WIPO update - Intellectual Property Issues in the Digital Agenda Lucinda Jones World Intellectual Property Organization International Conference on the Legal Aspects of an E-Ecommerce Transaction The Hague October 26, 2004

Overview u WIPO Digital Agenda u WIPO Internet Treaties u WIPO Recommendation on Trademarks on the Internet u Domain name dispute resolution

Emerging IP Issues u Trademarks –metatags, framing, deep linking –cybersquatting u Patents –patentable subject matter (hyperlinks), business method patents u Copyright –digital music and filmdistribution F peer-to-peer file sharing via MP3, Napster, F peer-to-peer file sharing via MP3, Napster, KaZaa F new legal subscription services (itunes, MusicNet, Emusic.com) –secondary liability of ISPs for copyright infringement –database protection

WIPO Digital Agenda 2.Entry into force of the WCT and the WPPT before December Promote adjustment of the international legislative framework to facilitate electronic commerce through: F extension of principles of WPPT to audiovisual performances F adaptation of broadcasters’ rights to the digital era F progress towards possible international instrument on protection of databases

WIPO Digital Agenda Implement the recommendations of the Report of the WIPO Domain Name Process and pursue the achievement of compatibility between identifiers in the real and virtual worlds through the establishment of rules for mutual respect and the elimination of contradictions between the domain name system and intellectual property rights

Development of legislative framework u WIPO ‘Internet Treaties’ u Audiovisual performers’ rights u Protection of broadcasting organizations

WIPO Internet Treaties u uWIPO Copyright Treaty (WCT)  in force March 6, 2002  48 States ratified or acceded u uWIPO Performances and Phonograms Treaty (WPPT)  in force May 20, 2002  44 States ratified or acceded  ensure that rightsholders control dissemination of protected material over Internet, including right to make available ‘on demand’

Internet Treaties - digital agenda u Right of reproduction –temporary reproduction u Right of making available u Limitations and exceptions u Technological measures u Rights management information u General update –computer programs –databases –distribution and rental –enforcement –economic and moral rights for performers –economic rights for producers of phonograms

Trademarks on the Internet u Use of trademarks on the Internet –commercial use on the Internet –extension of offline branding strategies to Internet –‘passive’ websites (advertising) –‘interactive’ websites such as mail order (e.g., Amazon) –direct delivery of goods or services (e.g., Yahoo) –use in Internet addresses/domain names u Problems: –trademarks are territorially limited whereas the Internet is a global medium –specialty and territoriality

WIPO activities - trademarks on the Internet u WIPO Internet Domain Name Processes u WIPO Joint Recommendation Concerning the Protection of Marks, and other Industrial Property Rights in Signs, on the Internet –adopted by Member States in September 2001 –‘soft law’ persuasive authority –needs implementation in national laws –no specific trademark law for the Internet –facilitates application of existing laws to the use of signs on the Internet

WIPO Joint Recommendation u Problem areas: –how to allow coexistence of conflicting rights on the Internet –territorial rights on a global Internet –territorial scope of court decisions –predictability of legal consequences for use of a sign on the Internet

Trademark use in a country? u Use of a sign on the Internet is use in a country only if that use has a commercial effect in that country (Article 2) u Non-exhaustive list of factors for determining commercial effect, such as –serving customers in a Member State –prices indicated in currency –indication of address –domain name registered in a ccTLD –language of site

Infringing use in the country of protection? u Use of a sign on the Internet is infringing use in the country where the conflicting trademark right is protected only if that use has a commercial effect in that country (Article 6) –disclaimer is one factor among others for determining (lack of) commercial effect

Conflicts between legitimate rightsholders u ‘Coexistence’ - same trademark can be held by different people in different countries (territoriality) u conflict of mutually exclusive rights on the Internet u conflicting court decisions - solution? u Notice and avoidance of conflict procedure –after notification, no liability for infringement of trademark rights if (Article 10) if F user informs other rightsholder of details of his right F takes expeditious measures to avoid commercial effect

Measures to avoid commercial effect u A ‘sufficient measure’ for avoiding conflict (Article 12): –statement not to deliver goods/services in the country where conflicting right is protected (language of website) –asking where customers are located before delivery –refusing to deliver to customers indicating they are based in country where conflicting right is protected –no obligation to verify

Domain name /trademark conflicts u First WIPO Internet domain name process –addressed conflicts between trademarks/domain names F domain names are unique and commercially valuable F domain names are global and for all purposes F domain names assigned first-come, first-served without examination vs. trademarks F an Internet Protocol address used like a trademark F trademarks are an easy target for cybersquatters –limited options for dispute resolution

Domain name dispute resolution u Uniform Domain Name Dispute Resolution Policy (UDRP) –adopted by ICANN in December 1999 –applicable to gTLDs (.com,.net,.org) F including new gTLDs (.aero,.biz,.coop,.info,.museum,.name,.pro) F can be adopted by ccTLDs –contractual basis via registration agreements –‘administrative procedure’ retains recourse to courts F very few court cases < 1% of UDRP decisions

UDRP characteristics u Scope –clear criteria F domain name identical or confusingly similar to a trademark F no right or legitimate interest F bad faith registration and use u Remedies –decision within 14 days, published online –cancellation or transfer (unless court proceedings within 10 days) –possible without intervention by enforcement authorities –no monetary damages

Outstanding domain name issues u Second WIPO Internet domain name process –International Nonproprietary Names (INNs) –geographical indications –personal names –trade names –names and acronyms of international organizations u WIPO General Assembly recommended.. –providing protection for names and acronyms of IGOs and country names –transmitted to ICANN in February 2003, under consideration by ICANN working group

WIPO Arbitration and Mediation Center u WIPO Arbitration and Mediation Center –22,000 cases (UDRP, ccTLDs, new gTLDs) –6,500 cases under UDRP, covering 10,000 domain names and parties from 119 different countries –of which 96.5% resolved –82.9% in favor of complainant –350 domain name panelists, experts from 50 countries u Procedures –established procedural framework for dispute administration –model complaint and response used as standard

Domain name cases u Sample cases filed in 2004: –federalrepublicofgermany.biz, harrybelafonte.com, ryder2004.com, iso9000standards.com, nikondigital.com, cajamadrid.com, delete-yahoo.com, felschlössli.ch –e.g., 108 domain names transferred to Ticketmaster Corporation –e.g., spikelee.com - common law trademark, respondent’s use of name for a pornographic site was in bad faith

Domain name cases... u Country code top level domains (ccTLDs) –43 countries designated WIPO Center to provide dispute resolution services –205 cases by August 2004 –.eu to be launched in 2005 u ‘Internationalized’ domain names –42 cases involving domain names in non-Roman (non- ASCII) scripts such as Arabic, Chinese or Cyrillic –cases conducted in 11 different languages u Index of 6,000 WIPO Center decisions –searchable via factual and legal search terms

Future issues…. u Exceptions and limitations (‘copyright balance’) u DRM and private copying levies u Collaborative creativity u Copyright and economic development u Licensing models for software u Peer-to-peer file sharing u Liability of Internet intermediaries (notice and takedown) u New business models for exploitation of copyright

Thank you Thank you arbiter.wipo.int Lucinda Jones