2. Is the law of Defamation efectively protecting the media's role as the Public Watchdog?

This dissertation topic will explore whether English law is efectively protecting a free press in the case of potential defamation. This
discussion will explore the Reynolds's Public Interest Defence (as afrmed in Jameel v Wall Street Journal Europe [200! "#$% &&'.
The question that will be raised is whether this defence meets the requirements of Article ! of the E"#$ by exploring the
%urisprudence of the European "ourt of #uman $ights and English courts. &t will then consider the '( approach) which ensures that
there is a substantive protection of the freedom of the press. *inally) a set of recommendations will be developed in order to support
reform of English defamation law.
$ead more+ Tort) &ntellectual ,roperty and -edia .aw / 0issertation Topics 1 &deas / .aw Teacher http+22www.lawteacher.net2law3
dissertation3topics2tort3intellectual3property3and3media3law.php4ix5567dv8%9:;
*ollow us+ <lawteachernet on Twitter / .awTeacher=et on *aceboo>
. The copyright system is unable to efectively respond to the challenges posed by digitalisation and the internet.
Discuss.
"opyright law see>s to stri>e a balance between the rights of the creator and the copyright owner) so that they may manage and
protect their business and wor>s. "urrently) copyright has become increasingly important) particularly in terms of accurately ensuring
the source of information. The internet has allowed consumers across the globe to access information easily and with few boundaries.
?et this tool has also allowed consumers to access and reproduce wor>s without adhering to copyright requirements. #ow has
copyright law dealt with this global problem and how can it see> to alleviate the boundaries set by internationality@ These issues will
be explored in this study which will focus upon the global struggle to enforce copyright laws.
$ead more+ &ntellectual ,roperty .aw / 0issertation Topic Examples / .aw Teacher http+22www.lawteacher.net2law3dissertation3
topics2intellectual3property3law.php4ix5567dwABAx-
*ollow us+ <lawteachernet on Twitter / .awTeacher=et on *aceboo>
The Law on the acilitation of !nline "opyright Infringement.
The problem of piracy) which has plagued man>ind for centuries) is exacerbated by developments in the digital world) particularly in
light of new and advanced means of communication and distribution. As the internet becomes a central battleground for copyright
protection) the peer3to3peer Cle sharing trend has attracted particular attention. Dhen the issue of &nternet (ervice (upporters enters
the scene) it is evident that the law pertaining to secondary liability is not entirely clear. This study will discuss the uncertainties and
problems surrounding the existing law with particular reference to the recent ,irate :ay decision.
$ead more+ &ntellectual ,roperty .aw / 0issertation Topic Examples / .aw Teacher http+22www.lawteacher.net2law3dissertation3
topics2intellectual3property3law.php4ix5567dwEqFGw
*ollow us+ <lawteachernet on Twitter / .awTeacher=et on *aceboo>
The "hallenges #osed $y Digitali%ation &nd The Internet 'edia (ssay
=o part of this boo> may be reproduced or transmitted in any form or by any means) electronic or mechanical) including
photocopying) recording) or by any information storage and retrieval system) without permission in writing from the publisher@
,erhaps) we all have read this phrase or a similar phrase somewhere at sometime. (imilar warnings can be found in the movie
credits) covers of music albums and similar other digital wor>s which we can Cnd in the &nternet and other digital devices. #ow many
of us have actually paid heed to such warnings@ Almost always) nobody does. Everybody uses the &nternet as if it is a limitless source
of all that we need and want.
The &nternet is one big library. &t is made up of numerous computers and devices which are connected together and carry data which
can be transmitted to the other computers in the database. &t has all the information that everyone virtually needs. :oo>s) music)
photos) news and many other >inds of information can be found on the &nternet. (ome for free and some for a fee. &t is one big library
without a librarian. And that is where the big problem lies. =obody actually monitors what information you get from the internet and
how you intend to use it. -ost of the time) you can save or download any information that you need and do whatever you want to do
with it at the clic> of a button. The &nternet not being owned by anyone nor controlled by anyone is thus considered as a public
domain. Everybody can have access to digital information which is usually free and available for all.
Dith the &nternet) the privacy of millions is threatened. &s there anything that we can do if a photo we posted online is being reposted
by someone un>nown in another website@ "an we stop another person on the other side of the globe from copying the thoughts that
we have posted on the blog@ Are there even laws spanning across territories that we can invo>e to protect us@ &s it even possible to
>now and pinpoint who the person responsible is@ Almost always) the answer to these questions is a big resounding H=o.I
This privacy problem is even compounded in areas of &ntellectual ,roperty. &t refers to those property rights which result from the
physical manifestation of original thought (-artin) ;!!;J. "opyright is one of the areas covered by &ntellectual ,roperty .aws.
According to the Dorld &ntellectual ,roperty Krgani5ation) "opyright refers to that system of legal protection an author en%oys in the
form of expression of ideas. This covers protection given to authors with regards to his scientiCc) educational) literary or other wor>sL
musical compositions of a composerL painters and other artists with respect to their wor> of artsL and many others not limited to such
enumeration.
,rior to the era of digitali5ation and the &nternet) these copyrighted materials only exist in printed form) usually on paper or on
canvas. These wor>s have speciCc laws which protect their use from infringement. Any unauthori5ed reproduction) distribution)
display or derivatives can be considered infringement) sub%ect to certain rules and standards set in the laws. #owever) as we have
reached the digital age) these wor>s have been made available through the &nternet also. 0ue to this) the problems have arisen)
problems which have not been covered by most "opyright laws. Dhat constitutes reproduction or distribution or display in tangible
form does not equate to reproduction) distribution or display over the &nternet media. (trictly spea>ing a wor> cannot be the sub%ect
of an infringement unless there is something tangible which shows such. The same no longer holds true with the digitali5ation and
&nternet. The "opyright (ystem and .aws are thus unable to efectively respond to the challenges posed by digitali5ation and the
&nternet.
The Challenges Posed by Digitalisation and the Internet
De >now that schools) businesses) hospitals and various other institutions have date which can be useful to other organi5ations. -any
of these data can be accessible by digital copies and through online. This resulted to the era of databases which can be accessed by
almost everyone in the planet. (ome argue that this is an invasion of privacy as well as an infringement of copyright rights. "opyright
may be vested in a wor> closely similar or even identical to an earlier) already patented wor>) provided that the former is truly
original (-artin) ;!!;J. The &nternet) as helpful and convenient as it is) has been a cause of a ma%or problem when it comes to
intellectual property laws. The &nternet has paved way for the unauthori5ed collection) use or sale of copyrighted materials.
&t is not only famous authors or artists which are protected by copyright laws. 0avis (GGMJ once suggested the idea that individual
users of the &nternet also have property rights. Dhatever we write or put on the &nternet which are from our own personal thoughts or
ideas or wor>s are our own private intellectual property and as such we have the right to protect it and should not be copied by %ust
about anyone online.
"opyright puts a limitation on the volume of information or material that a person can reproduce without getting a license to copy
Crst (Aillespie) ;!!MJ. A copyright can also be a limitation on artistic choices as artists cannot even ma>e artistic wor>s which are
similar to that which has already been copyrighted (:urrell 1 "oleman) ;!!9J. This may sound as nothing important for &nternet users
but for people who are the owners of copyrighted wor>s) this is very important. -any people in fact do not understand the idea of
"opyright .aws and how it wor>s.
.etNs examine the case of authors and the boo>s they write. Dith the digitali5ation and the &nternet) boo>s in paper have been
transformed into electronic boo>s and can be easily saved in millions of copies in a device even smaller than a matchbox. Electronic
boo>s) otherwise called eboo>s are boo>s in electronic form which can be read on the computer or any eboo> reader device
((chwabach) ;!!7J. These days) people donNt buy boo>s as often as before. Than>s to the &nternet. Kr perhaps) no than>s to the
&nternet@ $emember way bac> ten years or more ago) people buy encyclopedias) almanacs and atlases which come in ;! boo> sets
or more. ,eople buy :ible boo>s for children in sets of ! or more. Kften) these are done in set3ups of monthly installments which in
this day and age seem illogical. Dhy would you need ;! boo>s when you can %ust Aoogle@ Dhy would you need four feet of space for
a set of boo>s and maga5ines when you can %ust buy a computer and use two feet of space for information which cannot be contained
in even a room full of boo>s@ De admit) more and more people are reading eboo>s) they are cheaper) they do not ta>e space and
they can last a lifetime. -any of these eboo>s can be copied online for free and are allowed to be disseminated over the &nternet for
several reasons) such as when they are already available in the public domain or the author chose to publish it free for all
((chwabach) ;!!7J. #owever) not all authors are li>e this. There are also many authors who have placed restrictions in the eboo>s
and thus do not allow any unauthori5ed or unpaid copies to be made and distributed. There goes the problem with the "opyright
.aws.
Another favorite in the "opyright infringement with this boom of the digital and &nternet era is the mass reproduction and
dissemination of movies. -ovies are cinematographic wor>s of art. 'sually) the producer has copyright for purposes of exhibitionL for
all other purposes) the producer) the author of the scenario) the composer) the Clm director) the author of the wor> are the creators
and thus have the copyright protection. &n this day and age) anyone can download movies through the &nternet and store them in
memory drives. Kne downloaded movie can be reproduced a million times) recopied in 0O0s) transported to diferent areas of the
globe) and watched in millions of homes countless times. This is very common and not everyone >nows that this is actually
infringement.
Third scenario) have you ever heard of controversies involving speeches made by people and would later be found to be copied
verbatim from a speech made on the other side of the globe and which can be found online@ De have heard of these a lot. ?ou can
use it as a speech in a remote area and when fortune favors you) nobody would ever >now that you copied that piece from an article
you read online. =o one will ever >now and everyone who has listened to such speech will thin> of how brilliant a spea>er you are.
.ittle did they >now) you not only plagiari5ed the speech) you have also bro>en certain laws. ?es) you are in the eyes of the law) a
criminal.
&n these scenarios) somewhere) someone has the right to relief and damages for such mass reproduction and dissemination of the
movies) for the plagiari5ed speech) for the eboo>s which have been copied and passed hundred of times. The one who is responsible
for the infringement exposes himself to criminal liability wherein the law prescribes penalties of imprisonment and Cnes. This can be
easy in the past. :ut in this world of vast connection of wires all over the globe) how easy is it to catch who is responsible@ #ow can
authors) musicians and artists as> for damages when they do not >now in the Crst place who is responsible@ And) is there really a
clear law which deCnes infringement of "opyright laws over the &nternet@
&n the past) it has been clearly laid down what constitutes copyright infringement and which doesnNt. &n the past) it has been clearly
laid down who is entitled to copyright protection. &n the past) it has been clearly laid down who owns the copyright. &n the past) it has
been clearly laid down what constitutes H*air use.I The *air 'se 0octrine refers to the fair use of copyrighted wor> for the purpose of
criticism) educational purposes) news reports) research and other similar purposes. *air 'se does not constitute infringement. &n this
instance) fair use in tangible media and fair use over the digital networ>s and the &nternet seem to be the same.
&n the payment for damages) some laws lay down rules on assessment on the basis of the proof given by the author or artist of sales
made by the infringer of the infringing wor> deducted by whatever costs the infringer may be able to prove (-artin) ;!!;J. Dith the
copyright infringement happening on the &nternet) sometimes sales do not even ta>e place) there is but a free for all reproduction of
copyrighted wor>s. De can see that in addition to losing protection from infringement) the author or artist also loses any chance of
getting any amount of damages for compensation.
Are information found online in this age of the &nternet and digitalisation owned absolutely by their authors or artists) or is there some
form of %oint ownership with all the other users of the &nternet@ 0oes the fact that a copyrighted photo is found online give the
&nternet users the absolute right to use it@ &f that is so) then it goes to say that we have all become owners of whatever information
that we can Cnd on the &nternet) right@ Drong.
&n some instances) there are owners of copyrighted materials such as music and boo>s which allow speciCc transfers to internet users
without any copyright infringement ta>ing place ($immer) ;!!MJ. *or example) the importation of a copy of a wor> by an &nternet user
for solely personal purposes shall be permitted without the authori5ation of the author of) or other owner of copyright in) the wor>
under certain circumstances as laid down by law.
Dhen copyrighted materials are sold over the internet) there is no tangible medium. &t is thus only the right to use which is being
passed to the one who is buying the copyrighted digital wor>s ((chwabach) ;!!7J. Thus) technically spea>ing) a digital wor> which is
sold online may not be sold by the buyer to another. That right to sell only belongs to the real owner of the digital wor>. The buyer
only has the right to use) he can read or listen to the digital wor> but he does not have the right to sell it. The same analogy goes true
when buying a 0O0. &f you buy a 0O0 and you copy the contents of the 0O0 and then sell the copied 0O0) you are guilty of
infringement.
These are %ust some of the hundreds of challenges that are faced by the "opyright (ystem and which have to be dealt with to protect
artists) authors and others who have created manifestations of their brilliant ideas. &t is therefore important to examine and to
address the rights associated with the people who are owners of information or media disseminated over the internet (Aillespie)
;!!MJ. De) the billions of &nternet users in the planet) are not the owners of every thing that we can Cnd on the &nternet. There is
nothing to prevent you or me from downloading the latest movies) or posting a video of yourself online singing the latest chart3
topping song of a music phenomenon) or posting an exceptionally beautiful painting made by your neighbor and claiming it as your
own.
A cornerstone in helping the problem with copyright protection is to inform the general public about rights and duties of owners of
copyrighted materials and the &nternet users (Dolf) ;!!6J. :eing socially responsible for whatever we download and use from the
&nternet may seem li>e the best possible option at present. (ad to say) but authors and other owners of copyrighted materials do not
seem to have any avenue to defend their "opyright protection.
=ovel eforts must be made to explore how &ntellectual ,roperty .aws on "opyright can be amended and streamlined for the
digitali5ation and &nternet use. =o matter how good the countryNs &ntellectual ,roperty .aws are) these are still not designed for the
digital and the &nternet era. These laws have proved lac>ing) giving more freedom to &nternet users and stripping "opyright owners of
the "opyright protection that laws have given them.
Conclusion
Dhat the &nternet and digitali5ation gives away with one hand) it usually ta>es away with the other. The &nternet and digitali5ation
may have opened a whole lot of doors for everyone) but it also creates a very serious problem with regards to the use and abuse of
information. 0iferent %urisdictions all over the world have made the recognition that with the boom of digitali5ation and the &nternet)
privacy is almost impossible and the laws on copyright are unable to efectively respond to this. -ovies) boo>s) music and similar
digital wor>s have been the sub%ect of numerous infringement which does not seem to stop anytime soon.
-any challenges are faced by "opyright .aws because of digitali5ation and the &nternet. Among these problems are the inapplicability
of present &ntellectual ,roperty .aws) the lac> of control in the information dissemination of the &nternet) the easy access and
download of various digital wor>s over the &nternet and the seeming lac> in social responsibility and awareness of many &nternet
users) to name a few. A lot of people are actually unaware that not everything that we Cnd on the &nternet can be copied and used to
our heartNs content. And even if people >new) they either do not understand or do not care. :esides) what would stop them from
infringing copyrighted wor>s@ The vast interconnection of wires and computers almost ma>es it virtually impossible to catch someone
who is responsible for downloading and copying several copies of a movie) a song) a boo>) a photograph or similar wor>s.
&n conclusion) until a perfect law against infringement of copyrighted digital materials over the internet is made and implemented) or
a perfect socially responsible &nternet3 and digitally3savvy community of users exists) there is no speciCc and efective solution to help
the owners of "opyrighted materials against these challenges that they face in this age of digitali5ation and the &nternet.
$ead more+ http+22www.u>essays.com2essays2media2the3challenges3posed3by3digitali5ation3and3the3internet3media3
essay.php4ix5567dxF&dEP
The Impact of the Internet on Intellectual #roperty Law
III. (a) COPYRIGHT !D R"#T"D RIGHT$
Q!. This "hapter addresses the developments that have ta>en place in the Celd of copyright and related rights) as a result of the
impact of digital technologies. &t begins with an introduction to Rdigital copyright)R then addresses the D&,K R&nternet Treaties)R and
describes emerging developments in law and technologies that relate to the protection and exploitation of copyright wor>s online.
*inally) it describes developments in licensing and collective management of rights that enable creators and rightsholders to manage
and exploit their rights in the digital environment.
(iJ &=T$K0'"T&K= TK 0&A&TA. "K,?$&A#T
Q. The protection of copyright and related rights covers a wide array of human creativity. -uch of the creative content that fuels
electronic commerce is sub%ect to such protection. 'nder the most important international copyright convention) the :erne
"onvention) S79T copyright protection covers all Rliterary and artistic wor>s.R This term encompasses diverse forms of creativity) such
as writings) both Cction and non3Cction) including scientiCc and technical texts and computer programsL databases that are original
due to the selection or arrangement of their contentsL musical wor>sL audiovisual wor>sL wor>s of Cne art) including drawings and
paintingsL and photographs. $elated rights protect the contributions of others who add value in the presentation of literary and
artistic wor>s to the public+ performing artists) such as actors) dancers) singers and musiciansL the producers of phonograms)
including "0sL and broadcasting organi5ations.
Q;. 0igital technology enables the transmission and use of all of these protected materials in digital form over interactive networ>s.
The process of Rdigiti5ationR allows the conversion of such materials into binary form) which can be transmitted across the &nternet)
and then re3distributed) copied and stored in perfect digital form. Dhile the transmission of text) sound) images and computer
programs over the &nternet is already commonplace) this is also becoming true for transmission of audiovisual wor>s such as feature
Clms) as the technical constraints of narrow bandwidth begin to disappear. S77T -aterials protected by copyright and related rights)
spanning the range of information and entertainment products) constitutes much of the valuable sub%ect matter of e3commerce. S7MT
Q6. Aiven the capabilities and characteristics of digital networ> technologies) e3commerce has had a tremendous impact on the
system of copyright and related rights) and the scope of copyright and related rights in turn is afecting how e3commerce evolves. &t
is essential that legal rules are set and applied appropriately) to ensure that digital technology does not undermine the basic tenets of
copyright and related rights. *rom one perspective) the &nternet has been described as Rthe worldUs biggest copy machine.R S7PT
Dhereas earlier technologies such as photocopying and taping allow mechanical copying by individual consumers) they do so in
limited quantities) requiring considerable time) and resulting in copies of lesser quality. -oreover) the copies are physically located in
the same place as the person ma>ing the copy. Kn the &nternet) by contrast) one can ma>e an unlimited number of copies) virtually
instantaneously) without perceptible degradation in quality. S7GT And these copies can be transmitted to locations around the world in
a matter of minutes. The result could be the disruption of traditional mar>ets for the sale of copies of programs) art) boo>s and
movies. SM!T &n the music industry) for example) the emergence of &nternet3based Cle swapping services such as =apster and others)
described below) have enabled a large3scale exploitation of music and recordings without the authori5ation of the rightsholders. That
exploitation was further aggravated by the simultaneous broad commerciali5ation of "0 burners and portable -,6 players) adapted
to the most commonly used Cle format.
QQ. These challenges face the copyright industry at a time when the share of copyright in national economies is reaching
unprecedented levels. The economic value of the copyright industry in the 'nited (tates alone is estimated at '(VG.; billion
(motion pictures) music and televisionJ) according to &nternational &ntellectual ,roperty Alliance (&&,AJ. SMT The share of copyright
industries currently represents 9.;QW of the '.(. gross domestic product) growing more than twice as fast as the rest of the economy)
a growth largely attributed to AmericaUs strong copyright laws and efective enforcement mechanisms. (imilarly) a study of the
copyright industries in the -E$"K('$ countries reveals that the share of copyright3protected activities in the value added of 'ruguay
was 7W in GGM) and of :ra5il was 7.MW in GGP) accounting in the latter for .6 million %obs. SM;T This signiCcance gives weight to
the copyright industriesU search for technical and legislative solutions to protect copyright from digital piracy.
Q9. &t is therefore critical to ad%ust the legal system to respond to the new technological developments in an efective and appropriate
way) and to do so quic>ly and continuously) because technologies and mar>ets evolve increasingly rapidly. This will ensure the
continued furtherance of the fundamental guiding principles of copyright and related rights) which remain constant whatever may be
the technology of the day+ giving incentives to creators to produce and disseminate new creative materialsL recogni5ing the
importance of their contributions) by giving them reasonable control over the exploitation of those materials and allowing them to
proCt from themL providing appropriate balance for the public interest) particularly education) research and access to informationL
and thereby ultimately beneCting society) by promoting the development of culture) science) and the economy.
(iiJ T#E D&,K &=TE$=ET T$EAT&E(
Q7. (igniCcant issues in the Celd of copyright have been examined for a number of years through various public and private
processes) at D&,K and other international organi5ations) and at national and regional levels. (igniCcant progress has been made)
with international consensus having already emerged on some of these issues. &n GG7) two treaties were adopted by consensus by
more than !! countries at D&,K+ the D&,K "opyright Treaty (D"TJ and the D&,K ,erformances and ,honograms Treaty (D,,TJ
(commonly referred to as the R&nternet TreatiesRJ. SM6T The treaties) each having reached their 6!
th
ratiCcation or accession) both
have entered into force+ the D"T on -arch 7) ;!!;) and the D,,T on -ay ;!) ;!!;. SMQT
QM. The D&,K &nternet Treaties are designed to update and supplement the existing international treaties on copyright and related
rights) namely) the :erne "onvention SM9T and the $ome "onvention. SM7T They respond to the challenges posed by the digital
technologies and) in particular) the dissemination of protected material over the global networ>s that ma>e up the &nternet. The
contents of the &nternet Treaties can be divided into three parts+ (J incorporation of certain provisions of the T$&,(
Agreement SMMT not previously included explicitly in D&,K treaties (e.g.) protection of computer programs and original databases as
literary wor>s under copyright lawJL (;J updates not speciCc to digital technologies (e.g.) the generali5ed right of communication to
the publicJL and (6J provisions that speciCcally address the impact of digital technologies.
QP. The following paragraphs address+ (aJ the scope of rights protected under the &nternet Treaties) highlighting new developments in
response to digital technologiesL (bJ issues relating to enforcement and management of rightsL and cJ the status of implementation
of the &nternet Treaties internationally.
(aJ (cope of $ights
QG. The deCnition of rights) which determines their scope) is a >ey issue) as intellectual property is neither more nor less than the sum
of the rights granted by law. 'nder existing treaties and national legislation) the owners of copyright and related rights are granted a
range of diferent rights to control or be remunerated for various types of uses of their property. *or both groups of rightsholders)
these rights include rights of reproduction and of certain acts of communication to the public) such as public performance and
broadcasting. The development of digital technologies) that enable transmission of wor>s over networ>s) has raised questions about
how these rights apply in the new environment. &n particular) when multiple copies are made as wor>s traverse the networ>s) is the
reproduction right implicated by each copy@ &s there a communication to the public when a wor> is not broadcast) but simply made
available to individual members of the public if and when they wish to see or hear it@ 0oes a public performance ta>e place when a
wor> is viewed at diferent times by diferent individuals on the monitors of their personal computers or other digital devices@
9!. ,erhaps the most basic right granted under both copyright and related rights is the right of reproduction) which under the :erne
"onvention covers reproduction Rin any manner or form.R SMPT This right is at the core of e3commerce) because any transmission of a
wor> or an ob%ect of related rights presupposes the uploading of that wor> or ob%ect into the memory of a computer or other digital
device. &n addition) when the wor> or ob%ect is transmitted over networ>s) multiple copies are made in the memory of networ>
computers at numerous points. &t is therefore necessary to determine how the reproduction right applies to such copies.
9. &n GP;) at a meeting of government experts co3organi5ed by D&,K and '=E("K) a broad3based understanding was reached that
uploading into a computer memory should be considered as an act of reproduction. This understanding was reconCrmed in GG7 in
agreed statements to the D"T and D,,T) which state+
RThe reproduction right... and the exceptions permitted thereunder) fully apply in the digital environment) in particular to the use of
wor>s in digital form. &t is understood that the storage of a protected wor> in digital form in an electronic medium constitutes a
reproduction within the meaning of the Srelevant treaty right.TR SMGT
The appropriate application of the reproduction right in the case of temporary copies in computersU random access memory ($A-J
continues to be a sub%ect of debate at the national and international levels. The >ey question is whether such copies always require
the consent of the rightsholder in order to avoid infringement. "arefully tailored exceptions for such copies in certain circumstances
have) for example) been enacted in the 'nited (tates of America in the 0igital -illennium "opyright Act (R0-"ARJ) SP!T and adopted
by the European "ommunity in its 0irective on the harmoni5ation of certain aspects of copyright and related rights in the information
society (the E.'. "opyright 0irectiveJ) both of which are described below. SPT
9;. The D"T (Article PJ and the D,,T (Article QJ also clarify the extent of rightsholdersU control when wor>s) performances and
phonograms are made available to the public for downloading or access on the &nternet. *or example) Article Q of the D,,T
provides+
R,roducers of phonograms shall en%oy the exclusive right of authori5ing the ma>ing available to the public of their phonograms) by
wire or wireless means) in such a way that members of the public may access them from a place and at a time individually chosen by
them.R
This type of transmission difers from broadcasting) in that the material is not selected and delivered by an active transmitter li>e a
broadcaster to a group of passive recipients. $ather) it is transmitted interactively) that is) on demand from individual users) at a
time and place of their choosing. The treaties require that an exclusive right be granted to control such acts of Rma>ing available)R
while leaving it to individual countries to decide how to categori5e this right under national law.
96. &ssues related to moral rights are also given new importance in the digital environment) as the new technologies ofer
unprecedented means for users to manipulate or RmorphR copyright wor>s) creating rights in derivative wor>s) and possibly infringing
the original authorsU moral rights of integrity. The D,,T (Article 9(JJ recogni5es moral rights of attribution and integrity) as follows+
R&ndependently of a performerUs economic rights) and even after the transfer of those rights) the performer shall) as regards his live
aural performances or performances Cxed in phonograms) have the right to claim to be identiCed as the performer of his
performances) except where omission is dictated by the manner of the use of the performance) and to ob%ect to any distortion)
mutilation or other modiCcation of his performances that would be pre%udicial to his reputation.R
(bJ Enforcement and -anagement of $ights
9Q. &ssues of enforcement and management are not new) but ta>e on added dimensions and urgency when wor>s are exploited on
digital networ>s. As noted above) the technologies pose substantial practical challenges. &n order for legal protection to remain
meaningful) rightsholders must be able to detect and stop the dissemination of unauthori5ed digital copies) accomplished at levels of
speed) accuracy) volume and distance that in the past were unimaginable. And for e3commerce to develop to its full potential)
wor>able systems of online licensing must evolve) in which consumers can have conCdence. The answer to these challenges to a
great extent will lie in the technology itself.
99. The D"T and the D,,T also brea> new ground in recogni5ing the emerging role to be played by technological protection
measures) and by online management and licensing systems. They require -ember (tates to provide two types of technological
ad%uncts to the protection of copyright and related rights) in order to ensure that the &nternet can become a safe place to disseminate
and license protected material.
