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UNIDO-WIPO National Seminar

on Managing IP of SMEs

in the High-Technologies Park

Minsk, Belarus, January 23-25, 2007

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Intellectual Property Issues in a Company Website

Lien Verbauwhede KoglinConsultant, SMEs Division

World Intellectual Property Organization (WIPO)

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1.

Introduction

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(1)

What elements of your website can be protected?

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TS, ©, patentsoftware

Elements of website

Website design ©

Business names, logos,domain names

trademarks

Creative content ©

Confidential buss. info Trade secrets

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Patent?Business method

Elements of website

database ©, sui generis

Web pages, screen displays,GUI, graphic symbols ©, industrial design

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(2)

How to protect your website?

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1. Protect your IP rights

• Register trademarks

• Register domain name (+ as TM)

• Register website and © material

• Measures to protect trade secrets

• Patent business methods?

Gather proof of ownership + date

watermark, time stamp, fingerprints

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Register Domain Name

• gTLD (.com,.net,.org) not associated with specific country. Refers to character/nature of the site

• ccTLD (.by) associated with specific country.

• Search : www.whois.net; www.tld.by

• Registration

– domain name registries (e.g. VeriSign)

– national registries (tld.by for Belarus)

– agents: represent requests in many countries (e.g. Marcaria)

• Price: (for .by) 70 USD, renewal 50 USD p/y

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2. Let people know that the content is protected + what use they can make

• Notices

- TM, ®, “Patent”, ©, “Confidential”

- e.g. LienPak™ software

• Warning and user statements – restrictions on use

– allowed use

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Example Confidentiality Notice

for Unpublished materials

This is an unpublished work containing LIEN’s confidential and proprietary information. Disclosure, use, or reproduction without authorization of LIEN is prohibited.

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Example Restrictions on Use of Trademarks

Listed below are trademarks for the company LIEN Inc., plus other recognized trademarks that you are likely to encounter.

Nothing contained on this site should be construed as granting any license or right to use any trademark displayed on this site without the express written permission of LIEN or such third party that may own the trademark.

• LienCORP® is a registered trademark of LIEN

• Minsknet® is a registered trademark of Company. Inc., used under license

• ...

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Example Restrictions on Use of Copyright Material

• All materials contained on this site are protected by copyright law. Copyright © 2007 LIEN.

• No part of the materials, including graphics or logos, available through the lien.com site may be copied, photocopied, reproduced, translated or reduced to any electronic medium or

machine-readable form, in whole or in part, without prior written consent of LIEN. Any other reproduction in any form without the permission of LIEN is prohibited. Distribution for commercial purposes is prohibited.

• Written requests for reprint or other permission should be mailed, faxed or E-mailed to: ...

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Example

Permission Certain Uses of © Material

• All materials contained on this site are protected by copyright law. Copyright © 2007 LIEN.

• The materials contained on this site may be copied for non-commercial personal use only.

Or

• The materials contained on this site may be freely copied and distributed so long as our copyright notice and website address are included.

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Example Statement Used in Software

• This software is protected by copyright law. Copyright © 2007 LIEN.

• The software may not be copied, reproduced, translated or reduced to any electronic medium or machine-readable form without prior written consent of LIEN, except that you may make one copy of the program disks solely for back-up purposes.

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Online agreements

3. Control access and use of website CONTENT

Technological protection measures Encryption

Access control or conditional access systems

Versions of lower quality

Interest: e.g., if you sell software online

Limit access to works on website only to visitors who accept conditions and/or have paid

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4. Monitor violations

• Random snippets of text / graphics

• Web crawler or spider programs

• Fingerprints

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(3)

Can you use material owned by others

on your website?

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Current technology easy to use material created by others

• Film, TV clips

• Music

• Graphics

• Photographs

• Software

• Text, etc

Using material without getting permission (assignment or license) can have

dire consequences!

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1. Using technical tools or software owned by others

• E-commerce system, search engine, technical Internet tool, software written license agreement

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• Photos, videos, graphics, music, software, clips, text, paintings, images, (HTML code)

• Written permission

• Even if just part of a work

– 14 lines of source code out of a total of 186,000 lines

• Material stored on the Internet is protected!

