IPR Transaction & Website

8/10/2019 IPR Transaction & Website

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IP & WEBSITES


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What elements of your website can be protected

E-commerce systems, search engines or other technical Internet tools

may be protected by patentsor utilitymodels;

Software

can be protected by copyrightand/or patents, depending on the national law;

website design

is likely to be protected by copyright;

Creative website content may be protected by copyright;

Databases

can be protected by copyrightor by sui generisdatabaselaws;

Business names, logos, product names, domain names and other signs posted on your

website

may be protected as trademarks;

graphic symbols, screen displays, graphic user interfaces (GUIs)and even webpages

may be protected by industrialdesignlaw;

Hidden aspectsof your website

can be protected by tradesecretlaw


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What is a Utility Model?

A utility model is an exclusive right granted for an invention, which allows the rightholder to prevent others from commercially using the protected invention, without hisauthorization, for a limited period of time.

In its basic definition, which may vary from one country (where such protection isavailable) to another, a utility model is similar to a patent. In fact, utility models are

sometimes referred to as "petty patents" or "innovation patents.

The main differences between utility models and patents are the following:

The requirements for acquiring a utility model are less stringent than for patents. Whilethe requirement of "novelty" is always to be met, that of "inventive step" or "non-obviousness" may be much lower or absent altogether. In practice, protection for utilitymodels is often sought for innovations of a rather incremental character which may notmeet the patentability criteria.

The term of protection for utility models is shorter than for patents and varies fromcountry to country (usually between 7 and 10 years without the possibility of extensionor renewal).

In most countries where utility model protection is available, patent offices do notexamine applications as to substance prior to registration. This means that theregistration process is often significantly simpler and faster, taking, on average, sixmonths.

Utility models are much cheaper to obtain and to maintain

In some countries, utility model protection can only be obtained for certain fields oftechnology and only for products but not for processes.

Utility models are considered particularly suited for SMEs that make "minor"improvements to , and adaptations of, existing products. Utility models are primarily

used for mechanical innovations.


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How to protect your website

a) Protecting your IP rights

Register your trademarks;

Register a domain name that is user-friendly and reflects your trademark, business

name or character of your business;

Think about patenting online business methods, in countries where such

protection is available;

Register your website and copyright material in countries which provide this

option at the national copyright office;

Take precautions about disclosure of your trade secrets.

Consider to take an IP insurance policy that would cover your legal costs should

you need to take enforcement action against infringers.


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b) Letting people know that the content is protected

Mark your trademarks with the trademarksymbol, TM, SM or equivalent symbols.

Equally, you can use a copyrightnotice

Another option is to use watermarksthat embed copyright information into the digital

content itself.

You may also use a timestamp.

c) Letting people know what use they can make of the content

d) Controlling access and use of your website content

Online agreements

Access control or conditional access systems.

release only versions of insufficient quality

etc

How to protect your website


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Who owns the IP rights in your website?


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Who owns the copyright?

Scenarios

Website has been developed by your employees who are employed for this

purpose

Outsourced the creation of their website design and/or content to an

outside contractor

TIP

It is highly advisable to enter into a clear, written agreement with the website

developer that spells out who owns IP rights in each element of the site.


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Web development agreement

a) Scope of work to be performed

b) Ownership of material

a) Who owns IP rights in the different components of the website that are createdby the website developer

b) Who owns IP rights in material that you have provided to the website developerfor use on the website?

c) For any elements in which the website designer owns IP rights, what can you dowith it?

d) For any elements in which IP rights are owned by someone other than you or the

website developer who is responsible for getting permissionto use such thirdparty material?

e) Who owns IP rights in the softwarethat displays your website and runs the

components of your website?

f) Can the website developer use the design as a model for other websites?


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Web development agreement

Warranties

Maintenance and update

Liability

Other

fees and payment

Indemnification

Disclaimers

limitation of liability

jurisdiction and applicable law, etc.


