Module VI

On-line Intellectual Property

Management

Study Note:

This module should take you about 12 hours to study.

Objectives

When you have completed this module you should be able to:
• Explain why "digital is different";
• List six points that will help you to manage intellectual property (IP) assets relevant
to your electronic commerce strategy;
• Summarise the legal aspects of use of trade marks on the Internet;
• Understand what the nature and function of domain names are;
• Know why and how to register a domain name;
• Identify the interrelation between domain names and trade marks;
• Know how and where on-line dispute resolutions are conducted; and
• Identify intellectual property issues that are important when developing a website.

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This module is divided in four Sections. You may divide your reading accordingly.

Section I
1. Overview
2. WHY IPM in the on-line environment?
3. Copyright Law: Digital is Different
4. Trademarks: Introduction to Domain Names
5. Patenting of Computer programs and Business Methods

Section II
6. Introduction to E-IPM
7. Proactive E-IPM
8. Defensive E-IPM

Section III
9. Enhancing Competitiveness

Section IV
10. Public policy and developmental perspectives

Module Summary

Prescribed Reading

1. WIPO "Technological and Legal Developments in Intellectual Property" in

Intellectual Property Handbook: Policy, Law & Use (WIPO Publication No. 489
(E)) 2nd ed (2004) Chapter 7 pages 435-457 http://www.wipo.int/about-
ip/en/iprm/

2. L. Verbauwhede, WIPO, “Intellectual Property and E-commerce: How to Take

Care of your Business’ Website”,
http://www.wipo.int/sme/en/documents/pdf/business_website.pdf

3. John Perry Barlow "The Economy of Ideas - A framework for patents and
copyrights in the Digital Age. (Everything you know about intellectual property
is wrong.) http://www.wired.com/wired/archive/2.03/economy.ideas_pr.html

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Recommended Reading

1. G. Gürkaynak, İ Yilmaz, & D. Durlu, “Understanding search engines: A legal

perspective on liability in the Internet law vista” Computer Law and Security
Review, 29 (2013) 40-47.

2. Simon Halberstam et al Tolley's Domain Names: A Practical Guide (2002)

(LexisNexis)

3. Paul Motion "Article 17 ECD: Encouragement of Alternative Dispute

Resolution On-line Dispute Resolution: A View from Scotland" in The New
Legal Framework for E-commerce in Europe (ed. Lilian Edwards) (2005)
(Hart Publishing)

4. Steven Bazerman and Richard Georget "The Obverse of Cyber squatting"

2003 World eBusiness Law Report available at
http://www.worldtrademarkreview.com/Blog/detail.aspx?g=5ea164f9-98c8-
4c34-baca-db79c10150b5

5. KJ Greene "Abusive trademark litigation and the incredible shrinking

confusion doctrine - trademark abuse in the context of entertainment media
and cyberspace" Harvard Journal of Law & Public Policy 2004 615

6. B Meisel, "Entry into the Market for Online Distribution of Digital Content:
Economic and Legal Ramifications", (2008) 5:1 SCRIPTed 50 https://script-
ed.org/wp-content/uploads/2016/07/5-1-Meisel.pdf

7. H Hietanen, A Huttunen, H Kokkinen, "Criminal Friends of Entertainment:

Analysing Results from Recent Peer-to-Peer Surveys", (2008) 5:1
SCRIPTed 31https://script-ed.org/wp-content/uploads/2016/07/5-1-
Hietanenetal.pdf

See also WIPO’s relevant site

http://www.wipo.int/sme/en/ip_business/managing_ip/managing_ip.htm and the
references cited there:

• The Management of Intellectual Property Rights by Small and Medium Sized

Enterprises (see WIPO/ACAD/E/93/12 [PDF])
• The Role of Intellectual Property Rights in the Promotion of Competitiveness
and Development of Enterprises (see WIPO/IPR/MCT/99/5.A [PDF])
• Corporate Strategies for Managing, Exploiting and Enforcing Intellectual
Property Right(see WIPO/IP/PK/98/7 [PDF])

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Other links

• IP Australia https://www.ipaustralia.gov.au/
• IP United Kingdom http://www.intellectual-property.gov.uk
• See https://www.wipo.int/sme/en/best_practices/singapore.htm"Technology"
- see https://www.bdc.ca/en/articles-tools/technology/pages/default.aspx
"Your Software and How to Protect it" (European Commission)
http://www.iprhelpdesk.eu/node/2024
• Indian Technology Information, Forecasting and Assessment Council
https://tifac.org.in//

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SECTION I

1. Overview

In this module we explore issues related to the management of IP in the on-line

environment. Before we explore management aspects, we first explain why the
management of IP issues related to e-commerce is important. The answer lies in this
simple truth: digital is different. We briefly explain the practical steps that are important
in starting an on-line venture (the registration of a domain name, the issues
surrounding the design of the web site, the role of the search engine, and cautionary
rules related to links and frames). Lastly, the IPM principles will be explored with
reference to the defensive and the offensive management of digital IP.

2. Why IPM in the on-line

environment?

There is hardly any product or service today that is not being advertised, at least, or
sold through e-commerce. The value of commercial transactions on the Internet as
well as mobile commerce has increased substantially in the last decade. Electronic
commerce is a global economic giant.

During the 2009 holiday season in December, consumers spent

approximately US $27 billion on online shopping.1 In 2015, retail
e-commerce sales worldwide amounted to US $1.55 trillion and e-retail
revenues are projected to grow to US $3.4 trillion in 2019.

The number and value of trading activities on the Internet are increasing daily.
Furthermore, as noted in Module II, the knowledge economy is now at the forefront
and digital products and service delivery are important facets of the knowledge
economy.

The migration of intellectual property to the Internet is discussed in a WIPO document

of 2002. 1 The Survey notes that the digitization of creative works has enabled
intellectual property to transfer so efficiently to the Internet. 2 Film and music creators,
software developers, authors and publishers can commercialise their products online
in new ways. For example, in 2007 Radiohead decided to release its album In
Rainbows on the Internet. Consumers were free to download the album and could pay

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any amount for the download, as long as they paid as much as they thought the music
was worth to them. Arctic Monkeys launched themselves on the net in 2006 and
proved that a new and completely unknown band can become famous even before it
was offered any contract.

This migration of intellectual property to the Internet can be seen with respect to each
species of rights: 3

Intellectual property has migrated to the Internet, both in substance and as a

concept vital to the success of e-commerce enterprises. The ‘Wired Index’ of
the key businesses in the global economy, published by Wired Magazine,
states that these companies “have demonstrated a mastery of five essentials
needed to prosper in the technology-enabled, borderless world: innovation,
intelligent use of new tools, strategic vision, global reach, and, above all,
networked communication.” 4

The Survey notes that the uptake of fee-based intellectual property services is
dependent on:

• the efficient management of the IP rights,

• the availability of workable and secure methods of micro-payments that can
support pay-per-unit purchases,
• the building of consumer confidence in:

o online payment security,

o privacy and
o consumer protection

In addition, creators and intellectual property rights holders must be confident that
their IP is protected from online piracy and that they retain control over its use. 5

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3. Copyright Law: Digital is
Different

From a legal and a management perspective, it is important to know why people say
digital is different. Well, the reasons quickly become plain when we consider the
impact of digital technology on copyright law. Traditionally, copyright works are
classified into different categories – for example, literary works, artistic works,
computer programs, databases, and so on. In each category, works are afforded
certain exclusive rights – in the case of literary works, for example, the right to publish,
to make reproductions or adaptations, the right of communication and making
available of works to the public and so on. Copyright law is challenged by the new
experience of dealing with mixtures of different kinds of works such as virtual reality
shows or multimedia.
Digitisation of information – reducing information to binary bits of 0s and 1s, and the
development of common technology standards for text, sound and video, such as html,
MP3 and MPEG - enables digital content to be shared almost instantaneously, by
millions of users. 6

The equivalence of works in digitised form makes it easy to combine what had
previously been thought of as separate categories of works, and these new combined
works resist easy classification. 7 Accordingly, the digitisation of works has the
following consequences:

• the creation of a homogeneous medium of storing and transmitting works;

• the merging of previously distinct classes of work into multimedia products;
• difficulty in classifying multimedia products;
• difficulty in determining exclusive rights for each category of work when, say, a
previously distinct musical work, a computer program and a literary work are
combined in a multimedia work; and
• alteration of traditional uses of copyright works by the process of digitisation
and networking.

The fact that all works in digital form have uniform characteristics makes it very difficult
to protect the copyright subsisting in such works. Digitisation and networking
fundamentally alter the traditional conventions for using existing material which is
subject to copyright. 8 Works in this new digitised form can be copied, distributed,
transmitted, manipulated, edited and stored with ease.

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It is very important to note that the rights of the copyright holder of a creative work
continue to apply in the digital environment, in particular to the use of works in digital
form. For example, the storage of a protected work in digital form in an electronic
medium constitutes a reproduction within the meaning of Article 9 of the Berne
Convention.

Permanent electronic storage of a work, without the consent of the copyright holder,
is a restricted act. The Information Infrastructure Task Force of the United States noted
in its report 9 that [i]n each of the instances set out below, one or more copies is made.

• When a work is placed into a computer, whether on a disk, diskette, ROM or

other storage device or in RAM for more than a very brief period.
• When a printed work is ‘scanned’ into a digital file.
• When other works – including photographs, motion pictures or sound
recordings – are digitalized.
• Whenever a digitalized file is ‘uploaded’ from a user’s computer to a bulletin
board system (BBS) or other server.
• Whenever a digitalized file is ‘downloaded’ from a BBS or other server.
• When a file is transferred from one computer network user to another,
multiple copies may be made.

When digitised works are stored or made available for access, or transmitted
without authorisation, it is difficult to establish copyright infringement because of
the difficulty in establishing the identity of the person who transmitted, stored or
made available the infringing copy of a work – was it the host, the access provider
or a remote user? The removal of rights-management information also makes it
difficult to prove copyright ownership. Jurisdictional issues online (the Internet has
no borders) also make the detection of IP infringement and enforcement of IP
rights problematic.

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Practical Illustration

The table below summarizes the differences between the reproduction and use of
traditional works (in analogue or paper form) as opposed to works in digital form.

Analogue or paper-based works Digital works

Physical reproduction through taping, Digital copies -– simultaneously in perfect
photocopying quality
No convergence and one platform – Convergence which enables use of multiple
i.e. a sound recording is either on a platforms – i.e. sound MP3 played on
tape or a record various devices
Limited copies Unlimited copies
Time investment Fast – limited time investment
Loss of quality each time a copy is No loss of quality: a perfect copy every time
made
Physical constraints copier & copies in
No physical constraints – copies may be
same physical location downloaded by several people from
different locations
Time & place of making copy Time & place of making of copy
determinable undeterminable
Use of works restrained by physical Use of works not restrained by physical
locality: only one user can read a locality: works on the Internet can be
literary work simultaneously read by millions of people,
also through hyperlinks.

SAQ 1

Case study: Cyberart

Thobi is a well-known South African cartoon artist and owner of an art school. Thobi
informs you that one of her students, Bill, made a photocopy of some of her drawings
without her permission. Bill then scanned the copies and saved them on his computer.
Bill displayed the drawings on his website "cyberart.co.za" and he is offering prints of
the drawings for sale to online subscribers. Sonia visited his website an hour ago. She
viewed the drawings displayed on Bill's website and she purchased two prints.

Can you identify as least six acts of unauthorised reproduction in the set of facts? List
the acts.

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4. Trademarks: Introduction to
Domain Names

4.1 Introduction

The growth of the commercial use of the Internet has led to new forms of trade mark
infringement. The most prevalent form is domain name infringement. This takes place
where a third party registers and uses the existing trade mark of another as a domain
name, without the authorization of the trade mark proprietor. Such infringements
frequently involve domain name speculators or cybersquatters who register existing
trade marks as domain names to block subsequent registrations or to hold trade mark
proprietors to ransom.

4.2. Nature of a domain name

Domain names are also known as:

• "web addresses",
• ".com's",
• "dot com's",
• "URL addresses", or
• "net names"

A domain name is a mnemonic, representing the address of a computer on the Internet

that is easier to remember than a string of numbers.

Each computer on the Internet has a unique numeric IP address, such as

"148.317.2.08". Because IP addresses are difficult for humans to remember, the
Domain Name System allows the domain name (which represents a particular IP
address) to be used instead.

The protocol which administers the IP addressing system is the "TCP/IP"

(Transmission Control Protocol/Internet Protocol). The full statement "http://www . . ."
is the URL ("Universal Resource Locator") --- the string of characters which identifies
the communication protocol used (http) and the IP address of the server site.

The network portion begins on the left, the local portion ends on the right; the class of
the address determines the exact division between these portions. The combination
of these local and network portions uniquely identifies and specifies the location of
some interface on the Internet. 10

A domain name is a mnemonic that is easy to remember and also indicates what the
website contains. Typically, domain names operate like telephone dialling codes in
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reverse. The first portion of the name points to a specific site, the second points to the
broad category the site falls in and the third portion is the code of the country in which
the site is registered. A telephone dialling code would work in the reverse.

For instance, (2712) 429 8334:

• 27 is the country code (South Africa);

• 12 is the city code (Pretoria); and
• 429 8334 is the telephone number of one of your lecturers for this course.

Like a telephone number, a domain name is a unique identifier that points to a certain
site (IP address) on the World Wide Web. These numbers are not user-friendly and
give no indication of what this address contains, or rather of what type of website this
is. It is easier to remember "new-cars.co.za" than "431.401.773".

