Intellectual Property
in the digital economy
Ana Ramalho
Researcher
IViR – Institute for Information Law
University of Amsterdam
WIPO – Training of Trainers Program
Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Outline:




IP and e-commerce
Creating a website
Choosing a domain name
Protecting a website
Dubai 21 December 2010
Protecting a
website
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
What is the impact of e-commerce on IP?
©2008 Miguel Angel Todaro
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Online trade:
IP as an asset in
online transactions
Source: Anfibia Agencia Digital
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Digital technologies:
IP as a tool to develop
digital technologies
Source: Rural Network Services
Dubai 21 December 2010
Choosing a
domain name
Protecting a
website
IP and ecommerce
Creating a
website

Online branding:
IP as your identity on
the Internet

Trademarks
Domain names
websites


Choosing a
domain name
Protecting a
website
Source: JosephSpencer.com
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Patent licensing:
an important tool for ebusinesses
Source: Idea Buyer
Dubai 21 December 2010
Protecting a
website
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website
What are the challenges raised by the impact
of e-commerce?
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Protection of software: different IP rights may
protect different aspects of software
Designs: graphic
user interfaces,
icons
Copyright: object
code, literal
components
Patent: new
technical
contributions
Trade secrets:
source code
Source: Espaço da Vaninha
Dubai 21 December 2010
IP and ecommerce


Creating a
website
Choosing a
domain name
Protecting a
website
Online content distribution
Ease of upload, download and copying -»
illegal uploading and downloading of copyright
materials
Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

As an e-commerce business:

Protect your IP on the Internet
Never distribute or permit downloads of content
which does not belong to your company
Implement programs, policies and guidelines
which ensure that your employees understand
IP related matters.


Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

Jurisdiction and applicable law

“World wide web” = international element
Which court has jurisdiction over ecommerce disputes?
Which law applies?


Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

Enforcement

Finding the infringer
Enforcing IP rights that are violated on the
Internet
Enforcing your IP rights internationally


Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

Domain name issues

DN must be available
Conflicts of domain name with third parties’
trademarks or personality rights

Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

Outsourcing website development
Different elements of the website protected by IP
rights:

Website design (layout)
Website elements:
- images, texts, photos, logos, trademarks, software,
databases, music
- computer generated symbols, graphic user interfaces
Hidden components (source code, algorithms)


Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Clarifying ownership
Elements existed before
the website:
- Owned by you
- Owned by the developer
- Owned by third parties
Dubai 21 December 2010
Elements created specially
for the website: ascertain
the ownership:
-Employer/employee
-Company/outside
contractor
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Written contract: elements to be included
Scope of work
 Ownership of the material used and developed
 Warranties
 Maintenance and update
 Confidentiality
 Liability and disclaimers
 Fees and payments
 Jurisdiction and applicable law

Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Using material owned by others
Availability does NOT equal Permissibility!
General rule:
Bear in mind you have to get permission to use someone else’s IP
Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website
Technical tools/
Software
- Check license-based Terms&Conditions
- Get permissions
Copyrighted
works
- Finding info from CMOs
- Moral rights aspects
- Specifics of using photos
- Public domain material/freely available
material
Trademarks
- Metatagging, linking, framing
- Marketing and advertising
Personal indicia
- Privacy rights
- Publicity rights
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
What is a domain name?
A domain name is a user friendly form of
Internet address that is used to find
websites on the Internet.
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Components of a domain name
2 parts in a domain name:
Top-level domain (TLD)
- Generic top-level domains (gTLD)
- Country code top-level domains (ccTLD)
Second-level domain (SLD)
Dubai 21 December 2010
Protecting a
website
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Choosing the first-level domain
 Open (.com, .info, .net, .org) versus closed (.int) gTLDs
 ccTLDs are country specific and registration rules vary
according to the country
 No distinction between gTLDs and ccTLDs in terms of
worldwide access
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Choosing the second-level domain
 Easy to identify and find a company’s website on the Internet
 Same or similar to a company’s business name or/and trademark
 Distinctive of a company’s business or products
 Not identical or similar to business names or trademarks of others
 Not controversial in terms of geography, personal names, generic
drugs, etc.
 Preferably shorter
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Domain names vs. trademarks
Domain Names
Trademarks
Internationally available
National/Regional IP rights
One domain name within one first
level domain
Possible coexistence of similar or
identical TMs (eg. different classes)
Registration on first-comes firstserves basis without examination
Examination (formal and/or
substantive)
Private contract with a registrar
Registration by state/regional
authorities
Less expensive and quicker
More expensive and longer
Dubai 21 December 2010
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Uniform Domain Name Dispute Resolution Policy
(UDRP)
 UDRP Rules adopted in 1999
 Reasons:
- Protection of trademark owners and legitimate domain name
registrants
- Effective fight and prevention against cybersquatting (with less
cost, shorter duration, etc.)
 Limited to cases of abusive registration of domain names
 More on UDRP procedure:
http://www.wipo.int/amc/en/domains/
Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