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Material owned by others

a) Using technical tools owned by others

b) Using software owned by others

c) Using copyrighted works owned by others

d) Photographs

e) Content from public domain

f) Using trademarks owned by others

g) Metatagging, linking & framing, and using trademarks in domain names

h) Using others likenesses


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Creating, launching, maintaining or developing a

website

Links that can create legal liability

Leading to illegalcontent

Links that comprise a companys logo

Deeplinks

Framing , inliningor mirroring

Watch out with metatagging

Choose carefully your domain name

Be sure not to disclose trade secrets

Be sure not to disclose patent related information

Respect other peoples personal data

Immediately remove infringing material

Be sure your online agreements are enforceable

Post notices and disclaimers


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Other legal issues

What is your liability, as the proprietor of a website, for the content of yourwebsite?

If you allow people to post content or comments on your site, do you need apolicy for dealing with postings?

If you place advertisingon your site, what issues should your online advertising

agreement cover? Are your marketingpracticeslegal?

If you trade online, what taxregulationsare applicable to e-commerce?

If you sell online to consumers, do you need to fulfill with any distancesellingregulations?

If your website contains statements about, or links to, other persons,

companies or organizations, are there potential liabilities for defamation? If your website is directed toward children, are there any specific legal

requirements you must comply with?

If you are running an online educationsite, are there any specific issuesregarding rights, licensing and free use of copyright material?

How can you reduce the risk of being sued abroad?

Creating, launching, maintaining or developing a website


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Case Studies

YouTube vs. Super Cassette Industries (Copyright infringement)

Playboy Enterprises Inc vs. Calvin Designer Label (Meta tag case)

Ticket Master vs. Ticket.com (Deep links / Framing)


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CONCLUSION

Websites are common targets for infringement lawsuits. If you are not

cautious, you can lose your IP rights or be liable for infringement of the IP

rights of others.

Before going online, businesses should consult with a specialized Internet

attorney on IP and other legal concerns involved with the creation and

management of a website.


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Internet Domain Name


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What is a domain name?

is the address of a web site that is intended tobe easily identifiable and easy to remember,such as goolge.com, or nift.ac.in

domain names have become businessidentifiers and, increasingly, even trademarksthemselves, such as amazon.com.

By using existing trademarks for domainnames - sony.com, for example - businessesattract potential customers to their websites.


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gTLD

A generic top-level domain(gTLD) is one of the categoriesof top-level domains (TLDs) maintained by the InternetAssigned Numbers Authority (IANA) for use in the DomainName System of the Internet.

The core group of generic top-level domains consists of thecom, info, net, and orgdomains.

IANA currently distinguishes the following groups of top-level domains: infrastructure top-level domain (arpa)

country-code top-level domains (ccTLD) internationalized top-level domains (IDNs)

internationalized country code top-level domains

testing top-level domains


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What is the nature of the disputes?

Cybersquatting - pre-emptive registration oftrademarks by third parties as domain names.

Cybersquatting, is a crime against the laws andregulations of cyber law.

It can be defined as registering, trafficking in, or using adomain name with bad-faith i.e. mala fide intent tomake profit from the goodwill of a trademarkbelonging to someone else.

The cybersquatter then offers to sell the domain to theperson or company who owns a trademark containedwithin the name at an inflated price.


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How does the UDRP work?

UDRP (Uniform Domain Resolution Policy)

The UDRP permits complainants to file a case

with a resolution service provider, specifying:

the domain name in question,

the respondent or holder of the domain name,

the registrar with whom the domain name was

registered,

the grounds for the complaint.


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What factors guide the panelists'

decisions?

Whether the domain name is identical or

confusingly similar to a trademark or service

mark in which the complainant has rights.

Whether the respondent has any rights or

legitimate interestsin the domain name

Whether the domain name was registered and

is being used in bad faith


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Case Studies from Indian domain

(.in dispute resolution policy (INDRP)

Rediff.in Orkut.in

Internet.in

Computer.in


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Thank you

IPR Transaction & Website

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