Protecting Intellectual Property in the Internet Age. Conference on Information Technology Laws and Related Intellectual Property- Faculty of law, Delhi University 20 th March 2010. Karnika Seth Cyber-lawyer, Attorney at law & Partner, SETH ASSOCIATES
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Information Technology Laws and Related Intellectual Property-
Faculty of law, Delhi University
20th March 2010
Cyber-lawyer, Attorney at law & Partner,
ADVOCATES AND LEGAL CONSULTANTS
Categories of IP rights
Plant Breeder’s rights
Works of Art
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.
Rights that different IP assets protect
Trademarks 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. - 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.
Rights that different IP assets protect
Different Acts governing IP assets 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.
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
Farmers’ Right Act, 2001
Semi conductor IC layout design
Semi conductor IC layout
Ownership 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.
“Most creations resulting from human endeavors in various fields of art, literature ,science and technology constitute Intellectual Property”
Why are IP assets important ? 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.
IP adds value at every stage of the innovation and commercialization process
Patents / Utility Models
Trademarks, Ind. Designs, Geo. Indications
All IP rights
Literary / artisticcreation
All IP rights
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 .
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.”
(Note that there is also the moral rights perspective, which exists
on a different scale but is most closely aligned with the Strong IP
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 acts-playboy enterprises inc vs webbworld,inc 991 F Supp 543(N.DTex.1997)
“No body has any right to represent his goods as the goods of somebody else”
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.
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.
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.
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.
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.
(Section 27 of TMA Act, 1999).
Trademark infringement 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 Act-
Injunction ,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..
Avery Dennison Corporation
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.
Teletech Customer Care Management, Inc.
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.
Linking and framing infringement
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.
TYPES OF LINKING infringement.
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.
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.
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)
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.
The Washington Post Company et al.
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.
Hard Rock Café International (USA) Inc.
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.
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
Facts: Toeppen engaged in dilution by cyber squatting in registering the domain panavision.comoffered 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.
Domain name dispute resolution infringement
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.
There are three types of remedies against copyright infringement
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.
Legal remedies-copyright infringement 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.
TheLaw 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
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 offence-imprisonment upto 2 years and fine (Section 65)
Copy in a work will be considered infringed- offence-copyright infringements
1. 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 authority-
i. 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; orCopyright Infringement
Kind of Infringement
2. when any person- offence-copyright infringements
i. 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.Copyright Infringement (Contd.)
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 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
Perpetual injunction.Trade Mark Infringement
Kind of Infringement
Sec 22- the whole of the mark and then making a few additions and alterations would constitute infringement. 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.Geographical Indications of Goods - Infringement
Kind of Infringement
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.
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.
Taking essential features of the invention.Patent Infringement
Kind of Infringement
Sec 22 for infringement of a patent.- 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.Design Infringement
Kind of Infringement
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.
According to Section 18, a person who- for infringement of a patent.
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 layout-design or an article incorporating such a semiconductor integrated circuit containing such registered layout-design for the use of which such person is not entitled under this Act.The Semiconductor Integrated Circuits Layout-Design Act, 2001 - Infringement
Kind of Infringement
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.
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, NOIDA-201301, N.C.R ,India
Tel: +91 (120) 4352846, +91 9810155766
Fax: +91 (120) 4331304
E-mail: [email protected]