H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 1 haryatideepak advocates & solicitors I trade mark agents IP In The Digital Economy 23rd February 2011 Deepak Pillai Partner Haryati Deepak

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 2 haryatideepak advocates & solicitors I trade mark agents Agenda Part A:IP & E-COMMERCE Part B:CREATING WEBSITE Part C:CHOOSING DOMAIN NAME Part D:PROTECTING YOUR WEBSITE

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 3 haryatideepak advocates & solicitors I trade mark agents PART A: IP & E-Commerce Impact of E-Commerce on IP Challenges Raised by the Impact of E-Commerce

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 4 haryatideepak advocates & solicitors I trade mark agents Impact Of E-Commerce On IP IP and Online Trade of Products and Services IP resides in the goods and services traded via e-commerce IP is the main component of value in the transaction e.g. music, pictures, photos, software, designs, training modules, systems, etc Value is destroyed by piracy IP and Digital Technologies The systems that allow the Internet to function - software, networks, designs, chips, routers and switches, the user interface, are all based on IP These are protected by IP rights

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 5 haryatideepak advocates & solicitors I trade mark agents Impact Of E-Commerce On IP IP and Online Branding Trademarks and domain names are fundamental parts of e-commerce Serves as your business identifiers, branding, customer recognition and goodwill More so than for traditional businesses IP and Business Value The valuation of businesses that are related to new digital technologies usually related to their IP Valuations affected by the level of protection they place on their patents, copyrights and trademarks

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 6 haryatideepak advocates & solicitors I trade mark agents Impact Of E-Commerce On IP Relevance of Patent Licensing in E-Commerce Patents may be relevant to e-commerce as well depending on what has been patented Important in the United States where software and business patents are recognised Web-based businesses may be reliant on patented technologies that they are licensed to use.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 7 haryatideepak advocates & solicitors I trade mark agents Challenges Raised By The Impact Of E-Commerce IP Protection in Software Online Contents Distribution Domain Name Issues

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 8 haryatideepak advocates & solicitors I trade mark agents IP Protection in Software Various aspects of software are protected by different heads / types of IP Copyright One of the most used forms of IP to protect the various components of a computer program Patent In Malaysia, software is (in most cases) not patentable; while in other countries inventions relating to software may be protected Trade Secret Source code of computer software can be protected as a trade secret Industrial Designs Certain features created by computer software may be protected in some countries as industrial designs, e.g. icons on a computer software

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 9 haryatideepak advocates & solicitors I trade mark agents Online Content Distribution Illegal Downloads Because of the ease with which digital files can be downloaded, unauthorized copying of content has been a major problem for owners causing massive financial loss Violate national laws of copyright Recent proposals by the Intellectual Property Corporation of Malaysia As an e-commerce business, keep in mind: Importance of protecting IP rights on the internet The need to obtain permission before usage of ANY third party content Employees need to know company policies on IP

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 10 haryatideepak advocates & solicitors I trade mark agents Online Contents Distribution - Case Study RIAA v Napster The first case filed against a P2P system operator Put international spotlight on unauthorized downloading of music files The claim was that Napster facilitated illegal copying by users of the system, not that Napster copied the files itself Lessons learnt: Make sure you have a clear policy against unauthorized copying of files, or any actions that encourage or facilitate such copying; Make sure that your employees do not gain access to or keep in their possession or on their systems any unauthorized copies of software or other content;

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 11 haryatideepak advocates & solicitors I trade mark agents Online Contents Distribution - Case Study Lessons learnt (continued): Make sure that all your employees know about the companys policies against misuse of IP Senior management should be responsible for reviewing company business practices on a regular basis to make sure that the policy is being followed. It is wise to assess situations in which a policy violation is found, to see if disciplinary action should be taken. Other cases: MGM Studios, Inc. v. Grokster, Ltd Australian Record Industry Association v. Kazaa

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 12 haryatideepak advocates & solicitors I trade mark agents Domain Name Issues Failure to make an informed choice when selecting a domain name Domain name may be available and registrable but may be in conflict with trademark rights or personality rights of a third party To take note of: IP laws vary from country to country. Which law is applicable may be in question especially when it involves parties from different countries. Enforcement of rights is tougher when IP rights are violated over the internet.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 13 haryatideepak advocates & solicitors I trade mark agents PART B: CREATING WEBSITE Outsourcing Website Development Web Developer Agreement – Salient Clauses Using Third Party Materials

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 14 haryatideepak advocates & solicitors I trade mark agents Outsourcing Website Development Developing a web presence would be critical in participating in the digital economy If your website is developed by your employees, the copyright over the website will usually belong to the employers However, it is questionable as to who owns the rights when the website is developed by an independent web developer or is otherwise outsourced The situation in most other jurisdictions v. The situation in Malaysia Underlines the importance to have written Web Developer Agreement Identifying who owns each element of the website To note the issue of cost