97. The Crst technological ad%unct is generally referred to as an Ranti3circumventionR provision) and is addressed in the D"T (Article
J and the D,,T (Article PJ. *or example) Article of the D"T provides+
R"ontracting ,arties shall provide adequate legal protection and efective legal remedies against the circumvention of efective
technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the :erne
"onvention and that restrict acts) in respect of their wor>s) which are not authori5ed by the authors concerned or permitted by law.R
(uch provisions relate to the need of rightsholders to rely on technological measures to protect their wor>s against infringement on
the &nternet. =o matter how ingenious the technology used to protect wor>s against unauthori5ed use) equally ingenious ways may
be developed to circumvent it. The resulting level of insecurity could prevent rightsholders from disseminating their valuable wor>s
on the &nternet. Aiven the inability to achieve total security) a realistic goal is to ma>e the technology sophisticated enough to deter
the ordinary consumer from see>ing to circumvent) while granting legal redress against those who represent a greater threat 3
hac>ers and those engaged in circumvention as a business.SP;T Toward this end) the treaties require -ember (tates to provide
adequate legal protection and efective legal remedies against the circumvention of efective technological measures used by
rightsholders to restrict unlawful and unauthori5ed acts. The treaty language is general enough to allow signiCcant Xexibility to
national governments in determining the details of appropriate implementation. SP6T
9M. As a second technological ad%unct) the treaties protect Rrights management information)R providing legal support to rights
management systems) under the D"T (Article ;J and the D,,T (Article GJ. *or example) Article ; of the D"T provides+
R(J "ontracting ,arties shall provide adequate and efective legal remedies against any person >nowingly performing any of the
following acts >nowing) or with respect to civil remedies having reasonable grounds to >now) that it will induce) enable) facilitate or
conceal an infringement of any right covered by this Treaty or the :erne "onvention+
(iJ to remove or alter any electronic rights management information without authorityL
(iiJ to distribute) import for distribution) broadcast or communicate to the public) without authority) wor>s or copies of wor>s >nowing
that electronic rights management information has been removed or altered without authority.
(;J As used in this Article) Rrights management informationR means information which identiCes the wor>) the author of the wor>) the
owner of any right in the wor>) and any numbers or codes that represent such information) when any of these items of information is
attached to a copy of a wor> or appears in connection with the communication of a wor> to the public.R
$ights management systems operate on the basis of electronic data that is attached to the wor>s and ob%ects of related rights. SPQT
The data may identify the author or performer) the rightsholder) and the wor> or ob%ect itself) and may further describe the terms and
conditions for its use. 'nder the treaties) -ember (tates must provide adequate and efective legal remedies against the deliberate
removal or alteration of such information) and against the dissemination of wor>s) performances or phonograms from which such
information has been removed or altered) where these acts are performed with at least reasonable grounds to >now that they will
induce) enable) facilitate or conceal infringement. This will enhance the ability of rightsholders to exploit their property on the
&nternet) and allow consumers to rely on the accuracy of the information they receive so they can feel secure transacting online.
9P. =ational legislation) in conformity with the treaties) ma>es provision against the circumvention of technologies designed to
protect copyright wor>s. :oth the E.'. "opyright 0irective) and the 'nited (tates 0igital -illennium "opyright Act
(0-"AJ) SP9T require protection for digital rights management systems that protect copyright in digital form. The E.'. "opyright
0irective (Article 7.;J requires -ember (tates to provide legal protection against the Rmanufacture) import) distribution) sale) rental)
advertisement for sale for rental) or possession for commercial purposes of devices) products or components of the provision of
servicesR for the purposes of circumventing technological measures) including encryption) scrambling or other copy control
mechanisms. The 0-"A) Title &) creates civil and criminal liability for circumvention of copyright protection technologies and for the
>nowing provision of false copyright management information or intentional removal of the same) providing a technical ad%unct to the
rights established by copyright law. SP7T
9G. *aced with the threat of piracy heightened by the use of digital technologies) rightsholders are increasingly turning to technology
to provide protection for their intellectual property. This approach is supported by the legal measures against circumvention of such
technologies) in the D&,K &nternet Treaties) as described above. Technological systems of protection include+ anti3copy devices)
access control) electronic envelopes) proprietary viewer software) encryption) SPMT passwords) watermar>ing) SPPT Cngerprinting (user
authenticationJ) metering and monitoring of usage) and remuneration systems. (everal industry and technology initiatives to set
standards in various industries have emerged over the years) although none have yet established uniform standards for technological
protection measures. SPGT
7!. The music industry) for example) has developed copyproof compact disc ("0J technology that prevents "0s being played on
computer disc drives. "opyprooCng employs various technologies either by including errors in the data encoded on the "0) which
allows the disc to be played on a standard "0 player) but not on a "03$K-) or by mas>ing audio Cles as data Cles so that the "03
$K- drive cannot recogni5e the music. SG!T The fact remains that these methods can currently all be circumvented. &n the 'nited
(tates Aovernment) various eforts have been made to pass copy protection legislation that will prevent the sale of any consumer
Rdigital media deviceR (broadly deCned as any hardware or software that reproduces) displays or retrieves or accesses any copyright
wor>J that does not meet *ederal Aovernment copy3protection standards. SGT At the same time) the Aovernment is exploring
initiatives to mandate the introduction of copy3protection devices for digital television broadcasts. SG;T
7. &n a case brought under the 0-"A) "niversal (ity Studios) Inc* v* Reimerdes) SG6T the defendant was found liable for copyright
infringement for posting 0e"(() a decrypter for the "ontent (cramble (ystem ("((J used to encode motion pictures on 0O0s) so as
to enable them to play on .inux. SGQT The "ourt re%ected the defendantUs argument that an in%unction would prevent fair use of the
decrypted material. Another case) "nited States of +merica v* Elcom %td* a,-,a ElcomSoft (o* %td) and Dmitry
S-lyarov) SG9T concerned criminal liability under the 0-"A for circumvention of copyright protections in electronic boo> software sold
by Adobe (ystems &nc.) where the circumvention program was legal under $ussian law) but banned by the 0-"A anti3circumvention
measures. This case has been viewed as a test of the constitutionality of the 0-"A) and the breadth of protection it grants over non3
digital material) at a perceived ris> to preservation of individual rights of free use. SG7T
(cJ (tatus of the D&,K &nternet Treaties
7;. As mentioned above) the D"T entered into force on -arch 7) ;!!; and the D,,T on -ay ;!) ;!!;. As at Kctober ;!!;) the D"T
has 6M and the D,,T has 6P (tates party. (ince their adoption in GG7) the treaties have been implemented in a number of
important legislative instruments) including the E.'. "opyright 0irective) and the 'nited (tates 0igital -illennium "opyright Act
(0-"AJ) summari5ed below.
76. *or most countries) particularly those already in compliance with existing treaties) the implementation of the &nternet Treaties
does not require ma%or rewriting of the law on copyright and related rights) nor any fundamental change in policy or the structure of
their legal systems. Typically) a country may need to clarify the scope of existing rights to add the right of Rma>ing availableR on
demand. :ecause the scope of related rights has traditionally been more limited) additional rights such as moral rights may need to
be added to protect performers or record producers. Although not required by the treaties) a country may choose to ma>e
ad%ustments to the limitations and exceptions to rights it provides. *inally) each country must provide adequate and efective legal
remedies against the circumvention of technical protection measures and the deliberate deletion or alteration of rights management
information) although these provisions are drafted generally in the treaties so as to give national legislators Xexibility in their
implementation.
Digital 'illennium "opyright &ct )*D'"&*+
The 'nited (tates of America enacted legislation entitled the RD&,K "opyright and ,erformances
and ,honograms Treaties &mplementation Act of GGPR as Title & of the 0igital -illennium "opyright
Act (R0-"ARJ. SGMT Title & of the 0-"A contains) among other things) provisions to implement
obligations concerning technological measures and rights management information.
Title & of the 0-"A also requires the 'nited (tates "opyright Kfce to conduct two studies %ointly
with the =ational Telecommunications and &nformation Administration of the 0epartment of
"ommerce) one dealing with encryption and the other with the efect of technological development
on existing exceptions in the "opyright Act) as part of an ongoing evaluation on the relationship
between technological changes and the copyright law. Accordingly) two reports have been
submitted to the "ongress. SGPT Title && of the 0-"A entitled the RKnline "opyright &nfringement
.iability .imitation ActR deals with the issue of the liability of service providers based on a copyright3
speciCc approach.

*(.,. "opyright Directive*
The European ,arliament and the "ouncil of the European 'nion adopted a 0irective ;!!2;G2E" on
the harmoni5ation of certain aspects of copyright and related rights in the information society in
-ay ;!!. -ember (tates are obligated to implement the provisions of the 0irective by
0ecember ;;) ;!!;. The European "ommunity and its -ember (tates have already signed the
D&,K "opyright Treaty (D"TJ and the D&,K ,erformances and ,honograms Treaty (D,,TJ. This
0irective serves) among other things) to implement a number of the new international obligations
provided under the D"T and the D,,T. The European "ommunityUs instruments of ratiCcation will
be deposited with D&,K following the deadline for the -ember (tates to transpose the 0irective into
their national legislation.
The 0irective contains a number of important provisions to implement the Treaties) including those
concerning the application of the right of reproduction in the digital environment and temporary
reproductionL the right of ma>ing available applicable to interactive transmissions on networ>s such
as the &nternetL limitations and exceptions in the digital environmentL technological measures for
protectionL and rights management information.

7Q. .urt/er promotion of t/e W(0 and t/e WPP0* Although the &nternet Treaties have now entered into force) in order that they be
truly efective in the digital environment) they must become widely adopted in countries around the world) and their provisions must
be incorporated in national legislation. =ational implementation of the &nternet Treaties assists in promoting the development of e3
commerce) both domestically and internationally) and encourages direct foreign investment) by providing greater assurance to
businesses that their property can be safely disseminated there. Therefore D&,K is devoting substantial resources to ofering
guidance to governments that are in the process of adhering to the Treaties and transforming them into national legislation. (uch
guidance includes the provision of legal advice) consultations with national governments and organi5ation of national and regional
meetings.
(iiiJ E-E$A&=A "K,?$&A#T &(('E(
79. Although the D"T and the D,,T now provide basic norms clarifying and safeguarding the protection of copyright and related
rights in relation to the digital environment) and serve both as a guide and a model for national legislation) certain unresolved
questions remain at the international level. SGGT &n addition) a number of important recent developments have occurred in the Celd of
copyright and related rights that have far3reaching implications for the industry) and that are being addressed in legislatures)
%udiciaries and other international fora. Dhile courts in some %urisdictions are responding to new types of infringement resulting from
the use of digital technologies) new laws are also being debated and passed in some countries to ensure efective protection and
enforcement of rights in the digital era. At the same time) copyright industries are also adapting their business methods and uses of
technology to exploit the digital opportunities) while guarding against new ris>s.
77. (ome of the most signiCcant of these issues are detailed below) addressing the following+
scope of copyright protection in the digital environmentL
responsibility of online service providersL
rights of performers in the digital environmentL
rights of digital broadcasters 3 webcasting and digital Clm and television onlineL
lin>ing of copyright information online 3 deep3lin>ing and framingL
protection of databasesL and
peer3to3peer Cle sharing systems such as =apster.
Three of the most important of these issues are currently under discussion at D&,K with a view to the possible development of new
international instruments) namely+ audiovisual performersU rights) broadcastersU rights) and sui 1eneris protection for databases that
do not qualify for copyright protection. The Crst two are already protected by multilateral treaties) but require updating and
improvementL the latter would establish a new form of international protection. Additional activities in other Celds are also under
consideration.S!!T
(aJ (cope of "opyright ,rotection in the 0igital Environment
7M. E2ceptions and limitations to copyri1/t* The copyright system has traditionally maintained a balance between protecting
creatorsU property rights and the exclusive right to control use of copies of their wor>) and the public good in fair access to and use of
such materials. "opyright laws permit exceptions to copyright) in order to maintain this balance. &n the 'nited (tates) for example)
this balance has been enshrined in the principle of Rfair useR S!T limitations on the rights of authors) while in other countries such
as Australia and the 'nited Eingdom) the concept is recogni5ed by way of statutory exceptions to copyright infringement for Rfair
dealing.R S!;T
7P. This balance is now in question because of digital technologies) and the way in which they have changed how we access and use
information. S!6T &n the physical world) we can access copyright materials without infringing copyright) by borrowing a boo> from a
library) for example. S!QT Knline) each access to such material involves an act of copying) where the simple act of viewing a website
requires the computer to ma>e temporary local copies of the data in our computersU random access memory ($A-J. &n addition)
increasingly) copyright wor>s are not sold) in the way that a boo> or videocassette was sold in the past) but are licensed under certain
terms and conditions of use. Kur access to copyright wor>s is increasingly governed by contract) which may impact on the
application of exceptions and limitations) the traditional chec>s and balances of the copyright system) aimed at preserving the rights
of consumers and the public interest.
7G. A number of questions are raised about exceptions and limitations to rights in the digital environment. Are existing exceptions
and limitations) written in language conceived for other circumstances) too broad or too narrow@ (ome exceptions) if applied literally
in the digital environment) could eliminate large sectors of existing mar>ets. Kthers may implement valid public policy goals) but be
written too restrictively to apply to networ> transmissions. =ew circumstances may also call for new exceptions. These questions
must be examined in light of the international standard established for the permissibility of exceptions and limitations to certain
rights) >nown as the Rthree3step testR. 'nder this test) as set out in the :erne "onvention and T$&,( Agreement) exceptions are
permitted Rin certain special casesR that Rdo not conXict with a normal exploitationR of the wor> and Rdo not unreasonably pre%udice
the SownerUsT legitimate interests.R S!9T
M!. As to the scope of these exclusive rights) the D&,K &nternet Treaties continue to provide Xexibility to individual countries to
develop exceptions and limitations that are appropriate to their particular circumstances. The general Rthree3stepR test applied to the
reproduction right in the :erne "onvention and to all rights in the T$&,( Agreement is extended to apply to all rights in the :erne
"onvention and in the D"T (Article !J and the D,,T (Article 7J. An important agreed statement in the D"T (concerning Article !J
and the D,,T (concerning Article 7J clariCes that this test permits countries to extend existing exceptions and limitations into the
digital environment) or to add new ones) as appropriate. *or example) the D"T provides+
3+1reed statement concernin1 +rticle 405 It is understood t/at t/e provisions of +rticle 40 permit (ontractin1 Parties to carry for6ard
and appropriately e2tend into t/e di1ital environment limitations and e2ceptions in t/eir national la6s 6/ic/ /ave been considered
acceptable under t/e 7erne (onvention* Similarly) t/ese provisions s/ould be understood to permit (ontractin1 Parties to devise ne6
e2ceptions and limitations t/at are appropriate in t/e di1ital net6or- environment*
&t is also understood that Article !(;J neither reduces nor extends the scope of applicability of the limitations and exceptions
permitted by the :erne "onvention.R
M. As described above) the goal of policy ma>ers is to achieve an appropriate balance in the law) providing strong and efective
rights) but within reasonable limits and with fair exceptions. &f this efort is successful) the result should be a positive impact from all
perspectives. Trade in copyrighted wor>s) performances) phonograms and other protected ob%ects will become a ma%or element of
global e3commerce) which will grow and thrive along with the value of the material that is traded. &f rightsholders are secure in their
ability to sell and license their property over the &nternet) they will exploit this mar>et fully and ma>e more valuable wor>s available
through this medium. Appropriate limitations and exceptions will continue to safeguard public interest uses. The result will be a
beneCt to consumers) a beneCt to rightsholders) a beneCt to service providers) and a beneCt to national cultures and economies 3 a
true Rwin3winR situation.
M;. Preservin1 aut/ors' ri1/ts online. Attention has been drawn to the scope of copyright law in an online context) in a practical
sense) by two signiCcant cases in the 'nited (tates of America. They raise the question to what degree authors retain the right to
control and license their wor>s) when those wor>s are re3compiled or re3distributed electronically in the digital environment. &n the
case of 0/e 8e6 9or- 0imes) (o* v* 0asini) the 'nited (tates (upreme "ourt afrmed a decision in favor of the American =ational
Driters 'nion against various news distributors) which had been selling freelance writersU material to electronic databases) including
.exis2=exis) without any additional payment or negotiation of electronic rights with the authors. The "ourt found that the electronic
re3publication of the writersU wor>s constituted copyright infringement) and that the writers were entitled to receive royalties for the
secondary use. S!7T This reasoning was also upheld in 8ational :eo1rap/ic v* :reenber1) where the 'nited (tates (upreme "ourt
declined to hear an appeal from an earlier Appeals "ourt decision that the reproduction of freelance photographersU wor> in a
searchable "03$K- collection of past maga5ine editions involved a new use) for which the original authors were entitled to receive
royalties. S!MT Through such cases it is becoming clear) at least in some %urisdictions) that the legal characteri5ation of uses of
copyright wor>s in an electronic context is being addressed so as to preserve and reafrm the rights of creators in the digital
environment.
M6. ;pen source soft6are movement* The Ropen sourceR movement in the software industry has adopted a diferent stance towards
asserting intellectual property rights in software) which are traditionally proprietary and protected by copyright law) and in some
%urisdictions patent law.S!PT Kpen source refers to the development of software which is publicly available in source code form) in
conformity with the certiCcation standard issued by the Kpen (ource &nitiative (K(&J. S!GT The software) although usually copyright
protected) is distributed free of licensing restrictions and thus encourages users to run) modify) copy and distribute the software
freely) so long as certain conditions are met) including that the programUs source code remains publicly available and the holder of
the source code license does not collect royalties. The movement is designed to encourage collaborative software development) to
remove programming errors or bugs and promote derivative wor>s.
(bJ .iability of &nternet (ervice ,roviders
MQ. Kne issue of some concern in the intellectual property and &nternet communities is the question of who should be liable for
copyright infringement that ta>es place online. This issue is raised by the very nature of digital networ>s. Dhen a wor> is
transmitted from one point to another) or made available for the public to access) numerous parties are involved in the transmission.
These include entities that provide &nternet access or online services (R&(,sR or RK(,sRJ. Dhen such service providers participate in
transmitting or ma>ing available materials provided by another which infringe copyright or related rights) are they liable for the
infringement@ (uch liability could arise in one of two ways+ if the service provider itself is found to have engaged in unauthori5ed
acts of reproduction or communication to the public) or if it is held responsible for contributing to or ma>ing possible the act of
infringement by another.
M9. (uch issues have arisen under "hinese copyright law) for example) in the case of Wan1 <en1* v* (entury Interconnectin1 0elecom
(o* %td) which involved a service provider on whose website was posted wor>s of six well3>nown "hinese novelists without their
permission. S!T The defendant argued that "hinaUs "opyright .aw does not address the &nternet) and therefore that digital wor>s
could not infringe copyright. The "ourt found for the plaintifs) holding that no derivative wor> was created simply by the process of
digiti5ation and that "hinese copyright law gave the author the exclusive right to exploit and proCt from the wor> both online and of.
The &(, was found to be in a position to control the distribution of the wor>s) and was therefore liable for infringement.
M7. The liability issue has signiCcant international implications. :ecause the &nternet is a borderless medium and its mar>ets are
global) it is critical that compatible approaches to this issue be adopted around the world. &t is not necessary that the approaches be
identical+ they may difer depending on the particular circumstances and legal traditions in any given country. :ut they must be
interoperable if global networ>s and electronic commerce are to develop smoothly. This issue was the sub%ect of a D&,K wor>shop in
GGG) that examined national and regional legal framewor>s) notice and ta>edown systems) and the possibilities for international
harmoni5ation. ST D&,K continues to monitor developments regarding this issue) including legal decisions) mar>etplace events
and emerging legislation.
MM. 0uring the 0iplomatic "onference on the D&,K &nternet Treaties in GG7) the issue was intensively debated. The ultimate result
was that the treaties are essentially neutral on the sub%ect) with the issue of liability left to national legislation to determine. There is)
however) one reference to the issue) in an agreed statement to the D"T) which provides that+ RSiTt is understood that the mere
provision of physical facilities for enabling or ma>ing a communication does not in itself amount to communication within the
meaning of this Treaty or the :erne "onvention.R S;T The statement clariCes that the mere provision of wires used to
communicate) for example) does not constitute an act of communication. :ut the statement is limited in its applicationL it does not
cover a number of activities that service providers may engage in) and it does not deal with concepts of liability for contributing to
the infringement of another.
MP. (ince GG7) a number of legislative solutions to this issue have begun to emerge. S6T These statutes difer as to whether they
address copyright only) or ta>e a Rhori5ontal approachR that is) a rule governing liability of service providers regardless of the grounds
for illegality of the transmitted material. &n other words) the hori5ontal approach covers not only copyright infringement but also
other laws such as libel or obscenity. SQT There are laws now in force in Aermany and (weden) which approach the issue from a
hori5ontal perspective. Bapan also has introduced the R,rovider .iability .awR) S9T which states that a provider is liable only if it is
technically possible to prevent transmission of the infringing materialL and the provider >nows of the existence of the material andL
(iJ >nows that it is infringing or (iiJ reasonably ought to >now that it infringes (Art. 6 (JJ. A person whose rights have been infringed
can as> a provider to disclose information about the person transmitting the material if the information is necessary for a legal claim
or other legitimate reason (Art. Q(JJ.
MG. The European "ommunity has adopted a 0irective on Electronic "ommerce with provisions that will harmoni5e the treatment of
liability among its -ember (tates) again using a hori5ontal approach. S7T (ome commentators have argued that there are
inconsistencies between the E.'. "opyright 0irective and the E.'. E3"ommerce 0irective on the issue of online service provider
liability. SMT
P!. The alternative approach of implementing copyright3speciCc laws to determine online service provider liability) has been adopted
by other countries) including #ungary) &reland) (ingapore and the 'nited (tates of America. &n the 'nited (tates of America)
"ongress enacted copyright3speciCc legislation as part of the GGP 0igital -illennium "opyright Act (0-"AJ) after legislation in past
years establishing diferent standards in other areas of the law. As part of the 0-"A) the RKnline "opyright &nfringement .iability
.imitation ActR) establishes Rsafe harborsR to shelter &(,s from liability for copyright infringement in certain circumstances. SPT The
0-"A sets down guidelines with respect to copyright infringement online) although it does not deCne when a provider is liable for
copyright infringement and) in this respect) the existing principles of '.(. copyright law apply. &nstead) the 0-"A deCnes those
categories of provider activity where providers are exempt from liability for damages SGT provided that+ the provider is merely
acting as a Rpassive conduitR for the information) is not the producer of the information) and has responded expeditiously to remove
or disable access to infringing material upon notice from the copyright holder (the so3called Rnotice and ta>edownR provisionsJ. To
qualify for immunity) the provider must also implement a policy that terminates the subscriptions of repeat infringers) and
accommodate and not interfere with technical measures put in place to protect and identify copyright wor>s.
P. &n one '.(. case testing these Rsafe harborR provisions) +%S Scan) Inc* v* Remar= (ommunities) Inc*) the issue was whether a
service provider was liable for providing access to RadultR news groups that contained unauthori5ed copies of the plaintifUs
photographs) after having been informed that the site was infringing. S;!T &n this case) the provider argued that it would only
remove the materials when the infringing items were identiCed and listed with sufcient speciCcity) a difcult tas> given the number
of photographs on the site. The "ourt found that the plaintif had met its notice requirement and that) once notiCed) the provider
could not rely upon the immunity granted by the 0-"A. Action was also initiated in the 'nited (tates of America under the 0-"A)
when 6 record companies requested the "ourt to order four &(,s to bloc> access to a "hina3based website) .istenQever.com) that
was alleged to violate '.(. copyright laws. S;T The English3language site ofered thousands of copyrighted songs for free download)
before going oYine upon initiation of the legal action.
(cJ $ights of ,erformers in a 0igital Environment
P;. Dhile the D,,T does protect the rights of performers) its provisions relate to the aural aspects of performances) and not to
audiovisual performances. This is because diverse systems have evolved to protect audiovisual performers in diferent parts of the
world) some based on legal rights and others on contract) and a compromise between the systems is difcult to achieve. Dhile such
performances are protected by many national laws) and also by the $ome "onvention for the ,rotection of ,erformers) ,roducers of
,honograms and :roadcasting Krgani5ations) no multilateral treaty covers the rights of performers in authori5ed audiovisual Cxations
of their performances. The possible extension of international protection for performers to cover audiovisual performances might be
perceived as a general question) not speciCc to e3commerce. &t is) however) highly relevant because audiovisual performances will be
used in an increasing measure on the &nternet) through Clm and music videos for example) as available bandwidth increases. S;;T
-oreover) digital technologies permit the unauthori5ed manipulation and distortion of performersU images and voices (e.g.)
morphingJ. A satisfactory solution of this issue is therefore an important component of an overall clariCcation of the rights involved in
e3commerce.
P6. &n 0ecember ;!!!) D&,K organi5ed a 0iplomatic "onference on the ,rotection of $ights in Audiovisual ,erformances. S;6T Dhile
the scope of this "onference included a number of basic questions regarding that protection) it was also an important attempt to
establish appropriate rights in connection with the convergence of the digital and audiovisual worlds. The "onference resulted in a
general understanding between the participating government delegations concerning most substantive provisions of a D&,K
audiovisual performances treaty) except for the international recognition of transfer of rights under national law.
PQ. The deadloc> was related to the consequences that the international recognition of statutory transfers of exclusive rights could
entail. Those countries in favor of such recognition demand to have certainty and clarity on the producerUs ability to exercise the
exclusive rights of authori5ation for the efective exploitation of Clms in a global environment. Kpposition to that recognition is
founded mainly in the concern that this could imply the application of domestic rules on the legal regulation of transfer or entitlement
or rights in respect of the exploitation of Clms all over the world.
P9. The 0iplomatic "onference recommended to the D&,K Assembly of -ember (tates) at its meeting in (eptember ;!!) to
reconvene the "onference with the aim of Cnally adopting the new treaty. #owever) during the Assembly) -ember (tates considered
that it was necessary to continue consultations to resolve outstanding issues over the above3mentioned provision. They therefore
decided to carry the issue over to the ;!!; session of the D&,K Assemblies. S;QT &n the absence of such contacts) at the ;!!;
meetings the Aeneral Assembly approved the 0irector AeneralUs proposal that the &nternational :ureau should conduct informal
consultations with interested parties to explore the possibilities of convening an Rinformal ad hoc meetingR in the Crst half of ;!!6
Rfor the purpose of having informal exchanges on the remaining diferences and possible ways of resolving them.R -eanwhile) D&,K
is maintaining a close dialogue with governments and non3government organi5ations to bridge the existing gaps and to Cnd possible
ways forward in the negotiations. S;9T
(dJ $ights of 0igital :roadcasters
P7. Webcastin1 and di1ital >lm and television. The &nternet ofers manifold opportunities for copyright content providers and
distributors to supply their material to a global audience) including viaL (iJ webcasting and (iiJ digital Clm and television online.
?i' Webcastin1
PM. Debcasting) also >nown as RstreamingR) is the process of digitally transmitting musical recordings) and radio and television
broadcasts over the &nternet. S;7T The process is designed not to create permanent copies on end3listenersU computer hard drives)
although software is available that allows users to convert streamed audio Cles into other formats which can then be transferred via
peer3to3peer (,;,J systems) described below. S;MT (ome legislatures have responded to this new method of distribution of copyright
wor>s.