The domain name system (DNS) maps numerical addresses to domain names,
making it possible to map "431.401.773" to "new-cars.co.za".

Remember that trading names, personal names and company names could be
registered as domain names – thus domain names may incorporate a trade mark or a
company name, but it is a separate and distinct form of designation.

Domain names have become a standard mechanism for communication with

customers. To the extent that it identifies the origin of a business and its goods and
services the domain name assumes a role similar to that of a trade mark. 11 A domain
name may be registrable as a trade mark if it is distinctive and it is used in commerce
in respect of certain goods or services.

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Often, however, domain names consist of generic and or descriptive words which are
not registrable as trade marks. These descriptive and generic names are selected as
domain names to enhance their ranking. For example, the domain name
‘realestate.com’ will attract millions of online property buyers.

It is thus important to remember that most often a domain name is not a trade mark
and it does not function as one: it is rather a part of the address that points to a location
on the Internet. 12 A trade mark cannot function in a vacuum – it must be used in relation
to goods or services and a domain name does not function as a trade mark if it is used
purely as an address of a particular trader. 13

It is important, however, to remember that more than one trader in a particular country
can register the same trade mark, provided it is for different goods or services. For
example several traders in New Zealand could own the registered trade mark “Ferny”.
However only one of those traders can have the domain name www.ferny.co.nz

Obviously it is a very valuable asset to own a domain name which includes your trade
mark. For that reason, new traders should choose their trademarks carefully, ensuring
that any relevant domain names are also available.

4.3 Types of Domain Names

There are two main forms of domain names classified as, first, country top-level
domains called ccTLDs, and second, generic top-level domains denoted by the
abbreviation: gTLDs. The Internet Corporation for Assigned Names and Numbers
(ICANN) is a not-for-profit internationally organised corporation with responsibility for,
amongst other things, the gTLD and the ccTLD name system management. ICANN
draws up contracts with registries, each of which is responsible for all domains ending
with a particular TLD. Each registry has a number of accredited registrars whose role
is to sell the particular TLD to applicants and pay a fixed fee to the appropriate registry.
The ccTLDs are managed differently – some countries do not have a contract with
ICANN. However ICANN retains some oversight.

The gTLD and ccTLD extensions are short forms for the field of activity in which the
particular TLD was originally intended to be used. For example:

• ".com" (commercial),
• ".net" (Internet services),
• ".org" (non-profit organisations),
• ".edu" (institutions of higher learning), and
• ".gov" (governmental agencies)

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Many more gTLDs are due to come into use by mid-2013. This is intended to “improve
competition and choice”. 14 In practice, registration of domain names in the ".com,"
".net" and ".org" TLDs has not been restricted to users in the appropriate fields. Thus,
numerous commercial entities own ".org" domain names, many non-profit
organisations use ".com" domain names, and relatively few of the registrants of ".net"
domain names are actually Internet service providers.

SAQ 2
Analyse the domain name "unisa.ac.za". It is the domain name of the University of
South Africa.

Identify:
a. The URL
b. the TLD
c. Is the domain name's TLD a ccTLD or a gTLD?
d. Identify the SLD

SAQ 3

Below is a list of common characteristics of domain names and trademarks. Fill in the
table below by sorting the list into domain names and trade marks.

• Global gTLD or ccTLD;

• Unique - first come first served;
• Identifier of IP address;
• Generic;
• Commercial or non-commercial use
• Badge of origin;
• Distinctive
• Use in commerce
• Descriptive;
• Territorially based
• Same mark different goods or services

Indicate which words fit best under "domain names" and which fit better under "trade
marks" by filling in the table below:

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DOMAIN NAMES TRADE MARKS

4.4 Why Are Domain Names Important?

Domain names are important for the following reasons:

• First, they provide the basic connection between the physical and the virtual
world. When setting up a business on the Web, the very first thing that is
needed is a domain name. In order to register or obtain a domain name,
one enters into a contractual agreement with a domain-name provider. This
contract may be used to define the most basic obligations and rights of
Internet participants, including the dispute resolution procedure to be
followed in the event of a dispute over a particular domain name.

• Secondly, domain names are more user-friendly than a series of numbers.

For example, commerce.gov is easier to remember and easier to share with
friends or business partners than 98.37.241.30.

• Thirdly, electronic commerce relies on the stable and effective functioning

of the Internet. The successful operation of the Domain Name System
(DNS) facilitates this stability since domain names are tied to IP addresses
that are used to route messages correctly. For example, IBM executives use
their top-level domain name in e-mails that may contain confidential client
information.

• Finally, domain names often include trade marks within them (for example,
<disney.com>, "Disney" being a registered trade mark). These names have
begun to serve as online source indicators, allowing consumers to
distinguish one competitor’s online offering of goods or services from that of
another.

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5. Patenting of Computer
programs and Business
Methods

An increasing number of software and business methods are protected by patents in

the United States. In Japan, computer programs and business methods are patentable
provided that they are considered to be technical instead of merely abstract ideas (see
web site of the Japanese Patent Office. Some examples of business methods are:
patents on using a single click to order goods in an on-line transaction, on an on-line
system of accounting, and on-line rewards incentive system. Much has been written
about business methods patents. In most countries, patents are available for a wide
range of inventions. In E-Commerce business, it is prudent to get legal advice about
whether any new business methods developed by your company may be patentable.

Under the European Patent Convention and the patent laws of a number of EU
countries, computer programs and business methods as such are expressly excluded
from patent protection. The European Patent Convention (EPC) provides that
computer programs with technical effects are patentable whereas computer programs
'as such' are not patentable. In practice, however, the approach has changed in recent
years as the result of long-lasting intensive and controversial discussions and many
decisions. The vast majority of applications are today considered not to claim abstract
programs or business methods but to describe technical means like, for example,
computer networks, for carrying out these programs or methods. In order to be
inventive, the programs or methods have to overcome a technical problem in a non-
obvious way; in other words, it is not the commercial ingenuity, which makes them
patentable. 15 Courts and board of appeal have interpreted the concepts "technical
effect" and "as such" divergently.

Two developments have however, turned the patentability of software on its head in
the US and in the EU. The European Patent Office (EPO) president Alison Brimelow
has asked the EPO's Enlarged Body of Appeal (EBoA) to clarify the organisation's
stance on computer program patentability. 16 On the same day the UK Court of Appeal
held:

• that a patent application for software guru Neal Macrossan's document sorting
system patent application 17 was rejected as it is a business method; and that

• Aerotel's tool for networking computer terminals was patentable as it is deemed

to have a patentable effect on hardware (Aerotel v Telco 18).

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Brimelow's major concerns are whether the language of a claim, by itself, can affect a
program's chances of patentability; and whether the effects of a program must be
visible in reality in order to make it patentable.

In the US, the Board of Patent Appeals and Interferences (BPAI), a key panel within
the Patent Office, has tightened the rules for American software patents 19 following
the 2008 landmark ruling by the United States Court of Appeals for the Federal Circuit
in the case of In Re Bilski 20. The Supreme Court' ruling is expected early in 2010. The
BPAI sharply limited so-called Beauregard claims (efforts to effectively claim an
algorithm by patenting the manufacture of digital media containing that algorithm) and
rejected a patent application submitted by two American engineers working for Philips
Electronics. The patent application attempted to claim its recommendation algorithm
in two different ways: as a "method" for selecting items and as a machine that performs
that method. The BPAI squarely rejected the gambit, writing that because the
functionality described in its "machine" claims were identical to the "methods"
described in earlier claims, the claims must stand or fall together. Lee noted that the
new rule is that "an unpatentable algorithm doesn't become patentable merely
because it's implemented using off-the-shelf computer hardware." 21

End of Section 1

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SECTION II
6. Introduction to E-IPM

This section of the Module focuses on the business aspects of e-IPM. We will
distinguish between the defensive and proactive aspects of IPM in the digital arena.
At the outset, we could like to stress that companies that trade online should not
underestimate the impact of intellectual property management. 22

On the proactive or offensive side, e-IPM includes:

• acquisition & maintenance; and

• commercialization.

In dealing with the defensive management of IP in the digital environment, one has
to enforce your own IP rights, enhance competitiveness and manage your IP in
harmony with problematic public-policy issues. Defensive IPM includes:

• the enforcement of IP;

• the enhancement of competitiveness; and
• public policy issues

7. Proactive E-IPM

7.1 Acquisition & Maintenance of e-IP Rights

The patenting of a novel method to implement on-line service delivery as a business

method patent; the adoption of technical protection measures for digital works; and
the adoption and registration of a domain name or names, preferably including the
trade mark, could provide a decisive competitive advantage to an on-line trader.

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7.2 Acquire Rights to Copyright Works

There may be intellectual property protection in the following components of your

website:
• e-commerce systems,
• search engines or other technical tools used to develop your website;
• software such as HTML code used to create the website;
• website design;
• creative content including
o text and photographs, music and videos;
• databases used to store information for your site;
• logos and trademarks;
• screen displays and graphic user interfaces; and
• the underlying source or object code, which may not even be visible to users.

If you are using a consultant or company to design your website, review the provisions
in the agreement concerning ownership and intellectual property rights. Who owns the
website design and text? In some countries, the copyright in a website commissioned
from a freelance consultant will be owned automatically by the commissioning party.
This is the preferred situation for you, as the website owner. If automatic copyright
assignment to a commissioning party is not part of your country’s copyright law you
should try to negotiate ownership of all new intellectual property as part of the
agreement with the consultant.

Ensure that all pre-existing intellectual property that is being utilized by the consultant
is either owned by the consultant or that the consultant has sought necessary
permissions and licensing agreements.

Ask the following questions:

• Does the agreement/contract clearly state that all copyright and other
intellectual property rights are assigned to the website owner?
• Have we signed the contract?
• Does the website designer want their name and details displayed on the site?
o Did our contract with them deal with this?
• Have they asserted their ‘moral rights’ to be named as author?

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SAQ 4
If I pay for the drawing of a design for my web site I will own the copyright.
 True
 False
 Maybe

7.3 Make use of Technical Protection Measures

Companies are increasingly taking advantage of technology and making use of

technological protection measures (TPMs) and rights-management information
systems (RMIs) to protect their intellectual property.

TPMs include measures for:

• access control and anti-copy devices,
• proprietary viewer software,
• encryption,
• passwords,
• watermarking,
• fingerprinting (user-authentication),
• metering, and monitoring of usage,
• digital registration of the works at various institutions; and
• remuneration systems. 23

RMIs are based on electronic data attached to the works and objects of related rights.
The data may identify the author or performer, the holder of the rights and the work or
object itself, and may further describe the terms and conditions for its use.

WIPO adopted two new treaties, the WIPO Copyright Treaty (WCT) 24 and the WIPO
Performances and Phonograms Treaty (WPPT), together commonly referred to as the
“Internet treaties” in December 1996. Members have to implement adequate legal
protection and provide effective remedies against the circumvention of TPMs that are
used to restrict infringement of copyright holders’ rights. Members are also required to
provide adequate legal protection and effective remedies against any person who
removes or alters RMIs without authority or who distributes copies of works knowing
that the RMIs has been removed.

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Owners of digital copyright works can implement triple protection for their works.

• The first level of protection is the legal rights that apply to the works (right to
authorise the reproduction, publication, communication of the work etc.)
• The second level of protection is not legal, but technical, in the form of TPMs
and RMIs.
• The third level of protection is the legal protection against the circumvention of
the TPMs and the removal of the RMIs.

In effect, a circular arrangement is created whereby the work is protected by copyright

law, which is protected by technology, which is protected by the law.

Best Practice: Implement TPMs and RMIs.

Law Code

Law

7.4 Register a domain name

7.4.1 Introduction

Whydomain.com at <http://www.domainregister.com/> mentions the following

advantages of registering a domain name:

• Increases your name recognition

• Makes it easy for your customers to remember your address
• Indicates you are a serious Internet player

Advantages of domain names

• Helps brand your image

• Adds a level of trust and integrity to your site
• Many search engines refuse to list pages from free sites
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 • Some search engines will only index the first page of a domain site
• Domain names containing "keywords" aid in higher search engine ranking
• Allows you to use your domain address (www.yourname.com) and email
addresses ([email protected]) on your business cards and letterhead
• Once a domain name has been registered, it is no longer available. The most
popular and easily-remembered domain names are being reserved daily, at the
rate of one domain name every 5 seconds!
• Avoids somebody else from registering the name you want. 25
• Lets you change your current e-mail provider and still keep the same e-mail
address
• Protects your Internet advertising investment from failure of your Internet
Service Provider

How to select the best domain name: 26

• Make it as short as possible.
• Make it memorable.
• Make it easy to spell.
• Make it pronounceable.
• Make it directly related to your business's name, or
• Make it directly related to key words from your industry, or
• Make it descriptive of your site's content.

SAQ 5

Why are domain names important? List three reasons.

7.4.2 First-Come-First-Serve

Domain names are allocated by domain name registries on a first-come first-served

basis. A company wishing to register its well-known trade mark as a second level-
domain name may well find that its mark has already been registered by another
Internet user. Most companies prefer to register in one of the generic top-level
domains (gTLDs) rather than the relevant country-code top-level domains (ccTLDs).

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When choosing and registering a domain name to give you an online presence, there
are a few issues to consider. A distinctive generic or common name enables users
remember and search for it, but you should avoid a domain name that is the trade
mark of another company, particularly a well-known trade mark. Ensure that your
choice of domain names does not abuse existing trade marks in your own country as
well as other countries. 27

For example, if you choose a domain name that is not a registered trade mark in Japan
but the same mark happens to be registered in Brazil, you may be responsible for
trade mark infringement and required to submit to on-line alternative dispute resolution
(ADR) for the use of the domain name on websites accessible in Brazil.