Abusive registration criteria:

Domain name is identical or confusingly similar to the
trademark

Trademark owner has a right or legitimate interest in
domain name, and a registrant of domain name does not

Registrant registered or is using domain in bad faith
Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

UDRP does not cover:

Disputes regarding registrations which violate
business (trade) names, geographical indications
or personality rights

Situations which per se do not fall under the
definition of ‘abusive registration’ under UDRP
Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
 Protected elements of a website
New technological systems
Search engines
Other technical internet tools
Software
Database
Website design
Website content
Business names, domain names
Product names, logos, other signs
Computer-generated graphic symbols,
screen displays, GUIs, webpages
Confidential graphics
Source code, object code, algorithms
Data flow charts, database contents, etc
Dubai 21 December 2010
Protecting a
website
IP and ecommerce
Creating a
website
Choosing a
domain name
 Types of protection
New technological systems
Search engines
Other technical internet tools
Software
Database
Website design
Website content
Business names, domain names
Product names, logos, other signs
Computer-generated graphic symbols,
screen displays, GUIs, webpages
Confidential graphics
Source code, object code, algorithms
Data flow charts, database contents, etc
Dubai 21 December 2010
Protecting a
website
Patents/utility
models
Copyright
Sui generis/
database laws
Trademarks
Design
Trade secrets
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website
 Precautionary measures
1 - To protect IP rights
By
2 - To let people know that
the content is protected
By
Dubai 21 December 2010
registering trademarks
By registering domain names
By registering website and copyright (in case
such possibility is provided)
Patenting online business methods (in
countries where it is available)
using symbols: ©, ®, etc
By using watermarks for copyright content
By giving notices that website or business
method is patented
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website
 Precautionary measures (cont)
3 - To let people know
what use they can make
of the content
What
4 - To control access and
use of website content
By
5 – To detect
infringements on website
Dubai 21 December 2010
they can do with the page
Who to contact to get a copyright clearance
related to website components
using online agreements to allow access
By using encryption (keys, etc.)
By using access control & conditional access
systems
By taking random snippets of text from
website and searching for the snippets using
search engines
By using ‘spider programs’ to detect illegal
use
IP and ecommerce

Creating a
website
Choosing a
domain name
Protecting a
website
Taking action against infringers - steps
1 - Make screen shots or prints of relevant pages
2 - Print the source code from the infringing website
3 - Assure that you can prove your prior ownership over website
content and its originality
4 - Send ‘cease & desist’ letter to the owner of infringing website
5 - If no response received, send: (a) a notice about infringement to
any search engine and (b) a request to ISP with a demand to
remove the infringing site
Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

In short…

If you want to use protected content in your website (art
works, photos, paintings, etc.), you need to get
permission from their creators or owners
Websites which collect, handle or disclose personal
information of their users should comply with the
national privacy laws of the country from which they are
operating

Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

In short…

An outside contractor will usually own the right in the
website unless contractually agreed otherwise
Domain names are unique: two companies can own and
use the same trademark, but only one company can
own a particular domain name
In most countries, a registration of someone else’s
trademark as a domain name is a violation of trademark
rights


Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Protecting a
website

In short…

Domain names are registered on a first-come, first-serve
basis
UDRP is an administrative procedure to solve disputes
between trademarks and domain names in case of
abusive registration

Dubai 21 December 2010
IP and ecommerce
Creating a
website
Choosing a
domain name
Thank you!
Questions?
[email protected]
Dubai 21 December 2010
Protecting a
website