PP. The 'nited (tates 0igital -illennium "opyright Act (0-"AJ) for example) provides a statutory license for webcasters whose
services are not provided on3demand) and gives copyright holders the exclusive right to authori5e webcasts that are provided on3
demand. S;PT RKn3demandR transmissions are interactive broadcasts where the user chooses which songs to listen to from the
website. Apart from broadcasting transmissions) the 0-"A addresses four categories of webcasting+ (J sites providing original
programmingL (;J sites broadcasting secondary transmissions for analog radioL (6J aggregator sites facilitating access to commercial
radio stationsL and (QJ entertainment sites that provide both audio and entertainment news.
PG. The practice of retransmission of terrestrial radio stationsU over3the3air broadcasts via the &nternet has also raised copyright
concerns. &n 8ational .ootball %ea1ue et al v* i(rave0@*com) a case brought by 'nited (tates and "anadian motion picture and
broadcasting companies) the "ourt issued a permanent in%unction to prevent i"raveTO.com) a "anadian website) from converting
copyrighted television material from M =orth American television stations into digital Deb broadcasts and streaming them over the
&nternet.S;GT The unauthori5ed re3transmission was found to be an infringement of the plaintifsU exclusive right to perform and
display their wor>s in the 'nited (tates. Although i"raveTOUs transmissions may have been legal under "anadian copyright law) they
were not in accordance with 'nited (tates law) and it was then impossible to prevent 'nited (tates users from gaining &nternet
access to the service. i"raveTO has since relaunched its online service) broadcasting networ> and cable television programs) this
time using copyright protection systems to prevent users in the 'nited (tates from gaining access. S6!T
?ii' Di1ital >lm and television
G!. &n the audiovisual industries) the &nternet ofers an unprecedented channel for global distribution of Clm and television wor>s.
#owever) until recently) ma%or audiovisual companies have hesitated to engage wholeheartedly in the digital environment. The slow
increase in bandwidth) which has restricted the speed at which large Cles can be transferred) had recently protected the industry from
rampant piracy. #owever movie studiosU fears have now been raised by the availability) before their ofcial release) of pirated
versions of most mainstream movies. *or example) R(tar Dars Episode &&+ Attac> of the "lonesR was available online over the Cle3
swapping service) &nternet $elay "hat) a wee> before its ofcial premiere. $esearch has shown that between Q!!)!!! and 7!!)!!!
Clms a day are being downloaded over such Cle sharing networ>s and pirate video3on3demand sites.S6T "hanges in Clm release3
business structures) such as Rday3and3dateR releases) that open Clms simultaneously in various regions) help to stem piracy but do
not solve the problem. A further concern is with the so3called Ranalog holeR) referring to the gap in protection created when digital
signals are transformed into analog upon entry into a television set) at which point any copy protection mechanisms that have been
incorporated in the digital Cle are removed. The unprotected analog Clm can then be uploaded to the &nternet and pirated without
restriction. Another development closely watched by the Clm industry has been the proliferation of Rfan ClmsR) digital Clms that
feature the characters and mise en scZne of a Clm) a popular example being (tar Dars) without the authori5ation of the copyright
holder. S6;T &n one case) an animator distributed a (uperman fan Clm online) prompting the rightsholders) 0" "omics) to send a
cease3and3desist letter. S66T
G. =ew developments are also ta>ing place in the Celd of digital interactive television (iTOJ) involving the use of+
3 personal or digital video recorders (such as TiOo) $eplayTO and 'ltimateTOJ that allow viewers to digitally record shows by genre or
actor) and pause and rewind live TOL
3 video3on3demand (OK0J) allowing viewers to choose which program to watch either by pay3per3view or by subscriptionL and
3 two3way programming) that enables viewers to interact with other viewers. S6QT
These developments have) however) been delayed by the current lac> of copy protection that would secure the rightsholdersU
property in digital broadcasts. Kne such technology) put forward by the motion3picture and consumer electronics industry3based
:roadcast ,rotection 0iscussion Aroup) and approved by the *ederal "ommunications "ommission) is the Rbroadcast XagR) a mar>er
embedded in digital3TO broadcasts that controls how consumer electronic devices can play and record the broadcasts) and designates
those which cannot be copied. S69T Another initiative) the #ollywood3based "opy ,rotection Technical Dor>ing Aroup has been
established to develop protection for digital television and video distribution. S67T
G;. :roadcasting organi5ations have traditionally en%oyed protection in many countries for their broadcasts under either copyright or
related rights) and their rights are protected under both the T$&,( Agreement and the $ome "onvention. #owever) in this Celd) as
with performersU rights) an updating of existing international norms is needed. Existing treaties may not adequately ensure that
broadcasters (and providers of valuable programming not necessarily covered by copyright and related rights) such as certain sports
transmissionsJ are able to safeguard and exploit their eforts and investments over the &nternet. A new treaty could protect against
digital piracy and manipulation of broadcast signals) furthering the use of the &nternet as a medium for broadcasting activities) as
described above.
G6. 0iscussions are ongoing at D&,K concerning the potential for a treaty dealing with the rights of broadcasting organi5ations) and
treaty language proposals have been received by D&,K from the European "ommunity and a number of -ember (tates. S6MT The
D&,K (ecretariat prepared a technical bac>ground paper on the protection of broadcasts aimed to illuminate the issues involved
during further consideration of this matter by the (tanding "ommittee on "opyright and $elated $ights. S6PT
(eJ .in>ing of "opyright &nformation Knline
GQ. %iability for lin-in1 and deepAlin-in1 online content* The software that underlies the operation of the &nternet allows information to
be Rhyperlin>edR or Rhypertext reference lin>edR within and between sites. S6GT (uch lin>ing typically occurs when the creator of
one website provides a reference to another website) usually indicated in colored text or icons) using software that allows the user to
clic> on the reference and view the content on the lin>ed website. Dhile enabling users to surf Xuidly from one website to another)
this practice also raises copyright issues. A simple lin> from one website to the home page of another website does not normally
raise concern) as the use of such lin>s may be equated to the use of footnotes to refer to other sites. SQ!T Employing a simple lin>)
the user merely views the material from the lin>ed site) and is aware that it originates from a diferent website. This process does not
create a copy of the lin>ed wor>) other than that created in the random access memory ($A-J of the computer. Kften) no permission
is required to ma>e a lin> to a site) either because the website owner has given an implied license to lin> by posting his material on
the Deb) or by characteri5ing such lin>ing as fair use. SQT
G9. #owever) other lin>ing practices are more problematic. R0eep3lin>ingR connects a user directly to secondary material on another
site) bypassing that siteUs home or front page) and may amount to an infringement of copyright in the secondary material. (imilarly)
an Rembedded lin>R creates a reference to content from another website such that the secondary material appears to be content
originating from the Crst site. (uch lin>s) also called Rin3lineR lin>s) do not require a copy to be made of the lin>ed material) but may
violate the authorUs right to display or communicate their wor> to the public. SQ;T
G7. The use of deep3lin>s to retrieve pages from the targeted siteUs database may) in some %urisdictions) amount to an infringement of
rights in the database that contains the secondary information. &n Europe) the E.'. 0atabase 0irective requires -ember (tates to
protect database owners from Rrepeated and systematic extraction and2or reutili5ation of insubstantial parts of the contents of the
database implying acts which conXict with a normal exploitation of that database.RSQ6T This 0irective has been invo>ed to prevent a
news aggregatorUs website from deep3lin>ing to articles on commercial newspapersU sites. &n a case under 0anish copyright law) the
0enmar> :ailifUs "ourt issued an in%unction to prevent =ewsbooster.com from providing services that enabled users) for a fee) to use
>ey words to prompt Deb RbotsR (automated computer programsJ to search news sites. SQQT The defendants were prohibited from
ofering deep3lin>ing search services) from reproducing and publishing headlines from the sites and from distributing e3newsletters
with deep lin>s. &n Aermany) -unichUs 'pper "ourt has found similarly in a case brought by the Aerman newspaper -ainpost against
the search engine) =ewsclub) which was found to have violated the copyright protection in -ainpostUs news database by searching
and lin>ing directly to it. SQ9T #owever) a decision of the 0istrict "ourt of Aroningen) =etherlands (under appealJ) held that a
newspaperUs %ob listing section does not constitute a database under 0utch law) and cannot therefore be protected from being
excerpted on a %ob search website. SQ7T
GM. &n the 'nited (tates) where no sui 1eneris database law currently exists) copyright owners have found protection against deep3
lin>ing by relying upon laws related to copyright) trespass) breach of contract) and common law misappropriation. SQMT &n the case
of E7ay Inc* v* 7idder's Ed1e Inc*) it was found that use of Deb bots to extract data about auctions from an auction site amounted to
trespass. SQPT &n the case of 0ic-etmaster (orp* v 0ic-ets*com Inc*) -icrosoftUs (eattle (idewal> online service published a deep lin>
into Tic>etmasterUs website from which users could purchase tic>ets) bypassing Tic>etmasterUs home page) and therefore its revenue3
producing advertising and corporate information. &n that case) however) the 0istrict "ourt found that the deep lin>s were neither
deceptive nor unfair competition) nor did they constitute a violation of copyright) because the Deb address) or uniform resource
locator ('$.J) itself is not protected material. SQGT
GP. The issue of deep3lin>ing was also addressed in a '.(. case) #elly v* +rriba Soft (orporation) involving a Rvisual search engineR
that searched the Deb to reproduce many miniature RthumbnailR images with in3line lin>s to the original photographs) that appeared
in full si5e in a window on the defendantUs site when users clic>ed on the miniature image.S9!T Kne photographer) whose wor> was
included among the images without authori5ation) sued the search company for copyright infringement. Although the "ourt of
Appeals found in the circumstances that the compilation of the miniature images was fair use) S9T it also found that the use of
embedded lin>s to frame the full scale photograph did infringe the photographerUs copyright) violating his right to display the wor>s
publicly and diverting users from his site. &n another case brought under the 0-"A) "niversal (ity Studios) Inc* v* Reimerdes) the
"ourt granted a permanent in%unction to prevent the defendant from lin>ing to sites that downloaded the 0e"(( copyright
circumvention program) Cnding that this practice was equivalent to trafc>ing in circumvention devices in contravention of the
0-"A. S9;T
GG. %iability for framin1 online content* A related issue has arisen as a result of the practice of using browser software to RframeR
content from another online source. The legal difculty arises because the user sees the original website content) which may be
copyright protected) framed by a diferent website) with a diferent '$.) and possibly with diferent logos and advertising. This
practice may constitute copyright infringement in some %urisdictions) because a copy of the material is made in the userUs computer
memory. &n Aermany) for example) framing is considered an infringement of the transformation right provided by Articles 7;. and
6G of the Aerman "opyright Act. &n the case of Roc/e %e2icon) a #amburg court decided that the $A- copies created in the process
of framing constituted a reproduction of the wor>) that must be authori5ed by the rightsholder. S96T &t is clear that the law will
continue to respond) through legislative and %udicial developments) to questions raised by new practices of connecting information
and users to material online. :ecause of the borderless operation of the &nternet) it is preferable that these responses are
compatible) and enable users and website owners to exploit the Deb of online information with conCdence.
(fJ ,rotection of 0atabases
!!. As described above) S9QT the economic value and importance of databases) as repositories for digital information) have vastly
increased in the digital environment. There have been calls for an extension of the scope of existing international protection for
databases. 0atabases that are original by virtue of the selection and arrangement of their contents are already protected under
copyright. :ut copyright does not protect databases that are not original) such as a database that contains the entire universe of
relevant facts and is therefore not selective) and is arranged in a non3creative numerical or alphabetical way.
!. &n addition) even those databases that do qualify for copyright protection may receive a very narrow scope of protection)
allowing competitors to ta>e and mar>et substantial portions of the information they contain. (uch databases often represent
signiCcant efort and investment for their ma>ers) and these investments are %eopardi5ed by the ease and inexpensiveness of copying
them with todayUs technologies. &n response to this problem) the European "ommunity has adopted the RE.'. 0atabase 0irectiveR
requiring its -ember (tates to provide a separate sui 1eneris form of protection for databases. S99T Kn the other hand) concerns
have been raised that) if not carefully balanced) a new form of protection might result in a monopoly position of information providers
or otherwise be detrimental to the scientiCc) research and education sectors. S97T
!;. The issue of protection of databases is being considered within D&,K as one aspect of the D&,K 0igital Agenda) concerning the
principle of protection of non3original databases) as well as the form which such protection might ta>e. -any governments have
indicated that further analysis is required of this issue. *ive studies were commissioned by D&,K on the economic impact of non3
original database protection in developing countries and countries in transition) and are now available. S9MT These studies were
distributed in con%unction with the meeting of the (tanding "ommittee in -ay ;!!;) and a further study has been commissioned)
while the issue remains on the agenda of the (tanding "ommittee on "opyright and $elated $ights ((""$J. S9PT
(gJ ,eer3to3,eer *ile (haring 3 =apster
!6. The music industry has been at the vanguard of the intellectual property system in confronting the issues raised in the copyright
Celd as a result of emerging digital technologies. This is largely because music is ideally suited to distribution over the &nternet.
$evenues from digital music are forecast to reach '(V;. billion by ;!!M) representing MW of the music trade. S9GT The
development of compression software) such as -,6 (mpeg6J) S7!T has enabled music Cles to be digiti5ed and uploaded and
downloaded freely from Deb or Cle transfer protocol (*T,J sites. &n a case relating to -,6."om) an online music service) "<:
Recordin1s) Inc* v* <PB*(om) Inc*) the "ourt found -,6."om liable for copyright infringement for facilitating the piracy of digital
music) by ma>ing available its database of more than P!)!!! musical recordings) almost all unauthori5ed. S7T
!Q. -usic piracy has) however) reached unprecedented levels because of the emergence of Rpeer3to3peerR (,;,J Cle sharing
systems) that facilitate the swapping of music and video Cles between users. S7;T The original Cle sharing system was =apster)
described below) although numerous ,;, services have since emerged) including Aimster) S76T Ea8aA and Aro>ster (using the
*astTrac> networ>J) and -orpheus (using the Anutella networ>J. &t is now estimated that GGW of all Cles transferred through such ,;,
systems are unauthori5ed. S7QT This is signiCcant) in light of estimates that 9.7 billion unlicensed audio Cles were shared across
,;, networ>s in ;!!) a volume predicted to increase to M.QQ billion Cles in ;!!9. S79T
!9. The most notorious Cle sharing service is =apster) which uses a centrali5ed server acting as a search engine to assist users to
download music from the computers of other =apster subscribers. At its height) in *ebruary ;!!!) =apster was logging .9M million
simultaneous subscribers. The downloading of music by =apster users was found) in the case of +C< Records) Inc* v* 8apster) Inc* to
be a direct infringement of copyright held by the recording companies. The "ourt determined that) even though =apster was not
charging for its service and users were downloading the music for their personal use) the downloading was not a Rfair useR under the
'nited (tates "opyright Act ([!MJ. S77T &t was found that Rrepeated and exploitative copying of copyrighted wor>s) even if the
copies are not ofered for sale) may constitute commercial use.R S7MT The copies were found to have been made to save the cost of
purchase. This practice is cited particularly by the recording industries as a factor in the 9W drop in music sales experienced in the
past two years. S7PT &n addition to Cnding =apster users liable for direct infringement) the "ourt found that =apster itself had
engaged in contributory infringement) with actual and constructive >nowledge of the infringing activities) and vicarious copyright
infringement) because it had a direct Cnancial interest in drawing users to its service as customers. :y Bune ;!!) the number of
=apster users had fallen to ;!)!!!.
!7. #owever) while legal action has largely restrained =apster from ma>ing copyright music available online without authori5ation) it
has proven more difcult to regulate other ,;, systems with diferent networ> architecture that does not require a centrali5ed server
to process search requests and downloads) such that each userUs computer acts as a search engine. These systems) including
Anutella) Audiogalaxy) Ea8aA) -usic"ity) -orpheus and Aro>ster) are now said to attract some .6 million users in Destern Europe
alone. S7GT =onetheless) such ,;, systems have been targeted in anti3piracy campaigns) including legal action initiated by the
$ecording &ndustry Association of America ($&AAJ and the Australian =ational -usic ,ublishers Association against Audiogalaxy) which
resulted in the ,;, system removing most of its music Cles for download. SM!T
!M. &n Bapan) in a suit brought by G Bapanese record companies) the To>yo 0istrict "ourt issued a temporary in%unction against Bapan
--K) to prevent it from operating a ,;, service called *ile $ogue. SMT &n the $epublic of Eorea) in a suit brought by the $ecording
&ndustry Association of Eorea) the (ungnam 0istrict "ourt closed down (oribada) the $epublic of EoreaUs most popular ,;,
networ>. SM;T (imilar legal action has been initiated in the 'nited (tates of America by the -otion ,icture Association of America
against the operators of other ,;, networ>s) including Ea8aA) -usic"ity and Aro>ster) for infringement of copyright in motion picture
and sound recordings. SM6T &t is notable) however) that in the =etherlands) the Amsterdam "ourt of Bustice found in favor of Ea8aA
against :uma (temra) a 0utch music rights organi5ation. The "ourt held that Ea8aA was not liable for individualsU abuse of its Cle
sharing software. SMQT
!P. An alternative approach ta>en by the copyright industries is to target individual Cle3traders) through educational institutions or
corporations where much of the piracy occurs) although this approach is limited because of sheer volume of users and privacy
concerns. &n one such action) an American corporation) &ntegrated &nformation (ystems) reached a '(V million settlement with the
$&AA following evidence of illegal downloading and sharing of copyrighted -,6 Cles over its corporate networ>. SM9T &n another
action) $&AA has ta>en action to compel an online service provider to reveal the name of a customer accused of large3scale illegal Cle
swapping. SM7T As mentioned above) some 'nited (tates record companies have also sought to bring legal action directly against
the &nternet service providers) in an attempt to bloc> access to ofshore music sites) rather than attempting to initiate legal action in
foreign %urisdictions against the site owners themselves. SMMT
!G. "ontroversy has also arisen as a result of eforts by the copyright industries to protect their rights against piracy by using digital
technologies to monitor users of copyright material for potential violations. The Clm industry has employed search engines designed
to scour the Deb for copyright movies on ,;, networ>s) and then to send cease3and3desist letters to users via their &nternet service
providers (&(,sJ. The providers) in turn) are locating potential infringers by monitoring high bandwidth users who are most li>ely to be
exchanging copyright audiovisual material) because signiCcant bandwidth is required to swap large movie Cles. SMPT An alternative
technique employed by the copyright industries is to distribute RspoofR Cles of music or Clm wor>s onto the ,;, networ>s) that
contain only limited or degraded portions of the wor>) and are designed to discourage piracy by ma>ing the illegitimate Cle services
less attractive to use. SMGT
!. 0raft legislation was introduced into the 'nited (tates legislature by a 0emocrat "ongressman) #oward :erman) designed to
immuni5e copyright owners from liability for any ofences they may commit while Rdisabling) interfering with) bloc>ing) diverting) or
otherwise impairingR the unauthori5ed use of their wor>s on publicly accessible peer3to3peer Cle3sharing networ>s. SP!T The
legislation would provide copyright owners with a safe harbor from liability under American law for using tools including decoys or Cle
bloc>ing to prevent piracy of their copyright wor>s on ,;, networ>s) such as =apster. #owever) the proposal has provo>ed criticism
from domestic and international sources. Kne issue is raised by the fact that immunity would only extend to American law) but could
expose industry executives to liability in other %urisdictions for unauthori5ed access to computer systems) or violation of national
privacy laws. SPT
(ivJ .&"E=(&=A A=0 $&A#T( -A=AAE-E=T &= T#E 0&A&TA. A$E=A
(aJ .icensing and "ollective -anagement of $ights
. As a reward for their creativity and investment) the copyright system grants creators exclusive rights in their wor>s. Third
parties are prohibited from using wor>s in a manner that is covered by the exclusive rights) without obtaining permissions from the
rightsowners. $ightsowners will usually grant such permissions in exchange for compensation (a RroyaltyRJ and on the basis of
certain terms and conditions of use. These conditions are typically recorded in contractual arrangements concluded between
rightsowners (or their representativesJ and users (RlicensesRJ. The exclusive rights conferred by the copyright system thus facilitate
the commercial exploitation of creatorsU wor>s.
;. 'sers of wor>s can be either consumers (for example) a person purchasing a license for a computer operating system to be
installed on his home computerJ or intermediaries (for example) a boo> publisher who licenses the right to incorporate certain
photographs in an encyclopediaJ. Kften) intermediaries are also creators) but at a diferent stage of the production process) using the
wor>s of others as building bloc>s to which they add value for their own productions. The end product reaches the consumer either
by ways of a sale (the usual practice in the case of boo>s) for exampleJ) implying a transfer of ownership in the physical ob%ect rather
than in the rights themselves) or through a license (the usual practice in the case of software) for exampleJ) often depending on
industry practices. &n the case of a transfer of ownership) the rights and obligations of the parties with respect to the intellectual
property incorporated in the physical ob%ect tend to be governed by law) whereas) in the case of licenses) they are mostly regulated
by contract.
6. .icensing implies at least a minimum level of bargaining between the rightsowner and the person who wishes to use the wor> in
a manner covered by the exclusive rights. Even assuming that the terms of use and the royalty are totally standardi5ed) at the very
least there is a need to conclude an agreement between the user and the rightsowner or its representative. &n certain sectors) such
licenses are concluded on a one3to3one basis directly between the rightsowners and the users. This is the usual practice in) for
instance) the software industry. &n certain circumstances) however) the need to conclude agreements on a one3to3one basis) and a
fortiori) the individuali5ed negotiation of their terms) can be too cumbersome. This is well illustrated by considering the situation of
radio stations) which typically wish to broadcast a wide selection of the worldwide music repertoire. $adio stations would be forced to
identify) and negotiate with) the rightsowner of each song or other musical composition that they see> to broadcast) with a view to
concluding agreements with all of them. Aiven that the popular music repertoire is constantly evolving) this negotiation process
would be constant. "learly) the costs and eforts to secure the rights in the musical wor>s concerned would be such an enormous
burden for most radio stations that many of them would not be able to operate in a commercially viable manner. 'ltimately) this
would result in reduced consumer choice.
Q. The inefciencies described above associated with the individual exercise of rights are addressed by an intellectual property
practice >nown as the Rcollective management of rights.R SP;T Dhile the collective management of rights ta>es many forms and the
practice is more prevalent in certain industries than in others) SP6T one common feature shared by such systems is that they ofer
centrali5ed access to a plurality of wor>s for the beneCt of users. &n certain cases) the services of collective management
organi5ations may be more elaborate.
9. *or example) in the Celd of musical wor>s where there is a long tradition of collective rights management) the system typically
extends beyond the mere ofering of centrali5ed access and includes) in addition to documentation) also licensing and distribution) as
the three pillars on which the collective management of the rights of public performance and broadcasting is based. The collective
management organi5ation negotiates with users (such as radio stations) broadcasters) discotheques) cinemas) restaurants and the
li>eJ) or groups of users) and authori5es their use of copyrighted wor>s from its repertoire against payment and on certain conditions.
Kn the basis of its documentation (information on members and their wor>sJ and the programs submitted by users (for example) logs
of music played on the radioJ) the collective management organi5ation distributes copyright royalties to its members according to
established distribution rules. A fee to cover administrative costs) and in certain countries also socio3cultural promotion activities) is
generally deducted from the copyright royalties.
7. "ollective management organi5ations tend to be organi5ed on a territorial basis and) in order to better represent the interests of
their members) national collecting societies have associated themselves at the regional or international level. Examples of such
associations are the &nternational "onfederation of (ocieties of Authors and "omposers ("&(A"J SPQTand the &nternational *ederation
of $eprographic $eproduction Krganisations (&*$$KJ. SP9T Typically) in the Celd of musical wor>s) contracts of mutual representation
are concluded between the various national societies on the basis of which a particular national society is entitled to manage not only
its own national repertoire) but also the foreign repertoire of the other society. &n return) its own repertoire will be managed and
protected in each foreign country by the national society with which the contract of mutual representation has been concluded. As a
result of this networ> of agreements between the various national societies) each of them is in a position to license the entire music
repertoire of the world) which) from the point of view of the user) is highly desirable.
?i' Di1ital Ri1/ts <ana1ement
M. The digiti5ation of content) together with the increased reliance by rightsholders and intermediaries (including collecting
societiesJ on information technology) and the &nternet) is inXuencing the traditional means of licensing intellectual property rights) as
described above. The application of information technology to facilitate the exploitation of rights is commonly referred to as Rdigital
rights managementR (0$-J. 0$- systems are aimed at enforcing certain business rules in respect of the use of content protected by
intellectual property. Typically) these business rules concern questions of who is entitled to access a wor>) at what price and on which
terms. These terms address questions such as whether a user is entitled to ma>e any copies of the wor> (and) if so) how manyJ) for
how long a user is entitled to access a wor>L whether a user can excerpt the wor> or ma>e changes to itL whether a user can access
the wor> on one or on multiple devices) etc. &n efect) 0$- systems aim to automate the process of licensing wor>s and of ensuring
that license terms are complied with. The following elements are often associated with 0$- systems+ (J identiCers) i.e.) numbers or
codes permitting the unique identiCcation of a piece of content (comparable to) for example) the &(:= number for boo>sJL SP7T (;J
metadata) i.e.) information about the piece of content which may include) for example) the identity of the rightsholder) the price for
using the wor>) and any other terms of useL and (6J technological protection measures) i.e.) systems designed to ensure that certain
usage rules are complied with) in particular those concerning access and copy control. SPMT
P. .egal support for 0$- systems is to be found in the D&,K "opyright Treaty (D"TJ and the D&,K ,erformances and ,honograms
Treaty (D,,TJ) described above) in particular in their provisions on Kbligations concerning Technological -easures (Article of the
D"T and Article P of the D,,TJ and $ights -anagement &nformation (Article ; of the D"T and Article G of the D,,TJ. SPPT
:ecause the technology holds the promise of curbing rampant piracy of copyright wor>s) rightsowners have placed a great deal of
faith in 0$-) and technological protection measures in particular) as a means of enforcing their rights in the digital environment.
(ubstantial investments have been made in recent years with a view to the development and deployment of the systems in
question. This wor> is predominantly private3sector driven and many systems are already available) although not yet widely adopted
by the mar>et. Kne of the important issues that needs to be addressed is the need for interoperability) as many diferent proprietary
systems would need to be able to function seamlessly together for them to become truly attractive to users. Dhile there are many
eforts aimed at establishing interoperable standards) the degree of consensus that is required among a broad range of industry
sectors) as well as users) is a considerable challenge. SPGT =onetheless) mass mar>et deployment of 0$- systems is widely
anticipated) as it is generally recogni5ed that this li>ely would enhance legitimate access to copyright wor>s on the &nternet) to the
beneCt of users) intermediaries and content providers ali>e.
?ii' 0rends in %icensin1 and Ri1/ts <ana1ement
G. The interplay between information technology) the digiti5ation of content) the &nternet and the exploitation of intellectual
property rights is dynamic and it is particularly difcult to predict what the future will hold precisely. =otwithstanding) the following
remar>s can be made with respect to the future of licensing and management of rights in the digital environment) based on
experience gained and lessons learnt in recent years.