There are various databases that you can search on the web to determine if your
choice of domain name is a registered trade mark in a particular country. WIPO has
established a Trademark Database Portal (at
http://arbiter.wipo.int/trademark/index.html) to help you do this search.

The most popular generic top-level domains are ".com" (which denotes a commercial
organization), >"org="(which denotes a non-profit and private organization), and ".net"
(which indicates a computer network). ICANN is currently planning to add around 400
new gTLDs, including ‘.food’, ‘.music,’ .shopping,’ ‘.africa’ and ‘.florida’. 28 Anyone from
any country in the world may register her second-level domain name under one of
these generic top-level domains. See, for example the dilemma of Company Y, D and
A, who would all like to register lumus.com for their business.

lumus.com

Company Y Company A Company D

Lumus Lumus Lumus
A trademark A trademark A trademark
registered for registered for registered
books in books in New for
databases
Israel Zealand in South
Africa

An American company that sold tennis racquets under the name "Prince", and an
English company that sold software under the name "Prince" (Prince v. Prince Sports
Group 1998 FSR 2) is exactly the same dispute as that between Company A and

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Company D and Company Y. In the case of Company Y and Company A the same
mark is owned and used by different companies in different counties in relation to the
same goods or services. This is called a "split mark". The first-come-first-serve
principle will also sort out both these disputes. Whoever registered lumus.com first
will be able to use that domain name.

In addition to trade marks, it is advisable to avoid domain names that include certain
other controversial words such as:
• geographical terms
o e.g. Champagne, Beaujolais, Parma:
• names of famous people:
o e.g. Madonna, Michael Jackson and Mandela;
• generic drug names;
• names of international organizations; and
• trade names (e.g. name of another person’s business).

7.5 Commercialisation of digital IPR:

7.5.1 Introduction to licensing

IPM can be enhanced by the understanding and application of the rules of digital
licensing. On-line IP commercialization transactions may be validly concluded through
click-wrap and web-wrap techniques. Rappa notes that it was not until the launch of
services like iTunes that the music industry began to embrace new business models
for online distribution, after years of trying with only modest success to combat peer-
to-peer file sharing through legal channels. 29

7.5.2 From "Shrink-wrap" to "Click wrap" contracts

In most countries computer software is acquired with the relevant licence terms
‘shrink-wrapped’ — contained within the packaging of software and accepted by
unwrapping the software. A concept similar to the shrink-wrap agreement — the "click-
wrap" agreement- has been developed for electronic commerce. In this case, a screen
on a commercial website will display the terms and conditions of a contract. If the
customer then wants to contract with the supplier she will be instructed to mouse click
on certain icons to indicating her acceptance of the terms of the contract. Click wrap
contracts have been upheld by the United States courts. 30

Another kind of agreement is the “browse-wrap” agreement in which a customer is

asked to scroll through terms and conditions situated somewhere on a website, but
there is no requirement to physically indicate acceptance. The terms and conditions in
browse wrap agreements are less likely to be upheld by the courts, as there is no way
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of establishing whether or not the customer actually read them. However, repeated
use of the website, particularly by a commercial customer, is more likely to indicate
acceptance of browse wrap terms and conditions. 31

The adoption of e-commerce legislation to provide for the legal recognition and
enforcement of data messages as "writing" and "signatures" have cleared any
lingering doubts about the validity of on-line licensing. Electronic incorporation of
standard terms (i.e. the fine print) has also been adopted in the e-commerce laws of
most countries. For example, the mere reference to the licensor’s standard terms and
conditions is good enough. But such incorporation will be valid only if it the reference
is such that a reasonable person would have noticed it and is accessible to the
licensee.

Best Practice:
The on-line vendor should keep electronic audits which
can demonstrate that the buyer actually agreed to the
terms of the contract by clicking on certain icons.

SAQ 6 32
A business person can get out of fair and predictable contract terms they did not read.
 True
 False

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SAQ 7
The terms are not valid because the buyer did not understand them
 True
 False

SAQ 8
There was no contract, as it was only an on-line offer and nothing was signed.
 True
 False

8. Defensive E-IPM

8.1 Enforcement

The biggest challenge in the defensive management of e-rights is the enforcement of

IP rights. The first step to take is to ensure that you are not infringing on third parties'
rights.

8.1.1 Web-site Development checks

Perform a trademark, patent and copyright check to ensure that your company's web
site is not displaying or making use of infringing material or processes.

Also, seek permission to display trademarks owned by others prior to referring to

companies on your Web site. Secure licenses for using a database, search engine,
electronic commerce transaction tools or other technology prior to any design,
customization, or installation work commences. This exercise will help avoid any
contributory infringement claims in the future.

Remember that you may not have the right to reproduce or distribute content that
belongs to others. Never download or distribute any digital content on your Web site

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that does not belong to you unless you have obtained written permission from the
owner to distribute it on the Internet. You also need to seek permission to digitise any
work. Google's "Book Project" was halted and Google was fined with 300,000 Euros
at the end of December 2009 in France for infringing copyright in books by placing
them online without permission. 33

Susan Singleton notes that the following practical rules should always be kept in mind
in avoiding copyright infringement: 34

• Do not copy anything without permission.

• Do not assume that licences for one use cover other uses – they usually
do not.
• Do not assume that a licence to one company in a group covers other
companies in a group.
• Do not assume that a licence can be transferred to a third party.
• Do not assume that information available in the public domain is free of
copyright.
• Buying a directory does not necessarily give the right to mail to customers
in it. Fake addresses are lurking within to catch those breaching copyright
and/or the new EU database right.
• Always make sure that everyone working on a product has a clear contract
which states who own the resulting rights.

SAQ 9
The Website designer will check the material for copyright purposes
 True
 False

8.2 Notices and Disclaimers on the Web Page

You should take whatever steps are necessary to prevent visitors to your web page
from “borrowing” the content, whether they intend to take the content without
authorization or not. A typical copyright notice and disclaimers prohibit unauthorized
reproduction or misleading modification of the content on the Web page. A typical
trade mark notice and disclaimers may request that there be no use of trade mark for
purposes other than description, and will disclaim any implied endorsement caused by
linking to another web page.

Because your web page could be subject to laws in different jurisdictions in the world,
such notices and disclaimers should, so far as is possible, broadly cover all potential
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legal issues, such as implied representations and warranties. These steps will help
you protect, exploit and enhance the value of your intellectual property assets.

Examples:

The conditions on the Amazon.com web site provide as follows:

“COPYRIGHT - All content included on this site, such as text, graphics, logos,
button icons, images, audio clips, digital downloads, data compilations, and
software, is the property of Amazon.com or its content suppliers are protected
by United States and international copyright laws. The compilation of all content
on this site is the exclusive property of Amazon.com and protected by U.S. and
international copyright laws. All software used on this site is the property of
Amazon.com or its software suppliers and protected by United States and
international copyright laws.
APPLICABLE LAW - By visiting Amazon.com, you agree that the laws of the
state of Washington, without regard to principles of conflict of laws, will govern
these Conditions of Use and any dispute of any sort that might arise between
you and Amazon.com or its affiliates.” (see http://www.amazon.com)

Another example is the kids’ toy manufacturer, Mattel, which provides on its web site
the following:
“Mattel maintains this website for your personal entertainment, information,
education, and communication. Please feel free to browse the website. Without
Mattel’s prior written permission, you may not reproduce, distribute, modify,
display, prepare derivative works based on, repost or otherwise use the content
of this website, except that you may download one copy of the material in
temporal storage on one computer for your personal, noncommercial home
viewing only, provided you do not delete or change any copyright, trademark,
or other proprietary notices. Except as expressly provided above, nothing
contained herein shall be construed as conferring any license or right under any
copyright or other intellectual property right. If you are an owner of intellectual
property who believes their intellectual property has been improperly posted or
distributed via this website, please notify Mattel immediately…”

Case study: FIZZY LIZZY

You are approached by FizzyLizzy, a South African company which is a retail
distributor of soft drinks. FizzyLizzy has its main place of business in Maputu.
FizzyLizzy has now commenced marketing and selling its soft drinks on the Internet.
The company is geared mainly to deliver soft drinks in Southern Africa. FizzyLizzy's
web site was developed by ColaNet, an Internet service provider based in Durban.

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ColaNet also hosts FizzyLizzy's web site. FizzyLizzy approaches you for legal advice.
FizzyLizzy wants you to draft the copyright notice for its web site.

Copyright notice:

You could include any number of issues in the copyright policy. The following is an
example of what you could have included.

1. General descriptions of the works that are eligible for copyright protection.
(All text, images, logos and information contained on FizzyLizzy's web site
are the intellectual property of FizzyLizzy.)
2. Rules as to the permissible use of the copyright works:
(The design, pictures, and logos used on the FizzyLizzy web site may not
be copied and used or posted by any other person or entity. This includes
but is not limited to the home page, all other web pages, news pages, and
maps. Links may be directed to these pages, but images, logos, maps, may
not be copied and/or posted for any reason.)
3. Linking (discussed in para 9.4.1 below) could be addressed as follows:
Provision of links from the FizzyLizzy web site to other sites does not imply
endorsement or credibility of the service, information, or product offered
through the linked sites.
4. Framing (discussed in para 9.4.2 below) could be addressed as follows:
FizzyLizzy considers framing, the practice of intact reproduction of a page
or pages of one website into another website, to be deceptive and a violation
of its copyright rights. No authorization or permission is given for framing
our content, whether in whole or in part.
5. The policy could contain a link to a specific person where issues related to
copyright or any related questions may be addressed.
6. The policy should provide contact details for third parties to notify FizzyLizzy of
any infringing content displayed on its web site.

SAQ 10
Is it necessary to put a copyright warning notice on a copyright work before one may
sue an infringer for copyright infringement?

 True
 False

SAQ 11 35
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A work released under a Creative Commons licence is open for use and is free of
copyright restrictions.

 True
 False

SAQ 12
I have been forwarded an e-mail, so I may presume that the sender will have obtained
copyright clearance

 True
 False

SAQ 13
As long as I acknowledge the source, it is not breach of copyright to copy material
from the web.
 True
 False

SAQ 14

I can copy a certain percentage (15%) of a copyright work without breaching copyright.

 True
 False

Singleton notes that one of the most popular misconceptions about copyright
is that the person paying for the work will automatically own the copyright.
It is actually the other way round, and many a copyright/Internet dispute has
arisen over this issue.

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8.3 On-line Trade mark Enforcement

Cheung 36 notes that the strategic management of domain names in the e-commerce
environment is just as important as it is to properly acquire and maintain trade mark
rights in the conventional setting.
There are a variety of ways whereby the on-line unauthorised use of a trademark can
infringe the rights of a trade mark owner. The unauthorised use of the trade mark can
be:

• on a web page;
• in a link;
• on a menu bar; or
• as a repeating watermark (an image in the back ground of web pages).

Take definite steps when you become aware of the unauthorised use of your marks.

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8.3.1 Cybersquatting: Alternative Dispute Resolution

8.3.1.1 Introduction
Most domain name registries adopt a passive attitude and will only deregister a
domain name or transfer it to the true owner on the basis of a court order. A trade-
mark proprietor who finds that his well-known trade mark has already been allocated
to another Internet user is often compelled to resort to civil litigation and institute
proceedings for trade-mark infringement.

ICANN has developed the Uniform Dispute Resolution Policy (UDRP), 37 allowing trade
mark owners to recover domain names that have been registered in bad faith, on the
basis of recommendations in the First WIPO Internet Domain Name Process. 38 The
UDRP proceedings are a purely administrative procedure conducted largely online,
thus reducing the duration and costs of domain-name disputes. Useful especially when
the parties reside in different countries, the UDRP is an efficient alternative to court
litigation. However, it does not diminish either party’s right to have the dispute resolved
through the courts.

Domain name holders must submit to UDRP proceedings as the UDRP is an essential
part of the contract between each domain-name registrar and registrants. This means
that they may lose their domain name in the event that a trademark holder submits a
complaint and proves that:
• the domain name is identical or confusingly similar to a trademark or service
mark in which the trademark holder has rights; and
• the domain name registrant has no rights or legitimate interests in the domain
name; and
• the domain name has been registered and is being used in bad faith.

The UDRP was originally designed for settling disputes in generic top-level domains
such as .com, .net, and .org.

ICANN has accredited the following dispute resolution service providers to resolve
disputes in accordance with the UDRP:

• CPR Institute for Dispute Resolution

• eResolution
• the National Arbitration Forum
• World Intellectual Property Organization

WIPO began to provide dispute resolution services for ccTLDs - for example, .de.
Many ccTLDs have their own dispute resolution procedures, for example Nominet for
.uk and ZADNA for .za.

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The WIPO panel receives complaints relating to a broad variety of trade marks,
including well-known marks (i.e. <bmw.com> and <nike.com>) and the names of
smaller enterprises and of famous individuals (such as <madonna.com>). Domain-
name conflicts may also arise when the registrant of a domain name did not act in bad
faith and uses the domain name for his own business or private purposes.

