Intellectual property and electronic

commerce

Susan Isiko Štrba

Customised Training Programme for Officials from Taiwan Bilateral and Multilateral Trade Agreements Negotiation and Dispute Settlement

Geneva 16 September 2013 – 13 December 2013

The Graduate Institute Executive Education Program

Outline

• Introduction

• E-commerce in the WTO

• The challenge

• Novel question/issue areas

E-commerce in the WTO - overview

• 2nd Min Conf. in 1998, adoption of Declaration on Global e-commerce. – Urged General Council to establish a comprehensive work program to

examine all issues arising from global e-commerce

• 4th MC. in 2001, agree to continue work on e-commerce as well to the moratorium on customs duties

• 8th MC in 2011 to 18 October 2013, discussions on a number of issues including: (i) Classification of the content of certain electronic transactions, (ii) development-related issues; (iii) fiscal implications of e-commerce; (iv) relationship (and possible situation effects) between e-commerce and traditional forms of commerce; (v) imposition of customs duties on electronic transactions; (vi) competition; Jurisdiction and application law and other legal issues

E-commerce in the WTO (2)

• The draft text Decision of the 2013 MC mandated the Work Programme to continue to “examine the trade-related aspects of, inter alia, – enhancing internet connectivity and access to information and

telecommunications technologies and public internet sites, – the growth of mobile telephony, – electronically delivered software, – cloud computing, – the protection of confidential data, privacy and consumer

protection.”

• Since 8th MC, no activity in the Council for TRIPS • Focus/Pace of technology?

The challenge

• Internet is a global multipurpose medium, – E-commerce not limited by borders or time Zones,

but

• IP laws are territorial • IP laws designed for the physical world • Consensus required to facilitate international

trade • As commercialization of the Internet continues to

gain momentum, need to develop a predictable legal framework for the protection of IP

Challenges (2)

• Shorter life cycles of many goods and services associated with the Internet and digital technologies call for the timely acquisition and enforcement of related IPRs

• Internet a system to promote sales (of tangible and intangible products), but also to deliver intangible products eg music, software

• Several issues emerge

Selected issues

• How do domain names affect trademarks and thus trade

• Should methods of doing business on the Internet be patentable

• Should Internet content, including online music, be subjected to copyright

• Which entity should be responsible for enforcement of IP on the Internet

• What role should be played by international organizations and governments

Domain names, trademarks and trade

• What are domain names? – Web addresses, “.coms”, “ULR addresses” or “net names”

• Why domain name in trade – Need a domain name to set up business on the Internet

• Role of trademark – Candidate for “cybersquatting”

• Uniform Domain Name Dispute Resolution Policy (UDRP) – Is a domain names dispute settlement – Administered by ICANN (Internet Corporation for Assigned

Names and Numbers)

Domain names cont’d

– Under the WIPO Arbitration and Mediation Centre

– Resolve cybersquatting and other disputes related to trademark domain names

– private

• Role of governments or international organizations? – Who should manage the dissemination and

registration of domain names in this new global environment

– Who should manage the disputes

Business methods

• Defn: processes related to e-commerce, Internet and Data processing involving:

– Financial services

– Electronic sales

– Advertising methods

– Other business or management practices

– (as long as the pass the test for patentability)

• Example of Amazon “one-Click” patent case

Examples of business methods patents

• Electronic delivery systems

• “electronic shopping carts”

• Methods of securing payment using credit cards and debit cards over the Internet

• System for managing personal privacy in a computer network

Patents, copyright and e-commerce

• Patents and e-commerce

– Most material on internet at technology intensive (computer and network technologies, both hard and software)

• Copyright and e-commerce

Internet/electronic content

• The role of technological measures in protecting the rights of owners – WIPO Internet Treaties

• Scope of rights (of IP owners and users of IP goods) and how existing laws apply – Google Book Search example

• Validity of contracts, eg in software

• enforcement, – Questions of jurisdiction and applicable law (activity)

Internet/electronic content (2)

• Entity responsible for enforcement

– Private companies or governments (eg ISP) – implications for trade

– Role of government in governance of e-commerce and internet (interests of users/creators)

Summing up

• Technology neutrality?

– country club rule making, eg TPPA

– Limits to technology neutrality