1. Dubai 21 December 2010 Intellectual Property in the digital economy Ana Ramalho Researcher IViR – Institute for Information Law University of Amsterdam WIPO – Training of Trainers Program

2. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Outline: IP and e-commerce Creating a website Choosing a domain name Protecting a website

3. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website What is the impact of e-commerce on IP? ©2008 Miguel Angel Todaro

4. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Online trade: IP as an asset in online transactions Source: Anfibia Agencia Digital

5. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Digital technologies: IP as a tool to develop digital technologies Source: Rural Network Services

6. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Online branding: IP as your identity on the Internet  Trademarks  Domain names  websites Source: JosephSpencer.com

7. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Patent licensing: an important tool for e- businesses Source: Idea Buyer

8. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website What are the challenges raised by the impact of e-commerce?

9. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Protection of software: different IP rights may protect different aspects of software Source: Espaço da Vaninha Copyright: object code, literal components Patent: new technical contributions Designs: graphic user interfaces, icons Trade secrets: source code

10. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Online content distribution  Ease of upload, download and copying -» illegal uploading and downloading of copyright materials

11. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website As an e-commerce business:  Protect your IP on the Internet  Never distribute or permit downloads of content which does not belong to your company  Implement programs, policies and guidelines which ensure that your employees understand IP related matters.

12. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Jurisdiction and applicable law  “World wide web” = international element  Which court has jurisdiction over e- commerce disputes?  Which law applies?

13. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Enforcement  Finding the infringer  Enforcing IP rights that are violated on the Internet  Enforcing your IP rights internationally

14. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Domain name issues  DN must be available  Conflicts of domain name with third parties’ trademarks or personality rights

15. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Outsourcing website development Different elements of the website protected by IP rights:  Website design (layout)  Website elements: - images, texts, photos, logos, trademarks, software, databases, music - computer generated symbols, graphic user interfaces  Hidden components (source code, algorithms)

16. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Clarifying ownership Elements existed before the website: - Owned by you - Owned by the developer - Owned by third parties Elements created specially for the website: ascertain the ownership: -Employer/employee -Company/outside contractor

17. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Written contract: elements to be included  Scope of work  Ownership of the material used and developed  Warranties  Maintenance and update  Confidentiality  Liability and disclaimers  Fees and payments  Jurisdiction and applicable law

18. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Using material owned by others General rule: Bear in mind you have to get permission to use someone else’s IP Availability does NOT equal Permissibility!

19. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Technical tools/ Software - Check license-based Terms&Conditions - Get permissions Copyrighted works - Finding info from CMOs - Moral rights aspects - Specifics of using photos - Public domain material/freely available material Trademarks- Metatagging, linking, framing - Marketing and advertising Personal indicia - Privacy rights - Publicity rights

20. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website What is a domain name? A domain name is a user friendly form of Internet address that is used to find websites on the Internet.

21. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Components of a domain name 2 parts in a domain name:  Top-level domain (TLD) - Generic top-level domains (gTLD) - Country code top-level domains (ccTLD)  Second-level domain (SLD)

22. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Choosing the first-level domain  Open (.com,.info,.net,.org) versus closed (.int) gTLDs  ccTLDs are country specific and registration rules vary according to the country  No distinction between gTLDs and ccTLDs in terms of worldwide access

23. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Choosing the second-level domain  Easy to identify and find a company’s website on the Internet  Same or similar to a company’s business name or/and trademark  Distinctive of a company’s business or products  Not identical or similar to business names or trademarks of others  Not controversial in terms of geography, personal names, generic drugs, etc.  Preferably shorter

24. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Domain names vs. trademarks Domain NamesTrademarks Internationally availableNational/Regional IP rights One domain name within one first level domain Possible coexistence of similar or identical TMs (eg. different classes) Registration on first-comes first- serves basis without examination Examination (formal and/or substantive) Private contract with a registrarRegistration by state/regional authorities Less expensive and quickerMore expensive and longer

25. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Uniform Domain Name Dispute Resolution Policy (UDRP)  UDRP Rules adopted in 1999  Reasons: - Protection of trademark owners and legitimate domain name registrants - Effective fight and prevention against cybersquatting (with less cost, shorter duration, etc.)  Limited to cases of abusive registration of domain names  More on UDRP procedure: http://www.wipo.int/amc/en/domains/

26. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Abusive registration criteria:  Domain name is identical or confusingly similar to the trademark  Trademark owner has a right or legitimate interest in domain name, and a registrant of domain name does not  Registrant registered or is using domain in bad faith

27. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website UDRP does not cover:  Disputes regarding registrations which violate business (trade) names, geographical indications or personality rights  Situations which per se do not fall under the definition of ‘abusive registration’ under UDRP

28. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Protected elements of a website  New technological systems  Search engines  Other technical internet tools  Software  Database  Website design  Website content  Business names, domain names  Product names, logos, other signs  Computer-generated graphic symbols, screen displays, GUIs, webpages  Confidential graphics  Source code, object code, algorithms  Data flow charts, database contents, etc

29. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Types of protection  New technological systems  Search engines  Other technical internet tools  Software  Database  Website design  Website content  Business names, domain names  Product names, logos, other signs  Computer-generated graphic symbols, screen displays, GUIs, webpages  Confidential graphics  Source code, object code, algorithms  Data flow charts, database contents, etc Patents/utility models Copyright Design Sui generis/ database laws Trademarks Trade secrets

30. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website 1 - To protect IP rights By registering trademarks By registering domain names By registering website and copyright (in case such possibility is provided) Patenting online business methods (in countries where it is available) 2 - To let people know that the content is protected By using symbols: ©, ®, etc By using watermarks for copyright content By giving notices that website or business method is patented  Precautionary measures

31. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website 3 - To let people know what use they can make of the content What they can do with the page Who to contact to get a copyright clearance related to website components 4 - To control access and use of website content By using online agreements to allow access By using encryption (keys, etc.) By using access control & conditional access systems  Precautionary measures (cont) 5 – To detect infringements on website By taking random snippets of text from website and searching for the snippets using search engines By using ‘spider programs’ to detect illegal use

32. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Taking action against infringers - steps 1 - Make screen shots or prints of relevant pages 2 - Print the source code from the infringing website 3 - Assure that you can prove your prior ownership over website content and its originality 4 - Send ‘cease & desist’ letter to the owner of infringing website 5 - If no response received, send: (a) a notice about infringement to any search engine and (b) a request to ISP with a demand to remove the infringing site

33. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website In short… If you want to use protected content in your website (art works, photos, paintings, etc.), you need to get permission from their creators or owners Websites which collect, handle or disclose personal information of their users should comply with the national privacy laws of the country from which they are operating

34. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website In short… An outside contractor will usually own the right in the website unless contractually agreed otherwise Domain names are unique: two companies can own and use the same trademark, but only one company can own a particular domain name In most countries, a registration of someone else’s trademark as a domain name is a violation of trademark rights

35. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website In short… Domain names are registered on a first-come, first-serve basis UDRP is an administrative procedure to solve disputes between trademarks and domain names in case of abusive registration

36. Dubai 21 December 2010 IP and e- commerce Creating a website Choosing a domain name Protecting a website Thank you! Questions? a.b.ramalho@uva.nl