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 15 haryatideepak advocates & solicitors I trade mark agents Web Developer Agreement - Salient Clauses Matters to consider prior to contracting Clear, long term vision of market for your product or service The agreement entered needs to reflect the needs of your vision Scope of work Specifications of what is to be developed Scope of Developers Responsibilities Writing Program Code, Design and Appearance Registration of domain name by whom Whether consulting services provided Whether services include maintenance and updating of site

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 16 haryatideepak advocates & solicitors I trade mark agents Web Developer Agreement - Salient Clauses Ownership of Material Who owns IP rights in components created by Developer? e.g. computer code, graphics, text, website design, digital files used for creating site Who owns IP rights in material provided by you to Developer for use in website? Where the Developer owns IP rights, whether you have the right to sublicense, edit, etc.? Whos responsibility to get permission from third parties for their IP? Who owns the IP rights in the software which displays your website and related components? Can developer use the same designs as model and license the software (and related components) for others?

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 17 haryatideepak advocates & solicitors I trade mark agents Web Developer Agreement - Salient Clauses Warranties Each party should warrant that it owns or has permission to use any material that it provides for the website and that contents do not violate any law or regulation Maintenance and update Maintenance to include changes, updates, troubleshooting or repairs Level of maintenance and price terms Responsibilities of the Web Developer Actions upon service interruptions and break downs

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 18 haryatideepak advocates & solicitors I trade mark agents Web Developer Agreement - Salient Clauses Confidentiality Divulging confidential information about your business and giving access to your facilities Non-disclosure clause to protect you against unauthorized disclosure of your trade secrets Liability Who bears responsibility for links to other sites, designation of keywords and metatags? Whose liability in the event of any legal claims for infringement etc?

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 19 haryatideepak advocates & solicitors I trade mark agents Web Developer Agreement - Salient Clauses Other relevant clauses on : fees and payment timetable for delivery of website Indemnification disclaimers limitation of liability jurisdiction applicable law forum of dispute resolution

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 20 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials The internet makes it easy to reuse / copy the materials of others Films / television clips, music, graphics, photographs, software, text, etc The availability of these materials is does not give you the legal right to do so Should not use these materials unless you have the necessary consent License or an assignment Technical Tools If you are using any search engine or internet tool for your website, ensure you have a written license agreement before the installation of the site begins

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 21 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Software Shrink-Wrap License: Packaged software is often licensed to you upon purchase. The terms and conditions of the license are contained in the package, which is returnable if you do not agree. By opening the package, you are deemed to have accepted the terms of the Agreement. Click-Wrap License: The licensing agreement is included inside the packaged software or on the webpage from which you can install or download the software. Each time an end user install or download the software, he/she may have an option to agree to the license terms. In all cases, check the licensing agreement to find out what you may and may not do with the software you have bought

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 22 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Copyrighted Works General Written permission is usually needed for the use of any written material, photos, videos, music, logos, art work, cartoons, original databases, training manuals, drawings etc. in its original form or found from the internet. Collective Management Organization Written permission is usually needed for the use of any written material, photos, videos, music, logos, art work, cartoons, original databases, training manuals, drawings etc. in its original form or found from the internet. Moral Rights Ensure the authors name appears on the work and the work is not used or changed in a way that would damage the authors honour or reputation

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 23 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Photographs Care should be taken when using photographs on your website. Authorization needs to be obtained from the copyright owner of the photograph and the subject matter depicted in the photograph, if necessary. Public Domain Material Instead of tracking down copyright holders, an alternative to consider would be using materials that are in the public domain Sources range from libraries, collective management organisations to online portals that offer licenses for different types of works e.g. photos, backgrounds, logos Also called clipart, freeware, shareware, royalty-free, copy free

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 24 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Trademark When using others trademarks on the website, need to ensure usage does not create confusion as to sponsorships, endorsements etc. Permission needs to be obtained from the copyright owner, if the law requires so. Other likeliness In some countries, publicity and privacy laws are in place. Malaysia has the Personal Data Protection Act Before using any part of the copyright work, advisable to check the applicable laws and to request permission.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 25 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Other Potential Issues - Linking General Links that lead web users to sites containing legal content (e.g. pirated songs, unlawful software program etc.) may subject you to legal liability. Links that comprise of company logos may violate copyright, trademark or unfair competition laws. Permission may need to be obtained Deep Link Deep links means links that go straight to a specific page other than a websites home page. Deep linking is generally not allowed if it is a way of bypassing a subscription or payment mechanism, or if expressly forbidden by the site. Permission may need to be obtained. Framing Means displaying the contents of another persons website within a frame on your site leading to the impression that the information originates from your website.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 26 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Other Potential Issues - Metatagging Metatags are keywords or phrases embedded in a websites HTML code, which are invisible to the visitors of the website but are read by some search engines Instead of using terms that properly describe the site, some website developers place the names of competing companies in their metatags in order to gain internet traffic Deceptive use of another companys trademark in a metatag may constitute unfair competition or trademark