• Free uses/fair use

• Finding the copyright owner

– Collective Management Organization (BELAT)

• Don’t forget the moral rights

2. Using copyright works owned by others

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• Permission from copyright owner

• Permission to use subject matter?

– Building (architect)

– Artwork (artist)

– Image of person

(publicity & privacy rights)

3. Using photographs owned by others

Marc Chagall

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4. Finding works in public domain

– libraries

– national archives

– collective management organizations

– online portals

George CastaldoL. da Vinci

BoteroWarhol

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• Software

• Images

– e.g. www.epicture.com

• Clipart, artwork, photos

– e.g. creativecommons.org

• Backgrounds, wallpapers

• Etc

5. Using freeware

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Freeware

• Do not assume that you can use freeware without limitation

• Often certain conditions– e.g. not allowed to change the images– e.g. must give some type of credit to the author– e.g. use for non-commercial purposes only– e.g. derivative works must also be open source

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6. Using trademarks owned by others

• Identifying competitor’s products is all right

• Don’t use TM that might cause confusion

• Beware of using TM in

– meta-jacking

– linking & framing (below)

– domain names

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Cybersquatting

• Cybersquatters register names of trademarks, famous people or businesses with which they have no connection

• Exploit first-come, first-served nature of domain name registration system

• gTLD: Trademark holder can initiate proceeding under Uniform Domain Name Dispute Resolution Policy (UDRP)

• Registrant of gTLD domain name must submit to such proceedings (< Terms & Conditions for registration).

www.wipo.int/amc/en/domains/

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ADMINISTRATIVE PANEL DECISION

Beiersdorf AG v. Alecsey Sorokin

Case No. D2000-1760

• Beiersdorf AG = leading cosmetic product company. Owns trademark "NIVEA"

• Individual from Minsk registers <nivea.org>

• Decision: No rights or legitimate interests in respect of the Domain Name. Domain Name has been registered and is being used in bad faith.

• Domain name transferred to Beiersdorf AG

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(4)

Who owns IP rights in your website?

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– Typical website is collage of components owned by different persons

• navigation software

• photographs, graphics, text, sound

• design

• etc

FIND OUT

• WHAT YOU OWN

• WHAT YOU HAVE RIGHTS TO USE

• AND IN WHAT WAY !

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Website developed by your employees who are employed for this purpose

– Belarus Copyright Law Art. 14: • Moral rights < employee • Economic rights < employer (unless otherwise

provided)

– OTHER COUNTRIES: different rules

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Belarus Copyright Law - Article 14

Copyright in Service-Related Works

(1) The moral rights in a work created in the course of an assignment or service obligation (service-related work) shall belong to the author of the work.

(2) The economic rights in service-related works shall belong to the employer, unless otherwise provided by the contract concluded between the employer and the author.

(3) The author of a service-related work may not prohibit the employer from disclosing the work.

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Website developed by freelance web developer

(work for hire)

“I paid for it, so I own it”

is not always true !

– Belarus Copyright Law ??

– OTHER COUNTRIES: different rules

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(5)

What to keep in mind

when negotiating a

web development agreement?

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Web Development Agreements

– Scope of work

• Maintenance and update

• Consulting services

• Registering domain name

– Ownership of material

• Material created by web developer

• Material provided by you

• Who owns copyright in the web design?

• What can you do with elements in which website designer owns rights?

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– Who obtains clearances for “third party” material incorporated in the web design?

– Liability

• Designer’s warranty that it is their original work

– Confidentiality

– Timetable for delivery of the website

– Payment

– Website Escrow?

• Deposit e.g. source code & related computer files (executable program files, cgi script, graphic image files, etc.) used by website developer to create and maintain Client’s website

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(6)

What to keep in mind

when creating your website?

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• The idea of creating a website about how to invent wisely in the stock market is not protected by copyright

• Question: Can you copy the functionality or ‘look and feel’ of another website?