In Deutsche Shell GmbH (German branch of the oil company Shell) v Dr Andreas
Shell 39 Andreas Shell wanted to use his surname in the German ccTLD “.de” for
private purposes. He had no intention of competing with the Shell Company or
interfering with its business in any manner. Nevertheless the court ordered
cancellation of the domain name because “Shell” is a famous trade mark and Internet
users would expect a website <shell.de> to be run by the Shell company. 40

The UDRP lists circumstances that can demonstrate registration and use in bad faith
or legitimate interests in the domain name. 41

8.3.1.2 Circumstances demonstrating registration and use in bad

faith:

• Where the domain name was registered or acquired primarily for the purpose
of selling, renting, or otherwise transferring the
domain-name registration to the complainant who is the owner of the trade mark
or service mark, or to a competitor of the complainant, for valuable
consideration in excess of documented out-of-pocket costs directly related
to the domain name;
• the domain name was registered in order to prevent the owner of the trade
mark or service mark from reflecting the mark in a corresponding domain
name, provided that the holder has engaged in a pattern of such conduct;
• the domain name was registered primarily for the purpose of disrupting the
business of a competitor; or
• the domain name holder has, by using the domain name, intentionally attempted
to attract, for commercial gain, Internet users to a website or other on-line
location, creating a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the domain-holder’s
website or location or of a product or service on that website or at that location.

8.3.1.3 Circumstances demonstrating legitimate interests in the

domain name:

• before any notice of the dispute is given to the domain-name holder, the holder
uses, or makes demonstrable preparations to use, the domain name, or a

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 name corresponding to the domain name, in connection with a bona fide
offering of goods or services;
• the domain name holder (as an individual, business, or other organisation) has
been commonly known by the domain name, even if the holder has acquired
no trade-mark or service-mark rights; or
• the holder is making legitimate non-commercial or fair use of the domain
name, without the intention of diverting consumers misleadingly for commercial
gain or of tarnishing the trade mark or service mark at issue.

SAQ 15

Indicate if the following three statements are true or false.

Domain name holders must submit to mandatory administrative proceedings and may
lose their domain name in the event that a trademark owner files a UDRP complaint
asserting that:

1) The domain name is identical or confusingly similar to a trademark or service mark

in which a petitioner has rights; and
2) The domain name registrant has no rights or legitimate interests in the domain
name; and
3) The domain name has been registered and is being used in good faith.

8.3.1.4 WIPO Panel Views on Selected UDRP Questions

The Overview of WIPO Panel Views on Selected UDRP Questions summarises the
views of adjudicators on the WIPO panel. 42

a. Determination of rights

A complainant who owns a registered trade mark satisfies the threshold requirement
of having trade mark rights. The location of the registered trade mark and the goods
and/or services it is registered for are irrelevant to the determination of the existence
of rights in a mark. 43 However, in some special cases, a panel may examine the
circumstances of a trade mark’s registration to determine whether the registration
satisfies the UDRP’s requirements. Trade mark registrations that are automatic or
unexamined 44 may be viewed in a different light. 45

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 b. Confusing similarity

The content of a website is irrelevant to the finding of confusing similarity. Trade-mark

holders often suffer from “initial interest confusion”, the confusion experienced by a
potential visitor who does not immediately reach the intended site after typing in a
confusingly similar domain name and is then exposed to offensive or commercial
content on another site. The test for confusing similarity should be a comparison
between the trade mark and the domain name to determine the likelihood of
confusion. 46 In D2000-1598 the domain names "niketravel.com" and
"nikesportstravel.com" were found to be similar to the trade mark NIKE; DRS04601 in
which "nikestore.com" was held to be similar to "NIKE"; and DRS01493 in which
"nokia-ring-tones.com" was found to be similar to "NOKIA").

In NAF/FA141825 it was held that:

"[It] is also well-established under the Policy that a domain name composed of
a trademark coupled with a generic term still is confusingly similar to the
trademark".

c. Legitimate interests

Factors in the determination of legitimate use include the status and fame of the mark,
whether the respondent has registered other generic names, and what the domain
name is used for. A respondent is likely to have a right to the domain name “apple” if
that name is used for a site selling or otherwise about apples but not if the site is aimed
at selling computers or pornography. 47 A respondent who uses a generic word to
describe her or his product or business or to profit from the generic value of the word
without intending to take advantage of the trade mark owner’s rights in that word has
a legitimate interest. 48

8.3.2 Cybergriping

Freedom of expression may justify the unauthorised use of someone else’s registered
trade mark in the registration of a “protest” domain name or "cybergriping". Protest
domain names are domain names registered with appropriate indications of
disassociation such as ".sucks".

The majority view of the adjudicators on the WIPO panel49 is that a domain name
consisting of a trade mark and a negative term is confusingly similar to the trade mark
on its own. 50 The minority view is that the use of a negative term differentiates between
the domain name and the trade mark enough to make them not confusingly similar in
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that Internet users are not likely to associate the trade-mark holder with a domain
name consisting of the trade mark and a negative term. 51

There are two schools of thought on the use a domain name for the purposes of free
speech, where the use of the domain name is not for commercial gain. 52 The first view
is that the right to criticise does not extend to registering a domain name that is
identical or confusingly similar to the owner’s registered trade mark or conveys an
association with the mark. 53 The second is that, irrespective of whether the domain
name as such connotes criticism, the respondent has a legitimate interest in using the
trade mark as part of the domain name of a critical site if the use is fair and non-
commercial. 54

Case Study: Wachovia Corporation v. Alton Flanders Case No.

D2003-0596

Discussion and Findings

Complainant is a major participant in the international banking community.

Respondent is an individual who appears to have the following d/b/a’s:
DomainExchange.com, DotComCatolog.com, CreditInfoAbuse.com and
ProBuyer.com. Respondent’s domain names <wachoviasucks.com>, <wachovia-
sucks.com>, and <wachoviabanksucks.com> point to tools allowing users to run
predetermined searches in several categories of financial products and services.

8.3.3 International Private Law

At the conclusion of our discussion of enforcement, note that private international law
is very important when it comes to the practical implementation of enforcement. The
determination of where an infringement of rights took place and in which court action
should be instituted is fraught with difficulty. Complex and unsettled rules determine
which courts have jurisdiction and which law should apply to the dispute.

8.3.4 Reverse Domain Name Hijacking

Reverse domain name hijacking is the use of the Regulations in bad faith in an attempt
to deprive the registrant of her domain name. It is thus the unlawful attempt to obtain
a domain name that has previously been registered by a lawful owner. Bad faith
encompasses both malicious intent and recklessness or knowing disregard of the

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likelihood that the registrant possessed legitimate interests. 55 In AF-0170a–0170c
Loblaws it was held:

“…in a case where the trademark, although a well-known supermarket brand,

is a common English phrase used as a mark by other businesses, the failure to
conduct a cursory investigation seems especially unreasonable”

In D2005-0309 56 it was noted that neither “bad faith” nor “abuse” is defined in the Rules
but both concepts are known to most, if not all, legal systems. Generally, “bad faith”
connotes a mental element such as malice or dishonesty. In D2004-0848 57, a
complete lack of evidence that the disputed domain name, "kiwi" - a generic term -
was registered or was being used for reasons related in any way to complainant or its
mark, led to a finding of reverse domain name hijacking.

Initiating domain name dispute resolution proceedings necessarily causes

considerable expenditure of time and cost. A complainant must have a reasonable
and credible belief that he is entitled to succeed, before commencing with a dispute.
In particular, proceedings must not be misused in an unjustifiable attempt to pressure
a domain name owner to transfer the domain name to a complainant. 58

Best Practice:
Not every case of trade mark infringement is
actionable under the UDRP rules. It has been noted
that bringing the wrong case to the UDRP may lead to
a finding of reverse domain name hijacking. The
enforcement of trademark through the UDRP
procedures should be approached with caution

End of Section II

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SECTION III

9. Enhancing Competitiveness
Website ranking and brand promotion is very important on the Internet. However,
certain practices are seen as anti-competitive and infringing. We will review meta-
tagging, banner advertising or pop-up advertisements, Adwords, linking and framing.

9.1 Meta-tags

The challenge of finding information on the Internet has made tools like web directories
and search engines indispensable features of the Internet. Google and Yahoo! serve
as a point of entry to the web. On 11 January 2010 a search for the term "mouse"
generated 178,000,000 hits on the Google search engine and 682,000,000 on
AltaVista. The search results for the word "water" generated 2,860,000,000 results on
Yahoo.

9.1.1 What is a meta-tag?

A Meta-tag contains hidden information regarding the contents of a web site, either in
the form of single words, or as sentences. The search engines work by sending out
spiders to crawl over information (meta-tags) on the web to index web pages. A web
page will rank high on the list of hits if a search for a particular term matches the
content in the page. The search results are contained in a database, which consists
of the hits, rated from most relevant to least relevant.

Charlotte Waelde 59 notes that the meta-tag for the web site of the Edinburgh
University's law journal, SCRIPT, reads:

META name = “keywords” content = “Script SCRIPT, script, copyright,

intellectual, property, technology, Scots, Scottish, Scotland, Edinburgh,
University, Faculty, system, law, Law, legal, links, lawschool, school, index, UK,
English, national, best, principal, launch, biotechnology, patent, patents,
genome, design, publication, international, Europe, European, firms, internet,
computer, computers, research, cyber, cyberspace, attorney, colloquia,
trademark, trade, mark, conference, seminar, lecture” 60

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9.1.2 Case Law

Meta-tags and banner-ads can confuse consumers and prevent customers from
reaching your company's web site. Competitors can include irrelevant terms or your
company's trademarks in their meta-tags. The more often a keyword appears in the
hidden code, the higher a search engine will rank the site in its search results.
Inappropriate use of meta-tags may lead to significant intellectual property issues. For
example, if British Airways used the keyword “Lufthansa” in its meta-tags without
authorization, web surfers who use search engines to obtain information about
Lufthansa would be directed to British Airways’ web site.

Courts in several countries have held that meta-tagging amounts to trade mark
infringement, even though the meta-tags are invisible to the Internet user and there is
no confusion. Courts in other jurisdictions have come to similar conclusions. In the
United Kingdom, for example, it was held in Road Tech Computer Systems Limited v
Mandata (Management and Data Services) Limited 61 that the defendant’s use of the
claimant’s trade mark “Road Runner” as a meta-tag constituted a trade mark
infringement. 62 This was confirmed in Reed Executive plc v Reed Business
Information. 63 Similarly, in Emmanuel Odin v Sarl le Ludion 64 the Paris Court of First
Instance ruled that a company’s reproduction, without authorisation, of its competitor’s
trade mark “odin” on its website’s source page constituted a trade mark infringement.
The court reasoned that this use was likely to harm the trade mark holder in that
Internet users searching for the keyword “odin” by means of search engines would be
directed to the site of the infringer. 65 Courts in India and Italy have found that
companies’ use of competitors’ names as meta-tags amounts to unfair competition. 66

9.1.3 Meta-tagging by Competitors

How can you find out if competitors are using your registered or unregistered
trademarks in their meta-tags?

The easiest way is probably to enter your trade mark as a search term in one of the
search engines. Cheadle notes:

Then note the web sites upon which the mark does not visibly appear. Once
you have accessed one of these pages, you can view the HTML version of
those pages (using the Netscape navigator browser by clicking on “view” and
then “document source”). This will show the terms included in the meta-tag.

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9.2 Pop-ups

"Pop-up" or "pop-under" advertisements are advertisements where the trade mark is

generated automatically or mechanically. There are technical means whereby browse
settings can prevent pop-ups. In 1-800 Contacts Inc v Whenu.com Inc 67 the court held
that"

"A company’s internal utilization of a trade mark in a way that does not
communicate it to the public is analogous to an individual’s private thoughts
about a trade mark. Such conduct simply does not violate the Lanham Act,
which is concerned with the use of trade marks in connection with the sale of
goods or services in a manner likely to lead to consumer confusion as to the
source of such goods or services". 68

9.3 AdWords or Keywords

The use of trademarks on the Internet has given rise to new forms of uses as well as
to new forms of infringements. Some examples are the use of registered trademarks
by internet auction houses in order to auction genuine or non-genuine goods, the
liability of search engines for the sale of trademarks as keywords to advertisers, the
use of trade marks in virtual worlds and social media and so on. There have been a
number of cases originating from different jurisdictions on these issues which however
diverge. We shall focus on one of them concerning the liability of search engines for
the sale of trademarks as keywords to advertisers, which is a rather interesting one
and was judged recently by the Court of Justice of the European Union (Google France
SARL v Louis Vuitton Malletier SA (C-236/08, C-237/08 & C-238/08).

In these cases Google's liability was examined for its paid referencing service,
AdWords, according to which an advertiser could purchase registered trademarks
belonging to third parties in order to attract customers and sell goods. Adwords are
key terms (search terms) that are sold to the highest bidder. Adwords are lucrative.
Google's “AdWords” scheme generated over $21 billion in revenue in 2008. AdWords
are displayed along with search results on Google. Trademark owners are concerned
about their brand awareness and insist that this behaviour violates their trademarks.
There is conflicting case law on whether trademark owners' rights are infringed by
Adwords.

The Supreme Court of France held proceedings and referred to the Court of Justice
of the European Union questions on the interpretation of the EU Trademark Directive
(concerning the notion of "use of a trade mark in the course of trade", which is a
requirement for trade mark infringement) and the EU E-commerce Directive
concerning the definition of “hosting providers”, which benefit from limited liability.

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The Court of Justice reached the following conclusions:
• A trademark owner can prevent third parties from advertising identical goods or
services on the basis of a keyword identical to his trademark in cases where
there is a risk of confusion as to whether the goods or services originate from
the trademark owner.
• An internet referencing service which stores such keywords and organises the
display of advertisements does not “use” the trademarks within the meaning of
the EU Trademark Directive, and therefore may not be held liable for
infringement.
• The limitation of liability provided for service providers applies to a service
provider that has not played an active role of such a kind as to give it knowledge
of, or control over, the data stored. If it has not played such a role, that service
provider cannot be held liable for the data which it has stored at the request of
an advertiser, unless, having obtained knowledge of the unlawful nature of
those data or of that advertiser’s activities, it failed to act expeditiously to
remove or to disable access to the data concerned.