(iJ Approaches to managing intellectual property rights in the digital environment) as well as the type of licenses reXecting these
approaches) will need to ta>e account of the malleable and vaporous nature of digiti5ed content. Typical and by now well >nown
features of such content include the ease with which it can be transmitted from one device to another) its global accessibility once it
is made available on the &nternet) and the ease with which it can be reproduced) in the absence of any technical protection
measures. :ecause of the characteristics of digiti5ed content and the &nternet) users have certain expectations with respect to the
manner in which they wish to consume such content. To the extent such expectations are reasonably legitimate) rightsownersU
mar>et oferings (including the structures and terms of licensesJ) will be perceived as more attractive if they are consistent with them.
(iiJ &ncreased reliance on licensing and contracts as a means of managing intellectual property is a li>ely future trend. As content has
become more Xuid and its means of delivery to users more variable) mar>et oferings can now conveniently be tailored to suit the
particular needs of individual users) or groups of users) sharing common requirements. A more diversiCed and adaptable range of
products is reXected in a corresponding need for greater Xexibility in the structure of legal relationships between content providers)
intermediaries and consumers. "ontent providers) and) to an increasing extent) institutional users are of the view that contracts)
licensing in particular) ofer much needed Xexibility in this regard. Accordingly) certain sectors of the intellectual property industry in
recent years have increased their reliance on licensing as a means of ma>ing available content to users. An example of a sector in
which this trend can be discerned is the scientiCc) technical and medical publishing industry.
(iiiJ (ome have argued that information technology and the &nternet are a threat to collective rights management organi5ations)
because they would enable rightsowners to control and measure themselves directly the use of wor>s. *or a variety of reasons)
however) the more informed view probably is that these phenomena will) in most cases) require collecting societies to re3engineer
their business models and operating procedures) rather than %eopardi5e their very existence. &n part) the difculty results from the
fact that collective rights management organi5ations) li>e much of the intellectual property system) are organi5ed on the basis of
territoriality. The entities in questions are often organi5ed on a national basis) each of them having competence to grant licenses for
their territory. #owever) if a person residing in a particular territority ma>es a wor> available on the &nternet) it immediately becomes
globally accessible (much more so than) for example) a broadcast originating from within a particular countryJ. &n an efort to resolve
this problem) certain collective management organi5ations have been wor>ing towards enabling their system of mutual
representation to ma>e available to users global &nternet licenses. SG!T
(ivJ A topic of increasing interest concerns the future of exceptions and limitations in the digital arena. Dhile the D&,K &nternet
Treaties state that Rcontracting ,arties Sare permittedT to carry forward and appropriately extend into the digital environment
limitations and exceptions in their national laws which have been considered acceptable under the :erne "onvention)R the question
has been raised whether the broad use of licensing as a means of providing access to wor>s) as well as the widespread deployment of
technological protection measures) will not result in a situation where exceptions and limitations are rendered practically
meaningless. The interface between technological protection measures) licensing) and limitations and exceptions is a complex and)
as yet) poorly understood issue that is li>ely to engage industry) users) as well as policy ma>ers) for quite some time.
(vJ Kne) rather radical) method of dealing with loss of revenue for rightsowners resulting from digital piracy is the imposition of levies
to compensate for the losses incurred. .evies can apply to any number of items) including) for instance) the hardware and devices
purchased by users to access the pirated wor>s. $esort to such levies) as a means of dealing with widespread infringing content in
the digital age) recently has been observed in a number of countries. SGT &nvariably) the imposition of levies is a highly
controversial measure. Those who oppose them argue that they reXect a misguided attempt to Cnd a Rquic> CxR to a complex
problem) introducing mar>et distortions and) ultimately) hurting consumers who sufer subsequent price increases. Kthers maintain
that they are one of a few realistic and efective means of safeguarding the interests of rightsowners in the face of rampant digital
and &nternet piracy.
III. (b) TRD"%R&$ !D OTH"R RIGHT$ I! DI$TI!CTI'" $IG!$
;!. This "hapter addresses issues that have arisen in the Celd of trademar> law) describing the changing importance of trademar>s
when used to identify enterprises online) before proceeding to some issues that have developed as a result of use of trademar>s on
the digital networ>s) such as meta tags and lin>ing practices. &t then focuses on the principle of territoriality that underlies the
trademar> system) before introducing D&,KUs programs in this area) in particular the Boint $ecommendation "oncerning ,rovisions on
the ,rotection of -ar>s) and Kther &ndustrial ,roperty $ights in (igns) on the &nternet) and Boint $ecommendation "oncerning
,rovisions on The ,rotection of Dell3Enown -ar>s) and concluding with a description of the concept of unfair competition as it applies
in the digital environment.
(iJ &-,K$TA="E K* T$A0E-A$E( K=.&=E
;. Trademar>s are an important tool in commerce) enabling consumers to identify the source of a product) and to lin> the product
with its manufacturer in widely distributed mar>ets. The exclusive right to the use of the mar>) which may be of indeCnite duration)
enables the owner to build goodwill and reputation in its enterprise and to prevent others from misleading consumers by false
association with an enterprise with which they are not connected.
;;. Trademar>s are of essential importance in e3commerce. &t is clear that trademar>s carry at least as much signiCcance on the
&nternet as in the of3line world. ,articularly following the downturn of the .com economy) online enterprises are focusing on building
recognition and goodwill) so as to inspire conCdence in themselves and in their brands) and to remain competitive. "onsumers)
operating in virtual mar>ets where face3to3face interactions are infrequent and there is little or no opportunity to inspect goods or
services before purchase) are willing to reward trusted sources ofering competitive products. SG;T &n fact) a survey of e3commerce
consumers reported that P!W of their decision whether to purchase is afected by issues beyond their online experience) and that
most importance was placed on brand performance. SG6T
;6. There is a general international consensus that trademar> protection under law should extend to the &nternet) and that its scope
should be neither less nor more extensive than the protection granted in the physical world. SGQT Dhile existing national or regional
trademar> law systems apply) together with the relevant international treaties) SG9T these provisions are of a general nature)
applying on a territorial basis) and are not tailored for the borderless world of the &nternet. The challenges of this new medium of
commerce are not limited to trademar>sL they exist with regard to all >inds of distinctive signs online) including trade names and
geographical indications.
(iiJ 0EOE.K,-E=T( &= '(E K* T$A0E-A$E( K=.&=E
;Q. Trademar> owners also face new challenges with respect to use of their mar>s in the digital environment. &n the current
mar>etplace) it is estimated that a typical large business owns between ;!! and 9!! corporate) product and service identities) that
need to be registered) maintained and defended. SG7T A corporate presence on the &nternet requires trademar> owners to defend
their rights against new forms of trademar> abuse and across millions of discrete sites) in multiple languages and domains. *or
example) trademar>s and logos may be used in a site or domain name in connection with pornographic or other ob%ectionable sites)
or by trade competitors to divert search engine trafc) or dilute or tarnish a brand.
;9. Kne provider of digital brand management services) Oeri(ign) estimates that M!W of domain names associated with top brands
are not registered by the true brand owner) prompting rightsholders to defensively register their mar>s as domain names) and ta>e
action to protect their mar> through domain name dispute resolution procedures) as described in "hapter &&&(cJ. &n addition to
cybersquatting) trademar> owners are facing new types of infringement) including user3trafc diversion through >eywords and meta
tags) or unauthori5ed lin>ing and framing) as described below. Added to this) the &nternet has vastly increased consumer choice by
ma>ing available a global spread of online enterprises which) together with a new diversity of media channels and increased
consumer control) has contributed to an erosion of brand loyalty. SGMT &n this environment) trademar> owners may employ services
of online brand management and RcybersurveillanceR companies) that assist in the protection and enforcement of their trademar>
rights in a digital environment.
;7. The means by which users locate businesses on the &nternet has also changed. *rom the early development of the &nternet) the
domain name system has served to facilitate usersU online navigation) using domain names and corresponding &nternet ,rotocol (&,J
numbers to identify computers connected to the networ>. 0omain names) because they are easy to remember and tend to mirror the
entityUs trademar> or business name) have functioned both on and oYine (in advertising and mar>eting practicesJ as business
identiCers) in a manner similar to trademar>s. #owever) users also have alternative mechanisms to locate sites on the Deb) mainly
through search engines such as Aoogle) Excite) AltaOista or ?ahoo\) as well as &nternet >eywords. SGPT The table below illustrates
the relative accuracy of such search methods+
-ebsite .eachability by "ategory of .e/uest and by 0earch 'ethod
"ategory of request
( success
)ia direct
do*ain na*e
syste* access
( success
)ia Google
search
( success
)ia
Real!a*es1
$a*+le
si,e
Top brand names G9W G7W 7W !!
$andomly3selected brand names 9W ;W W !!
$andomly3selected :oston ?ellow ,ages
results QW Q7W MW !!
-ost selective colleges and universities in
the 'nited (tates of America 9!W GGW 7GW !!
$andomly3selected colleges and universities
in the 'nited (tates of America 6W G7W 7W !!
;verall ?+vera1e , 0otal' BDE F2E &0E G00
]=ote+ $eal=ames ceased business operations in Bune ;!!;) but is included as one example of a >eyword system
(see/ttp5,,666*realnames*comJ.
(ource+ /ttp5,,cyber*la6*/arvard*edu,people,edelman,dnsAasAsearc/ 2
;M. (ome &nternet practices that may raise trademar> issues) such as Rhyperlin>ingR and Rmeta taggingR) are important to facilitate
usersU navigation of the Deb. =evertheless) they raise concerns for trademar> owners since they create associations and lin>s)
thereby increasing the ris> of confusion) dilution or other forms of unfair exploitation of trademar>s. A growing body of %urisprudence
is developing in some countries) as courts and legislatures determine the limits of legal activity in this Celd. SGGT Dhile there are
divergences of approach between countries based on their distinct national laws relating to trademar>s) trade practices and unfair
competition) it is difcult for enterprises to formulate a coherent mar>eting strategy for their activities in e3commerce. A number of
these emerging practices are described below) namely+ (iJ use of trademar>s as meta tagsL (iiJ sale of trademar>s as >eywordsL (iiiJ
pop3up advertisementsL (ivJ mousetrappingL and (vJ lin>ing and framing.
(aJ 'se of Trademar>s as -eta Tags
;P. A Rmeta tagR or Rmeta dataR is a >eyword or phrase embedded in a websiteUs #T-. (hypertext mar>up languageJ code as a
means for &nternet search engines to identify and categori5e the contents of the website. S;!!T -eta tags are not visible to normal
users on the website itself (although they can be made visible together with the source code of the pageJ) however) a search engine
see>ing particular >eywords will Cnd and list that particular site. The more often a >eyword appears in the hidden code) the higher a
search engine will ran> the site in its search results. &n various %urisdictions) trademar> owners have challenged the unauthori5ed use
of their trademar> as a meta tag. S;!T
;G. #owever) a trademar> employed as a meta tag) because it is used in a way that is invisible to the average viewer) is not used
primarily to distinguish particular goods or services) a Cnding that is generally necessary to establish trademar> infringement. &n
some %urisdictions) the courts have nevertheless found that companiesU use of competitorsU names as meta tags constitutes unfair
competition) S;!;T including the &ndian case of 0ata Sons %imited v* 7odacious 0atas) S;!6T and the &talian case of :enertel Sp+ v*
(ro6e Italia Srl.S;!QT &n the 'nited (tates of America) in the case of 7roo->eld (ommunications Inc* v* West (oast Entertainment
(orp) S;!9T the "ourt regarded the practice of meta tagging as potential trademar> infringement) stating that such use might
suggest sponsorship or authori5ation by the trademar> owner) or that consumers loo>ing for the products of the trademar> owner
might be misdirected and diverted to a competitorUs website and be at least initially confused in their search for the trademar>ed
goods. S;!7T
6!. #owever) while as a general rule the unauthori5ed use of a trademar> as a meta tag is considered unlawful) this approach is not
universal. A number of cases brought by ,layboy -aga5ine illustrate the complexity of the law in this area) and the diversity of
outcomes even within one legal %urisdiction. &n the American cases of Playboy Enterprises Inc* v* (alvin Desi1ner
%abel) S;!MT and Playboy Enterprises) Inc* v* +sia.ocus International) Inc*) S;!PT the "ourts prevented the defendants from using the
mar>s R,layboyR and R,laymateR as meta tags on their websites) as well as in related domain names. &n the case of Playboy
Enterprises Inc* v* Welles) it was held that use as a meta tag of the ,laymate trademar> by a former ,laymate of the year) to enable
consumers to locate her website) was a fair use. S;!GT (imilarly) in Playboy Enterprises v* 8etscape (ommunications) S;!T the "ourt
found that the use of trademar>s as meta tags by the defendantUs search engines) which lin>ed adult entertainment advertisements
to the trademar>ed terms) was in fair use.
6. &t is becoming clear that the courts may allow the use of trademar>s as meta tags where such use is not misleading or unfair. &n
the case of 8umtec Intersta/l) the Austrian (upreme "ourt held that it was legitimate for the defendant to use the plaintifUs
trademar> as a meta tag on its website) because such use enabled the public to be informed about products the plaintif produced
under patent) and because the average user would not be confused as to the ownership of the trademar>. S;T (imilarly) the
$egional Trial "ourt in the ,hilippines) in P/ilippine %on1 Distance 0elep/one (ompany) Inc* v* P/ilippine %ea1ue for Democratic
0elecommunications) Inc* and :erardo 7* #aimo) found that the defendantUs use of meta tags on a parody site clearly used to critici5e
the plaintifUs business schemes and raise public awareness of political issues) was not li>ely to confuse or mislead users and
therefore did not amount to trademar> infringement. S;;T &n the American case of 7i/ari v* :ross) the use of a meta tag was found
to be in fair use when the two parties are not competitors) and the tag was used by the defendant on a site critical of the plaintifUs
business and therefore unli>ely to cause confusion. S;6T (imilarly) in the case ofPromate- Industries %td* v* E=uitrac (orp.) the '.(.
"ourt of Appeals modiCed an earlier opinion to clarify that use of anotherUs trademar> as a meta tag may be permissible if it is not
deceptive) stating+ R&t is not the case that trademar>s can never appear in meta tags) but that they may only do so where a
legitimate use of a trademar> is being made.R S;QT
(bJ (ale of Trademar>s as Eeywords
6;. As noted above) &nternet users are increasingly resorting to search engines to locate information online) as an alternative to
relying on domain names to navigate the Deb. S;9T 'sers request a search of speciCed terms and the search engine then uses a
mixture of manual and automated methods to locate those >eywords on the Deb) either in meta tags) '$.s) >eyword listing or based
on a history of visits. :ased upon this data) the search engine attempts to ran> the information so that more relevant information is
provided Crst. -ost site owners see> to maximi5e their chance of being highly ran>ed in search results) because the higher the
volume of users to a site) the higher the potential advertising revenue. (ome of these search engines RsellR >eywords to advertisers
who want to target their mar>eting) such that) whenever the >eyword is entered into the search engine) an advertisement appears
along with any search results. $etailers) for example) have purchased >eywords so that their banner advertisements are displayed
whenever certain trademar>ed products are the ob%ect of a search. S;7T
66. This practice has been challenged by trademar> owners as a diversion of customers from their own website) or from the
websites of their preferred or authori5ed web retailers. #owever the legal treatment of such cases is still developing. &n the
abovementioned case of Playboy Enterprises Inc* v* 8etscape (ommunications (orporation) the "ourt denied preliminary relief stating
that the R,layboyR and R,laymateR >eywords sold by the defendant were used by searchers as common or generic words) not the
mar>s. S;MT &n the pending case of <ar- 8utritionals Inc* v* .indW/at Services Inc*) the plaintif has Cled suit against a number of
&nternet service providers) alleging that the search enginesU sale of >eywords containing its trademar> altered the search results
related to their product in a manner that amounted to trademar> infringement and dilution. S;PT
(cJ ,op3'p Advertisements
6Q. The pop3up ad is a window) not initiated by the user that appears on top of the content page when a site is loaded. A user who
clic>s on the pop3up graphic will be redirected to the advertiserUs website) otherwise) and unless closed by the user) the pop3up
window will close automatically after a short period of time. S;GT ,op3up ads are used as mar>eting tools designed to capture
consumersU attention) and are based on software designed to trac> usersU online activity and then deliver targeted advertising based
on their preferences.
69. &n the American case of Was/in1tonpost*8e6s6ee- Interactive (o* v* :ator (orp.) the "ourt issued a preliminary in%unction that
prohibited the defendant from enabling third3party advertising to appear on a userUs computer screen while the user was viewing
websites owned or afliated with the plaintifs) who were 7 online news companies. S;;!T The "ourt found that the software violated
the plaintifsU trademar>s by causing pop3up advertising to appear in proximity to them.
(dJ -ousetrapping
67. R-ousetrappingR is an aggressive mar>eting technique that forces users to remain on a speciCc website) sometimes while
disabling their browser functions or Xooding them with pop3up ads. Dhenever the user tries to leave the site by using the Rbac>R)
RforwardR or RcloseR buttons) a new window is automatically opened that prevents the browser from leaving the site. To exit the loop)
the user is forced to end the tas> or reboot his computer. S;;T A recent court decision at the suit of the 'nited (tates *ederal Trade
"ommission permanently barred the defendant from diverting or obstructing consumers on the &nternet and from launching websites
or webpages that belonged to unrelated third parties. &n that case) the defendant was registering &nternet domain names that were
misspellings or versions of legitimate domain names and) once consumers arrived on the defendantUs sites) they were unable to
exit. S;;;T
(eJ .in>ing and framing
6M. As described above in relation to copyright) S;;6T lin>ing technologies enable &nternet users to access content stored in the Cles
of millions of individual computers and enable users to use lin>s to retrieve information from Cles on the same or other
websites. S;;QT #owever) lin>ing can also raise concerns of trademar> infringement if it explicitly or implicitly suggests an
unwarranted association between the lin>ing and lin>ed sites) and leads a user to believe that an unassociated web page is afliated)
approved) or sponsored by the trademar> owner. &n the 'nited (tates case of 0ic-etmaster (orp* v* <icrosoft (orp*) S;;9T the plaintif
alleged that a deep lin> from the defendantUs site to events pages within its site implied a false association that constituted unfair and
deceptive trade practices and a dilution of its trademar>s) in addition to copyright infringement) trespass and false advertising. The
deep lin>s) which bypassed the plaintifUs home page and its associated advertising) potentially diminishing its revenue) also
conXicted with the plaintifUs contractual agreements with other companies that had paid to lin> to its site or advertise on its home
page. #owever) the 0istrict "ourt did not address the issues as the case was settled. S;;7T &n the case of .ord <otor (ompany v*
200 Enterprises) S;;MT however) the "ourt denied the claims for alleged unfair competition and trademar> dilution as a result of
lin>ing) because the defendants had not used the plaintifUs mar> in commerce) nor in connection with the sale) or advertising for
sale) of any goods or services.
6P. The related practice of framing) also described above in relation to copyright) S;;PT equally raises concerns of trademar>
infringement because of its potential to mislead or confuse viewers as to the origin of the site and the goods and services it displays.
&n contrast to lin>ing) users viewing framed material usually remain on the original site and view content from both sites) possibly
without being aware that the material has been called up from another site) raising the potential for trademar> liability.
6G. &n the American case of 0/e Was/in1ton Post v* 0otal 8e6s) Inc.) S;;GT six ma%or news organi5ations whose content had been
framed by the defendant alleged misappropriation) trademar> dilution and infringement) false and deceptive advertising) unfair trade
practices) copyright infringement) and tortious interference with their advertising contracts. The defendant in this case had framed
news content from the plaintifUs sites with advertisements that it had itself sold) thereby diverting advertising revenue and) by
maintaining its own site address for the material) made it appear that the news originated from its site. A settlement was reached
that permitted the defendant to maintain its lin>s to the news sites) upon agreement to cease framing the plaintifUs material in
association with any third party advertising or its '$..
(iiiJ ,$&="&,.E K* TE$$&TK$&A.&T? A=0 '(E K* T$A0E-A$E( K=.&=E
Q!. The developments described above share a number of common legal principles) arising from use of a trademar> as a sign on the
&nternet) for example as meta tags or domain names. To a large extent) these relate to the territorial nature of trademar> law in the
context of trademar>s used on a global medium such as the &nternet. Dhen a trademar> is used on the &nternet it is immediately
visible to a global audience and may be considered to have global efect. This particular feature of the &nternet ma>es it difcult for
businesses to foresee in which countries their business activities might become legally relevant. 0ue to the particularities of &nternet
technology) it is often difcult to Ct the RuseR of a trademar> on the &nternet into traditional legal concepts of use in the physical
world. The issues described below are addressed further in part (ivJ of this "hapter) in the context of the D&,K Boint $ecommendation
"oncerning ,rovisions on the ,rotection of -ar>s) and Kther &ndustrial ,roperty $ights in (igns) on the &nternet) described
below. S;6!T
(aJ Acquisition of Trademar> $ights Through 'se of a (ign on the &nternet
Q. &n some countries) where trademar> protection depends on prior use of the mar> in that country) the question arises whether
use on the &nternet can satisfy such a use requirement and) if so) what >ind of use would qualify as Rgenuine use.R This is important
because) in most countries) a trademar> registration is sub%ect to cancellation if the trademar> has not been used within a certain
period of time. S;6T &t seems that use of a trademar> on the &nternet may qualify as Rgenuine useR for the purposes of use
requirements. S;6;T The trademar> owner will have to show that its trademar> was actually present in that mar>et) for example by
proving actual sales or other commercially motivated relationships with customers in a country. S;66T This can be difcult if the
trademar> owner delivers goods or services exclusively over the &nternet) or) in particular) if the goods or services are provided for
free as in the case of &nternet search engines) which have little or no physical presence outside the &nternet.
(bJ &nfringement of Trademar> $ights Through 'se of a (ign on the &nternet
Q;. The use of a sign on the &nternet can infringe a trademar> only if such use is deemed to have ta>en place in the country where
the trademar> en%oys protection. The question arises under what conditions the appearance of a mar> on the &nternet might
constitute use in a particular forum and give rise to infringement. The notion of infringement can either be extensive or restrictive.
'nder an extensive concept of infringement) it would sufce that a sign is visible on a computer screen in the country where a
conXicting right exists.S;6QT The exclusive right in a trademar> would then have an almost worldwide efect. &t could even be used
to bloc> use that was neither aimed at a country) nor had an efect in that country over and above the visibility of the sign on a
computer screen. 'nder this view) use of a sign on the &nternet could provo>e infringement claims in potentially every country in the
world. S;69T
Q6. 'nder a more restrictive concept) the Cnding of an infringement would require a connection between the use of the sign on the
&nternet and the country in which the trademar> en%oys protection. Dhile factors for establishing such a lin> with a particular country
need to be considered) diferent countries may adopt diferent standards. &f it were possible to agree on a set of criteria at the
international level) it would be easier for businesses to foresee in which countries their activities on the &nternet might become legally
relevant. 'nder such an approach two further questions might be usefully addressed+ *irst) would the Cnding of a connection with
particular countries require that the user intended to produce an efect in those countries) or that such an efect was at least
foreseeable@ (econdly) would it be necessary to distinguish between various degrees of interactivity of the website on which the sign
is used@ S;67T -oreover) use in the context of advertising might have to be treated diferently from use on websites for the purchase
of goods or services. S;6MT
QQ. $elated to these questions is the question of whether users of a sign on the &nternet should be able to avoid a lin> with a
particular country by the placement of a disclaimer on their website. S;6PT (uch statements may provide a Xexible tool for
enterprises to territoriali5e their use of a sign on the &nternet) and to avoid infringement claims in particular territories where
conXicting rights might exist. They pose) however) a number of problems+ Crst) the user of a sign might have to search for
conXicting rights all over the world in order to determine whether to disclaim particular countries (RThis product is not available in
countries F) ? and 8RJ or other individual rightholders (RDe have no relationship with A) :) and "RJ. The practical difculties of doing
so would be increased by the fact that such statements would probably have to appear in the languages used in each of these
countries. (econd) such statements would always bear a residual ris> of confusion.
(cJ Acceptable 'nauthori5ed 'se
Q9. .egal systems may provide exceptions for the Rfair useR of a sign that is protected as a trademar>. S;6GT (uch exceptions often
apply when a sign is used fairly and in good faith in a purely descriptive or informative manner. &t is also often stipulated that such
use should not extend beyond that which is necessary to identify the person) entity or the goods or services) and that nothing is done
in connection with the sign which might suggest endorsement or sponsorship by the trademar> holder. (uch exceptions may be
equally applicable when a sign is used on the &nternet. S;Q!T Kther examples of acceptable unauthori5ed trademar> use include use
in a non3commercial context or use that is protected by the right of free speech) such as consumer criticism expressed in relation to a
particular trademar>. S;QT
Q7. (ince approaches difer from country to country) international harmoni5ed criteria could increase predictability in this context)
for the beneCt of participants in electronic commerce. &t would not be realistic) or for that matter desirable) for such a harmoni5ed
approach to attempt to regulate every new means of using a distinctive sign on the &nternet. &n order to be technologically neutral)
any attempt might only see> to identify general standards for distinguishing acceptable from unacceptable practices. &n this respect)
two diferent approaches might be useful+ an attempt could be made to develop criteria concerning unacceptable use) or
alternatively) deCnition could) in a general way) be given to forms of Rfair useR that each country would treat as acceptable in its
territory. S;Q;T
(dJ Alobal Efect of &n%unctions
QM. The scope of a trademar> right is determined not only by deCning when such right is infringed) but also by specifying the
remedies available to the rightsholder when an infringement has ta>en place. &f a trademar> right has been infringed by the use of a
sign on the &nternet) the question arises whether its owner should be able to demand) with the help of the courts) that the defendant
cease every use of the sign throughout the &nternet@ S;Q6T (uch an in%unction would have an efect that is as global as the &nternet
itself. &f traditional trademar> law is to be translated into cyberspace) a national (and thus territorially limitedJ trademar> right should
not give rise to an exclusive right throughout the worldwide expanse of this medium. &t would) therefore) be appropriate if available
remedies were) as far as possible) limited to the territory for which the owner holds an exclusive right. S;QQT "ourts might have to
ta>e a creative approach in framing equitable relief) such as obliging the user of a sign on the &nternet to ta>e reasonable measures
for avoiding contacts with the territory in which the trademar> owner holds an exclusive right. This could be efected) for example) by
placing adequate statements on the website (e.g.) disclaimers) as aboveJ) by using technical mechanisms to bloc> access by &nternet
users located in a particular country) or by refusing to deliver goods or services to customers located in a particular territory.
"oncurrent users could also be encouraged to share a common gateway page or portal) or to mutually provide lin>s to their
respective websites. S;Q9T
QP. &nternet3wide in%unctions) however) should not be completely excluded as a possible remedy. Especially in cases where the use
of a sign on the &nternet has intentionally and in bad faith targeted a trademar> right) S;Q7T it may be appropriate to prohibit every
form of use of the conXicting sign on the &nternet in order to remove its efect on the territory (or territoriesJ in which the trademar>
en%oys protection) and to prevent such use from violating the legitimate interest of the trademar> holder.
