Intellectual Property and the internet

2.0 IPR and Legal Terms

Although all elements of IPR do not relate directly to web design it is important to know their meanings in relation to each other. The terms below are stated in order of relevance to online design practice.

2.1 Copyright

Copyright exists as soon as something has been recorded and regardless of the material the idea is recorded upon; hence content on the Internet falls under copyright. Any website’s copyright when designed at RBI is not held by the designers, but by the company or the ‘commissioner’. Where it is ‘…created by an entity other than an individual’ the term lasts ’95 years from first publication’.1

It is also important to note that ‘…copyright protects the form in which a work is expressed but not the underlying ideas or information in the work.’2This ensures ideas are freely available to the public and that copyright law will only protect the expression of these ideas.

The typical term for protection in UK law is the life term of the author plus fifty years from the publication or making of the creation. Unlike other elements of IPR no registration needs to take place, copyright is an unregistered right.

Protection is automatic though displaying of the work with the international copyright symbol ‘©’, the name of the owner and a date of publication (or creation). This is accepted as good legal practice as this gives notice in countries (other than the UK) of the owner’s claim on copyright.

2.2 Trade Marks

‘… a trade mark is a badge of origin, used so that customers can recognise the product of a particular trader.’ 3

A trademark has to be ‘distinctive’ in its design and not similar to other goods and services of a similar nature. Logos are an obvious use of trademarks on websites.

2.3 Patents

Patents are ‘…concerned with how things work, what they do, how they do it, what they are made of or how they are made.’ 4

They are specific to the country of registration and are concerned with inventions that can be produced in an industrial context. To fulfil the twenty year lifespan the patent must be renewed every year. Patents have been granted to software and e-commerce models as was seen with Amazon’s one-click system in 1999.5

2.4 Registered Designs

Registered design ‘…is a monopoly right for the appearance of the product resulting from the features of the lines, contours, colours, shape, texture and materials’.6

Registration can last for a maximum of twenty five years and is similar to patents in that the ownership can be sold on to a third party.

2.5 Design Rights

Design rights only apply to designs that ‘…must be the shape or configuration of a product.’⁶7 They can not be two dimensional or commonplace, and so not relevant to web practice. Protection lasts from fifteen years upon creation and ten years after the design is first marketed.

2.6 Fair Dealing

Fair dealing is the use of copyright material without the need for a license, for study, research or news reporting. It is also considered excempt from copyright law if it is seen to be in the public interest.8

2.7 Passing Off

‘Passing off’ is where an unregistered mark is used by persons who are using the mark by passing them off as the goods or services of their own. If the mark is registered prosecution can occur.9

2.8 Breach of Confidence

A claim will arise where ‘…there has been an unauthorised use of the information to the detriment of the owner’ 10 i.e. intellectual property has been made available in confidence and has been published against the wish of the owner

3. IPR and the Internet

Pages on the internet are published works that fall under the literary part of copyright law. However, the early part of this decade has seen a rise in the copying of material, music and video as well as images and text, which in turn has resulted in more laws controlling how intellectual property is protected online.

As the internet is global, it needs a global controlling body. The World Intellectual Property Organisation (WIPO) is a UN financed office that deals with issues of IPR online, whilst the Berne Convention11still forms the basis for international copyright law, a treaty which is contracted to by 159 countries who enforce it. These countries are signatories to the same union recognized by the International Court of Justice, so an infringer will be liable to prosecution in the same way, regardless of where the infringement takes place.

A new website or online design benefits from the same protection in other WIPO states as it does in the UK. Furthermore, the WIPO Arbitration and Mediation centre works with the Internet Corporation for Assigned Names and Numbers (ICANN) to prevent ‘cyber squatting’. That is the purchasing of domain names for profitable gain but not for actual use. For a new web project a site can claim against those who have taken a web domain name, that is a trademark or their own name. 12

To combat online piracy the WIPO initiated the Copyright Treaty and the Performances and Phonographs in 1996. This formed the basis for the US to impliment the Digital Millenium Copyright Act (DMCA) in 1998. 13This act helped mark the end of peer to peer file sharing programs e.g. Napster and Grokster14 that made profits from allowing users to swap copyright material over the internet. The US Supreme Court ruled that these services are secondary infringers and can be prosecuted. This has seen a capitulation by software companies to either provide licensed use (with monies going to copyright owners) or close their operations.

In the same way, the European Community Copyright Directive has adopted the WIPO treaty allowing exclusive rights such as ownership, reproduction of works and to permitting temporary caching of files for normal internet use. This is a case of fair dealing as this is a necessity to any browser of web pages.15

Where a site infringes copyright, Notice and Take Down (NTD) can be enforced although more immediate action is taken where offensive views or images are hosted. The Internet Sevice Providers (ISP) share this responsibility which is another initiative enforced by the WIPO. Whilst NTD is another case of secondary infringement, the law is designed to protect the ISPs if they envoke NTD on the WIPO’s behalfs.16

4. Enforcing IPR

The factors above all relate to my design practice and are important in that they impact on the success of our websites, by protecting our data and designs. The company I work for, Reed Business Information (RBI), owned by Reed Elsevier (RE), was involved in litigation and this case highlights other areas that internet IPR touches upon – trademark infringement and passing off.

In 1999 RBI launched a website called totaljobs.com, an online jobs board allowing subscribers to see posted jobs and be notified of relevent positions by email, Reed Executive, who own the high street employment agency Reed Employment (now branded Reed) took exception to the site using the names and logos of RBI and RE and the word ‘Reed’ in the copyright notice. They claimed ‘passing off’ trademark infringement on their name under the Trade Marks Act 1994. Further, they were opposed to a contractual agreement between the search engine Yahoo! and RE about displaying totaljobs.com banners when users searched under the terms “recruitment” and “jobs”. However Yahoo! also gave RBI a free listing under the term “Reed”. This act led to the judge ruling that he had found ‘passing off’ and infringement in the first instance.

In 2002 the case went to appeal where Lord Justice Jacob reversed the ruling:

“Reed Elsevier’s signs were not identical to REED, but merely similar”17. Figures 1- 3 illustrate this point below.

^{Fig 2. Reed Elsevier logo, 1999}

^{Fig 1. Reed Employment
logo}

^{Fig 3. Reed Business Information logo, 1999}

Article 5.1(a) of the Trade Marks Directive18 states that there needs to be both an aural and visual identity for infringement to qualify. It was also found that “own name defence” was available to RE and no significant deception was caused to the customer.

In passing off it was found that the two companies’ services were not identical. Reed was an employment agency where as totaljobs.com was a jobs board that merely presented information to the customer.

On banner use in search engines LJ Jacob said;

“I cannot see that causing the un-arguably inoffensive-in-itself banner to appear on a search under the name “Reed” or “Reed Jobs” can amount to infringement”19 (See figure 4 below).

^{Fig.4 Typical banner as appearing 2000-2002}

Using trademarks in meta tags (which search engines read to rank pages) was not an infringement as these pages were read by computers and not people. In this case RBI appeared higher in the rankings even when Reed was searched on, a fact that in the judge’s opinion was only fair competition. Hence, listing competitors in your metatags is not an infringement on their trademark.

This case illustrates the different aspects of IPR in one specific online product. It shows the importance of knowing the mix of IPR when launching a product, who your competition is and if you are controvening their rights on trademark or copyright. If the RE legal team had looked at the trademark’s register before the totaljobs project commenced it would have been much more aware of the risk of infringement and litigation.

Even the large respected company Google is being sued for copyright infringement. Their ambitious plan of ;"…organising the world's information and making it more universally accessible and useful" by scanning numerous books from University libraries, has upset the Authors Guild who see it as a “ …plain and brazen violation of copyright law.”20

5. Conclusion

IPR, particularly copyright and trademark law, is likely to become even more important as more people from more nations use the internet. It will be no surprise if severe criminal punishments will begin as the levels of infringement rise.

In the digital age copying of material is easier and faster than ever before. Policing this is difficult and requires a global effort from numerous nations to ensure effective laws can be enforced as quickly as possible. It requires international partnerships, such as the WIPO, and groups within industries, to stop piracy. Logically, the global legal framework is applied to the global medium of the Internet. An escalation from a civil misdemeanour to a criminal act is viewed as a deterrant to pirates and infringers. The threat of punishment for information theft must be backed up by prosecution in order for this to be effective (as was seen in the Totaljobs court case).

The courts use experience and case findings to establish an environment of legal stability and consistency when confronted with new types of illegal activity. As long as the law has the power to enforce and adapt quickly, on a global and local level, the copyright, trademark or patent owner will enjoy protection. It is prosecution that will force pirates and infringers to cease activities.

