in a
suit for infringement are
Interlocutory/interim injunction.

Damages or account of profits.

Permanent injunction.
65
Design Infringement
Kind of Infringement

Sec 22- lays down that the following
acts amount to piracy To publish or to have it published
or expose for sale any article of
the class in question on which
either
the
design
or
any
fraudulent or obvious imitation
has been applied.
 To either apply or cause to apply
the design that is registered to
any class of goods covered by
the registration, the design or
any imitation of it.
 To import for the purpose of sale
any article belonging to the class
in which the design has been
registered and to which the
design or a fraudulent or obvious
imitation
thereof
has
been
applied.
Relief
The
judicial
remedy
for
infringement of a registered
design recommended in the Act is
damages alongwith an injunction.
Section 22(2) stipulates remedy
in the form of payment of a
certain sum of money by the
person who pirates a registered
design. A suit in the appropriate
manner for seeking the relief in
the form of an injunction is also
recommended.
66
The Semiconductor Integrated Circuits
Layout-Design Act, 2001 - Infringement
Kind of Infringement

According to Section 18, a person
who does any act of reproducing, whether
by incorporating in a semiconductor
integrated circuit or otherwise, a
registered layout-design in its entirety
or any part thereof, except such act of
reproducing any part thereof which is
not original.
 does any act of importing or selling or
otherwise distributing for commercial
purposes a registered layout-design or
a semiconductor integrated circuit
incorporating such registered layoutdesign or an article incorporating such
a semiconductor integrated circuit
containing such registered layoutdesign for the use of which such
person is not entitled under this Act.
Relief
Any person who infringes the
right of registered proprietor
shall
be
punishable
with
imprisonment for a term which
may be extended to three
years, or with fine which shall
not be less than fifty thousand
rupees but which may extend
to ten lakh rupees, or with
both under section 56 of the
Act.
67
Thank You!
SETH ASSOCIATES
ADVOCATES AND LEGAL CONSULTANTS
New Delhi Law Office: C-1/16, Daryaganj, New
Delhi-110002, India
Tel:+91 (11) 65352272, +91 9868119137
Corporate Law Office: B-10, Sector 40, NOIDA201301, N.C.R ,India
Tel: +91 (120) 4352846, +91 9810155766
Fax: +91 (120) 4331304
E-mail: mail@sethassociates.com
68