(eJ Enabling "o3existence of $ights on the &nternet
QG. :ecause of the territoriality of trademar> rights) identical or confusingly similar trademar>s can be held in diferent countries by
diferent owners who are completely unrelated to one another. S;QMT This coexistence can be more difcult on the &nternet where a
sign may be visible on computer screens (or other digital devicesJ across the world. The user of a trademar> on the &nternet might
become involved in a dispute in a foreign %urisdiction) under a law that does not recogni5e the userUs right to the disputed trademar>)
but which accords rights in it to another person. Dhat had been coexistence of rights in the physical world becomes a conXict
between rights on the &nternet.
9!. (uch conXicts can lead to a situation where conXicting rightsholders may attempt to bloc> each other from using their sign on
the &nternet) with the help of their national courts) for example) where one trademar> holder has secured an in%unction in its
%urisdiction against the competing user) who) in turn) has done the same in its %urisdiction. &t would seem) therefore) that this problem
has to be addressed at its roots) that is) in trademar> law) in order to give legitimate right owners some certainty that they can use
their trademar>s on the &nternet without having to fear claims raised against them by rightholders in other %urisdictions.
9. Kne approach might be the adoption of a general principle according to which every holder of a right in a distinctive sign may
use that sign on the &nternet concurrently with any other rightholder) sub%ect to certain limitations. (uch a principle might be
regarded as an expression of the independence of national trademar> rights provided for by Article 7(6J of the ,aris "onvention. &n
court) the fact that a defendant holds an exclusive right in the sign in another country could form a defense or a rebuttable
presumption of legitimate use) the factual preconditions for which might have to be proved by the defendant.
9;. (uch a principle for the coexistence of legitimate rights could have to be limited in two respects in order to safeguard the
interests of trademar> owners. *irst) the ris> of confusion should be reduced to a minimum. To this efect) it could be required that
the user of the sign clearly indicate where the trademar> is protected) and that other users of the sign have no relationship with
it. The disclaimer statements described above could be used. A ris> of confusion) however) could not be avoided completely) since
&nternet users searching for a particular trademar> owner might call up the website of a concurrent user and only then) after reading
a clarifying statement on that website) reali5e that they did not Cnd what they were loo>ing for. This residual ris> of confusion)
however) may be outweighed by the fact that) in cases of conXicts between legitimate (national or regionalJ rights) the principle
enables each rightholder to use its right on the &nternet.
96. (econd) coexistence would not be appropriate if one of the users had registered or used its trademar> in bad faith. Knly good
faith use should proCt from the limitation of infringement claims. &n court) bad faith could serve as a means to rebut the presumption
of legitimate use. The facts constituting bad faith registration or use might then need to be proven by the plaintif. &n determining
bad faith) it might be possible to draw on Article Q(9J(cJ of the D&,K Boint $ecommendation "oncerning ,rovisions on the ,rotection of
Dell3Enown -ar>s) according to which >nowledge or reason to >now of the conXicting mar> is to be ta>en into account. S;QPT A
Cnding of bad faith could encompass situations where one rightsholder has acquired or uses a sign with a view to proCt from the
goodwill associated with the other trademar>. Additional criteria would have to be determined in order to render the application of
the bad faith exception predictable.
(ivJ D&,K BK&=T $E"K--E=0AT&K= K= ,$KTE"T&K= K* -A$E( K= T#E &=TE$=ET
9Q. :ased on preparatory wor> by the (tanding "ommittee on the .aw of Trademar>s) &ndustrial 0esigns and Aeographical
&ndications (("TJ) S;QGT the Assembly of the ,aris 'nion for the ,rotection of &ndustrial ,roperty and the Aeneral Assembly of D&,K
adopted) on the occasion of the thirty3sixth session of the Assemblies of the -ember (tates of D&,K) in (eptember ;!!) the D&,K
Boint $ecommendation "oncerning the ,rotection of -ar>s) and Kther &ndustrial ,roperty $ights in (igns on the &nternet (the RBoint
$ecommendationRJ. S;9!T The Boint $ecommendation addresses the complex questions raised above) resulting from the tension
between the global nature of the &nternet and the territorial rights of mar>s.
99. The ,reamble to the Boint $ecommendation ma>es clear that it does not purport to be a trademar> law for the &nternet) but is
intended to guide the application of existing national or regional laws with respect to legal problems resulting from the use of a sign
on the &nternet. Emphasi5ing the Rglobal natureR of the &nternet) the Boint $ecommendation aims at providing the clearest possible
legal framewor> for trademar> owners who wish to use their mar>s on the &nternet and to participate in the development of e3
commerce upon it. &ts purpose is) therefore) to help competent authorities S;9T to determine whether) under the applicable law) the
use of a sign on the &nternet has contributed to the acquisition) maintenance or infringement of a mar> or other industrial property
right in the sign) or whether such use constitutes an act of unfair competition) and thereafter to apply appropriate remedies.
97. The determination of the applicable law itself is not addressed by the Boint $ecommendation) but is left to the principles of
private international law) as they are applied in each -ember (tate. The provisions address three main questions+
Dhen can use of a sign on the &nternet be considered to have ta>en place in a particular country@
#ow can those who own conXicting rights in identical or similar signs be enabled to use these signs concurrently on the
&nternet@
#ow can courts ta>e account of the territorial basis of industrial property rights in signs when determining remedies@
9M. The Crst question is relevant for determining whether use on the &nternet has contributed to establishing) maintaining or
infringing an industrial property right in a sign in a particular country. The provisions are based on the assumption that not each and
every use of a sign on the &nternet should be treated as ta>ing place in the -ember (tate concerned) even though it might be
accessible to &nternet users based in that country. This fact is expressed in the term Rcommercial efect.R S;9;T The Boint
$ecommendation provides that only use that has commercial repercussions in a given -ember (tate) or) in other words) use that has
a Rcommercial efectR in a -ember (tate) shall be treated as having ta>en place in that -ember (tate (Article ;J. The provisions
introduce the words Ruse of a sign on the &nternet in a -ember (tateR as a shorthand expression for use of a sign on the &nternet)
which is deemed to have ta>en place in a -ember (tate as a result of its commercial efect.
9P. The determination of whether use of a sign on the &nternet has produced a commercial efect in a particular -ember (tate) and
whether such use can be deemed to have ta>en place in that -ember (tate) is to be made on the basis of all relevant circumstances.
A competent authority is therefore free to determine which factors are relevant in a given case. The provisions) however) provide a
detailed but non3exhaustive list of factors) which can be relevant for determining commercial efect) as follows+
doing or planning to do business in a -ember (tateL
character and level of commercial activity carried out in a -ember (tateL
location of customersL
use of a Rterritorial disclaimerR stating that the goods or services ofered are not available or only available in particular
-ember (tatesL
actual delivery of goods or services to customers located in a -ember (tateL
speciCc language use on the &nternet siteL
prices indicated in the currency of a -ember (tateL
address or contact information in a -ember stateL
interactivity of the websiteL and
registration of the website under a country code top level domain.
The provision states that the list of factors is neither cumulative nor exhaustive) but functions as a chec>list of factors which might be
relevant in a given case) without obliging the competent authority to express an opinion about every listed factor. &t follows the
model of the Boint $ecommendation "oncerning ,rovisions on the ,rotection of Dell3Enown -ar>s) which also sets out a list of guiding
factors for the determination of a well3>nown mar>. S;96T
9G. The provisions are only applicable to rights that are protected in a commercial context. &n so far as -ember (tates also protect
certain rights in signs) such as personality rights) in a purely non3commercial context) they are free to either grant such protection in
relation to use of a sign on the &nternet independently of whether such use has a commercial efect) or to apply the present
provisions.
7!. The second question is a direct consequence of the tension between territorial rights and a global medium. :ecause of that
territoriality) diferent owners can hold industrial property rights in identical or similar signs in diferent countries. This can create
problems if a sign is used on the &nternet. :ecause of the necessarily global nature of the &nternet) such use might be considered as
infringing a right under the law of a -ember (tate in which the right of the user is not recogni5ed. As mentioned above) what was
coexistence of rights in the real world turns into potential RconXict of rightsR on the &nternet. &n the discussions ta>ing place in the
("T) it was emphasi5ed that such conXicts should be resolved on the basis of a fair balance of interest) providing efective protection
for rightholders without unreasonably burdening commercial activities on the &nternet.
7. The provisions Crst restate the principle according to which) except where otherwise provided for) there shall be liability in a
-ember (tate under the applicable law when a right is infringed) or an act of unfair competition is committed) through use of a sign
on the &nternet in that -ember (tate. The provisions then introduce a two3step procedure) called a Rnotice and avoidance of conXictR
procedure (,art OJ. $ightsholders who use their sign in good faith are exempt from liability up to the point when they are notiCed of a
conXicting right (Article GJ. As a consequence) they would not be sub%ected to any in%unction) or held liable for any damages
occurring) before notiCcation. 'sers would) therefore) not be forced to underta>e a worldwide search for conXicting registered or
unregistered rights before using their sign on the &nternet. This would have been almost impossible to achieve) and very costly) and
certainly detrimental to the development of commerce over digital networ>s.
7;. =otiCcations) when sent by the rightsholder or her representative) by mail) e3mail or facsimile) in the language or one of the
languages used in connection with the sign on the &nternet) are efective) pursuant to Article ) if they include the following+
the right alleged to be infringedL
the identity of the rightsowner and information reasonably sufcient to contact him or his representative by mail) e3mail or
facsimileL
the -ember (tate in which that right is protectedL
relevant details of such protection) allowing the user to assess the existence) nature and scope of that rightL and
the use that is claimed to infringe the right.
As a second step of the procedure) users who have received a notiCcation relating to a RconXictingR right) have to ta>e reasonable
measures for avoiding or ending the conXict (Article !J. &f they fail to do so) they may be sub%ect to liability.
76. &n order to provide rightholders with a sufcient degree of legal certainty as to how to avoid liability for the infringement of
conXicting rights which they are already aware of) -ember (tates would have to accept a RqualiCed disclaimerR as a sufcient
measure to avoid liability (Article ;J. (uch disclaimers are statements designed to avoid a commercial efect in a particular country)
and to avoid confusion with the other rightsholder. The user would also have to abide by his statement by as>ing customers where
they are located) and refusing delivery to those who have indicated that they are based in the country disclaimed. 'sers would)
however) not be required to verify the statements made by their customers because this is almost impossible in cases where the
whole transaction ta>es place over the &nternet.
7Q. The third question also addresses a problem resulting from the tension between territorial rights and a global medium. An
in%unction to cease every use of a sign on the &nternet would go far beyond the territory in which a conXicting industrial property right
in that sign exists. &t would have an efect) which is as global as the &nternet. A decision as to remedies should therefore ta>e the
territorial limitation of industrial property rights in mar>s or other signs into account. $emedies should be limited) as far as possible)
to the territory in which the industrial property right is recogni5ed) and they should only be available if the allegedly infringing use of
the sign can be deemed to have ta>en place in that territory. This is determined with regard to the Rcommercial efectR of such use in
the -ember (tate in question. Thus) the Rcommercial efectR of &nternet use should serve as a yardstic> for determining a
RproportionateR remedy. 'se of a sign on the &nternet that infringes an industrial property right in a -ember (tate should not be
prohibited any more than is proportionate to the commercial efect that such use has produced in that -ember (tate (Article 6J.
&n%unctions should generally be limited to what is necessary to prevent or remove the commercial efect in the -ember (tate (or the
-ember (tatesJ in which the infringed right is protected) and damages should be granted only for the commercial efect of the use in
that -ember (tate.
79. The provisions require courts to be creative in considering limitations of use designed) on the one hand) to avoid a commercial
efect in the -ember (tate) or in the -ember (tates) in which the infringed right is protected) and to avoid any confusion with the
owner of that right on the other hand) such as RqualiCed disclaimersR) gateway web pages and the li>e (Article QJ. ,rohibitions to
cease every use of a sign on the &nternet might still be necessary in certain cases. #owever) the provisions exempt such users from
such Rglobal in%unctionsR if they hold a right in the sign they use on the &nternet and do not act in bad faith (Article 9J.
77. The Boint $ecommendation also requires -ember (tates to protect industrial property rights against new and emerging infringing
uses) as they occur on the &nternet. Article 7 requires that RSaTny use of a sign on the &nternet) including forms of use that are made
possible by technological advances) shall be ta>en into consideration for determining whether a right under the applicable law of a
-ember (tate has been infringed) or whether that use amounts to an act of unfair competitionR. &t is envisaged that this will provide
for use of mar>s and signs in banner advertisements) when sold or purchased as >eywords and in meta tags) as well as future uses as
they become evident.
(vJ D&,K BK&=T $E"K--E=0AT&K= K= DE..3E=KD= -A$E(
7M. :ecause of the heightened attention that fame attracts) well3>nown mar>s have for a long time been considered to warrant
special protection) over and above that accorded to other) ordinary mar>s under intellectual property law. S;9QT That special
protection is well established in the ,aris "onvention as well as in other regional or international agreements. S;99T Dhile there is an
international obligation to accord protection to well3>nown mar>s) there exists no established treaty deCnition of what constitutes
such a mar>. &t is left to the appreciation of the competent authority in the country where protection is asserted. S;97T
7P. Dell3>nown mar>s have been the special target of a variety of abusive practices on the &nternet. D&,K) through the ("T) has
been wor>ing to develop provisions in this area) which were adopted as a Boint $ecommendation "oncerning ,rovisions on the
,rotection of Dell3Enown -ar>s by the D&,K Aeneral Assembly and the ,aris 'nion Assembly in (eptember GGG. S;9MT The
provisions intend to clarify) consolidate and supplement the existing international protection of well3>nown mar>s) as established by
Article 7 bis of the ,aris "onvention and Articles 7.; and 7.6 of the T$&,( Agreement. &n particular) the Boint $ecommendation in
Article ; contains a list of factors that may be used by a competent authority to determine whether a mar> is well3>nown in its
territory. S;9PT Dhile the Boint $ecommendation does not have the force and efect of a treaty) -ember (tates may consider the use
of any of these provisions as guidelines for the protection of well3>nown mar>s.
7G. The Boint $ecommendation (Article 7J expressly addresses conXicts between well3>nown mar>s and domain names. According to
this provision) a domain name shall be deemed to be in conXict with a well3>nown mar> at least where that domain name) or an
essential part thereof) constitutes a reproduction) an imitation) a translation or a transliteration of the well3>nown mar>) and the
domain name has been used or registered in Rbad faith.R &t is understood that Rbad faithR will include the cases that are currently
>nown as Rcybersquatting.R &n this regard) D&,K) in the recommendations in the $eport of the Crst D&,K &nternet 0omain =ame
,rocess) developed a deCnition of the abusive) bad faith registration of a domain name) that was subsequently incorporated into the
'niform 0omain =ame 0ispute $esolution ,olicy ('0$,J) by the &nternet "orporation for Assigned =ames and =umbers
(&"A==J. S;9GT
(viJ '=*A&$ "K-,ET&T&K=
M!. "ommerce means competition) and where there is competition) acts of unfair competition are liable to occur. E3commerce is no
exception. This new channel of commerce has) for some time) been regarded as a Rwild westR) where almost anything can and does
happen. E3commerce will reali5e its potential) however) only if some scope of protection and recourse against acts of unfair
competition is provided. ,rotection against unfair competition supplements the protection of intellectual property rights. Dithout
such protection) companies are li>ely to gauge the ris>s of damage to their reputations) loss of customers and liability from engaging
in e3commerce) with the threatened consequence that innovation and freedom of competition is stiXed.
M. Dhereas issues concerning trademar>s and the &nternet have been at the forefront of discussions) questions relating to acts of
unfair competition have attracted much less attention. ,rotection against unfair competition) however) covers an even broader scope
of issues relevant for electronic commerce. &t provides a legal framewor> for all forms of mar>eting) and it supplements the
protection of intellectual property through statutory rights. (o far) e3commerce has not been sub%ect to speciCc regulations dealing
with matters of unfair competition. =ational or regional laws apply together with international provisions contained in the ,aris
"onvention S;7!T and the T$&,( Agreement. S;7T The application of these rules to e3commerce) however) poses a number of
problems.
M;. :ecause mar>eting activities on the &nternet may be sub%ected to a variety of often contradicting legal systems) the
development of mar>eting strategies in e3commerce becomes more difcult. Dhat is allowed in one country may be forbidden or
strictly regulated in another. Even though Article ! bis of the ,aris "onvention and Article 6G of the T$&,( Agreement give some
guidance as to the internationally applicable rules for the protection against unfair competition) there remain many areas which are
regulated diferently in various national legal systems. *or example) comparative advertising and bonus or discount schemes are
forbidden in some countries) generally allowed in others) and more or less strictly regulated in still other countries. (uch regulatory
diferences afect the free circulation of goods or services in the digital environment.
M6. Experience has already shown that enterprises cannot simply continue their habitual mar>eting eforts online. They have to
adapt to and use the particular technical features of the &nternet) such as its interactivity and support of multimedia applications. As
the most Xexible part of industrial property law) unfair competition law may ofer solutions to the new problems that have arisen in e3
commerce. S;7;T =evertheless) problems may arise with regard to the following issues+
(aJ &nteractive -ar>eting ,ractices
MQ. :ecause e3commerce relies on interactive contacts with prospective customers) attracting their attention is a core issue. Knline
mar>eting often uses strong incentives such as lotteries) free gifts or rebates) and tends towards more aggressive practices) such as
comparative advertising or unsolicited e3mails (spammingJ. Dith the broadband technologies that will become available in the next
few years) new forms of RimmersiveR mar>eting may also become prevalent. S;76T 'nder a number of legal systems) such
inducements may be considered contrary to honest trade practices. (hould the standard for establishing unfair practices in e3
commerce ta>e the speciCc nature of the medium into account@ Aiven the mediumUs compelling interactivity) should more stringent
standards be considered@
(bJ Transparency and ,rivacy "oncerns
M9. &n an interactive medium li>e the &nternet) the safeguarding of transparency and privacy is of particular importance. 'nfair
competition law may have to include rules requiring a clear distinction between informative text and advertising) and protecting
consumers against the unauthori5ed collection of data for commercial purposes. Another related problem that may have to be
addressed) noted above) is the Xooding of users with unsolicited advertising and spam mail.
(cJ =ational Oersus &nternational (tandards of R'nfairR -ar>eting ,ractices
M7. Dhether a particular statement is misleading will usually be determined with regard to the public to which it is addressed. :ut
mar>eting practices in e3commerce are often directed at a public in more than one country. Dhat can be misunderstood in one
country might be perfectly clear in another. (hould mar>eting online be required to ta>e into account the level of >nowledge or the
understanding of the audience in every country where the message can be received) or at least in every country foreseeably afected
by it@ Kr should it be enough for an advertiser to show that a statement was not liable to be misunderstood in a Rhome countryR@
(dJ Trade (ecrets
MM. The protection of trade secrets is in many countries covered by unfair competition law. The protection of trade secrets on the
digital networ>s relies heavily on technological measures for information security) especially because after a trade secret has been
stolen and posted on the &nternet) courts sometimes experience difculty Cnding the RsecrecyR element of a trade secret. (ecrecy
issues are therefore of particular importance in the digital environment.
III. (c) DO%I! !%"$
MP. This "hapter introduces the topic of domain names) as they relate to intellectual property issues connected with the &nternet
domain name system (0=(J. Although not currently classiCed as a form of intellectual property) domain names as identiCers function
in a manner similar to trademar>s) and recent developments in the 0=( and in connection with the &nternet "orporation for Assigned
=ames and =umbers (&"A==J) established to coordinate the 0=() raise signiCcant issues for the intellectual property system. The
"hapter concludes by addressing D&,KUs programs in the Celd of domain names) and the wor> of the D&,K Arbitration and -ediation
"enter in the area of domain name dispute resolution resolving domain name disputes.
(iJ &=T$K0'"T&K= TK 0K-A&= =A-E(
MG. 0omain names are &nternet addresses in simpliCed form) designed to enable users to locate sites more easily. S;7QT They can be
registered in the Rgeneric top3level domainsR (gT.0sJ) such as .com) .org) .net) .bi5 or .info) or any of some ;Q6 Rcountry code top3
level domainsR (ccT.0sJ) such as .ch ((wit5erlandJ) .fr (*ranceJ or .5a ((outh AfricaJ.
P!. &n addition to their function as locators of &nternet sites) domain names have a function as identiCers of businesses and their
goods or services on the &nternet) which gives them an economic value comparable to that of other identiCers. This characteristic of
domain names has given rise to a great many ownership disputes with other signs that existed prior to the advent of the &nternet and
were protected by intellectual property rights) such as trademar>s. As noted in the D&,K ,rimer on Electronic "ommerce and
&ntellectual ,roperty &ssues (D&,K ,rimerJ) S;79T published in -ay ;!!!) the tension between domain names and other identiCers is
largely a result of the incongruous nature of the systems to which each type of identiCer belongsL the 0=( is to a large extent
managed by the private sector) and gives rise to registrations that result in a global presence) accessible from anywhere in the world
3 while the intellectual property system is managed by public authorities according to the principle of territoriality) giving rise to rights
that can only be exercised in a speciCc territory. The tension has been heightened by certain practices that involve persons abusively
registering as domain names distinctive signs) especially trademar>s) with a view to subsequently selling the domain names to the
owners of the identiCers) or simply ta>ing unfair advantage of the goodwill associated with them.
P. Among the solutions found to the question of the interface between domain names and intellectual property rights) one of the
most signiCcant has been the entry into force of the 'niform 0omain =ame 0ispute $esolution ,olicy ('0$,J. S;77T The '0$, was
adopted by the &nternet "orporation for Assigned =ames and =umbers (&"A==J S;7MT on August ;Q) GGG. The procedure introduced
by the ,olicy allows trademar> owners to settle cases of abusive domain name registration (cybersquattingJ without resorting to
national courts. 'pon accreditation by &"A==) the D&,K Arbitration and -ediation "enter began to provide its services for the
settlement of disputes concerning gT.0s and certain ccT.0s that had voluntarily adopted the '0$,.
P;. At the same time) on the basis of the Cnal $eport of the Crst D&,K &nternet 0omain =ame ,rocess) S;7PT certain issues called for
further reXection. Those issues had to do with the wrongful registration of domain names that infringed designations other than
trademar>s) such as &nternational =onproprietary =ames (&==sJ for ,harmaceutical (ubstances) names of intergovernmental
organi5ations) names of persons) trade names and geographical indications li>e geographical names and indications of source. &n
addition) the $eport emphasi5ed the concern of the owners of intellectual property rights regarding the introduction of new gT.0s)
fearing as they did the spread to the new domains of the abusive registration practices sufered in existing gT.0s. S;7GT
P6. The past two years have seen signiCcant developments in the context of intellectual property and domain names. Those
developments are considered in detail in (ection && of this "hapter. The &nternet landscape has itself recently undergone considerable
change with respect to both the identiCers that are used upon it (including multilingual domain names and >eywordsJ) as well as
issues related to the organi5ation) management and coordination of the 0=( (including the introduction of new gT.0s) emergence of
multiple roots) and &"A== reformJ. These developments) described below) have a bearing on intellectual property concerns.
(iiJ $E"E=T 0EOE.K,-E=T( "K="E$=&=A 0K-A&= =A-E( A=0 &=TE..E"T'A. ,$K,E$T?
(aJ =ew gT.0s
PQ. The introduction of new generic top3level domains (gT.0sJ to complement those already existing (.com) .org) .net) .edu) .gov)
.mil and .intJ has been the sub%ect of intense debate for a number of years. &"A== undertoo> a long process that included+ the
publication of criteria for the evaluation of proposed new T.0s) a request for proposals) publication of the non3conCdential parts of the
QM proposals received) a period set aside for comments from the public and the publication of the report on the evaluation of the
proposals received. *inally) on =ovember 7) ;!!!) S;M!T &"A== authori5ed the inclusion of seven new gT.0s in the 0=(. The new
gT.0s are+ .aero (for the aeronautical industryJ) S;MT .bi5 (for business activitiesJ) S;M;T .coop (for accredited cooperativesJ)
S;M6T .info (for various activitiesJ) S;MQT .museum (for museumsJ) S;M9T . name (for personal namesJ S;M7T and .pro (for professional
entitiesJ. S;MMT
P9. The new gT.0s fall into two categories+ (iJ the RunsponsoredR gT.0s (.bi5) .info) .name and .proJ) which operate under policies
established by Rthe global &nternet community directly through the &"A== process)R S;MPT L and (iiJ the RsponsoredR gT.0s (.aero)
.coop and .museumJ) each being Ra speciali5ed T.0 that has a sponsoring organi5ation representing the narrower community that is
most afected by the T.0.R S;MGT The seven new gT.0s are managed under contracts concluded with &"A==.
P7. All the new gT.0s are operational with the exception of .pro. 0omain names can be registered under the six new gT.0s that are
operational by approaching any &"A==3accredited registrar. S;P!T Each of the registrars for new gT.0s has ta>en measures to protect
intellectual property rights) either preventively by introducing procedures whereby the owners of intellectual property rights can
assert those rights before the registrations are made available to the wider public) or e2 post facto by adopting the '0$,) or both. &n
addition) some registrars that administer domains reserved for certain categories of users) such as .bi5 or .name) have introduced
special procedures for settling disputes that relate to the restrictions on registration) whereby third parties can contest a registration
that is alleged to have been made in breach of such restrictions. These measures are explained in paragraphs ;63;P of this
"hapter.
PM. -ore than a year after the decision to introduce the seven new gT.0s) the &"A== :oard of 0irectors resolved S;PT to launch an
evaluation process S;P;T addressing the performance of the new gT.0s and their impact on the 0=(. The evaluation relates to a
number of technical) business or legal issues. ,rovision is made for the examination of+ (iJ the efcacy of the various preliminary
registration and other measures ta>en to limit the ris>s of violation of trademar> rights in the start3up phase of new gT.0sL (iiJ the
greater diversiCcation of the 0=() and its efect on the interface between domain names and intellectual property rights+ (will it allow
greater coexistence between trademar>s and other distinctive signs in the 0=() or will it on the contrary cause an increase in
problems of intellectual property rights being infringed by the registration of domain names@JL (iiiJ the reaction of &nternet users)
search engines and directory services to this greater diversiCcation of the 0=(L and (ivJ the design and coordination of Dhois
services in an extended 0=(. &"A== proposes to publish its Crst evaluation report in ;!!6.
(bJ -ultilingual 0omain =ames
PP. 'ntil recently) it was only possible to register domain names in $oman script (those that ma>e up the English alphabetJ or A("&&
characters. S;P6T #owever) there are developments in the &nternet community to allow the registration of domain names written in
other non3A("&& characters such as Arabic) "hinese) "yrillic) Bapanese or Eorean.
PG. &n Banuary ;!!!) the &nternet Engineering Tas> *orce (&ET*J formed a Dor>ing Aroup on the &nternationali5ation of 0omain =ames
to Rspecify the requirements for internationali5ed access to domain names and to specify access and a standards trac> protocol based
on the requirements.R S;PQT (ince that time) a number of commercial testbeds using various technologies have been established and
began to register multilingual domain names. S;P9T &n view of the fact that the &ET* has not yet set deCnite standards on the sub%ect)
no multilingual domain name has yet been added to an ofcial 0=( area Cle) and none is yet operational.