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 27 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Other Potential Issues - Personal Information Treatment Privacy laws or in the case of Malaysia, the Personal Data Protection Act 2010, may put limits and obligations on the collection, use and disclosure of personal information If your website collects consumer information such as names, addresses, addresses, gender and professions, be sure you protect the privacy of such information Also consider the need for training and supervision of all employees with access to such information

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 28 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Other Potential Issues - Terms and Conditions / Disclaimers Terms and Conditions If you sell products or services on your website, or allow users to download software, you may have specific agreements posted on your site that contain warranty information or disclaimers, limits on your liability etc Will the agreement be binding on users? How apparent are the terms and conditions? Is there an opportunity to opt out? Has the user indicated his acceptance of the same? Notices and Disclaimers Notices and disclaimers are rarely a cure-all for legal claims. However if your notice or disclaimer is prominently displayed and clearly written, it may limit or even prevent liability The notices and disclaimers should be tailored to fit the specifics of the website

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 29 haryatideepak advocates & solicitors I trade mark agents Using Third Party Materials Other Potential Issues - Marketing and Removing Infringing Material Marketing and Advertising Online If you place advertising on your site, ensure that comply with specific laws and regulations on advertising, content etc. Removing Infringing Material If someone complains about an unauthorized use of copyright materials, you should remove that material or disable the link pending resolution of dispute Continuing to utilise the disputed materials may aggravate the claims and increase the chances of being found liable

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 30 haryatideepak advocates & solicitors I trade mark agents PART C: CHOOSING A DOMAIN NAME Basics of domain names How to choose a domain name Practical considerations UDRP: Resolution of cybersquatitng disputes

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 31 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name Basics of Domain Names Introduction Every computer that is connected to the internet must have an IP (Internet Protocol) address The Domain Name System (DNS) has a database to link these numerical addresses on a one-to-one basis with unique mnemonic alphanumeric equivalents called Internet Domain Names Two Parts in Domain Name Top-level domain (TLD) - TLDs can be divided into two categories: the generic top-level domains (gTLDs) and the country code top-level domains (ccTLDs). Domain names may be registered in either a gTLD or in a ccTLD Second-level domain (SLD) - The section with the business/companys nam e

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 32 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name How to Choose a Domain Name Choosing the Top-Level Domain Some gTLDs have no restrictions on who can register them e.g..com,.info,.net and.org, depending on the entity Other gTLDs are restricted i.e. only entities meeting certain criteria may be registered under them, e.g..int for international organizations You may register a domain name under a ccTLD, which corresponds to a country, territory, or other geographic location and bears a two-letter country code e.g..my The rules and policies for acquiring domain names in the ccTLDs vary significantly from country to country You should take a careful look at the terms and conditions under which a registrar is offering ccTLD registration services

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 33 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name How to Choose a Domain Name Choosing a Good Second-Level Domain Select a domain name that is the same as or similar to your companys business or product name Choose a second-level domain that is distinctive of your business or products Never choose a domain that is the trademark of another company Avoid domain names that include controversial words Choose the most commercial suffix if you are selling your products or services Short domain names are generally the best as they are easier to pronounce, remember, spell and type into a browser

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 34 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name Case Study: Trademarks vs. Domain Names Trademarks and Domain Names systems are different, but in some situations may overlap, e.g. when a trade name and trademark is used as part of a second-level domain name Two identical trademarks may co-exist and be owned by different entities for identical products in separate geographical areas under relevant trademark laws Two identical or similar trademarks in different classes of goods or services can also co-exist in the same geographical area or country In contrast, the domain name system allows the use of one name by only one registrant

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 35 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name Case Study: Trademarks vs. Domain Names (continued) Unlike trademarks, domain name create a monopoly right on a name or word, independent of the goods or services offered on the website Two identical or similar trademarks in different classes of goods or services can also co-exist in the same geographical area or country In contrast, the domain name system allows the use of one name by only one registrant. Unlike trademarks, domain name create a monopoly right on a name or word, independent of the goods or services offered on the website.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 36 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name Practical Considerations Registration of Domain Name Anyone, whether an individual, organization, or company can register a domain name The duration of domain names are unlimited so long renewal or maintenance fees are paid, similar to trademarks Exposure of the Domain Name It is important to make your business sites presence felt in order to attract visitors Register the domain name with popular search engines Before registering the domain name with the search engines, understand the ranking system for different search engines