1. The idea is free

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Navitaire vs. easyJetU.K.,30 July 2004

• easyJet engaged online development company Navitaire to develop online ticketless booking system for their flights.

• Relationship with Navitaire ended. easyJet engaged other developer to create system with exact same command structure and ‘look and feel’.

• New developer no access to source code. Did not

decompile.

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No copyright in a pudding ...

• Navitaire: easyJet copies functional idea of the system, its ‘business logic’

– same ‘look and feel’ of the software (way of setting out the computer screen)

– same commands entered by the users

• Judge: computer program cfr. secret recipe for pudding. While recipe itself could be literary work, if someone eats and makes similar pudding without access to the recipe no copyright infringement in the recipe even though similar result was achieved.

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– Linking

» visitor from lien.com visits other website

» visitor from lien.com visits other page within lien.com

– Deep links

» visitor from lien.com visits page other website, but not its homepage

– Framing

» visitor from lien.com view content from other site inside a frame supplied by lien.com

– Inlining

» visitor of lien.com can view a graphic file that comes from another website, without leaving lien.com

2. Linking

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Get Website Linking Agreement

• Links to illegal content / software

• Link uses fanciful logo as its pointer

• Deep links to advertising-rich commercial sites

• Framing may trigger disputes under Copyright (alters content) and TM (confusion) law

• Inline links:

– Fan website displays Dilbert

cartoons from official site

– search engine displays

full-size photographs Dilbert

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Deep LinkingThe Shetland Times v. The Shetland News

• Shetland News offered his readers a menu that contained a mix of his own headlines and the headline texts from Shetland Times.

• So by clicking on a headline about a 'council cock-up', browsers could be passed on to the rival Shetland Times’ site and read their copy.

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• The Shetland Times sued the Shetland News, alleging breach of copyright. They claimed the Shetland News were seeking to earn money from their website by selling advertising on their front page.

• Judge held that headline text had copyright. Actions of The Shetland News in copying them for reproduction on its own website is infringement.

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3. Domain name

What is a good domain name?

http://www.wipo.int/sme/en/documents/

wipo_magazine/08_2003.pdf

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4. People’s personal data • User privacy : data protection laws &

privacy laws (especially in the E.U.)

• Privacy policy

5. Online sales• Enforceable agreement:

– Terms must be reasonable apparent

– Mechanism to indicate assent

• Shrink-wrap agreement

• Click-wrap agreement

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• SW downloaded, airline ticket booked online, etc.

• customer clicks “I accept” button which is preceded by terms and conditions

• SW sold in comp.store• terms on outside of

package

• enforceable if customer had chance to see the terms either prior to the sale or prior to opening and accessing the product.

• "By breaking this seal you agree to abide by the following terms and conditions"

Click-wrap Shrink-wrap

Accept Accept

Decline Decline

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6. Don’t disclose trade secrets

7. Don’t prematurely disclose patent related information or new designs

8. Immediately remove infringing material

• Liability for subsequent violations

• Liability for persons who facilitate violation of copyright

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9. Other legal issues: • Advertising

• Marketing practices (comparative advertising, unsolicited emails, discount schemes, etc)

• Distance selling regulations

• Regulations to protect children

• Tax regulations

• Jurisdiction, applicable law

• Dispute resolution

• Etc.

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(7)

What to do when someone infringes

your trademark / copyright

on his website?

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• Screen shots of all relevant pages

• Cease and desist letter (demand removal)

• Notice of infringement to search engine (demand removal)

• Notice of infringement to website hosting company or ISP (demand removal)

• Prosecution

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Conclusions

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• Websites are common target for infringement lawsuits :

– Others may copy the look and feel, some features or contents of your website if you are not cautious, you may lose your IP rights

– You may be accused of unauthorized use of other people’s intellectual assets if you are not cautious, you may be liable for infringement

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1. Before going online, consult with specialized Internet attorney

- IP is just small piece of the big legal pie

2. Regularly: website audit

3. Key person responsible

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Thank you !

Lien Verbauwhede Koglin

www.wipo.int/sme/

Thank you !

Lien Verbauwhede Koglin

www.wipo.int/sme/