G!. The discussion of the multilingual domain names issue is ongoing in various fora) including &"A==) which set up a wor>ing group
in -arch ;!!! Rto identify the various internationali5ation eforts and the issues they raise) to engage in dialogue with technical
experts and other participants in these eforts) and to ma>e appropriate recommendations to the :oard.R S;P7T Kn the
recommendations of that wor>ing group S;PMT an &nternationali5ed 0omain =ames "ommittee was established Rto serve as a general
coordination body for the wor> on policy issues identiCed in the &0= Dor>ing Aroup report and such other policy issues that the &0=
"ommittee shall identify.R
G. =umerous issues remain to be addressed) as it is important that the introduction of multilingual domain names to the 0=( does
not afect its stability. -ost importantly) the &ET* will conclude its process of developing standards by which non3A("&& characters
may be used in 0=( protocols. At the same time) procedures for the adoption of the T.0s themselves in non3A("&& characters are
being considered) as well as domain name registration services that function in non3A("&& characters.
G;. The Cnal report of the &nternationali5ed 0omain =ames "ommittee) dated Bune ;M) ;!!;)S;PPT notes that these matters could to
a large extent be settled on the basis of experience acquired in the ccT.0s) the new gT.0s and more recently through the process of
re3allocating the .org domain. The "ommittee explains that) if the internationali5ation of domain names calls for necessary
adaptations) a certain number of principles applicable to existing T.0s) including the adoption of a new T.0 or the selection of a
registrar) could be transposed to domain names in non3A("&& characters. *or instance) in the same way as .info was created on the
basis of the semantic lin> between the word3form RinfoR and the concept of Rinformation)R the "ommittee suggests that a new T.0 in
non3A("&& characters could also be selected on the basis of a semantic association between a particular geographical entity (such as
"hinaJ) or a language (such as Aree>J) or equally a cultural entity (such as Thai museumsJ.
G6. The internationali5ation of domain names was also discussed in the framewor> of the &nternational Telecommunication 'nion
(&T'J and D&,K at a symposium organi5ed %ointly in Aeneva by the international organi5ations on 0ecember 7 and M) ;!!. S;PGT
Each organi5ation published a brieCng paper to explain the impact of the internationali5ation of domain names from) respectively) the
technical and intellectual property standpoints. The &T' wor>ing document) entitled RTechnology and ,olicy Aspects)R S;G!T deals
among other things with the technological challenges to the development of internationali5ed domain names) such as the need to
standardi5e the underlying technologies so that such names may be incorporated in the 0=( without difculty. &t also mentions a
number of policy and coordination issues raised by internationali5ed domain names) such as the determination of the authority with
respect to each language. The efect of the internationali5ation of domain names on intellectual property is discussed in the D&,K
brieCng paper entitled R&nternationali5ed 0omain =ames @ &ntellectual ,roperty "onsiderations.R S;GT
GQ. As noted in the Cnal $eport of the (econd D&,K &nternet 0omain =ame ,rocess (R(econd D&,K ,rocessRJ) S;G;T the
internationali5ation of domain names will have repercussions for intellectual property. The conXicts that ensue from the use) in a
designation system such as the 0=() of the various languages and alphabets used throughout the world is well >nown in the
trademar> Celd. #owever) the internationali5ation of domain names may be expected to raise a number of new considerations with
respect to such disputes) including+ the importance of phonetic similarity in what is essentially a visual or textual communication
medium) the speed and modest cost at which a domain name registration can be obtained as compared with a trademar>
registration) and the automatic nature of domain name registrations as opposed to the examination procedure that precedes the
registration of trademar>s. As described in greater detail in paragraph ;;! below) the D&,K Arbitration and -ediation "enter has
already administered a number of disputes relating to internationali5ed domain names. S;G6T
(cJ Eeywords
G9. The &nternet >eyword system ma>es it possible to locate websites using ordinary words) without resorting to technical preCxes
such as http+22 or www.) or top3level sufxes such as .com) .net) .org or .info. 'sually it is sufcient to type the >eywords into the
window of the navigation software to be led directly to the website @ and indeed) in some cases) to the 'niform $esource .ocator
('$.J @ that is sought. The efect of this) however) is that the >eywords can themselves be regarded as virtual identiCers and
consequently have intellectual property implications) as described in the context of trademar> infringement in "hapter &&&(bJ above.
Eeywords do not constitute an alternate routing system to the 0=() but rather form a layer super3imposed upon it. A number of
companies ofer >eyword services) among them "ommon=ame .td.) S;GQT and =etscape. S;G9T There are also >eywords in non3A("&&
characters.
G7. (ome providers of >eywords (in A("&& charactersJ currently ofer dispute3resolution services to address bad faith use of
trademar>s involving >eywords. S;G7T These procedures correspond to a large extent to those under the '0$,. They are only
adopted voluntarily) however) as the providers are under no obligation to %oin the &"A== system or adopt any of its policies.
GM. The use of >eywords in navigation software and search engines holds some potential for relieving the growing pressure on the
0=() by providing alternatives to domain names to navigate the &nternet. #owever) the increase in their use is li>ely to be
accompanied by a growing ris> of intellectual property violations) exacerbated by the internationali5ation of the 0=(. &t remains to be
seen whether the mar>et will adopt these >eyword systems and how efciently their dispute3resolution procedures will wor>.
(dJ -ultiple $oots
GP. The structure of the 0=( is traditionally based on a single central root) so as to permit reliable universal communication on the
&nternet. As stated by the &nternet Architecture :oard (&A:J+
RTo remain a global networ>) the &nternet requires the existence of a globally public name space. The 0=( name space is a
hierarchical name space derived from a single) globally unique root. This is a technical constraint inherent in the design of the
0=(. Therefore it is not technically feasible for there to be more than one root in the public 0=(. That one root must be
supported by a set of coordinated root servers administered by a unique naming authority.R S;GMT
GG. A number of attempts have been made to multiply the number of roots used on the &nternet. (ome are either purely private and
therefore totally outside the public 0=() or experimental and designed in such a way as not to have an adverse efect on its
operation. Kthers) on the other hand) have a commercial purpose) and see> to establish top3level structures to rival that managed by
&"A==. (ome fear that such developments may %eopardi5e the stability and reliability of the 0=(. ,reservation of the universal
character of the networ> is an essential concern for the &nternet community) and &"A== has reafrmed its Rcommitment to a single)
authoritative public root for the &nternet 0omain =ame (ystem (0=(J and to the management of that unique root in the public
interest according to policies developed through community processes.R S;GPT
;!!. The adoption of multiple roots also carries a ris> in terms of the protection of intellectual property rights in the 0=(. That
protection is derived from a contractual system based on the '0$,. &t is implemented through contracts between &"A== and
registrars and) in turn) contracts under which domain name applicants agree to abide by the '0$,. :ecause multiple roots are
outside the contractual system established by &"A==) there is nothing to ensure that their operators will apply or even adopt the
'0$,) and thereby protect intellectual property rights. To address this issue) some operators have opted for systems comparable to
the '0$,L for instance) the company =ew.net S;GGT has introduced a -odel 0omain =ame 0ispute $esolution ,olicy.
(eJ "reation of the Aeneric Top3.evel 0omain .E'
;!. The creation of the generic top3level domain .eu was one of the ob%ectives stated in the eEurope initiative approved by the
European "ouncil in -arch ;!!!. At the end of the public consultation process on the creation of the generic top3level domain .eu
initiated by the European "ommission) S6!!T the European ,arliament and "ouncil adopted on April ;;) ;!!;) a $egulation on the
implementation of the top3level domain .eu. S6!T The $egulation sets out the conditions for the implementation of .eu (for instance
the designation of a registrarJ and lays down the general policy framewor> within which the registrar will operate.
;!;. A number of provisions on the operation of .eu relate to intellectual property protection. &t is provided) for example) that the
owners of prior rights or rights established by national and2or community law) as well as public entities) will beneCt from a speciCc
Rsunrise periodR during which they can register domain names corresponding to their rights. &n addition) the $egulation provides for
the introduction of a Dhois service providing information on the owners of domain names under .eu. (uch a service is essential in
any domain name registration system that see>s to ensure protection for intellectual property rights. S6!;T *inally) it provides for
implementation of a policy of alternative dispute settlement for conXicts involving .eu domain names and intellectual property rights.
The European "ommission also conducted an online consultation on cybersquatting) S6!6T so as to develop the best possible
framewor> to prevent speculative and fraudulent registrations of domain names in the .eu domain. The .eu domain is proposed to be
managed by a non3proCt organi5ation) and registration of domain names is expected to begin in ;!!6.
(fJ &"A== $eform
;!6. The &nternet "orporation for Assigned =ames and =umbers (&"A==J is the entity responsible for coordinating certain 0=(
functions. S6!QT &"A== is a non3proCt organi5ation incorporated under the laws of the (tate of "alifornia in the 'nited (tates of
America. &ts creation is the result of the 'nited (tates AovernmentUs goal) since GGM) to privati5e the 0=( and thereby increase its
competitiveness) S6!9T and represents the completion of a process that began with the publication in Bune GGP of the Dhite ,aper of
the =ational Telecommunications and &nformation Administration (=T&AJ of the 'nited (tates 0epartment of "ommerce) entitled
R(tatement of ,olicy on the -anagement of &nternet =ames and Addresses.R S6!7T
;!Q. The 0epartment of "ommerce entered into a -emorandum of 'nderstanding S6!MT with &"A== under which &"A== was
entrusted with the following functions+ R(iJ set policy for and direct allocation of &, number bloc>s to regional &nternet number
registriesL (iiJ oversee operation of the authoritative &nternet root server systemL (iiiJ oversee policy for determining the
circumstances under which new T.0s are added to the root systemL and (ivJ coordinate the assignment of other &nternet technical
parameters as needed to maintain universal connectivity on the &nternet.R The -emorandum of 'nderstanding between the
0epartment of "ommerce and &"A==) which has been amended and renewed a number of times) has recently been renewed until
(eptember ;!!6.
;!9. Dhile &"A==Us functions and authority are primarily of a technical nature) the organi5ationUs performance of these functions
sometimes raises public policy issues) including a number relating to intellectual property. As &"A== is a private sector organi5ation
sub%ect to the laws of one particular country) the question has been raised whether it can legitimately address those public policy
issues without the additional involvement of public authorities) including intergovernmental organi5ations. $ecently) &"A== has
undergone a reform process S6!PT in an attempt to address) inter alia) this question. &t seems unli>ely) however) that the results of
the &"A== reform will succeed in resolving this question satisfactorily and deCnitely. S6!GT
(gJ Dorld &mplementation of the Enum ,rotocol
;!7. The Enum ,rotocol S6!T is the result of wor> conducted by the &nternet Engineering Tas> *orce (&ET*J Dor>ing ,arty responsible
for the conversion of international public telephone numbers with a view to their use in the 0=(. This ,rotocol) put forward by the
&ET* in (eptember ;!!!) ma>es it possible to convert telephone numbers into domain names and to relate them to communication
services through what is >nown as 'niform $esource &dentiCers ('$&sJ. S6T The best >nown forms of '$& are the 'niform $esource
.ocators ('$.sJ) which are used to locate resources on the Dorld Dide Deb.S6;T Enum enables anyone to simply use a telephone
number to reach any subscriber who has included his particulars (mobile telephone number) e3mail address) &nternet address) text
message address) etc.J in the Enum database. S66T Aiven that the ,rotocol allows telephone numbers to be converted into domain
names) it has been suggested that those domain names should be registered under the top level domain .arpa) originally introduced
during the initial development of the 0=( and managed by the &nternet Architecture :oard (&A:J. S6QT
;!M. The implementation of the Enum ,rotocol is under consideration by the &nternational Telecommunication 'nion (&T'J. S69T &ts
potential implementation raises concerns) particularly of a regulatory and political nature. &t is suggested that the management of
numbering resources in the 0=( be considered a matter of national competence) for each &T' -ember (tate to which the country
code is given (for example) in *rance) which has telephone numbers predicated by the 66 country codeJ. &t is proposed that &T'
retain administrative control over the Enum database. A number of questions remain as to its implementation+ Dhat body should one
approach to have data published@ Dill there be registration services and registries@ And if so) how will they be selected@ Dill they
be public bodies) designated by (tates@ Dill implementation of the ,rotocol be possible only in &T' -ember (tates@ Dill there be a
coordinating body@ These questions need to be addressed before it is decided whether) and if so to what extent) the global
introduction of the Enum ,rotocol is li>ely to afect the 0=(.
(iiiJ D&,K ,$KA$A-(
;!P. D&,KUs activities in connection with domain names have intensiCed in recent years) and concentrate on three areas+ (iJ the
domain name dispute resolution services of the D&,K Arbitration and -ediation "enterL (iiJ the (econd D&,K &nternet 0omain =ame
,rocessL and (iiiJ the D&,K "ooperation ,rogram for ccT.0 Administrators.
(aJ D&,K Arbitration and -ediation "enter
;!G. The D&,K Arbitration and -ediation "enter (the D&,K "enterJ is an institution based in Aeneva ((wit5erlandJ to provide
Alternative 0ispute $esolution (A0$J services. &t was established in GGQ to ofer arbitration and mediation services for the resolution
of international commercial disputes between private parties. -ore recently) in addition to the traditional disputes) it has
concentrated on the administration of &nternet domain name disputes.
?i' Resolution of Disputes in t/e :eneric 0opA%evel Domains ?10%Ds'5 *com) *or1 and *net
;!. *ollowing the adoption on August ;Q) GGG) of the 'niform 0omain =ame 0ispute $esolution ,olicy ('0$,J) &"A== has
accredited a number of institutions to administer complaints Cled under the ,olicy) S67T among which the D&,K "enter is today the
leading provider.
;. The procedure laid down in the '0$, allows a complainant to request the transfer or cancellation of a domain name on the
grounds that+ (iJ it is identical or confusingly similar to a trademar> in which he or she holds rightsL (iiJ the owner of the domain name
has no rights or legitimate interests in itL and (iiiJ the domain name has been registered and is being used in bad faith. The '0$, is a
mandatory procedure that applies to every domain name by virtue of a clause in the domain name registration contract. The
registrars accredited by &"A== to register domain names in the gT.0s are obliged to abide by the decisions rendered under the '0$,.
;;. To date) Q);9Q complaints have been brought before the D&,K "enter) including about P9W in the .com domain) PW in .net and
!W in .org S6MT. (ome G!W of these cases are settled within an average period of 9! days and at a cost of '(V)9!! each. S6PT
-ost complainants ma>e use of the model complaint made available by the D&,K "enter on its site.S6GT The parties to these
disputes originate from !9 countries. The cases are decided by independent intellectual property and &nternet specialists on the
D&,K list of panelists)S6;!T which today comprises over 6!! experts from some 9! countries in many regions of the world.
?ii' Resolution of Disputes (oncernin1 t/e 8e6 10%Ds
;6. The '0$, also applies to the resolution of intellectual property disputes that arise in the new generic top3level domains
(gT.0sJ) .aero) .bi5) .coop) .info) .museum) .name and .pro. The D&,K "enter has itself administered PQ '0$, complaints concerning
the .info domain and 6P concerning the .bi5 domain. &n addition) most registrars have implemented dispute3settlement procedures
speciCcally suited to conXicts arising in the initial registration phase) or are in the process of doing so. The purpose of these
procedures is to provide trademar> owners with additional means to ensure the protection of their rights at the introduction of the
new domains. S6;T The D&,K "enter has been designated by the registry operators of certain new gT.0s to administer their
disputes in accordance with their speciCc procedures) as described below.
;Q. *info dispute resolution policy* The .info domain implemented a (unrise $egistration ,eriod (from Buly ;9 to August 6) ;!!J)
during which only trademar> owners could register a domain name that was identical to the textual elements of their trademar>)
provided the trademar> registration had national efect and was issued prior to Kctober ;) ;!!!. That period was followed by a
(unrise "hallenge ,eriod (from August ;P to 0ecember ;7) ;!!J) during which such sunrise registrations could be challenged under
a (unrise "hallenge ,olicy ((",J) S6;;T exclusively administered by the D&,K "enter. The ,olicy enabled any third party to apply for
the cancellation or transfer of a domain name that had been registered in violation of the conditions of .info sunrise registration. The
D&,K "enter received )9MG challenges to .info registered domain names under the (",) all of which have been resolved. The (",
intellectual property protection measure had one serious shortcoming) however) in the absence of any veriCcation of intellectual
property rights upon application for domain name registration. This allowed speculators to register .info names) by providing false
trademar> registration information. As a result) the operator of the .info registry) AClias) decided to Cle (", challenges to any sunrise
registrations not independently challenged) in order to clear its database of potentially improper sunrise registrations. The D&,K
"enter resolved 6)9G; of such Rchallenges of last3resort)R since 0ecember ;7) ;!!) completing this procedure in mid ;!!;. The
.info domain has been open to the general public for registrations since (eptember ;) ;!!) and the '0$, applies to all such
registrations.
;9. *biH dispute resolution policy* The .bi5 domain implemented a period (from -ay ; to August 7) ;!!J) during which trademar>
owners could Cle one or more Rintellectual property claimsR relating to an alphanumeric string) or name) identical to their mar>s)
thereby enabling the registry to advise them if the same string was registered as a domain name during the start3up period. 'pon
notiCcation by the .bi5 registry) trademar> owners who had Cled such a claim were given the opportunity to commence opposition
proceedings under the (tart3'p Trademar> Kpposition ,olicy ((TK,J with any accredited dispute resolution service provider)
requesting the transfer of the contested domain name. S6;6T To date) the D&,K "enter has received 66P oppositions under the
,olicy) of which 66Q have been resolved. The .bi5 domain has been open to the general public for registrations since Bune ;9) ;!!
and) as above) the '0$, applies to all such registrations.
;7. *name dispute resolution policy. The .name domain devised yet another mechanism to handle abusive registration practices in
the initial stages of its operation. S6;QT This mechanism enabled trademar> owners to apply for a defensive registration in the
preliminary phase (from August 9 to 0ecember Q) ;!!J) by reserving a given alphanumeric string or name in order to prevent the
registration of domain names that included the string at the second or third) or both) levels. The registry also ofers trademar>
owners a =ameDatch service that advises them of any .name registration that matches their trademar>ed name.
;M. *pro dispute resolution policy. The .pro registry is not yet operational) but proposes to implement a Rsunrise periodR during
which owners of trademar>s registered prior to 0ecember 6) ;!!) can register a name that corresponds to their mar>) provided
they meet the registration eligibility restrictions for .pro. 0uring the Rsunrise challenge periodR any person will be able to submit a
challenge against a sunrise domain name for non3compliance with these registration conditions. As above) when registrations open
to the general public) the '0$, will apply to all .pro domain name registrations.
;P. &n addition) the registries that administer domains restricted to certain categories of users) such as .bi5) .name) .coop) .museum
and .aero) have established special dispute resolution procedures that relate to registrantsU eligibility for registration. The D&,K
"enter has been designated to handle complaints Cled in relation to these special procedures. The .bi5 domain) for example) which is
intended solely for names used or intended to be used for Rbona Cde business or commercial purposes)R has introduced a procedure
to resolve disputes between domain name holders and third parties who allege that the domain name at issue has been registered in
violation of the .bi5 registration restrictions. S6;9T This procedure operates parallel to any '0$, proceedings. &n the .name domain)
which is reserved for the registration of names of persons or Cctional characters) registrations are sub%ect to an Eligibility
$equirements 0ispute $esolution ,olicy (E$0$,J. The D&,K "enter received its Crst case under this ,olicy on -ay P) ;!!;. &n the
domains .coop) .museum and .aero) the "harter Eligibility 0ispute $esolution ,olicy ("E0$,J applies) S6;7T and enables any third
party to request the cancellation of a registration allegedly made in violation of the applicable registration conditions.
?iii' Resolution of Disputes in cc0%Ds
;G. To date) ;P ccT.0 administrators have designated the D&,K "enter for the resolution of domain name disputes arising in their
domains as follows+ .A" (Ascension &slandJ) .AE ('nited Arab EmiratesJ) .AA (Antigua and :arbudaJ) .A( (American (amoaJ) .A'
(AustraliaJ) .:( (:ahamasJ) .:8 (:eli5eJ) ."" ("ocos &slandsJ) ."? ("yprusJ) .E" (EcuadorJ) .*B (*i%iJ) .AT (AuatemalaJ) ..A (.ao ,eopleUs
0emocratic $epublicJ) .-0 ($epublic of -oldovaJ) .-F (-exicoJ) .=A (=amibiaJ) .=' (=iueJ) .,A (,anamaJ) .,# (,hilippinesJ) .,=
(,itcairn &slandJ) .$K ($omaniaJ) .(" ((eychellesJ) .(# ((aint #elenaJ) .TT (Trinidad and TobagoJ) .TO (TuvaluJ) .'A ('gandaJ) .OE
(Oene5uelaJ and .D( (Destern (amoaJ. -ost of these ccT.0s have adopted the '0$, or a variant of it. Kf the GQ ccT.0 domain
name disputes that have been submitted to the D&,K "enter to date) PP have been resolved. S6;MT
?iv' Resolution of Disputes (oncernin1 InternationaliHed Domain 8ames
;;!. Although the internationali5ation of domain names is not yet fully operational in the 0=() the preliminary registration phases
and the testbeds of the various providers of internationali5ed domain name registration services have already given rise to a number
of disputes. The '0$, applies to disputes concerning internationali5ed domain names registered with &"A==3accredited gT.0
registrars. The D&,K "enter has to date received 6; complaints that relate to registrations of internationali5ed domain names
registered through the Oeri(ign A$( testbed) and 6! of those cases have been resolved. S6;PT The internationali5ed domain name
cases submitted to the D&,K "enter relate to names in "hinese script (e.g.) 0;!!!3!G9 ^ @@@@@@@@.com_J) Bapanese script (e.g.)
0;!!!3MG ^@@.com_J) Eorean script (e.g.) 0;!!399 ^ @@@@.com_J) or characters peculiar to =orwegian (`J) Aerman (aJ) *rench
(bJ and (wedish (cJ.
?v' Resolution of #ey6ord Disputes
;;. The D&,K "enter has also been designated to resolve disputes concerning &nternet >eywords. S6;GT
?vi' ;nline Searc/ Inde2 of Decisions $anded Do6n "nder t/e "DRP
;;;. The "enter has launched an online search index comprising more than ;)9!! D&,K domain name case decisions under the
'0$,. The index) which is regularly updated) afords access to all legal or other information contained in decisions handed down in
the '0$, context) and is available on the D&,K site) at /ttp5,,666*arbiter*6ipo*int,domains,searc/,
(bJ (econd D&,K &nternet 0omain =ame ,rocess
;;6. Dhile the Crst D&,K &nternet 0omain =ame ,rocess focused on the protection of trademar>s and service mar>s in the 0=() it
became apparent that designations other than trademar>s were also sub%ect to abuse in the 0=(. The $eport issued at the
conclusion of the Crst D&,K ,rocess made particular note of abusive practices with respect to trade names) geographical indications
and the names of persons in that connection. S66!T
;;Q. Kn Bune ;P) ;!!!) D&,K received a request from G of its -ember (tates) S66T subsequently ratiCed by the D&,K Aeneral
Assembly) S66;T to underta>e a second consultation process to address the intellectual property issues relating to domain names that
were outside the scope of the Crst D&,K ,rocess. &n response) in Buly ;!!!) D&,K initiated the (econd D&,K &nternet 0omain =ame
,rocess. This ,rocess addressed the bad faith) abusive) misleading or unfair registration as domain names of the following
identiCers+
&nternational =on3proprietary =ames (&==sJ for pharmaceutical substancesL
names of intergovernmental organi5ationsL
personal namesL
trade namesL and
geographical indications) geographical names and indications of source.
;;9. The Cnal $eport of the (econd D&,K ,rocess) entitled RThe $ecognition of $ights and the 'se of =ames in the &nternet 0omain
=ame (ystem)R was published on (eptember 6) ;!!) S666T and submitted to the -ember (tates of D&,K at the Aeneral Assembly
held from (eptember ;Q to Kctober 6) ;!!) and also to the :oard of &"A==.
;;7. At the ;!! Aeneral Assembly) D&,KUs -ember (tates resolved to sub%ect the $eport to comprehensive analysis by the D&,K
(tanding "ommittee on the .aw of Trademar>s) &ndustrial 0esigns and Aeographical &ndications (("TJ) which would convene in two
special sessions for this purpose. The (tanding "ommittee was established in -arch GGP to facilitate the international development
of the law of trademar>s) industrial designs and geographical indications) and is composed of D&,K -ember (tates and also) as
observers) non3-ember (tates) and intergovernmental organi5ations. The ("T met in special session from =ovember ;G to
0ecember Q) ;!!) and from -ay ; to ;Q) ;!!;) in order to analy5e the $eport on the (econd D&,K ,rocess. The ("T formulated a
number of recommendations S66QT on which D&,K -ember (tates too> a decision at their Aeneral Assembly from (eptember ;6 to
Kctober ) ;!!;. The questions addressed in the $eport of the (econd D&,K ,rocess) the recommendations of the special sessions of
the ("T and the decision of D&,K Aeneral Assembly are discussed below.
;;M. International 8onproprietary 8ames ?I88s' for p/armaceutical substances. S669T The &== system is a naming system introduced
in accordance with a resolution of the Dorld #ealth Krgani5ation (D#KJ) in order to allocate a generic name to all approved new
pharmaceutical substances. That generic name cannot be sub%ect to any exclusive rights and is freely available for use by all. &n the
&== system) health authorities) intellectual property ofces and the private sector have agreed that the names involved cannot be
registered or used as trademar>s. &n the 0=() however) &==s are not protected against appropriation by private parties) and their
registration as domain names creates a situation that appears to be incompatible with the underlying principles of the &== system. At
the special sessions of the ("T) numerous (tates and entities) in particular the Dorld #ealth Krgani5ation (D#KJ) declared
themselves in favor of protection of &==s from registration by private entities in the 0=(. #owever it was also argued that the scale
of improper registration of &==s as domain names) and the lac> of evidence of adverse efects of that practice) did not warrant the
introduction of protection measures. The participants decided that no particular form of &== protection would be recommended in the
0=( at the present stage) but that D&,K together with D#K would continue to monitor the situation and that) where necessary) it
would bring any important developments in this area to the notice of -ember (tates. At its meeting from (eptember ;6 to Kctober )
;!!;) the Aeneral Assembly of D&,K approved this recommendation.
;;P. 8ames and acronyms of inter1overnmental or1aniHations* [BB! The names and acronyms of intergovernmental organi5ations
are protected by Article 7 ter of the ,aris "onvention and by the T$&,( Agreement) as well as by the provisions of other international
treaties that aford protection to certain names of intergovernmental organi5ations or names used at the international level+ such as
the GQG Aeneva "onventions which prohibit the use of the name R$ed "ross.R S66MT Article 7 ter of the ,aris "onvention does not
confer automatic protection on the names and acronyms of intergovernmental organi5ations) but requires each organi5ation to notify
D&,K of the names for which it see>s protection) and D&,K then communicates these to the -ember (tates. The protection provided
by the ,aris "onvention extends to any registration or use of the name or acronym of an intergovernmental organi5ation as a
trademar>) while it is understood that a -ember (tate can impose a condition that the registration or use should only be restricted if
it is liable to mislead the public or create a false association between the trademar> in question and the name or acronym of the
organi5ation.