It is interesting to note that the case law after the delivery of this judgment will be more
or less harmonized in the various jurisdictions in the EU. In any case, as things stand
now, the conclusion is that internet referencing providers are not held liable for offering
for sale registered trademarks to advertisers. Any other outcome would jeopardize
parallel imports in the EU and the legitimate sale of goods. If however an advertiser is
to use a third party’s trade mark in order to promote its own business and sell its own
goods which are not related to the trade mark owner’s goods and the service provider
obtains knowledge of such an event and fails to act expeditiously, the service provider
may be held liable. The advertiser will be held liable for using third parties trademarks
without their consent for non legitimate reasons. An obvious non-legitimate reason is
for one to sell counterfeit goods.

For national case law see

<http://www.wipo.int/edocs/mdocs/sct/en/sct_24/sct_24_4.pdf>

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Case study: Mars & Spencer & Interflora

Interflora complained that retailer Marks & Spencer, which also operates a flower
delivery service, bought a large number of keywords in Google’s AdWords programme
that were identical or similar to, or incorporated, its Interflora trade mark and domain
name: Interflora, Intaflora, Interflora Flowers, Interflora Online, Interflora UK and Inter
Flora.

Each keyword triggered the display of a sponsored link to M&S Flowers Online, which
appeared in the second highest position in the sponsored links page, behind
Interflora’s own sponsored link.

Interflora claims that its advertising costs increased by about $750,000 between May
5 2008 and May 5 2009, and that it has lost sales as a result of M&S’s acts.

The parties dispute whether the purchase of the AdWords amounts to “use of the trade
marks in commerce”, which would be prohibited under the Trade Marks Directive. The
case was referred to the ECJ for a ruling. The ECJ has confirmed that a trade mark owner
may be able to prevent a competitor’s use of the mark in comparative advertising if such
use harms any of the “functions” of the trade mark. 69

Some writers also think that Adwords should not be regulated. Weadle argues that
banner advertising is akin to walking past a shop window and "...seeing all the
competing products lined up in the window even if you are looking for a particular
product". She notes that the Adwords are also not used in a trademark manner.

Best Practice:
Do not make use of meta-tagging or buy key listing
terms to enhance your company’s web ranking.

SAQ 16
Search for the WIPO Academy's meta-tags and paste them below. Are there any
inappropriate meta-tags embedded in the WIPO Academy site?

Paste the meta-tags here:

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9.4 Linking and Framing

9.4.1 Linking
Linking is the practice of creating a link from one web page to another by means of a
hypertext link. A hypertext link is made up of highlighted words or symbols that, when
“pointed to” with the mouse cursor and “clicked” on, instruct the browser to go to a new
web address.

Linking to different websites and digital files by means of hypertext technology is an

integral part of using the Internet. Many e-traders will include hyperlinks to other
websites in order to make them readily accessible from their own business websites.
The question is whether or not the use of a hyperlink to another website is a breach of
copyright. The answer to the question may well be that it depends whether or not the
hyperlink leads to a website which contains material that infringes copyright.

It is widely considered that anyone who chooses to place content on a publicly

accessible website grants an implied license to others to access and view that content.
The situation is subtly different, however, if the access pathway is provided from a
hyperlink reproduced on a commercial website, such as that of an e-trader, to another
commercial website. The hyperlink may imply there is a commercial relationship with
the second business, or that the owner of the second website endorses the e-trader’s
own products. The owner of the second business may seek to protect their business
reputation by bringing actions for passing off, breach of consumer protection laws and
possibly, trade mark infringement.

Conversely, a hyperlink could be seen as being akin to displaying a leaflet advertising

another trader’s products or services in one’s own commercial premises. Such display
is commonplace although it would generally be done at the behest of the second trader
and for their benefit.

The main reasons for providing hyperlinks to other websites are to provide the e-
trader’s customers with:

1. scientific or industry information about the specific product which she sells.
2. official advice about their legal rights.
3. a source for products and services that may be purchased as ‘add-on’
features to the e-trader’s product.
4. enhanced market appeal for the e-trader’s product.

Hyperlinks to relevant ‘official’ websites of publicly available information, such as a

government website (for example, the department of Consumer Affairs at
http://www.consumeraffairs.govt.nz/ ), a quasi-governmental organization (for
example, the Office of the Privacy Commissioner at http://privacy.org.nz/ ) or an
industry website (for example, http://www.marketing.org.nz/) can generally be
provided by the e-trader on her website without first seeking formal permission. It is
unlikely that any copyright issues will arise from such use, provided the e-trader does

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not misrepresent the contents of the second website as being authored by themselves,
such as occurs in the practices of framing and inlining discussed below.

Hyperlinks to other business websites should not be included, however, without first
obtaining the express consent of the owners of the relevant websites. The legal status
of hyperlinks to another party’s website is untested by the New Zealand courts and
relevant decisions in overseas courts are inconclusive.

A customer of a New Zealand e-trader could claim that clicking on the URL provided
on the e-traders website and viewing the content of a second website falls within the
permitted exception for transient reproduction in the Copyright Act 1994. 70 This
argument, however, is less likely to succeed from the perspective of the e-trader
because it is probable that the link to the second trader’s webpage is provided to
enhance the e-trader’s own business. It might not therefore satisfy the statutory
condition that the transient copy must have “no independent economic
significance”. 71Hence it is possible that the e-trader would be found liable for indirect
infringement of copyright by copying 72 or alternatively for authorising another person
to do a restricted act. 73

The URL

The reproduction of a Universal Resource Locator (“URL” or “website address”) within

an e-trader’s website is unlikely to be an infringement of copyright. The content of the
website for which the URL serves as address is not displayed or accessed merely by
viewing the URL per se. “Rather like a signpost, it directs users to a particular site from
which information may be obtained.”74

If, however, a URL includes another trader’s trade mark, its reproduction on the e-
trader’s website might be challenged by the second trader as being an infringement of
their trade mark by using it in trade.

Web page content

The question of whether copyright is infringed when a customer clicks on a URL

provided on the e-trader’s website and is thereby taken to a website, the copyright in
which is owned by another entity, is more complex. The objective of providing
hyperlinks to other websites is to assist customers of the e-trader by directing them
specifically to a webpage that is most relevant to their requirements and/or a webpage
that is most helpful to the e-trader’s own business.

When permission is obtained to link to another website it is important to ensure that

the specific webpage which can be accessed is agreed upon. Express agreement
regarding the webpage that may be accessed directly by the e-trader’s customers will
avoid potential accusations of unauthorized “deep linking”.

In a Scottish case, Shetland Times v Wills, 75 hyperlinks from the defendant’s

website permitted its customers to access articles deep within the plaintiff’s
website, bypassing advertisements and acknowledgments on the plaintiff’s
home page. This practice is known as “deep linking”. Customers would not
necessarily be aware that they were accessing articles written by the plaintiff
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 business rather than the defendant. In addition the advertising companies who
had paid for the privilege of appearing on the plaintiff’s home page would be
likely to withdraw from their contracts with the plaintiff if customers were able to
view content and bypass the advertisements. The court granted an interim edict
(the equivalent of a preliminary injunction) on the grounds that this was
infringement of copyright of the plaintiff’s headlines as original literary works.

Conversely, in the United States case, Ticketmaster Corp. v. Tickets.com, Inc. 76

no infringement of copyright was found when a customer who accessed the
plaintiff’s website by clicking on a hyperlink on the defendant’s website was
transferred to the plaintiff’s genuine web page. Although this was also described
as deep linking, in the court’s view this was analogous to using a library’s card
index to obtain a reference to particular items.

Some commentators have suggested that an alternative to obtaining express consent

to linking is that consent may be implied by the use of reciprocal links to one another’s
sites.

Hyperlinks to infringing sites:

Providing hyperlinks to sites which infringe copyright belonging to a third party could
make the e-trader liable for primary infringement of copyright by authorising a
restricted act.

In Cooper v Universal Music Australia Pty, Ltd 77 Cooper was the owner of the
website mp3s4free.net which provided hyperlinks to MP3 files on remote
servers all over the world. Many links were contributed by customers, who
submitted details of their music files which were then converted to a hyperlink
and displayed on Cooper’s website by an automated process. The use of the
site was free but it was clearly a commercial venture as Cooper obtained
revenue from advertising on the site. The full Federal Court of Australia found
Cooper liable for authorising copyright infringement because he had the ability
to control how the links were added and to remove them if necessary.
Furthermore Cooper deliberately attracted users to his site and benefited
financially through advertising revenue. 78

9.4.2 Framing

“Framing” practices are more controversial than linking. Framing is the practice of
including large parts from another’s website in one’s own in such a way that those
other parts look as though they are part of one’s website. It entails the creation of a
frame or window within a web page, in which frame or window the content of a different
web page can be displayed. Usually when a surfer clicks on a link the new web page
is presented as its owner intended it to be, but many pages also present the content
of third-party web pages as links “framed” within the source page. Frames are most
often – and legitimately – used to help define a single content-provider’s web pages
and help web surfers “navigate” them.
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However, if frames are used to present third-party material from commercial sites,
framing can have an effect similar to that of deep hyperlinking. Copyright and trade
mark concerns arise, as do questions of passing off, misleading or deceptive conduct,
and copyright infringement:

Firstly, framing may constitute copyright infringement in that a copy of the material is
made in the computer’s memory. The user sees the original website content, which
may be copyright protected, framed by a different website with a different URL and
possibly with different logos and advertising.

Secondly, framing raises concerns of trade-mark infringement because of its potential

for misleading or confusing viewers about the true origin of the framed site and the
goods and services it displays. Whereas linking “transfers” the web surfer to the
website containing the linked material, users viewing framed material usually remain
on the original site and effectively view content from both sites, possibly without being
aware that the material has been called up from another site. This raises the potential
for trade mark liability.

9.4.3 Case law

In Kelly et al v Arriba Software Corporation 79 the court considered the legal effect of
inline linking. The court held that such linking did not constitute copyright infringement,
as it does not entail copying but rather the importing of content directly from the
defendant’s website. 80 The court held that these activities infringed the plaintiff’s
exclusive right to display his works publicly. The court held that Arriba, the defendant,
was displaying Kelly’s works publicly as the public had unrestricted access to plaintiff’s
images. 81

A Danish court in July 2002 ruled in Danish Newspaper Publishers’ Association v

Newsbooster.com 82 that deep linking is a breach of copyright. The case was brought
by the Danish Newspaper Organisation against the "Newsbooster service" which
linked to articles on 28 of the plaintiff’s news websites without going through their home
pages. The court held that the newspaper articles were copyrightable works and
Newsbooster was prohibited from:
• offering a search service with deep links from the websites newsbooster.dk and
newsbooster.com directly to the plaintiffs’ news articles;
• reproducing and publishing headlines from the Internet versions of newspaper
articles;
• distributing electronic newsletters with deep links directly to the newspaper
articles; and

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 • reproducing and distributing headlines from the newspapers.

A similar ruling was made in Copiepresse SCRL v Google Inc83 in which the court held
that Google’s news service, by using in its hyperlinks the titles of and short extracts
from articles, infringes Belgian authors’ rights to reproduce works and communicate
them to the public.

Read the following three cases that discuss linking and framing in the European
context. It is vital for companies to know whether linking and framing are lawful acts.

Judgment of the Court of the Court of Justice of the European Union (13
February 2014). C-466/12 Nils Svensson and Others v Retriever Sverige AB.

NOTE:

- This case can be found here: <

http://curia.europa.eu/juris/document/document.jsf?docid=147847&doclang=
EN>
- Please note that the judgment is available is 20 different languages

Executive Summary

This case is about whether linking is allowed according to EU copyright law. This case
was referred to the Court of Justice of the European Union (CJEU) by the Swedish
Court of Appeal. The CJEU found that the provision on a website of clickable links to
works freely available on another website does not constitute an act of communication
to the public. That means that the owner of a website may, without the authorisation
of the copyright holders and without paying a fee, redirect internet users, via
hyperlinks, to protected works available on a freely accessible basis on another site.

The Court distinguished though the cases where the hyperlink permits users of the
site on which that link appears to circumvent restrictions put in place by the site on
which the protected work originally appears in order to restrict public access to that
work to the latter site’s subscribers only. This also applies where the work is no longer
available to the public on the site on which it was initially communicated. That is so
because in this case the users of the site providing the hyperlinks would not have been
taken into account as potential public by the copyright holders when they authorised
the initial communication of their works to the public and therefore they would be
considered as ‘new public’.

a. Title:
Nils Svensson and Others v Retriever Sverige AB (C-466/12)

b. History of the case

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Press articles written by a number of Swedish journalists, which were published on a
freely accessible basis in the Göteborgs-Posten newspaper and on the Göteborgs-
Posten website. A Swedish company (Retriever Sverige), which operated a website
providing its clients with hyperlinks to articles published on other websites, linked to
the articles at issue, without, however, asking the journalists concerned for their
authorisation.

c. The issue

The main issue with the Court dealt was whether the inclusion on a company’s website
of clickable Internet links (i.e. hyperlinks) redirecting users to works freely available on
another website constituted an ‘act of communication to the public’ according to EU
law and in particular article 3 of the EU Information Society Directive.