The laws protecting online designs are the same as for other media. However, because the design is instantly global, knowing your IPR is fundamental for survival and protection.

6. Bibliography

"Law and the Internet - Regulating Cyberspace"

Copyright and the Internet by Hector L MacQueen

http://www.law.ed.ac.uk/it&law/ch5_main.htm

An Overview of Internet Law

www.legal-databse.com - laws in detail (US based)

http://www.legal-database.com/internetlaw.htm

Internet and Copyright:

An Introduction to Caching, Linking and Framing by P. Eve Athanasekou

http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1998_2/athanasekou/

Arts and Humanities Data Services - compendium of main types of infringement that can occur

http://ahds.ac.uk/copyrightfaq.htm

http://benedict.com/

Brad Templeton Blog

Covers issues related to copyright and USENET/Internet publication.

http://www.templetons.com/brad/copymyths.html

Index page of links relating to sites commenting on copyright and the net

http://www.ariadne.ac.uk/issue5/copyright/

Web plagiarism search engine

http://www.copyscape.com/

http://www.opsi.gov.uk/cgi-bin/htm_hl.pl?DB=opsi&STEMMER=en&WORDS=copyright+&COLOUR=Red&STYLE=s&URL=http://www.opsi.gov.uk/si/si2003/20032498.htm#muscat_highlighter_first_match

Trademarks Act 1994 – UK Government

http://www.opsi.gov.uk/acts/acts1994/Ukpga_19940026_en_1.htm

Reed vs Reed – Jenkins law firm

http://www.jenkins-ip.com/mym/autumn2004/item_11.htm -

Reed vs Reed – Bird & Bird law firm

http://www.twobirds.com/english/publications/casereports/TM_Cases_March_2004.cfm

Reed vs Reed – Semple Fraser law firm

http://www.semplefraser.co.uk/index.php?s=50&c=180&p=918

World Intellectual Property Organisation website

http://www.wipo.int/portal/index.html.en

The Register

Peer to peer software and their decline

http://www.theregister.co.uk/2005/09/22/p2p_crisis/

Parliamentary Office of Science and Technology

White paper on copyright and the Internet

http://www.parliament.uk/post/pn185.pdf

Reed vs Reed – SJ Berwin Intellectual Property bulletin.

http://www.sjberwin.com/media/pdf/publications/ipbulletin/0304.pdf

Links and Law: Myths

Tim Berhners Lee, 2002/07

http://www.w3.org/DesignIssues/LinkMyths.html

2 Gerald Dworkin & Richard D. Taylor, Blackstone’s Guide to the Copyright, Designs & Patents Act 1988, Blackstone Press, p.g 4

3 UK Patents Office, Definition of a Trademark, URL: http://www.patent.gov.uk/tm/whatis/definition.htm [9th October]

4 UK Patents Office, Definition of a Patent, URL: http://www.patent.gov.uk/patent/whatis/definition.htm [9^th October]

6 UK Patents Office, Definition of Design URL:

http://www.patent.gov.uk/design/definition.htm [9th October]

7 UK Patents Office, Definition of Design Right URL:

http://www.patent.gov.uk/design/indetail/designright.htm [9th October]

8 Gerald Dworkin & Richard D. Taylor, Blackstone’s Guide to the Copyright, Designs & Patents Act 1988, Blackstone Press, p.g 71

11 World Intellectual Property Organisation, Berne Treaty, URL : http://www.wipo.int/treaties/en/ip/berne/trtdocs_wo001.html [22nd October]

12 The Uniform Domain Name Dispute Resolution Policy (UDRP), ICANN URL: http://www.icann.org/dndr/udrp/policy.htm [19th October]

13 US Copyright Office, DMCA Legislation, URL:

http://www.copyright.gov/legislation/dmca.pdf [12th October]

14 US Copyright Office, Protecting Copyright and Innovation in a Post-Grokster world, URL: http://www.copyright.gov/docs/regstat092805.html [15th October]

15 Internet and Copyright:

An Introduction to Caching, Linking and Framing by P. Eve Athanasekou URL:

http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1998_2/athanasekou/ [14^th October]

19 British and Irish Legal Information Institute, England and Wales Court of Appeal, URL: http://www.bailii.org/ew/cases/EWCA/Civ/2004/159.html [4th October]

1. Introduction