;;G. &n light of the fact that international law provides intergovernmental organi5ations with immunity from national %urisdiction) the
provisions of Article 7 ter of the ,aris "onvention are applied principally through the national industrial property ofces) to which
notiCcations under Article 7 ter are sent and which then ensure that the protected names and acronyms are not registered or
improperly used as trademar>s. At the ("T special sessions) the legal advisers of the 'nited =ations system) representing more than
;! 'nited =ations bodies and programs and a number of other intergovernmental organi5ations) spo>e on the adverse implications)
for both users and organi5ations) of the registration of names and acronyms of intergovernmental organi5ations as domain names.
The meeting recommended that the '0$, be amended to allow complaints to be Cled by international organi5ations under certain
circumstances) while ta>ing into account the privileges and immunities of intergovernmental organi5ations under international law.
At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K adopted the recommendation of the ("T with
respect to the names and acronyms of intergovernmental organi5ations and instructed the D&,K secretariat to transmit the said
recommendation to the &nternet "orporation for Assigned =ames and =umbers (&"A==J. S66PT
;6!. Personal names* [BBD! "ases decided under the '0$, demonstrate that the protection it confers to trademar>s and service
mar>s has been broadly interpreted as applying not only to registered mar>s) but also to unregistered and Rcommon lawR mar>s. As
a result) numerous persons have Cled complaints under the '0$, against the improper registration of their personal names as
domain names. There are) however) two limitations on the application of the '0$, to personal names. The Crst limitation relates to
the fact that certain countries do not recogni5e rights in common law or unregistered mar>s. &n those countries) the '0$, can only
be invo>ed to protect the names of persons against improper registration as domain names where the notoriety or commercial
reputation of the persons in question extends to another country in which such mar>s are recogni5ed and granted trademar>
protection. The second limitation relates to the fact that names of persons are protected only in so far as they are used in business)
based on the fundamental principle of trademar> law. The '0$, thus does not aford protection to personal names that en%oy
notoriety independently of their use in commerceL for example) the names of political or historical Cgures. (ome participants in the
("T special sessions) especially those representing countries that do not recogni5e unregistered mar>s) considered that the
protection of personal names in the 0=( related to the question of the extension of the '0$, to trade names. #owever) the meeting
recommended that no action be ta>en in this area. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of
D&,K adopted this recommendation.
;6. :eo1rap/ical indications) 1eo1rap/ical names or indications of source* [B&0! Aeographical indications are protected by certain
provisions in international treaties) in particular the ,aris "onvention and the T$&,( Agreement. S6QT =evertheless) in the absence of
an international framewor> for the recognition of geographical indications) and the fact that the applicable laws at present relate to
trade and goods) whereas domain name registrations are wider in scope) it is problematic to amend the '0$, to cover the improper
use of geographical indications as domain names. *ollowing the discussions of the ("T special sessions) it was recommended that
the Aeneral Assembly of D&,K should entrust the ("T with determining the best means of addressing the question of the protection
of geographical indications in the 0=(. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K adopted
the recommendation of the ("T with respect to geographical indications) it being understood that the ("T is to continue the
discussions on this topic.
;6;. Dith respect to the protection of country names) it was generally accepted that there currently exists no standard for the legal
protection of such names at the international level. &t was evident that many country names have been registered as domain names
by persons or entities having their residence or registered ofce outside the country in question) and that in most cases the registrant
was an individual or entity with no lin> to the government of the country concerned. S6Q;T -ost participants at the special sessions
favored some form of protection for country names against registration by persons who had no connection with the constitutional
authorities of the countries themselves) and some proposals were made as to the manner in which such protection could be
provided. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K noted that all 0elegations supported
the recommendation of the ("T with respect to country names) except those of Australia) "anada and the 'nited (tates of America.
&t noted) however) that a number of issues regarding the modalities of protection of country names in the 0=( warrant further
discussion. S6Q6T The Aeneral Assembly decided that these discussions should be continued in the ("T with a view to reaching a Cnal
position.
;66. 0rade names. S6QQT Trade names en%oy protection at the international level by virtue of Articles P) G and ! of the ,aris
"onvention. The extension of the '0$, to trade names has proven difcult for a number of reasons in particular+ the diversity of
national mechanisms of trade name protection) the lac> of evidence of abusive registration of trade names as domain names) the fact
that multiple owners of a trade name may have a legitimate interest in a single name (as the existence of a trade name is relatively
easy to prove in many countriesJ) and the fact that the main users of trade names) namely smaller businesses operating at the local
level) are liable to have difculty in qualifying for protection at a global level under the '0$,. ,articipants in the special sessions
recommended that -ember (tates should >eep the matter under review and raise it for further discussion if the situation so
demanded. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K adopted this recommendation.
(cJ D&,K "ooperation ,rogram for ccT.0s
;6Q. "oncurrently with their request that the Krgani5ation underta>e the (econd D&,K &nternet 0omain =ame ,rocess) the G
-ember (tates concerned requested the launch of a program for the beneCt of the administrators of ccT.0s. S6Q9T The request was
duly ratiCed by the Aeneral Assembly of D&,K) S6Q7T and the program commenced in August ;!!!. The goal was to improve the
protection of the intellectual property in ccT.0s in a collaborative exercise with their administrators.
;69. 'nder the program) D&,K+ (iJ developed the ccT.0 :est ,ractices for the ,revention and $esolution of &ntellectual ,roperty
0isputesL (iiJ regularly advises ccT.0 administrators upon request on intellectual property issues and the design of suitable
procedures for the settlement of disputes) and provides the services of the D&,K Arbitration and -ediation "enterL (iiiJ advises ccT.0
administrators who have initiated national consultation processes along the lines of the D&,K &nternet 0omain =ame ,rocessesL and
(ivJ published a ccT.0 database and a trademar> database portal.
;67. The ccT.0 :est ,ractices for the ,revention and $esolution of &ntellectual ,roperty 0isputes were presented in draft form at the
conclusion of the D&,K "onference on &ntellectual ,roperty duestions $elating to the ccT.0s) organi5ed on *ebruary ;!)
;!!. S6QMT The draft was published online for public comment) S6QPT and the Cnal version was published on Bune ;!) ;!!. S6QGT
The :est ,ractices provide a guide on intellectual property issues for use by ccT.0 administrators. They emphasi5e the importance of
domain name registration practices designed to prevent conXict between domain names and intellectual property rights) A0$
procedures and) Cnally) describe the dispute resolution services of the D&,K Arbitration and -ediation "enter) which are available to
any ccT.0 administrator who may have designated the "enter for this purpose. (ince the launch of the D&,K ccT.0 program) D&,K
has provided advice on the management of intellectual property issues to 9! ccT.0 administrators) and ;P ccT.0s have retained the
D&,K "enter as their dispute3resolution service provider.
;6M. &n addition) D&,K collaborates closely with certain ccT.0s in the course of their national consultations) which are the national
equivalent of the D&,K &nternet 0omain =ame ,rocesses. The administrators of the domains .nl (=etherlandsJ and .ie (&relandJ) have
embar>ed on such processes with a view to developing dispute3resolution procedures for disputes arising in their domains. The
administrators of the .nl and .ie domains have requested D&,KUs participation in their national processes) in so far as they relate to
intellectual property concerns. The consultation process concerning .nl was completed in =ovember ;!! with the publication of a
report that recommended the adoption of an arbitral procedure for the resolution of domain name disputes) based on alleged
infringements of trademar>s and trade names. S69!T *ollowing a public tender) the .nl administrators designated the D&,K
Arbitration and -ediation "enter to administer disputes under the new .nl dispute3resolution procedure) due to come into efect early
;!!6. The national consultation process in .ie is ongoing) with D&,KUs involvement.
;6P. D&,K also published a ccT.0 database in Banuary ;!!;. S69T This database) which is regularly updated) has lin>s to the
websites of almost all of the ;Q6 ccT.0s) and provides information on each ccT.0 as to whether the administrator has implemented a
registration contract) a Dhois service) or alternative dispute3resolution mechanism. Analysis of the data shows that) of the ;Q6
ccT.0s included in the database) Q (or Q7.GWJ have introduced a registration contract) G (or QP.GWJ provide a Dhois service) and
97 (or ;6WJ have adopted a dispute3resolution mechanism. &t also reveals that QG ccT.0s (almost ;!.WJ) are not visible on the Deb)
with their sites being either non3existent or inaccessible.
;6G. D&,K has also published a trademar> database portal to facilitate preliminary trademar> searches for persons wishing to register
a domain name in a gT.0 or ccT.0 and satisfy themselves that the name does not infringe third3party trademar> rights. S69;T At
present) the portal is screening the trademar> databases compiled by 97 national) regional and international industrial property
ofces or agencies.
III. (d) PT"!T$
;Q!. This "hapter describes the patent system) as it has adapted to the evolution of digital technologies) focusing on issues that have
arisen with respect to+ the scope of patentable sub%ect matter) including business method patents and software protectionL prior art
efectL and enforcement of patent rights. &t then examines D&,KUs response and related programs in the Celd of patent law.
(iJ ,ATE=T( &= T#E 0&A&TA. E=O&$K=-E=T
;Q. &nventions are characteristically protected by patents. Oirtually every country that accords legal protection to inventions @ and
there are more than 7! such countries @ grants such protection through the patent system. &n addition) inventions may also be
protected by other types of rights) such as utility models or trade secrets. The protection of inventions through patents is recogni5ed)
in particular) in two multilateral treaties) the ,aris "onvention and the T$&,( Agreement. The patent system provides a framewor> for
innovation and technological development by) on the one hand) granting an exclusive right to the owner of a patent to prevent others
from commercially exploiting the patented invention for a limited period S696T and) on the other hand) balancing this right with a
corresponding duty to disclose the information concerning the patented invention to the public. This information) which is classiCed
and stored in the patent documentation) is available to anyone and) increasingly) is accessible online through &nternet3based
systems. S69QT The mandatory disclosure of the invention thus enriches the available pool of technological >nowledge) facilitates
technology transfer) and enhances the opportunities for creativity and innovation by others. S699T
;Q;. The patent system has played a vital role in promoting the development of the underlying technical infrastructure for the
&nternet and e3commerce that ta>es place across its networ>s. E3commerce relies in a critical way on various computer and networ>
technologies) both hardware and software. The mar>et exclusivity established through efective patent protection has provided a
reward for investment and has %ustiCed the expenditures on research and development to achieve further technological progress.
#owever) the new technologies pose challenges to the conventional legal scheme for the patent system. The following addresses
several of the current issues associated with digital media and e3commerce in the context of patent protection.
(aJ :usiness -ethod ,atents
;Q6. &n order to be eligible for patent protection) an invention must fall within the scope of patentable sub%ect matter. Article ;M. of
the T$&,( Agreement provides that) sub%ect to certain exceptions and conditions under that Agreement) patents shall be available Rfor
any inventions) whether products or processes) in all Celds of technology) provided that they are new) involve an inventive step and
are capable of industrial application.R Dhile it is possible to provide limited exceptions) which are allowed under the T$&,(
Agreement) under national and regional laws) the general rule is that patent protection for an invention will not be refused simply
because it falls in a particular Celd of technology.
;QQ. ,atents have recently been granted to certain inventions concerning Cnancial services) electronic sales and advertising methods
and business methods) including business methods consisting of processes to be performed on the &nternet) and telephone exchange
and billing methods. S697T A signiCcant decision in the 'nited (tates of America) for example) found a business model for managing
an investment portfolio to be patentable sub%ect matter) in State Street 7an- C 0rust v* Si1nature .inancial :roup. S69MT &n Europe)
the :oards of Appeal of the European ,atent Kfce (E,KJ) in the S;$EI case) S69PT has decided that a computer system involving a
number of independent management tas>s) including Cnancial and inventory management and a system operation method was
patentable as such. The case required the E,K :oards of Appeal to decide whether the addition of Cnance3related expressions for
data would classify the apparatus and method as principally performing a Rmethod of doing business as suchR. S69GT &t is expected
that the number of these e3commerce3type patents may increase signiCcantly) bearing in mind its potential for individuals) companies
and national economies) as well as the global economy. (uch patents are viewed by some as important for creating incentives and
spurring investment in new digital technologies.
;Q9. Kn the other hand) this trend has been critici5ed by those who stress that a number of such patents concerning business
practices and methods reXect familiar ways of doing business that are not new or novel 3 the only aspect that is diferent is that they
occur in cyberspace. &n Europe there is the view that the sub%ect matter of a patentable RinventionR must have a Rtechnical
characterR or involve Rtechnical teaching)R i.e.) an instruction addressed to a person s>illed in the art as to how to solve a particular
technical problem using particular technical means. S67!T &n Bapan) a business method itself which is a man3made arrangement) or a
method using only such an arrangement) is not patentable sub%ect matter. S67T &n the 'nited (tates of America) issues were raised
as to Rpatent qualityR due to the granting of some business method patents for inventions that did not meet the requirements of
novelty and non3obviousness. &n response) the 'nited (tates ,atent and Trademar> Kfce ('(,TKJ issued a RDhite ,aper on
Automated *inancial or -anagement 0ata ,rocessing -ethods (:usiness -ethodsJ)R S67;T and has ta>en a number of
measures. S676T &n addition) the Bapan ,atent Kfce (B,KJ) the E,K and the '(,TK conducted a trilateral comparative study on
computer implemented business methods) that was designed to facilitate consistent search and examination practices across the
ofces) in light of ever3increasing numbers of Clings related to business method inventions. The Trilateral $eport produced the
following consensus summary+ S67QT
RA technical aspect is necessary for a computer3implemented business method to be eligible for patenting. (&n the 'nited
(tates of America) the Rin the technological artsR feature may be implicitly recited in the claim. The E,K and the B,K require that
the technical aspect be expressed in the claim.J
To merely automate a >nown human transaction process using well >nown automation techniques is not patentable.R
;Q7. :ecause the phenomena of digital networ>s and e3commerce are so new and still emerging) some claim that gauging the
novelty of a business model in this area and whether it meets the requirements of patentability is a tenuous tas>. &t is also contended
that competition may be harmed in the digital mar>et place if companies are able to obtain patents for basic business methods that
already exist in non3cyberspace. Kn the other hand) other commentators argue that patent protection is merited given the
technological innovation reXected in such new business models and that this protection is needed in order to provide incentives for
further investment in new on3line businesses. A lawsuit Cled in Kctober GGG) in which Ama5on.com) the &nternet boo>seller) sued its
rival) :arnesandnoble.com) illustrates the sta>es involved. Ama5on.com) in (eptember GGM) started using a Rone3clic>R technology
to enable its online customers to ma>e repeated purchases from its website without having to repeatedly Cll out credit card and
billing address information. &t received a patent for its one3clic> technology in (eptember GGG ('nited (tates ,atent =o. 9)G7!)QJ)
and alleged that :arnesandnoble.comUs one3clic> chec>out system) >nown as RExpress .ane)R infringed its patent. The decision of the
0istrict "ourt awarding preliminary in%unctive relief to Ama5on was ta>en on appeal to the "ourt of Appeals for the *ederal "ircuit. &n
-arch ;!!;) the case was settled between the two parties. S679T
(bJ (oftware ,atents
;QM. A similar discussion concerning patentable sub%ect matter has occurred in respect of software patents) as the signiCcance of
software itself extends well beyond the software industry. As mentioned above) the T$&,( Agreement (Article ;M.J does not allow the
exclusion of software in general from patentability. S677T &n addition to the question as to whether computer programs as suc/ should
be regarded as RinventionsR under the patent law) this broad scope of patentability has prompted a discussion on the sub%ect of where
to draw the line between copyright and patent law protection for computer programs. A .IdIration Internationale des (onseils en
PropriItI Industrielle (*&",&J review of international patent protection of software) e3commerce and business methods) S67MT for
example) found that generally countries in Europe as well as (outh Africa explicitly exclude computer programs as suc/ from
protection under their patent laws) while Australia) "anada) "hile) &srael) Bapan) S67PT the $epublic of Eorea and the 'nited (tates of
America do not exclude such protection. The same countries) with the exclusion of "hile) also do not exclude granting patent
protection to business method as suc/. Although some patent ofces have established examination guidelines for computer related
inventions) including software related inventions) very little international harmoni5ation has been achieved in this area.S67GT
;QP. &n the Celd of information technology) the value of intellectual assets often resides in the RcontentR of the information. &n the
past) software has often been sold as an integral part of the computer system) while) today) software products are often mar>eted in
the form of computer readable media) for example) dis>ettes and "03$K-s or directly over the &nternet. (oftware3related inventions
are thus stored in such media) and commerciali5ed separately from the computer hardware. &t is necessary) therefore) to claim such
software3related inventions as a computer readable medium storing the software that performs the claimed functions. This type of
claim is commonly called R:eauregard3type claim.R S6M!T Kther types of claims) such as R.owry3type claimR (a computer readable
medium storing a data structure) which data structure is interrelated to the medium structurally and functionallyJ S6MT or a
Rpropagated signal claimR (a claim to a computer data signal that is embodied in a carrier waveJ S6M;T have also been advanced by
practitioners. As this topic is relatively new) there is not as yet international harmoni5ation concerning an acceptable claim format
with respect to software3related inventions.
;QG. &n Europe) the European "ommission issued a proposal for a 0irective on the protection by patents of computer3implemented
inventions in *ebruary ;!!;. S6M6T Dhile inventions using software can already be patented through the European ,atent Kfce
(E,KJ) or national patent ofces) implementation of the conditions for patentability vary) and so the 0irective is designed to
harmoni5e the way in which national patent laws deal with software inventions. &n particular) the proposal provides that) in order to
meet the requirement of inventive step) as is the case with inventions in general) a computer3implemented invention must ma>e a
technical contribution to the state of the art. European cases in which a Rtechnical contributionR has been found include an invention
to increase computer processing speeds) and an invention by which an F3ray machine was controlled by a data processing unit.
*urther) the proposal does not follow the practice of the E,K in permitting claims to computer program products either on their own
or on a carrier) as this could be seen as allowing patents for computer programs Ras suchR. S6MQT
(cJ ,rior Art Efect
;9!. As noted) patents are granted only to inventions that are novel) involve an inventive step and are useful or industrially
applicable. To determine if the requirements of novelty and inventive step are met) the claimed invention is compared with the
existing state of the art. The existing state of the art is sometimes referred to as the Rprior art.R ,rior art in electronic form) which
exists in cyberspace only (Rcyber artRJ) raises questions as to its availability as Rprior artR and) thus) whether it can be applied against
an invention for which a patent is sought in determining novelty or inventive step. The questions include whether that >ind of
information has become Rprior artR even if it was disclosed on the &nternet for only a limited period.
;9. Although similar questions have been addressed with respect to prior art published on paper) publication on the &nternet may
have diferent implications. Authenticity) veracity and integrity are the critical issues for prior art in cyberspace) since cyber art is
considered to be more vulnerable to alteration and modiCcation. The determination of the timing of the disclosure and the
accessibility of the cyber art to the public) given the networ>Us capacity for instantaneous dissemination on the international scale)
are other concerns. *urthermore) national laws may extend the concept of the prior art to include prior uses. 'nder such national
laws) the concept of RuseR may be revisited in a computer environment. &n addition) the above3mentioned questions are applicable in
the context of a grace period for public disclosure of an invention before Cling a patent application. S6M9T D&,K conducted a survey
of its -ember (tates concerning) among other issues) disclosure of information on the &nternet) focusing on current national
approaches and the need for harmoni5ation at an international level) and the summary of its results is available online. S6M7T
(dJ Enforcement of $ights
;9;. As in other Celds of intellectual property) %urisdictional questions and enforcement of rights are also relevant to patent
protection. The &nternet raises complex issues in this regard) as patent protection is provided on a country3by3country basis) and the
patent law of each country has application only within its borders) in accordance with the traditional principles of territoriality. *or
example) where patented software is sold and delivered over the &nternet internationally) any infringement action would require a
consideration of the %urisdictional and choice of law issues. ,rivate international law issues in the Celd of patents are discussed in
"hapter &O below. -oreover) the Crst practical issue may be that of detection) since the unauthori5ed importation of such software by
means of the &nternet) unli>e the importation of tangible goods) cannot be detected and stopped by customs authorities.
;96. Kne of the questions particular to patent protection may be the case where a patented product invention consists of elements
that are physically located in diferent territories. Kr) for example) in the case of process patents for a method to process and
transfer certain data using computeri5ed networ>s (for example) the &nternetJ) distinct elements in the claimed process could be
performed in diferent territories. &f an alleged infringer operates a system containing all of the claimed elements within the territory
in which the invention is protected) there would be a straightforward claim for infringement. #owever) the questions of infringement
and %urisdiction would be more difcult where a patented invention involves activities in several countries by several individuals. &n
particular) Article ;P of the T$&,( Agreement requires that a patent confer on its owner the right to prevent others from RusingR the
patented product or process. Dhat constitutes RusingR a patented product or process is increasingly complicated in the case of
&nternet3related e3commerce patents.
;9Q. This question may be examined in the context of the abovementioned case) State Street 7an- C 0rust v* Si1nature .inancial
:roup [BFF!) where the "ourt of Appeals held that the patent involved patentable sub%ect matter. The patent "laim in that case
provides as follows+
RA data processing system for managing a Cnancial services conCguration of a portfolio established as a partnership) each partner
being one of a plurality of funds) comprising+
3 computer processor means for processing dataL
3 storage means for storing data on a storage mediumL
(iJ means for initiali5ing the storage mediumL
(iiJ second means for processing data regarding assets in the portfolio and each of the funds from a previous day and data regarding
increases or decreases in each of the funds) assets and for allocating the percentage share that each fund holds in the portfolioL
(iiiJ means for processing data regarding daily incremental income) expenses) and net reali5ed gain or loss for the portfolio and for
allocating such data among each fundL
(ivJ means for processing data regarding daily net unreali5ed gain or loss for the portfolio and for allocating such data among each
fundL and
(vJ means for processing data regarding aggregate year3end income) expenses) and capital gain or loss for the portfolio and each of
the funds.R
Each of the recited RmeansR in "laim of the patent corresponds to a physical structure that could be located at sites remote from
the other Rmeans.R &ndeed) the various RmeansR could be located in diferent countries. Aiven this situation) it may not be clear in
which %urisdiction the accused infringer is actually RusingR the patented invention. Although such questions remain largely
hypothetical for the moment) real cases can be anticipated to follow. Thus) increasing consideration must be given to these questions
in future to ensure that rightsholders and tribunals are well prepared.
(iiJ D&,K ,$KA$A-(
;99. D&,K has been addressing a number of issues in this area * *irstly) the (tanding "ommittee on the .aw of ,atents ((",J studied
the desirability and feasibility of harmoni5ing rules concerning the patent law implications of the disclosure of technical information
on the &nternet) such as its impact on patentability. S6MPT The discussion revealed that most of the countries recogni5e the prior art
efect of information disclosed on the &nternet under the general rules and practices applicable to the determination of prior
art. S6MGT Dithout any international harmoni5ation with respect to the deCnition of prior art) it is apparent that the practices
concerning the determination of the contents and timing of disclosures on the &nternet vary from one Kfce to the other. Against this
bac>drop) the (", agreed that in the Crst instance) it was necessary to establish general principles concerning prior art that would
also cover the disclosure of information on the &nternet under the (ubstantive ,atent .aw Treaty ((,.TJ. The "ommittee would) at a
later stage) consider the need to establish special provisions speciCc to &nternet disclosures in the ,ractice Auidelines under the
(,.T. S6P!T
;97. (econdly) the ,atent .aw Treaty (,.TJ and the accompanying $egulations) which were adopted in Bune ;!!!) contain provisions
for harmoni5ation of the formal requirements concerning patent applications and patents which are applied by the industrial property
ofces of (tates and regional industrial property organi5ations. S6PT &n relation to new methods for electronic administration) Article
P and $ules P and G of the ,.T and its $egulations) in particular) provide general rules relating to the Cling of communications in
electronic form or by electronic means using digital signatures) incorporating the requirements with respect to electronic Cling under
the ,atent "ooperation Treaty (,"TJ. S6P;T
;9M. Thirdly) following the adoption of the ,.T) the (", initiated wor> on harmoni5ation of substantive patent law in =ovember ;!!!)
namely) negotiations of the draft (,.T. The draft (,.T focuses) in principle) on issues of relevance for the grant of patents and validity
of patents) such as the deCnitions of prior art) novelty) inventive step2non3obviousness and industrial applicability2utility) the drafting
and interpretation of claims) the requirement of sufcient disclosure and patentable sub%ect matter. S6P6T Although still at an early
stage of the negotiation) the (", expressed its will to achieve deep harmoni5ation) i.e.) harmoni5ation of legislation as well as of
practices regarding the core issues of patentability and validity of patents.
The Impact of the Internet on Intellectual #roperty Law
III. (a) COPYRIGHT !D R"#T"D RIGHT$
Q!. This "hapter addresses the developments that have ta>en place in the Celd of copyright and related rights) as a result of the
impact of digital technologies. &t begins with an introduction to Rdigital copyright)R then addresses the D&,K R&nternet Treaties)R and
describes emerging developments in law and technologies that relate to the protection and exploitation of copyright wor>s online.
*inally) it describes developments in licensing and collective management of rights that enable creators and rightsholders to manage
and exploit their rights in the digital environment.
(iJ &=T$K0'"T&K= TK 0&A&TA. "K,?$&A#T
Q. The protection of copyright and related rights covers a wide array of human creativity. -uch of the creative content that fuels
electronic commerce is sub%ect to such protection. 'nder the most important international copyright convention) the :erne
"onvention) S79T copyright protection covers all Rliterary and artistic wor>s.R This term encompasses diverse forms of creativity) such
as writings) both Cction and non3Cction) including scientiCc and technical texts and computer programsL databases that are original
due to the selection or arrangement of their contentsL musical wor>sL audiovisual wor>sL wor>s of Cne art) including drawings and
paintingsL and photographs. $elated rights protect the contributions of others who add value in the presentation of literary and
artistic wor>s to the public+ performing artists) such as actors) dancers) singers and musiciansL the producers of phonograms)
including "0sL and broadcasting organi5ations.
Q;. 0igital technology enables the transmission and use of all of these protected materials in digital form over interactive networ>s.
The process of Rdigiti5ationR allows the conversion of such materials into binary form) which can be transmitted across the &nternet)
and then re3distributed) copied and stored in perfect digital form. Dhile the transmission of text) sound) images and computer
programs over the &nternet is already commonplace) this is also becoming true for transmission of audiovisual wor>s such as feature
Clms) as the technical constraints of narrow bandwidth begin to disappear. S77T -aterials protected by copyright and related rights)
spanning the range of information and entertainment products) constitutes much of the valuable sub%ect matter of e3commerce. S7MT
Q6. Aiven the capabilities and characteristics of digital networ> technologies) e3commerce has had a tremendous impact on the
system of copyright and related rights) and the scope of copyright and related rights in turn is afecting how e3commerce evolves. &t
is essential that legal rules are set and applied appropriately) to ensure that digital technology does not undermine the basic tenets of
copyright and related rights. *rom one perspective) the &nternet has been described as Rthe worldUs biggest copy machine.R S7PT
Dhereas earlier technologies such as photocopying and taping allow mechanical copying by individual consumers) they do so in
limited quantities) requiring considerable time) and resulting in copies of lesser quality. -oreover) the copies are physically located in
the same place as the person ma>ing the copy. Kn the &nternet) by contrast) one can ma>e an unlimited number of copies) virtually
instantaneously) without perceptible degradation in quality. S7GT And these copies can be transmitted to locations around the world in
a matter of minutes. The result could be the disruption of traditional mar>ets for the sale of copies of programs) art) boo>s and
movies. SM!T &n the music industry) for example) the emergence of &nternet3based Cle swapping services such as =apster and others)
described below) have enabled a large3scale exploitation of music and recordings without the authori5ation of the rightsholders. That
exploitation was further aggravated by the simultaneous broad commerciali5ation of "0 burners and portable -,6 players) adapted
to the most commonly used Cle format.