We need to crarify here that according to EU law the communication to the public right
is an ‘umbrella right’, which encompasses all non-tangible disseminations or
transmissions of the work to the public by wire or wireless means and always in cases
where the public is not present at the place where the transmission originates (see
also Recital 23 of the Information Society Directive). Some sort of ‘transmission’ (or
retransmission) is necessary in order for ‘communication to the public’ to take place. 84
In fact it is characterized by a distance element in the sense that the transmission
originates from one place and is received in another. It includes TV and radio
broadcasting, Internet TV and radio, simulcasting, webcasting, streaming, near-video-
on-demand (NVOD), pay-per-view, near-on-demand-pay TV, podcasting as well as
cable and online transmissions in general. 85 This right should be construed broadly.

The right of communication to the public also includes the ‘making available to the
public’ right, which in fact means that works are made available in such a manner that
members of the public may access them from a place and at a time individually chosen
by them (on demand).

The Court came to the conclusion that the provision of clickable links to protected
works must be considered to be ‘making available’ and, therefore, an ‘act of
communication’. The Court also mentioned that the notion of an ‘act of communication’
must be construed broadly 86 in order to ensure (according to, inter alia, recitals 4 and
9 of the Information Society Directive) a high level of protection for copyright holders.
That means that it suffices that a work is made available to a public in such a way that
the persons forming that public may access it, irrespective of whether they do so. 87

Yet, the concept of communication to the public is subject to two cumulative criteria:
to an ‘act of communication’ of a work and to the communication of that work to a
‘public’. 88

In order for the requirements to be met for a communication to the public concerning
the same works (as those covered by the initial communication) that are made
available (as in the case of the initial communication) on the Internet, by the same
technical means, must also be directed at a ‘new public’, i.e. a public that was not
taken into account by the copyright holders when they authorised the initial
communication of their works to the public. 89
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The public targeted by the initial communication consisted of all potential visitors to
the site concerned given that access to the works on that site was not subject to any
restrictive measures. Therefore the users of Retriever Sverige (the site providing the
hyperlinks) were deemed to be potential recipients of the initial communication and,
therefore part of the public taken into account by the copyright holders when they
authorised the initial communication.

The Court distinguished though the cases where the hyperlink permits users of the
site on which that link appears to circumvent restrictions put in place by the site on
which the protected work originally appears in order to restrict public access to that
work to the latter site’s subscribers only. This also applies where the work is no longer
available to the public on the site on which it was initially communicated. That is so
because in this case the users of the site providing the hyperlinks would not have been
taken into account as potential public by the copyright holders when they authorised
the initial communication of their works to the public and therefore they would be
considered as ‘new public’.

Judgment of the Court of the Court of Justice of the European Union (21 October
2014). C-348/13 BestWater International GmbH v Michael Mebes and Stefan
Potsch.

NOTE:

- This case can be found here:

<http://curia.europa.eu/juris/document/document.jsf?text=&docid=159023&pageI
ndex=0&doclang=FR&mode=lst&dir=&occ=first&part=1&cid=101398>

- Please note that the judgment is available in German and French

Executive Summary

This case is about framing (and in particular about embedding videos in one’s site
initially communicated through another website). It was referred to the CJEU by the
German Supreme Court. It relates to whether a competitor can allow through his site
a visitor to view a video that has been made by a rival company.

The Court based its judgment on the Svensson Case, which concerned linking (see
the analysis in the relevant case. The case can also be found here <
http://curia.europa.eu/juris/document/document.jsf?docid=147847&doclang=EN>.

In the Svensson case the CJEU found that the provision on a website of clickable links
to works freely available on another website does not constitute an act of
‘communication to the public’ (this right is one of the author’s exclusive rights found in
the EU Information Society Directive). That means that the owner of a website may,
without the authorisation of the copyright holders and without paying a fee, redirect

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internet users, via hyperlinks, to protected works available on a freely accessible basis
on another site.

The Court distinguished though the cases where the hyperlink permits users of the
site on which that link appears to circumvent restrictions put in place by the site on
which the protected work originally appears in order to restrict public access to that
work to the latter site’s subscribers only. This also applies where the work is no longer
available to the public on the site on which it was initially communicated. That is so
because in this case the users of the site providing the hyperlinks would not have been
taken into account as potential public by the copyright holders when they authorised
the initial communication of their works to the public and therefore they would be
considered as ‘new public’.

In the BestWater case it was confirmed that the nature of clickable links (whether
surface or deep links) does not carry any weight. What applies to linking also applies
to framing.

d. Title:

BestWater International GmbH v Michael Mebes and Stefan Potsch (C-348/13)

e. History of the case

BestWater International (the applicant) made water filters. In the context of an

advertising campaign it made a short (2 minutes) promotional video about water
pollution entitled ‘Reality’. The video also appeared on YouTube without (according to
BestWater’s allegation) its consent. The defendants (two independent sales
representatives) of a rival to BestWater company embedded BestWater’s video in their
websites. Thus the visitors of their sites could also watch BestWater’s video.
BestWater objected to this and turned to the German Courts.

f. The issue

The main issue with which the Court dealt was whether framing (and in particular the
embedding of videos in one’s site initially communicated through another website)
constituted an ‘act of communication to the public’ according to EU law and in
particular article 3 of the EU Information Society Directive.

We need to clarify here that according to EU law, the communication to the public right
is an ‘umbrella right’, which encompasses all non-tangible disseminations or
transmissions of the work to the public by wire or wireless means and always in cases
where the public is not present at the place where the transmission originates (see
also Recital 23 of the Information Society Directive). Some sort of ‘transmission’ (or
retransmission) is necessary in order for ‘communication to the public’ to take place. 90
In fact it is characterized by a distance element in the sense that the transmission
originates from one place and is received in another. It includes TV and radio
broadcasting, Internet TV and radio, simulcasting, webcasting, streaming, near-video-

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on-demand (NVOD), pay-per-view, near-on-demand-pay TV, podcasting as well as
cable and online transmissions in general. 91 This right should be construed broadly.

The right of communication to the public also includes the ‘making available to the
public’ right, which in fact means that works are made available in such a manner that
members of the public may access them from a place and at a time individually chosen
by them (on demand).

The Court judged that the answer to the issue could be clearly derived from existing
case law and essentially by the Svensson case and therefore issued an Order
providing that framing does not in itself constitute communication to the public insofar
as the work concerned is neither directed to a new public nor communicated by using
specific technical means that differ from those used for its initial communication.

According to the Svensson case (on which the Court based its judgement) the
provision of clickable links to protected works must be considered to be ‘making
available’ and, therefore, an ‘act of communication’. The Court also mentioned that the
notion of an ‘act of communication’ must be construed broadly92 in order to ensure
(according to, inter alia, recitals 4 and 9 of the Information Society Directive) a high
level of protection for copyright holders. That means that it suffices that a work is made
available to a public in such a way that the persons forming that public may access it,
irrespective of whether they do so. 93

Yet, the concept of communication to the public is subject to two cumulative criteria:
to an ‘act of communication’ of a work and to the communication of that work to a
‘public’. 94

In order for the requirements to be met for a communication to the public concerning
the same works (as those covered by the initial communication) that are made
available (as in the case of the initial communication) on the Internet, by the same
technical means, must also be directed at a ‘new public’, i.e. a public that was not
taken into account by the copyright holders when they authorised the initial
communication of their works to the public. 95

The public targeted by the initial communication consisted of all potential visitors to
the site concerned given that access to the works on that site was not subject to any
restrictive measures. Therefore the users of Retriever Sverige (the site providing the
hyperlinks) were deemed to be potential recipients of the initial communication and,
therefore part of the public taken into account by the copyright holders when they
authorised the initial communication.

The Court distinguished though the cases where the hyperlink permits users of the
site on which that link appears to circumvent restrictions put in place by the site on
which the protected work originally appears in order to restrict public access to that
work to the latter site’s subscribers only. This also applies where the work is no longer
available to the public on the site on which it was initially communicated. That is so
because in this case the users of the site providing the hyperlinks would not have been
taken into account as potential public by the copyright holders when they authorised
the initial communication of their works to the public and therefore they would be
considered as ‘new public’.
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The Court by basing its judgment in BestWater on the Svensson case came to the
conclusion that the nature of the clickable link is of no interest. In other words linking
and framing should be dealt with in the same manner.

Judgment of the Court of the Court of Justice of the European Union (8

September 2016). C-160/15 GS Media BV v Sanoma Media Netherlands BV,
Playboy Enterprises International Inc.,
Britt Geertruida Dekker.

NOTE:

- This case can be found here: <

http://curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d2dc30d5
e932299e00344ca2ae35e55dec6cb32d.e34KaxiLc3qMb40Rch0SaxyKa3z0
?text=&docid=183124&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first
&part=1&cid=597779>

- Please note that the judgment is available is 23 different languages

Executive Summary

GS Media maintained a website (GeenStijl), which amοngst other things it also

published news and scandalous revelations as well as lighhearted items and it was
considered to be one of the top ten news websites in the Netherlands. In 2011, GS
Media published an article accompanied by a hyperlink, which directed its viewers to
an Australian website containing photographs of Ms Dekker. These photographs were
included in the Australian site without the copyright holders’ consent, i.e. Sanoma, the
editor of the monthly magazine Playboy. Sanoma reacted to the link provided by GS
Media but the latter refused to remove it. At the same time Sanoma asked the
Australian site to remove the photographs, which it did. After the removal of the
photographs from the Australian site GS Media decided to publish a new article with
a new link, this time to another website containg the photographs without again
Sanoma’s authorisation. That other site removed the photos after Sanoma’s request.
The users of the GS Media website in the meantime posted new links to the forum of
the website where the photographs could be viewed. The issue in this case from a
legal point of view was whether the placing of a hyperlink on a website to works
protected by copyright and published without the author’s consent on another website
constitutes a ‘communication to the public’, which is one of the restricted acts
according to copyright law. The Court ruled that a link does not constitute an act of
‘communication to the public’ when the person who posts that link does not seek
financial gain and acts without knowledge that those works have been published
illegally. In contrast, if those hyperlinks are provided for profit, knowledge of the
illegality of the publication on the other website must be presumed.

g. Title:
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GS Media BV v Sanoma Media Netherlands BV, Playboy Enterprises International
Inc., Britt Geertruida Dekker (C-160/15)

h. Background

Sanoma argued that GS Media infringed copyright according to EU law since pursuant
to the Information Society Directive (2001/29: < http://eur-
lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32001L0029:EN:HTML>) every
act of a communication of a work to the public has to be authorised by the rightholder.
The Supreme Court of the Netherlands (Hoge Raad der Nederlanden) referred the
case to the Court of Justice of the European Union (CJEU) for a preliminary ruling (i.e.
an interpretation of the relevant provision found in the Information Society Directive)
noting that the Internet is overflowing with works published without the rightholder’s
consent and is not always easy for the operator of a website to check that the
rightholder has given his consent.

The CJEU underlined in conformity with its earlier case law that the concept of the
‘communication to the public’ requires an individual assessment 96 taking into account
several complementary criteria, which are not autonomous and are interdependent.
According to the Court those criteria may, “in different situations, be present to widely
varying degrees, they must be applied both individually and in their interaction with
one another”. 97 They also include whether the person placing the link was in full
knowledge of the consequences of his action (i.e. has placed it deliberately), 98 the
concept of the public 99 and whether this was done for profit. 100

The Court distinguished this case from its earlier case law (i.e. C-466/12 Nils
Svensson and Others v Retriever Sverige AB and C-348/13 BestWater
International GmbH v Michael Mebes and Stefan Potsch) given that this case law
provided that when a work is published on a website with the rightholder’s consent
and made freely available to everyone and one links to this work, this is considered to
be a communication to the public. It however cannot be inferred from this case law
that links to unauthorised works are equally considered a communication to the
public. 101
Thus the Court came to the following conclusions:
a. there should always be an individualised assessment of the existence of a
‘communication to the public’ taking into account the circumstances at issue;
b. when someone places a link to a work that is freely available on another website
and places that link for profit it needs to be explored whether that person placed
that link deliberately, i.e. whether he knew or could reasonably have known that
the work had been published on the Internet without the rightholder’s consent;
c. there is no general rule that such a person intervenes in full knowledge of the
consequences of his conduct in order to give customers access to a work
illegally posted on the Internet. 102

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Best Practice:
Links are a great E-Commerce tool, and a useful service to your
customers, but in many countries there is no clear law on when
and how you can use links. The most careful practice is to seek
and obtain permission from the other site before putting in the
link. Framing is a practice that is more controversial than linking.
This means including large parts of another web site in yours in a
way that makes it look as though it is part of your web site.
Always get written permission before framing.

End of Section III

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SECTION IV

10. Public Policy & Developmental Perspectives

The implementation of the WCT in leading jurisdictions has led to disparate forms of
protection for digital and analogue media. These measures have distorted the
copyright balance between private and public rights by means of technical constraints.