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 37 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name UDRP To protect trademark owners and domain name registrants, the Internet Corporation for Assigned Names and Numbers (ICANN), WIPO and national internet authorities have put in place certain measures for the protection of the interests or trademark owners. Abusive Registration Criteria: The domain name is identical or confusinglysimilar to the trademark in question; The trademark owner has a right or a legitimate interest in the domain name, and the domain registrant does not; and The registrant registered or is using the domain in bad faith

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 38 haryatideepak advocates & solicitors I trade mark agents Choosing A Domain Name Case Study: UDRP Procedure The filing of a Complaint with an ICANN-accredited dispute resolution service provider chosen by the Complaint, such as the WIPO Center; The filing of a Response by the person or entity against whom the Complaint was made; The appointment by the chosen dispute resolution service provider of an Administrative Panel of one or three persons who will decide the dispute; The issuance of the Administrative Panels decision and the notification to all relevant parties; and The implementation of the Administrative Panels decision by the registrars concerned should there be a decision that the domain names in question be cancelled or transferred.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 39 haryatideepak advocates & solicitors I trade mark agents

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 40 haryatideepak advocates & solicitors I trade mark agents

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 41 haryatideepak advocates & solicitors I trade mark agents

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 42 haryatideepak advocates & solicitors I trade mark agents PART D: HOW TO PROTECT YOUR WEBSITE What elements of your website can be protected How to protect your website Take action against violations

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 43 haryatideepak advocates & solicitors I trade mark agents How To Protect Your Website Elements Of Websites That Can Be ProtectedHow Protected New Technologies Systems, Search Engines, Technical Internet ToolsPatent / Utility Models SoftwareCopyright Website DesignCopyright Creative Website Design – Written Material, Photographs, Graphics, Music and Videos Copyright DatabasesCopyright Business names, logos, product names, domain names and other signs posted on websites Trademarks Computer-generated graphic symbols, screen displays, graphic user interfaces (GUIs) and webpages Industrial Design Law Graphic Symbols – Confidential Graphics, Source Code, Object Code, Algorithms, Programs or other Technical Descriptions, Data Flow Charts, Logic Flow Charts, User Manuals, Data Structures and Database Contents Trade Secret Law

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 44 haryatideepak advocates & solicitors I trade mark agents How To Protect Your Website Protecting your IP Rights Register your Trademarks Register a domain name that is user-friendly and reflects the trademark, business name or character of your business Register your website and copyright material with the national copyright office (in countries which provide this option); To think about patenting online business methods, in countries where such protection is available

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 45 haryatideepak advocates & solicitors I trade mark agents How To Protect Your Website Letting People Know Content is Protected Mark your trademarks with trademark symbols Use the copyright notice Use watermarks with embed copyright information into digital content itself. Give notice to the public that your website or business method is patented. Letting people know what use they can make of the content what can they do with the page who to contact to get a copyright clearance in relation to any material on your site.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 46 haryatideepak advocates & solicitors I trade mark agents How To Protect Your Website Detecting Infringements of your Website To detect infringements, you may take random snippets of text or images from your site and search for the snippets or images using search engines like Google and for images by entering the graphics file name. Spider programs can also search the internet for copies of your pages or graphics and illegal use of your trademarks.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 47 haryatideepak advocates & solicitors I trade mark agents How To Protect Your Website Taking Actions Against Violations Make screen shots or prints of all relevant pages, and print source code from the infringing website Be sure you can prove that your website content is original and that you have owned it for a longer period of time than the infringing website Send a cease and desist letter to the owner of the infringing website asking to take your material off their website If the owner does not respond, you may: send a notice of infringement to any search engine where the infringing site is listed and demand that they remove any links to the infringing site; and send a notice of infringement to the website hosting company or internet service provider (ISP) and demand that the infringing site be removed from the server where it is hosted.

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 48 haryatideepak advocates & solicitors I trade mark agents Conclusion Recap: IP & E-Commerce Creating website Choosing domain name Protecting your website Quiz

H A R Y A T I D E E P A K A D V O C A T E S & S O L I C I T O R S § T R A D E M A R K A G E N T S 49 haryatideepak advocates & solicitors I trade mark agents Thank You Deepak Pillai Messrs Haryati Deepak Advocates & Solicitors Unit L-5-3A, Solaris Mont Kiara No. 2 Jalan Solaris Kuala Lumpur Tel: Fax: Web: