1 drt 6455 eCommerce Law lesson 7 – IT and Intellectual Property (part 2) associate professor faculty of law university of montreal university of montreal chair in e-Security and e-Business law

2 Trademark law 1. Fundaments behind trademark law 2.Domain names and trademark law 3.Metatags usage 4.Patent and business methods (not treat)

3 1 – Trademark law Part of Intellectual Property… But nothing to see with intellectual EX: EXXON case (no copyright even if $$$$ - lack of originality) –« "The protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants » Juge Frankfurter dans Mishawaka Rubber & WoollenManufacturing c. S.S. Kresge, (1941) 316 U.S. 203.

4 Trademark law Part of Intellectual Property… But may be different from property Be careful with the term « property » TRUE sale, licence, transmission if bankruptcy, etc… FALSE –not totally forbidden (EX: quotation in a book) –Generic expression (frigidaire) –No more usage by the owner –Confusion usage –Unfair usage

5 Trademark law "ipso jure" protection (no need of mean rea - intention) 15 Years protection (may be renew) (art. 46) Protection may be associate with Name Symbol Logo Color Odor (but …) Noise (but…) Under exception… need to be registered (different from copyright)

6 2 – Domain names ICANN and WIPO (April 30, 1999) CIRA

7 According to Paragraph 4(a) of the UDRP Policy, the UDRP Administrative Procedure is only available for disputes concerning an alleged abusive registration of a domain name; that is, which meet the following criteria: (i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and (ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and (iii) the domain name has been registered and is being used in bad faith

8 Paragraph 4(b) of the UDRP Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name: (i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name; or (ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or (iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.

9 Domain names Few cases Jeanette Winterson caseJeanette Winterson Julia Roberts caseJulia Roberts Springsteen caseSpringsteen

metatag « A Meta-Tag is a special type of HTML code that provides identification information about a particular Web page. Unlike normal HTML code, a Meta-Tag does not affect how the Web page is displayed. Instead, the Meta-Tag simply provides information that will allow search engines to locate the particular Web page. Typical Meta-Tag information includes who created the page, how often it is updated, what the page is about, and perhaps most importantly the keywords that represent the Web page's content. »

11 metatag SITE À MOI <META name="description" content="Everything you wanted to know about stamps, from prices to history.">

12 metatag american jurisprudence Brookfield Communications c. West Coast Entertainment, (1999) 174 F. 3d 1036 Brookfield possess « MovieBuff » TM WCE possess DNwww.moviebuff.com Analysis of the confusion principle in Trademark law »Similarity »Proximity of activities »Reputation of Brookfield TM »Need of distinction for consumer »Intention of WCE But different treatement for metatags »Consumer is able to do the distinction »WCE URL ( is available in frontpagewww.wce.com

13 metatag american jurisprudence Idem Niton c. Radiation Monitoring (1998 ) Playboy Enterprises c. Asiafocus International (1998) (3 millions $US) Playboy Enterprises c. Welles, (1998) No possible confusion possible Fair Use Defense Terry Welles may be identified with playboy name.