10.1 Access

Knowledge and information is indispensable for development. 103 The role copyright
law plays in barring users’ access to embodiments of copyright works is being
questioned. Some say that the implementation of TPMS impinges on basic human
rights such as:

• the right to education,

• the right to seek, receive and impart information,
• the right to freedom of expression, and
• the right to enjoy the benefits of scientific progress and its applications 104

Much of the creative content that fuels electronic commerce is subject to copyright.
The subject matter of copyright encompasses diverse forms of creativity, such as
writing (including scientific and technical texts), computer programs, musical works,
and works of art. It is generally accepted that people learn by copying others: “from
the cradle to the grave man imitates his fellow-men in speech and song, habits,
fashions and fads”. 105

Several studies have pointed to the profound impact that this could have on enlarging
the digital divide, or widening the gap between the information rich as opposed to the
information poor. 106 The threat to the free flow of scholarly communication is obvious.
Most developing countries (with the exception of India’s film industry and its software
industry) are net importers of technologies and of copyright works. In the absence of
effective public interest exceptions the great divide between the information rich and
the information poor in both the developed and developing nations will increase. 107

Apart from technical protection measures barring access to works, the costs of Internet
access is usually a prohibitive factor. 108 There is a need for lower cost of basic access
in developing countries, rather than better services or higher bandwidth. This lack of
low-cost access is tied to the slow rate of the liberalisation of the regulatory
environment. 109
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10.2 Licensing

The trend toward licensing also means that digital information is in some ways
becoming a service rather than a product. 110 This is regrettable, as:

Buy a book and you own it forever; pay for access to a digital book and when
the period of service is over, you often retain nothing. This is acceptable in a
variety of circumstances but can be problematic for archival purposes. 111

Access to digital works is increasingly governed by contract on a pay-per-view basis.

The increased use of licensing and technological protection measures tilts the
copyright balance away from the user and in favour of right-holders. Licence
agreements frequently override copyright exceptions, and licensors are not obliged to
consider public policy relating to fair use and exceptions. 112 Furthermore, when a
licensee becomes unable to continue to subscribe to a digital resource, access to both
future and past editions of that electronic resource are terminated. Subscribers to
online resources, such as electronic journals, are thus “tied in” to continue subscription
as termination will result in a loss of all past investments. 113

Many consumers:

• Are unaware or confused by the myriad of license agreements, or

• Dismiss licence agreements as overly restrictive or unfair,
• Are interested in morphing works by reusing them; and
• Approach the Internet with the erroneous belief that every item they encounter
is in the public domain. 114

10.3 TPMs

The Committee on Intellectual Property Rights and the Emerging Information

Infrastructure pinpoints the public-policy issues that make TPM mechanisms a two-
edged sword. They state:

"...They make possible the distribution of some digital information that rights
holders would otherwise be reluctant to release, but also have the potential for
significant adverse impact on public access. Encryption technologies under
development could enable the distribution of content in such a way that
consumers would find it difficult to do anything but view it: The technology can
make it very difficult to save a decrypted digital version of information or even

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 print it, should a publisher choose to package the information under those
conditions." 115

10.4 Pro-Access and Pro-Development

Positive developments to address the issues of access, licensing terms and TPMs are
the development of open-source platforms and the Creative Commons movement.
They have gone so far as to advocate and open source movements.

Alternative approaches than that of conventional copyright is often called the "copy
left". Examples of the "copy left", is the Creative Commons organisation. Creative
Commons is a non-profit organisation that offers a range of licences that creators can
use to manage their copyright in the online environment, each offering its own specific
protections and freedoms. Creative Commons has built upon the “all rights reserved”
of traditional copyright to create a voluntary “some rights reserved” system. “

The preservation and use of the public domain is also a theme of the copy-left
movement. Rens 116 and others state that:

"[t]he Public Domain refers to the reserve of ideas, images, works and systems
which are freely available for anyone to use for the creation of new ideas.
Intellectual property rights such as copyright are the exception rather than the
norm, the norm is the Public Domain... However this must not be understood
as suggesting that the Public Domain is unregulated, or even unprotected,
instead copyright and other statutes must safeguard the public right to use of
the Public Domain."

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Module Summary

The domain-naming system has vast advantages for the e-trader. A carefully selected
domain name is an important element of successful trading on the Internet. However,
the use of domain names which are substantially similar or identical to trade marks
poses a challenge yet to be addressed.

The six points that will help you to manage intellectual property assets relevant
to your electronic commerce strategy:

• Take stock of your IP assets that may be relevant to e-commerce by listing any
potential resources and related contracts.
• Avoid the damage to your IP rights caused by infringement by third parties, as
well as your own infringement of other parties’ IP rights when registering
Internet domain names.
• Avoid damage to your IP rights caused by copyright infringement by third
parties, as well as your own infringement of other parties’ copyright.
• Use great care when disclosing information that belongs to your company as
well as that belonging to any third party.
• Insert legal clauses, such as arbitration and choice of law clauses, into
contracts with users, to shield you from liability in other jurisdictions.
• Include IP rights notices and disclaimers on your Web page in order to protect
your IP rights as well as to avoid infringing third parties’ IP rights.

