WIPO-NIFT “TRAINING THE TRAINERS” WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS New Delhi, June 20 to 24, 2005

2 Intellectual Property and E-commerce: Protecting Your Website Lien Verbauwhede Consultant, SMEs Division World Intellectual Property Organization (WIPO)

3 1. Introduction

4 Website can be great tool for promoting business online and for generating sales Potential benefits: –Marketing and information tool –Expose works to worldwide market rather than local shoppers –Sell directly online  bypass/reduce transportation and transaction costs –Minimize need for middlemen

5 Two possibilities: Using your own website Using someone else’s website * Goodwill * Business model, infrastructure *  Administration

6 Example - Online sale of fabrics Utsavsarees.com Utsav Sarees: retail, wholesale, manufacture and export of Indian Sarees, Salwar kameez and lehenga cholis Vast warehouse in Jaipur: stock > designs and patterns Utsavsarees.com leverages the power of the Utsav Sarees brand to offer fabrics online Gives customers easy way to find precisely the sarees they are looking for

7 Search engine: to locate sarees, salwar kameez or lehengas by color, fabric, embroidery work, print or design Catalog browser: lets users sift through hundreds of catalogs to find exactly the right article Shopping cart: shows you all the items you've collected during a particular shopping session

8 Ordering: –select the products, click on “Proceed to CHECKOUT” button –enter address, create account – confirming each order Shipping: to virtually any address in the world in 3-5 days. ‘Same Day Delivery’ to Jaipur at no extra charge Order Information and Status History: to review status of your order(s) Life chatting

9 Example - Online sale of designs Dakota Collectibles 1988: twin brothers, embroiders Recognized need for a large variety of stock embroidery designs high in quality, reasonably priced, and that could be delivered quickly Dakota Collectibles became the first to enter the large-volume stock design supplier market.

10 Over 20,000 stock embroidery designs available Browse by category Buy per design, package, catalog, workbook, CD, etc. Embroidery showcase: examples of items embroidered with designs from Dakota Collectibles

11 Custom embroidery: embroidery pattern on demand based on a logo, drawing, photograph, etc. Letterhead icon Business card Advertising brochure Photograph

12 Other products: software program to manipulate and customize your designs; marketing guides Information: sewing suggestions, trade shows, links to machine manufacturers and trade associations, etc

13 2. How to take care of your business’ website

14 (a) What elements of your website can be protected? –Software  trade secrets + copyright and/or patent –Business methods  patent –Website design  copyright –Creative content  copyright –Databases  copyright/sui generis –Business names, logos, domain names  trademarks –Computer-generated graphic symbols, screen displays, graphic user interfaces, web pages  industrial design/copyright –Confidential business information  trade secrets

15 (b) How to protect your website? 1. Protect your IP rights Register trademarks Register domain name (+ as TM) Think about patenting online business methods, in countries where possible (not India) Register website and copyright material Precautions about disclosure of trade secrets Consider IP insurance policy

16 2. Let people know that the content is protected –“Patent” –Trademark symbol: ®, TM, SM –Copyright notice: © + name + year –Watermark (visible + invisible) –Time stamp Example: Utsav Sarees ©

17 3. Let people know what use they can make –Copyright statement or legal notice: terms of use

18 Example: Dakota Collectibles’ LEGAL NOTICE Dakota Collectibles copyrights its artwork. The copyrights cover all the designs displayed in its catalogs, flyers, home embroidery collections, all promotional advertising, this website and the design software which reproduces those designs. Dakota Collectibles is prosecuting copyright infringements […]. You cannot copy Dakota Collectibles' artwork or design software, by any means, such as, for example, scanning, photocopies, or electronic transfer. […]. When you purchase a Dakota Collectibles' stock embroidery design, you only obtain a license to embroider that design on fabric at one location. Buying, selling, trading, sharing or copying our artwork or design software is a violation of copyright law. […]. Making a copy, by any means, of Dakota Collectibles' artwork or design software is a violation of copyright law. […]. See:

19 4. Control access and use of website content Interest, e.g. if you sell fabric designs online Technological protection measures limit access to works on website only to visitors who accept conditions and/or have paid for such use  Online agreements  Encryption  Access control or conditional access systems  Releasing versions of insufficient quality

20 5.Detect violations Random snippets of text / graphics Spider programs Fingerprints 6.Take actions against violations 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

21 (c) Can you use material owned by others on your website? –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!

22 1. Using technical tools owned by others E-commerce system, search engine, other technical Internet tool  written license agreement 2. Using software owned by others License Shrink-wrap license (packaged software)

23 3. Using copyright works owned by others Photos, videos, graphics, music, software, buildings, clips, text, paintings, images, etc Written permission (license) Even just a part of a work Material stored on the Internet is protected! Free uses/fair use Clipart, freeware Finding the copyright owner –Collective Management Organization Don’t forget the moral rights

24 4. Using photographs owned by others Permission from copyright owner Permission to use subject matter? –Building (architect) –Artwork (artist) –Image of person (publicity and privacy rights)

25 5. Using works in public domain Where to find: –libraries –national archives –collective management organizations –online portals George Castaldo L. da Vinci Botero Warhol

26 6. Using freeware Software Images (e.g. Artwork, photos (e.g. creativecommons.org) Backgrounds, wallpapers Embroidery designs, fabric designs Etc

27 Free embroidery designs Do not assume that you can use freeware without limitation Often certain conditions –e.g. not allowed to change the designs –e.g. required that some type of credit is given to the designer –e.g. use for non-commercial purposes only

28 6. Using trademarks owned by others Identifying competitor’s products is all right Don’t use trademarks that might cause confusion Beware of using trademarks in –metatagging –linking NIFTNIFT –framing –domain names niftindia.com/

29 LINKING The 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 story about a 'council cock-up', browsers could be passed on to the rival Times site and read their copy.

30 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.

31 “visit “visit Utsavsarees.com”ees.com” linking framing

32 (d) Who owns IP rights in your website? –Typical website is collage of components owned by different persons navigation software photographs, graphics, text design etc FIND OUT WHAT YOU OWN WHAT YOU HAVE RIGHTS TO USE AND IN WHAT WAY !

33 –Website developed by your employees who are employed for this purpose INDIA : copyright < employer (unless otherwise agreed) OTHER COUNTRIES: different rules

34 –Website developed by freelance web developer INDIA : copyright < author (unless otherwise agreed) OTHER COUNTRIES: different rules “I paid for it, so I own it” is not always true !

35 (e) What to keep in mind when negotiating a web development agreement? –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?

36 –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

37 (f) What to keep in mind when creating your website? 1.Linking –illegal content –logo –deep links –framing 2.Metatagging 3.Domain name

38 4.People’s personal data Data protection laws & privacy laws (esp. E.U.) Privacy policy 5.Online agreement: enforceable? Person must agree to the terms Terms must be reasonable apparent Mechanism to indicate assent Click-wrap agreement

39 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

40 9.Other legal issues: Advertising Marketing practices (comparative advertising, unsolicited s, discount schemes, etc) Distance selling regulations Regulations to protect children Tax regulations Jurisdiction, applicable law Dispute resolution Etc.

41 3. Conclusions

42 The Internet provides totally new opportunities for promoting your business 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

43 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

44 Thank you ! Lien Verbauwhede Thank you ! Lien Verbauwhede