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1 WIPO Intellectual Property on the Internet: A Survey of Issues (WIPO/INT/02) (2002).
2
Survey par 23.
3
The Survey notes as follows in paragraph 39.
4
The Wired Index is at http://archive.wired.com/wired/archive/10.07/Myth.html. See James
Surowiecki, “The New Economy Was a Myth, Right? Wrong,” Wired Magazine, p.90 (July
2002).
5
Survey par 33.
6
Ibid. 356.
7
Samuelson “Digital media and the changing face of intellectual property law” 1990 Rutgers
Computer and Technology LJ 333.
8
Dreier “Unsolved copyright issues in digital and network environment” 1995 Copyright World
36.
9
Working Group on Intellectual Property Rights “Intellectual property and the national
information infrastructure” https://www.eff.org/files/filenode/DMCA/ntia_dmca_white_paper.pdf 65-
66.
10
See Dan L. Burk, ‘Trademarks along the Infobahn: A First Look at the Emerging Law of
Cybermarks’ Richmond J of Law & Technology 1 (1995) 1 available at
https://scholarship.richmond.edu/cgi/viewcontent.cgi?article=1003&context=jolt
https://scholarship.richmond.edu/jolt/vol1/iss1/4/
11
See Catherine Lee ‘Parody and Domain Names’ [2004] European Intellectual Property
Review 263.
12
See Charlotte Waelde ‘Trade Marks and Domain Names. There is a lot in a name’ AHRB
Centre Publication at 4.
13
Wealde op cit note 39 at 4-5.
14
See “New Generic Top-Level Domains” at http://newgtlds.icann.org/en/about/program and
“Last Contractual Hurdle Cleared in the Introduction of New Domain Names” at
http://www.icann.org/en/news/announcements/announcement-03jul13-en.htm
15
See EPO web site.
16
EPO chief asks for clarity on program patents IP Review On-line
http://www.cpaglobal.com/ip-review-
online/3165/epo_chief_asks_for_clarity_on_program_patents
17
Re: Macrossan [2006] EWCA Civ 1371.
18
www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html.
19
Lee "US Patent Office tightens the screws on software patents" Ars Technica December 23,
2009) http://arstechnica.com/tech-policy/news/2009/12/us-patent-office-tightens-the-screws-
on-software-patents.ars.
20
545 F 3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).
21
Lee "US Patent Office tightens the screws on software patents" Ars Technica December 23,
2009) http://arstechnica.com/tech-policy/news/2009/12/us-patent-office-tightens-the-screws-
on-software-patents.ars.
22
Peter K F Cheung How E-Intellectual Property Management Impacts on E-Commerce
http://www.ipd.gov.hk/eng/intellectual_property/study_aids/eIP_ecommerce.htm.
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23
Albert Intellectual Property Law in Cyberspace 265–271; Khaw “Of encryption and devices:
The anti-circumvention provision of the Malaysian Copyright Act 1987” [2005] EIPR 55–64;
Norman Copyright in Further and Higher Education Libraries 45. See Price and Verhulst Self-
Regulation and the Internet 146–148 on the use of technology to regulate content and control
access.
24
Adopted at the WIPO Diplomatic Conference on Certain Copyright and Neighbouring Rights
Questions that met in Geneva. The WCT entered into force on 6 March 2002, in accordance
with its art. 20. See WCT Notification No. 32 WIPO Copyright Treaty Entry into Force, 6
December 2001, http://www.wipo.int/treaties/en/notifications/wct/treaty_wct_32.html
25
Whydomain.com at http://www.domainregister.com/.
26
Whydomain.com at http://www.domainregister.com/.
27
To assist you perform this trademark check, visit the WIPO Trademark Database Portal
established by the WIPO Arbitration and Mediation Centre at
http://arbiter.wipo.int/trademark/index.html.
28
For discussion see http://blog.sheehan.com/index.php/ip/icanns-new-top-level-domain-
program-what-will-we-see-when-the-window-closes-and-the-curtain-opens/
29
Michael Rappa Managing the Digital Enterprise, http://digitalenterprise.org/
30
See eg, ProCD Inc v Zeidenberg 86 F 3d 1447 (7th Cir, 1996); Corp. v Van$ Money Pie
Inc 47 USPQ 2d 1020 (1998); Caspi v Mircosoft Network 323 NJ Super 118 (1999); I Lan
Systems Inc v Netscout Service Level Corp (D Mass 2002) and AV et al v iParadigms LLC,
Company Civ Act No 07-0293 (ED Va 2008).
31
Register.com Inc v Verio Inc 356 F 3d 393 (2d Cir NY 2004), 403
32
Based on Susan Singleton eCommerce: A Practical Guide to the Law (2001) at 21.
33
Annsley Merelle Ward "Arretez! Google Loses in France: A French civil court fined
Google"
http://groups.google.com/group/ipkat_readers/browse_thread/thread/1bd3955d1af8726b
34
Susan Singleton eCommerce: a practical guide to the law (2001) at 14-16.
35
Based on Susan Singleton eCommerce: a practical guide to the law (2001) at 21.
36
Peter K F Cheung How E-Intellectual Property Management Impacts on E-Commerce
http://www.ipd.gov.hk/eng/intellectual_property/study_aids/eIP_ecommerce.htm.
37
See Uniform Domain Name Dispute Resolution Policy (adopted 26 August 1999 and
implemented 24 October 1999) at http://www.icann.org/udrp/udrp-policy-24oct99.htm
(accessed July 2008).
38
The Management of Internet Names and Addresses – Final Report of the WIPO Internet
Domain Name Process, WIPO publication no. 439, available at
http://www.wipo.int/amc/en/processes/process1/report/
39
Case decided by the German Supreme Court, 22 November 2001, reported in the INTA
Bulletin 15 August 2002, 5.
40
The court recognised Dr Shell’s concern that people trying to contact him would not end up
at his homepage. However, the number of potential users of his homepage was relatively
small and might easily be informed of a change of his domain name. In balancing the
respective rights of the parties, the court held that it was more appropriate for Dr Shell to
distinguish himself from the Shell Company than vice versa. This decision caused much
debated, since it clearly deviates from the general principle of “first to come, first to serve” and
Dr Shell had not even used the term “Shell” as a mark and therefore committed no trade-mark
or trade-name infringement.
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41
See para. 4(b)(i)-(iii) and para. 4(c)(i)-(iii) of the Uniform Domain-Name Dispute-Resolution
Policy https://www.icann.org/resources/pages/policy-2012-02-25-en
42
See https://www.wipo.int/amc/en/domains/search/overview3.0/
43
See Uniroyal Engineered Products, Inc. v Nauga Network Services D2000-0503, Transfer;
Thaigem Global Marketing Limited v Sanchai Aree D2002-0358, Transfer; Consorzio del
Formaggio Parmigiano Reggiano v La Casa del Latte di Bibulic Adriano D2003-0661,
Transfer.
44
Such as American state registrations as opposed to American federal registrations.
45
See Lion Country Supply, Inc. v J Katz D2003-0106, Transfer; PC Mall, Inc. v Pygmy
Computer Systems, Inc. D2004-0437, Transfer. Similar issues may apply, in the context of the
second UDRP element, to trade-mark registrations made by the respondent. See Madonna
Ciccone, p/k/a Madonna v Dan Parisi and “Madonna.com” D2000-0847, Transfer.
46
See Arthur Guinness Son & Co. (Dublin) Limited v Dejan Macesic D2000-1698, Transfer;
Ansell Healthcare Products Inc. v Australian Therapeutics Supplies Pty, Ltd D2001-0110,
Transfer; Dixons Group plc v Mr Abu Abdullaah D2001-0843, Transfer; AT&T Corp. v Amjad
Kausar D2003-0327, Transfer.
47
See 402 Shoes, Inc. dba Trashy Lingerie v Jack Weinstock and Whispers Lingerie
D2000-1223, Transfer; Classmates Online, Inc. v John Zuccarini, individually and dba
RaveClub Berlin D2002-0635, Transfer; Emmanuel Vincent Seal trading as Complete Sports
Betting v Ron Basset D2002-1058, Transfer; Owens Corning Fiberglas Technology, Inc v
Hammerstone D2003-0903, Transfer.
48
See Allocation Network GmbH v Steve Gregory D2000-0016, Denied; Porto Chico
Stores, Inc. v Otavio Zambon D2000-0270, Denied; Asphalt Research Technology, Inc. v
National Press & Publishing, Inc. D2000-1005, Denied; Gorstew Limited v
Worldwidewebsales.com D2002-0744 among others, Denied.
49
See report at www.wipo.int/amc/en/domains/search/overview/index.html The development
of IDNs is also reflected in this edition to the extent that, when illustrating certain issues,
WIPO does not hesitate to refer to IDN examples. For instance, when illustrating “sucks
cases” (a domain name consisting of a trademark and a negative or pejorative term), WIPO
also considers the variant of “sucks” in different languages, such as <[trademark]구려.com>
(Korean) and <[trademark]吸.com> (Chinese). Text referring to majority view to be
amended.See page 24: URL:
https://www.wipo.int/export/sites/www/amc/en/docs/overview3.pdf
50
Confusing similarity has been found because the domain name contains a trade mark and a
dictionary word; because the disputed domain name is very similar to the trade mark; because
the domain name may not be recognised as negative; and because non-fluent English-
language speakers may not recognise the negative connotations of the word that is attached
to the trade mark. See Wal-Mart Stores, Inc. v Richard MacLeod d/b/a For Sale D2000-0662,
Transfer; A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v Justin Jorgensen
D2001-0900, Transfer; Berlitz Investment Corp. v Stefan Tinculescu D2003-0465, Transfer;
Wachovia Corporation v Alton Flanders D2003-0596 among others, Transfer.
51
See Lockheed Martin Corporation v Dan Parisi D2000-1015, Denied; McLane Company,
Inc. v Fred Craig D2000-1455, Denied; America Online, Inc. v Johuathan Investments, Inc.
and Aollnews.com D2001-0918, Transfer, Denied in Part.
52
See Wal-Mart Stores, Inc. v Walsucks and Walmarket Puerto Rico D2000-0477 among
others, Transfer.
53
See Skattedirektoratet v Eivind Nag D2000-1314, Transfer; Myer Stores Limited v Mr David
John Singh D2001-0763, Transfer; Triodos Bank NV v Ashley Dobbs D2002-0776, Transfer;
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The Royal Bank of Scotland Group plc, National Westminster Bank plc a/k/a NatWest Bank v
Personal and Pedro Lopez D2003-0166, Transfer; Kirkland & Ellis LLP v DefaultData.com,
American Distribution Systems, Inc. D2004-0136, Transfer.
54
See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone
Corporation v Jack Myers D2000-0190, Denied; TMP Worldwide Inc. v Jennifer L. Potter
D2000-0536, Denied; Howard Jarvis Taxpayers Association v Paul McCauley D2004-0014,
Denied. As to the imposition of further conditions for such domain-name registration and use,
see Covance, Inc. and Covance Laboratories Ltd v The Covance Campaign D2004-0206,
Denied.
55
D2000-0993 Smart Design.
56
Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing.
57
Kiwi European Holdings BV v. Future Media Architects Inc.
58
D2006-0905 Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM; D2002-0535
Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot
Net” Web Services.
59
"Forthcoming Internet Trade Mark Disputes?" in Law & The Internet – A Framework For
Electronic Commerce (eds. Lilian Edwards & Charlotte Waelde).
60
http://www.scriptcentre.ed.ac.uk/journal.
61[1996] FSR 805; See Trademark World No. 137, May 2001, 35.
62
Trademark World, No. 150, September 2002, 21.
63
[2004] RPC 40.
64
TGI Paris Oct 29 2002.
65
INTA Bulletin No. 2, 15 January 2003, 6.
66
See paras 128 and 129 of the IP Survey at
www.wipo.int/edocs/pubdocs/en/intproperty/856/wipo_pub_856.pdf
67
309 F Supp 2d 467 (SDNY 22 December 2003), reversed in part and remanded 414 F.3d
400 (2d Cir 27 June 2005).
68
1-800 Contacts Inc v Whenu.com Inc and Vision Direct Inc 414 F.3d 400 (2d Cir 27 June
2005) 406.
69
http://www.harbottle.com/war-of-the-roses-ecjs-ruling-on-interflora-v-marks-spencer/
70
Copyright Act 1994, s 43A.
71
Copyright Act 1994, s 43A(c).
72
Copyright Act 1994, s 29(2) and see Wham-O MFG Co v Lincoln Industries [1984] 1 NZLR
641(CA) at 668.
73
Copyright Act 1994, s 16(1)(i). The New Zealand courts have not articulated a definitive
test for “authorisation” of copyright infringement but have stated, in the context of
authorisation of infringement by copying, that “it is normally sufficient if the authorisation is
an authorisation to copy. It does not have to amount to an actual authorisation of a breach of
copyright”: Heinz Watties Ltd v Spantech Pty Ltd (2005) 11 TCLR 591; (2006) 8 NZBLC
101,679, discussed in Louise Longdin “Hyperlinking and Copyright Infringement” (2007)
13(1) NZBLQ 33, 40.
74
Judge D Harvey, internet.law.nz (3rd ed LexisNexis, Wellington, 2011) 864.
75
[1997] FSR 604; (1997) 37 IPR 71 (Ct Sess).
76
54 USPQD 2d 1344 (CD Cal 2000).
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77
[2006] FCAFC 187.
78
Cooper v Universal Music Australia Pty, Ltd [2006] FCAFC 187, [145]. The ISP was also
found liable because it had known of the infringing activity and had actively encouraged and
benefited from it without taking reasonable steps to prevent it.
79
280 F 3d 934 (9th Cir 1992).
80
Inline linking, also known as "hotlinking", is the practice of linking from the page of a first site
to an object, often an image, on a second site in such a manner that it appears to belong on
the page of the first site. Inline linking to an image stored on another site increases the
bandwidth use of that site, even though their site is not being viewed in its intended form.
Since bandwidth is a commodity, unauthorized use can increase the maintenance costs of the
website hosting the image, hence the term bandwidth theft. See
http://homepages.law.asu.edu/~dkarjala/cyberlaw/KelllyvArriba%289C2003%29.htm
81
280 F 3d 934 (9th Cir 1992) 945.
82
ApS Copenhagen Court, 24 June 2002, Court Journal No. F1-8703/2002.
83
Court of First Instance, Brussels, 5 September 2006. The judgment is available at
https://www.copiepresse.be/images/file/Google/Jugement_Google_130207_EN.pdf
84
See Joined Cases C-403/08, Football Association Premier League Ltd and Others v QC
Leisure and Others and C-429/08, Karen Murphy v Media Protection Services Ltd, nyr,
according to which (para 193) “the concept of communication must be construed broadly, as
referring to any transmission of the protected works, irrespective of the technical means or
process used” [emphasis added]. See also Recital 23 of the Information Society Directive and
the reasoning of the European Copyright Society, Opinion on The Reference to the CJEU in
Case C-466/12 Svensson, 15 February 2013, pp. 2 seq.,
http://curia.europa.eu/juris/document/document.jsf?docid=147847&doclang=EN
http://curia.europa.eu/juris/document/document.jsf;jsessionid=1460E1C6A98D1E2B76C499
CE8E0D9632?text=&docid=147847&pageIndex=0&doclang=EN&mode=lst&dir=&occ=firs
t&part=1&cid=6852605
85
I. Stamatoudi and Paul Torremans (eds), EU Copyright Law, Edward Elgar Publishing,
Cheltenham (UK) - Northampton (US), 2014, at 408-409.
86
See Joined Cases C-403/08 and C-429/08 Football Association Premier League and
Others [2011] ECR I-9083, paragraph 193.
87
See para 19 of the Svensson judgment: “As is apparent from Article 3(1) of Directive
2001/29, for there to be an ‘act of communication’, it is sufficient, in particular, that a work is
made available to a public in such a way that the persons forming that public may access it,
irrespective of whether they avail themselves of that opportunity (see, by analogy, Case
C-306/05 SGAE [2006] ECR I-11519, paragraph 43)”.
88
Case C-607/11 ITV Broadcasting and Others [2013] ECR, paragraphs 21 and 31.
89
The CJEU referred by analogy to SGAE, paragraphs 40 and 42; order of 18 March 2010 in
Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai
Optikoakoustikon Ergon, paragraph 38; and ITV Broadcasting and Others, paragraph 39.
90
See Joined Cases C-403/08, Football Association Premier League Ltd and Others v QC
Leisure and Others and C-429/08, Karen Murphy v Media Protection Services Ltd, nyr,
according to which (para 193) “the concept of communication must be construed broadly, as
referring to any transmission of the protected works, irrespective of the technical means or
process used” [emphasis added]. See also Recital 23 of the Information Society Directive and
the reasoning of the European Copyright Society, Opinion on The Reference to the CJEU in
Case C-466/12 Svensson, 15 February 2013, pp. 2 seq.,
http://curia.europa.eu/juris/document/document.jsf?docid=147847&doclang=EN
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t&part=1&cid=6852605
91
I. Stamatoudi and Paul Torremans (eds), EU Copyright Law, Edward Elgar Publishing,
Cheltenham (UK) - Northampton (US), 2014, at 408-409.
92
See Joined Cases C-403/08 and C-429/08 Football Association Premier League and
Others [2011] ECR I-9083, paragraph 193.
93
See para 19 of the Svensson judgment: “As is apparent from Article 3(1) of Directive
2001/29, for there to be an ‘act of communication’, it is sufficient, in particular, that a work is
made available to a public in such a way that the persons forming that public may access it,
irrespective of whether they avail themselves of that opportunity (see, by analogy, Case
C-306/05 SGAE [2006] ECR I-11519, paragraph 43)”.
94
Case C-607/11 ITV Broadcasting and Others [2013] ECR, paragraphs 21 and 31.
95
The CJEU referred by analogy to SGAE, paragraphs 40 and 42; order of 18 March 2010 in
Case C-136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai
Optikoakoustikon Ergon, paragraph 38; and ITV Broadcasting and Others, paragraph 39.
96
See para 33 where the CJEU refers to “judgment of 15 March 2012, Phonographic
Performance (Ireland), C-162/10, EU:C:2012:141, paragraph 29 and the case-law cited,
relating to the concept of ‘communication to the public’, for the purposes of Article 8(2) of
Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006
on rental right and lending right and on certain rights related to copyright in the field of
intellectual property (OJ 2006 L 376, p. 28), it having the same scope in that directive as in
Directive 2001/29 (see, to that effect, judgment of 31 May 2016, Reha Training, C-117/15,
EU:C:2016:379, paragraph 33”.
97
Para 34 with references to judgments of 15 March 2012, SCF, C-135/10, EU:C:2012:140,
paragraph 79; 15 March 2012, Phonographic Performance (Ireland), C-162/10,
EU:C:2012:141, paragraph 30; and 31 May 2016, Reha Training, C-117/15, EU:C:2016:379,
paragraph 35.
98
Para 35.
99
Para 36.
100
Para 38 in which the CJEI also refers to judgments of 4 October 2011, Football
Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631,
paragraph 204; 15 March 2012, SCF, C-135/10, EU:C:2012:140, paragraph 88; and
15 March 2012, Phonographic Performance (Ireland), C-162/10, EU:C:2012:141,
paragraph 36.
101
Para 43.
102
Para 48.
103
See Sangeeta Shahikant, IP and the WIPO ‘Development Agenda’ (2005) 1 at
http://www.researchgate.net/publication/237264027_INTELLECTUAL_PROPERTY_AND_T
HE_WIPO_DEVELOPMENT_AGENDA; Tracey Naughton “Speaking for ourselves: Southern
Africa and the WSIS” in The Public Voice WSIS Sourcebook: Perspectives on the World
Summit on the Information Society (2004: The Electronic Privacy Information Centre
Washington DC USA) 119-125 at 125.
104
Marlize Conroy “Access to Works Protected by Copyright: Right or Privilege?” 2006 (4) 18
South African Mercantile Law Journal 413 at 417-419.
105 Per Van Dijkhorst J in Lorimar Productions Inc v Sterling Clothing Manufacturers (Pty)
Ltd 1981 (3) SA 119 (T).
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106
See for example Manon Ress “DRM and Developing Countries” (2005) available at
http://www.indicare.org/tiki-read_article.php?articleId=97 (Accessed Jan. 23, 2007);
Canadian Internet Policy and Public Interest Clinic (CIPPIC) (2005) available at
https://cippic.ca/en/digital-rights-management (Accessed Jan. 26 2007).
107
Committee on Copyright …. at 16.
108
See generally JEFFREY JAMES BRIDGING THE GLOBAL DIGITAL DIVIDE 83 (Cheltenham:
Edward Elgar 2003). Harms Public Policy supra note 1 at 451 notes that the developed world
is constantly pushing the knowledge frontiers forward, and the South is perusing a moving
target.
109
See generally OEDC Privatisation: A Challenge for Sub-Saharan Africa Policy Insights No
14 (available at http://www.oecd.org/dev/35848653.pdf (accessed 10 April 2006); See Tracey
Naughton “Speaking for ourselves: Southern Africa and the WSIS” in The Public Voice WSIS
Sourcebook: Perspectives on the World Summit on the Information Society (2004: The
Electronic Privacy Information Centre Washington DC USA) at 119-125.
110
Computer Science and Telecommunications Board (Committee on Intellectual Property
Rights and the Emerging Information Infrastructure) The Digital Dilemma: Intellectual Property
in the Information Age (2000) at
http://www.nap.edu/openbook.php?record_id=9601&page=R1.
111
Computer Science and Telecommunications Board (Committee on Intellectual Property
Rights and the Emerging Information Infrastructure) The Digital Dilemma: Intellectual Property
in the Information Age (2000) at
http://www.nap.edu/openbook.php?record_id=9601&page=R1.
112
See Committee on Copyright and Other Legal Matters “Limitations and exceptions to
copyright and neighbouring rights in the digital environment: An international library
perspective” ifla.org/III.clm/p1/ilp.htm, 14.
113
Tana Pistorius "Copyright Law and IT in Information and Communications Technology Law
(ed. Prof DP van der Merwe) (2008) (LexisNexis: Durban) 292-293.
114
Michael Rappa Managing the Digital Enterprise, http://digitalenterprise.org/.
115
Computer Science and Telecommunications Board (Committee on Intellectual Property
Rights and the Emerging Information Infrastructure) The Digital Dilemma: Intellectual Property
in the Information Age (2000) at
http://www.nap.edu/openbook.php?record_id=9601&page=R1.
116
South African Open Copyright Review (2008) http://ip-unit.org/wp-
content/uploads/2010/07/opencopyrightreport1.pdf

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