QQ. These challenges face the copyright industry at a time when the share of copyright in national economies is reaching
unprecedented levels. The economic value of the copyright industry in the 'nited (tates alone is estimated at '(VG.; billion
(motion pictures) music and televisionJ) according to &nternational &ntellectual ,roperty Alliance (&&,AJ. SMT The share of copyright
industries currently represents 9.;QW of the '.(. gross domestic product) growing more than twice as fast as the rest of the economy)
a growth largely attributed to AmericaUs strong copyright laws and efective enforcement mechanisms. (imilarly) a study of the
copyright industries in the -E$"K('$ countries reveals that the share of copyright3protected activities in the value added of 'ruguay
was 7W in GGM) and of :ra5il was 7.MW in GGP) accounting in the latter for .6 million %obs. SM;T This signiCcance gives weight to
the copyright industriesU search for technical and legislative solutions to protect copyright from digital piracy.
Q9. &t is therefore critical to ad%ust the legal system to respond to the new technological developments in an efective and appropriate
way) and to do so quic>ly and continuously) because technologies and mar>ets evolve increasingly rapidly. This will ensure the
continued furtherance of the fundamental guiding principles of copyright and related rights) which remain constant whatever may be
the technology of the day+ giving incentives to creators to produce and disseminate new creative materialsL recogni5ing the
importance of their contributions) by giving them reasonable control over the exploitation of those materials and allowing them to
proCt from themL providing appropriate balance for the public interest) particularly education) research and access to informationL
and thereby ultimately beneCting society) by promoting the development of culture) science) and the economy.
(iiJ T#E D&,K &=TE$=ET T$EAT&E(
Q7. (igniCcant issues in the Celd of copyright have been examined for a number of years through various public and private
processes) at D&,K and other international organi5ations) and at national and regional levels. (igniCcant progress has been made)
with international consensus having already emerged on some of these issues. &n GG7) two treaties were adopted by consensus by
more than !! countries at D&,K+ the D&,K "opyright Treaty (D"TJ and the D&,K ,erformances and ,honograms Treaty (D,,TJ
(commonly referred to as the R&nternet TreatiesRJ. SM6T The treaties) each having reached their 6!
th
ratiCcation or accession) both
have entered into force+ the D"T on -arch 7) ;!!;) and the D,,T on -ay ;!) ;!!;. SMQT
QM. The D&,K &nternet Treaties are designed to update and supplement the existing international treaties on copyright and related
rights) namely) the :erne "onvention SM9T and the $ome "onvention. SM7T They respond to the challenges posed by the digital
technologies and) in particular) the dissemination of protected material over the global networ>s that ma>e up the &nternet. The
contents of the &nternet Treaties can be divided into three parts+ (J incorporation of certain provisions of the T$&,(
Agreement SMMT not previously included explicitly in D&,K treaties (e.g.) protection of computer programs and original databases as
literary wor>s under copyright lawJL (;J updates not speciCc to digital technologies (e.g.) the generali5ed right of communication to
the publicJL and (6J provisions that speciCcally address the impact of digital technologies.
QP. The following paragraphs address+ (aJ the scope of rights protected under the &nternet Treaties) highlighting new developments in
response to digital technologiesL (bJ issues relating to enforcement and management of rightsL and cJ the status of implementation
of the &nternet Treaties internationally.
(aJ (cope of $ights
QG. The deCnition of rights) which determines their scope) is a >ey issue) as intellectual property is neither more nor less than the sum
of the rights granted by law. 'nder existing treaties and national legislation) the owners of copyright and related rights are granted a
range of diferent rights to control or be remunerated for various types of uses of their property. *or both groups of rightsholders)
these rights include rights of reproduction and of certain acts of communication to the public) such as public performance and
broadcasting. The development of digital technologies) that enable transmission of wor>s over networ>s) has raised questions about
how these rights apply in the new environment. &n particular) when multiple copies are made as wor>s traverse the networ>s) is the
reproduction right implicated by each copy@ &s there a communication to the public when a wor> is not broadcast) but simply made
available to individual members of the public if and when they wish to see or hear it@ 0oes a public performance ta>e place when a
wor> is viewed at diferent times by diferent individuals on the monitors of their personal computers or other digital devices@
9!. ,erhaps the most basic right granted under both copyright and related rights is the right of reproduction) which under the :erne
"onvention covers reproduction Rin any manner or form.R SMPT This right is at the core of e3commerce) because any transmission of a
wor> or an ob%ect of related rights presupposes the uploading of that wor> or ob%ect into the memory of a computer or other digital
device. &n addition) when the wor> or ob%ect is transmitted over networ>s) multiple copies are made in the memory of networ>
computers at numerous points. &t is therefore necessary to determine how the reproduction right applies to such copies.
9. &n GP;) at a meeting of government experts co3organi5ed by D&,K and '=E("K) a broad3based understanding was reached that
uploading into a computer memory should be considered as an act of reproduction. This understanding was reconCrmed in GG7 in
agreed statements to the D"T and D,,T) which state+
RThe reproduction right... and the exceptions permitted thereunder) fully apply in the digital environment) in particular to the use of
wor>s in digital form. &t is understood that the storage of a protected wor> in digital form in an electronic medium constitutes a
reproduction within the meaning of the Srelevant treaty right.TR SMGT
The appropriate application of the reproduction right in the case of temporary copies in computersU random access memory ($A-J
continues to be a sub%ect of debate at the national and international levels. The >ey question is whether such copies always require
the consent of the rightsholder in order to avoid infringement. "arefully tailored exceptions for such copies in certain circumstances
have) for example) been enacted in the 'nited (tates of America in the 0igital -illennium "opyright Act (R0-"ARJ) SP!T and adopted
by the European "ommunity in its 0irective on the harmoni5ation of certain aspects of copyright and related rights in the information
society (the E.'. "opyright 0irectiveJ) both of which are described below. SPT
9;. The D"T (Article PJ and the D,,T (Article QJ also clarify the extent of rightsholdersU control when wor>s) performances and
phonograms are made available to the public for downloading or access on the &nternet. *or example) Article Q of the D,,T
provides+
R,roducers of phonograms shall en%oy the exclusive right of authori5ing the ma>ing available to the public of their phonograms) by
wire or wireless means) in such a way that members of the public may access them from a place and at a time individually chosen by
them.R
This type of transmission difers from broadcasting) in that the material is not selected and delivered by an active transmitter li>e a
broadcaster to a group of passive recipients. $ather) it is transmitted interactively) that is) on demand from individual users) at a
time and place of their choosing. The treaties require that an exclusive right be granted to control such acts of Rma>ing available)R
while leaving it to individual countries to decide how to categori5e this right under national law.
96. &ssues related to moral rights are also given new importance in the digital environment) as the new technologies ofer
unprecedented means for users to manipulate or RmorphR copyright wor>s) creating rights in derivative wor>s) and possibly infringing
the original authorsU moral rights of integrity. The D,,T (Article 9(JJ recogni5es moral rights of attribution and integrity) as follows+
R&ndependently of a performerUs economic rights) and even after the transfer of those rights) the performer shall) as regards his live
aural performances or performances Cxed in phonograms) have the right to claim to be identiCed as the performer of his
performances) except where omission is dictated by the manner of the use of the performance) and to ob%ect to any distortion)
mutilation or other modiCcation of his performances that would be pre%udicial to his reputation.R
(bJ Enforcement and -anagement of $ights
9Q. &ssues of enforcement and management are not new) but ta>e on added dimensions and urgency when wor>s are exploited on
digital networ>s. As noted above) the technologies pose substantial practical challenges. &n order for legal protection to remain
meaningful) rightsholders must be able to detect and stop the dissemination of unauthori5ed digital copies) accomplished at levels of
speed) accuracy) volume and distance that in the past were unimaginable. And for e3commerce to develop to its full potential)
wor>able systems of online licensing must evolve) in which consumers can have conCdence. The answer to these challenges to a
great extent will lie in the technology itself.
99. The D"T and the D,,T also brea> new ground in recogni5ing the emerging role to be played by technological protection
measures) and by online management and licensing systems. They require -ember (tates to provide two types of technological
ad%uncts to the protection of copyright and related rights) in order to ensure that the &nternet can become a safe place to disseminate
and license protected material.
97. The Crst technological ad%unct is generally referred to as an Ranti3circumventionR provision) and is addressed in the D"T (Article
J and the D,,T (Article PJ. *or example) Article of the D"T provides+
R"ontracting ,arties shall provide adequate legal protection and efective legal remedies against the circumvention of efective
technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the :erne
"onvention and that restrict acts) in respect of their wor>s) which are not authori5ed by the authors concerned or permitted by law.R
(uch provisions relate to the need of rightsholders to rely on technological measures to protect their wor>s against infringement on
the &nternet. =o matter how ingenious the technology used to protect wor>s against unauthori5ed use) equally ingenious ways may
be developed to circumvent it. The resulting level of insecurity could prevent rightsholders from disseminating their valuable wor>s
on the &nternet. Aiven the inability to achieve total security) a realistic goal is to ma>e the technology sophisticated enough to deter
the ordinary consumer from see>ing to circumvent) while granting legal redress against those who represent a greater threat 3
hac>ers and those engaged in circumvention as a business.SP;T Toward this end) the treaties require -ember (tates to provide
adequate legal protection and efective legal remedies against the circumvention of efective technological measures used by
rightsholders to restrict unlawful and unauthori5ed acts. The treaty language is general enough to allow signiCcant Xexibility to
national governments in determining the details of appropriate implementation. SP6T
9M. As a second technological ad%unct) the treaties protect Rrights management information)R providing legal support to rights
management systems) under the D"T (Article ;J and the D,,T (Article GJ. *or example) Article ; of the D"T provides+
R(J "ontracting ,arties shall provide adequate and efective legal remedies against any person >nowingly performing any of the
following acts >nowing) or with respect to civil remedies having reasonable grounds to >now) that it will induce) enable) facilitate or
conceal an infringement of any right covered by this Treaty or the :erne "onvention+
(iJ to remove or alter any electronic rights management information without authorityL
(iiJ to distribute) import for distribution) broadcast or communicate to the public) without authority) wor>s or copies of wor>s >nowing
that electronic rights management information has been removed or altered without authority.
(;J As used in this Article) Rrights management informationR means information which identiCes the wor>) the author of the wor>) the
owner of any right in the wor>) and any numbers or codes that represent such information) when any of these items of information is
attached to a copy of a wor> or appears in connection with the communication of a wor> to the public.R
$ights management systems operate on the basis of electronic data that is attached to the wor>s and ob%ects of related rights. SPQT
The data may identify the author or performer) the rightsholder) and the wor> or ob%ect itself) and may further describe the terms and
conditions for its use. 'nder the treaties) -ember (tates must provide adequate and efective legal remedies against the deliberate
removal or alteration of such information) and against the dissemination of wor>s) performances or phonograms from which such
information has been removed or altered) where these acts are performed with at least reasonable grounds to >now that they will
induce) enable) facilitate or conceal infringement. This will enhance the ability of rightsholders to exploit their property on the
&nternet) and allow consumers to rely on the accuracy of the information they receive so they can feel secure transacting online.
9P. =ational legislation) in conformity with the treaties) ma>es provision against the circumvention of technologies designed to
protect copyright wor>s. :oth the E.'. "opyright 0irective) and the 'nited (tates 0igital -illennium "opyright Act
(0-"AJ) SP9T require protection for digital rights management systems that protect copyright in digital form. The E.'. "opyright
0irective (Article 7.;J requires -ember (tates to provide legal protection against the Rmanufacture) import) distribution) sale) rental)
advertisement for sale for rental) or possession for commercial purposes of devices) products or components of the provision of
servicesR for the purposes of circumventing technological measures) including encryption) scrambling or other copy control
mechanisms. The 0-"A) Title &) creates civil and criminal liability for circumvention of copyright protection technologies and for the
>nowing provision of false copyright management information or intentional removal of the same) providing a technical ad%unct to the
rights established by copyright law. SP7T
9G. *aced with the threat of piracy heightened by the use of digital technologies) rightsholders are increasingly turning to technology
to provide protection for their intellectual property. This approach is supported by the legal measures against circumvention of such
technologies) in the D&,K &nternet Treaties) as described above. Technological systems of protection include+ anti3copy devices)
access control) electronic envelopes) proprietary viewer software) encryption) SPMT passwords) watermar>ing) SPPT Cngerprinting (user
authenticationJ) metering and monitoring of usage) and remuneration systems. (everal industry and technology initiatives to set
standards in various industries have emerged over the years) although none have yet established uniform standards for technological
protection measures. SPGT
7!. The music industry) for example) has developed copyproof compact disc ("0J technology that prevents "0s being played on
computer disc drives. "opyprooCng employs various technologies either by including errors in the data encoded on the "0) which
allows the disc to be played on a standard "0 player) but not on a "03$K-) or by mas>ing audio Cles as data Cles so that the "03
$K- drive cannot recogni5e the music. SG!T The fact remains that these methods can currently all be circumvented. &n the 'nited
(tates Aovernment) various eforts have been made to pass copy protection legislation that will prevent the sale of any consumer
Rdigital media deviceR (broadly deCned as any hardware or software that reproduces) displays or retrieves or accesses any copyright
wor>J that does not meet *ederal Aovernment copy3protection standards. SGT At the same time) the Aovernment is exploring
initiatives to mandate the introduction of copy3protection devices for digital television broadcasts. SG;T
7. &n a case brought under the 0-"A) "niversal (ity Studios) Inc* v* Reimerdes) SG6T the defendant was found liable for copyright
infringement for posting 0e"(() a decrypter for the "ontent (cramble (ystem ("((J used to encode motion pictures on 0O0s) so as
to enable them to play on .inux. SGQT The "ourt re%ected the defendantUs argument that an in%unction would prevent fair use of the
decrypted material. Another case) "nited States of +merica v* Elcom %td* a,-,a ElcomSoft (o* %td) and Dmitry
S-lyarov) SG9T concerned criminal liability under the 0-"A for circumvention of copyright protections in electronic boo> software sold
by Adobe (ystems &nc.) where the circumvention program was legal under $ussian law) but banned by the 0-"A anti3circumvention
measures. This case has been viewed as a test of the constitutionality of the 0-"A) and the breadth of protection it grants over non3
digital material) at a perceived ris> to preservation of individual rights of free use. SG7T
(cJ (tatus of the D&,K &nternet Treaties
7;. As mentioned above) the D"T entered into force on -arch 7) ;!!; and the D,,T on -ay ;!) ;!!;. As at Kctober ;!!;) the D"T
has 6M and the D,,T has 6P (tates party. (ince their adoption in GG7) the treaties have been implemented in a number of
important legislative instruments) including the E.'. "opyright 0irective) and the 'nited (tates 0igital -illennium "opyright Act
(0-"AJ) summari5ed below.
76. *or most countries) particularly those already in compliance with existing treaties) the implementation of the &nternet Treaties
does not require ma%or rewriting of the law on copyright and related rights) nor any fundamental change in policy or the structure of
their legal systems. Typically) a country may need to clarify the scope of existing rights to add the right of Rma>ing availableR on
demand. :ecause the scope of related rights has traditionally been more limited) additional rights such as moral rights may need to
be added to protect performers or record producers. Although not required by the treaties) a country may choose to ma>e
ad%ustments to the limitations and exceptions to rights it provides. *inally) each country must provide adequate and efective legal
remedies against the circumvention of technical protection measures and the deliberate deletion or alteration of rights management
information) although these provisions are drafted generally in the treaties so as to give national legislators Xexibility in their
implementation.
Digital 'illennium "opyright &ct )*D'"&*+
The 'nited (tates of America enacted legislation entitled the RD&,K "opyright and ,erformances
and ,honograms Treaties &mplementation Act of GGPR as Title & of the 0igital -illennium "opyright
Act (R0-"ARJ. SGMT Title & of the 0-"A contains) among other things) provisions to implement
obligations concerning technological measures and rights management information.
Title & of the 0-"A also requires the 'nited (tates "opyright Kfce to conduct two studies %ointly
with the =ational Telecommunications and &nformation Administration of the 0epartment of
"ommerce) one dealing with encryption and the other with the efect of technological development
on existing exceptions in the "opyright Act) as part of an ongoing evaluation on the relationship
between technological changes and the copyright law. Accordingly) two reports have been
submitted to the "ongress. SGPT Title && of the 0-"A entitled the RKnline "opyright &nfringement
.iability .imitation ActR deals with the issue of the liability of service providers based on a copyright3
speciCc approach.

*(.,. "opyright Directive*
The European ,arliament and the "ouncil of the European 'nion adopted a 0irective ;!!2;G2E" on
the harmoni5ation of certain aspects of copyright and related rights in the information society in
-ay ;!!. -ember (tates are obligated to implement the provisions of the 0irective by
0ecember ;;) ;!!;. The European "ommunity and its -ember (tates have already signed the
D&,K "opyright Treaty (D"TJ and the D&,K ,erformances and ,honograms Treaty (D,,TJ. This
0irective serves) among other things) to implement a number of the new international obligations
provided under the D"T and the D,,T. The European "ommunityUs instruments of ratiCcation will
be deposited with D&,K following the deadline for the -ember (tates to transpose the 0irective into
their national legislation.
The 0irective contains a number of important provisions to implement the Treaties) including those
concerning the application of the right of reproduction in the digital environment and temporary
reproductionL the right of ma>ing available applicable to interactive transmissions on networ>s such
as the &nternetL limitations and exceptions in the digital environmentL technological measures for
protectionL and rights management information.

7Q. .urt/er promotion of t/e W(0 and t/e WPP0* Although the &nternet Treaties have now entered into force) in order that they be
truly efective in the digital environment) they must become widely adopted in countries around the world) and their provisions must
be incorporated in national legislation. =ational implementation of the &nternet Treaties assists in promoting the development of e3
commerce) both domestically and internationally) and encourages direct foreign investment) by providing greater assurance to
businesses that their property can be safely disseminated there. Therefore D&,K is devoting substantial resources to ofering
guidance to governments that are in the process of adhering to the Treaties and transforming them into national legislation. (uch
guidance includes the provision of legal advice) consultations with national governments and organi5ation of national and regional
meetings.
(iiiJ E-E$A&=A "K,?$&A#T &(('E(
79. Although the D"T and the D,,T now provide basic norms clarifying and safeguarding the protection of copyright and related
rights in relation to the digital environment) and serve both as a guide and a model for national legislation) certain unresolved
questions remain at the international level. SGGT &n addition) a number of important recent developments have occurred in the Celd of
copyright and related rights that have far3reaching implications for the industry) and that are being addressed in legislatures)
%udiciaries and other international fora. Dhile courts in some %urisdictions are responding to new types of infringement resulting from
the use of digital technologies) new laws are also being debated and passed in some countries to ensure efective protection and
enforcement of rights in the digital era. At the same time) copyright industries are also adapting their business methods and uses of
technology to exploit the digital opportunities) while guarding against new ris>s.
77. (ome of the most signiCcant of these issues are detailed below) addressing the following+
scope of copyright protection in the digital environmentL
responsibility of online service providersL
rights of performers in the digital environmentL
rights of digital broadcasters 3 webcasting and digital Clm and television onlineL
lin>ing of copyright information online 3 deep3lin>ing and framingL
protection of databasesL and
peer3to3peer Cle sharing systems such as =apster.
Three of the most important of these issues are currently under discussion at D&,K with a view to the possible development of new
international instruments) namely+ audiovisual performersU rights) broadcastersU rights) and sui 1eneris protection for databases that
do not qualify for copyright protection. The Crst two are already protected by multilateral treaties) but require updating and
improvementL the latter would establish a new form of international protection. Additional activities in other Celds are also under
consideration.S!!T
(aJ (cope of "opyright ,rotection in the 0igital Environment
7M. E2ceptions and limitations to copyri1/t* The copyright system has traditionally maintained a balance between protecting
creatorsU property rights and the exclusive right to control use of copies of their wor>) and the public good in fair access to and use of
such materials. "opyright laws permit exceptions to copyright) in order to maintain this balance. &n the 'nited (tates) for example)
this balance has been enshrined in the principle of Rfair useR S!T limitations on the rights of authors) while in other countries such
as Australia and the 'nited Eingdom) the concept is recogni5ed by way of statutory exceptions to copyright infringement for Rfair
dealing.R S!;T
7P. This balance is now in question because of digital technologies) and the way in which they have changed how we access and use
information. S!6T &n the physical world) we can access copyright materials without infringing copyright) by borrowing a boo> from a
library) for example. S!QT Knline) each access to such material involves an act of copying) where the simple act of viewing a website
requires the computer to ma>e temporary local copies of the data in our computersU random access memory ($A-J. &n addition)
increasingly) copyright wor>s are not sold) in the way that a boo> or videocassette was sold in the past) but are licensed under certain
terms and conditions of use. Kur access to copyright wor>s is increasingly governed by contract) which may impact on the
application of exceptions and limitations) the traditional chec>s and balances of the copyright system) aimed at preserving the rights
of consumers and the public interest.
7G. A number of questions are raised about exceptions and limitations to rights in the digital environment. Are existing exceptions
and limitations) written in language conceived for other circumstances) too broad or too narrow@ (ome exceptions) if applied literally
in the digital environment) could eliminate large sectors of existing mar>ets. Kthers may implement valid public policy goals) but be
written too restrictively to apply to networ> transmissions. =ew circumstances may also call for new exceptions. These questions
must be examined in light of the international standard established for the permissibility of exceptions and limitations to certain
rights) >nown as the Rthree3step testR. 'nder this test) as set out in the :erne "onvention and T$&,( Agreement) exceptions are
permitted Rin certain special casesR that Rdo not conXict with a normal exploitationR of the wor> and Rdo not unreasonably pre%udice
the SownerUsT legitimate interests.R S!9T
M!. As to the scope of these exclusive rights) the D&,K &nternet Treaties continue to provide Xexibility to individual countries to
develop exceptions and limitations that are appropriate to their particular circumstances. The general Rthree3stepR test applied to the
reproduction right in the :erne "onvention and to all rights in the T$&,( Agreement is extended to apply to all rights in the :erne
"onvention and in the D"T (Article !J and the D,,T (Article 7J. An important agreed statement in the D"T (concerning Article !J
and the D,,T (concerning Article 7J clariCes that this test permits countries to extend existing exceptions and limitations into the
digital environment) or to add new ones) as appropriate. *or example) the D"T provides+
3+1reed statement concernin1 +rticle 405 It is understood t/at t/e provisions of +rticle 40 permit (ontractin1 Parties to carry for6ard
and appropriately e2tend into t/e di1ital environment limitations and e2ceptions in t/eir national la6s 6/ic/ /ave been considered
acceptable under t/e 7erne (onvention* Similarly) t/ese provisions s/ould be understood to permit (ontractin1 Parties to devise ne6
e2ceptions and limitations t/at are appropriate in t/e di1ital net6or- environment*
&t is also understood that Article !(;J neither reduces nor extends the scope of applicability of the limitations and exceptions
permitted by the :erne "onvention.R
M. As described above) the goal of policy ma>ers is to achieve an appropriate balance in the law) providing strong and efective
rights) but within reasonable limits and with fair exceptions. &f this efort is successful) the result should be a positive impact from all
perspectives. Trade in copyrighted wor>s) performances) phonograms and other protected ob%ects will become a ma%or element of
global e3commerce) which will grow and thrive along with the value of the material that is traded. &f rightsholders are secure in their
ability to sell and license their property over the &nternet) they will exploit this mar>et fully and ma>e more valuable wor>s available
through this medium. Appropriate limitations and exceptions will continue to safeguard public interest uses. The result will be a
beneCt to consumers) a beneCt to rightsholders) a beneCt to service providers) and a beneCt to national cultures and economies 3 a
true Rwin3winR situation.
M;. Preservin1 aut/ors' ri1/ts online. Attention has been drawn to the scope of copyright law in an online context) in a practical
sense) by two signiCcant cases in the 'nited (tates of America. They raise the question to what degree authors retain the right to
control and license their wor>s) when those wor>s are re3compiled or re3distributed electronically in the digital environment. &n the
case of 0/e 8e6 9or- 0imes) (o* v* 0asini) the 'nited (tates (upreme "ourt afrmed a decision in favor of the American =ational
Driters 'nion against various news distributors) which had been selling freelance writersU material to electronic databases) including
.exis2=exis) without any additional payment or negotiation of electronic rights with the authors. The "ourt found that the electronic
re3publication of the writersU wor>s constituted copyright infringement) and that the writers were entitled to receive royalties for the
secondary use. S!7T This reasoning was also upheld in 8ational :eo1rap/ic v* :reenber1) where the 'nited (tates (upreme "ourt
declined to hear an appeal from an earlier Appeals "ourt decision that the reproduction of freelance photographersU wor> in a
searchable "03$K- collection of past maga5ine editions involved a new use) for which the original authors were entitled to receive
royalties. S!MT Through such cases it is becoming clear) at least in some %urisdictions) that the legal characteri5ation of uses of
copyright wor>s in an electronic context is being addressed so as to preserve and reafrm the rights of creators in the digital
environment.
M6. ;pen source soft6are movement* The Ropen sourceR movement in the software industry has adopted a diferent stance towards
asserting intellectual property rights in software) which are traditionally proprietary and protected by copyright law) and in some
%urisdictions patent law.S!PT Kpen source refers to the development of software which is publicly available in source code form) in
conformity with the certiCcation standard issued by the Kpen (ource &nitiative (K(&J. S!GT The software) although usually copyright
protected) is distributed free of licensing restrictions and thus encourages users to run) modify) copy and distribute the software
freely) so long as certain conditions are met) including that the programUs source code remains publicly available and the holder of
the source code license does not collect royalties. The movement is designed to encourage collaborative software development) to
remove programming errors or bugs and promote derivative wor>s.
(bJ .iability of &nternet (ervice ,roviders
MQ. Kne issue of some concern in the intellectual property and &nternet communities is the question of who should be liable for
copyright infringement that ta>es place online. This issue is raised by the very nature of digital networ>s. Dhen a wor> is
transmitted from one point to another) or made available for the public to access) numerous parties are involved in the transmission.
These include entities that provide &nternet access or online services (R&(,sR or RK(,sRJ. Dhen such service providers participate in
transmitting or ma>ing available materials provided by another which infringe copyright or related rights) are they liable for the
infringement@ (uch liability could arise in one of two ways+ if the service provider itself is found to have engaged in unauthori5ed
acts of reproduction or communication to the public) or if it is held responsible for contributing to or ma>ing possible the act of
infringement by another.
M9. (uch issues have arisen under "hinese copyright law) for example) in the case of Wan1 <en1* v* (entury Interconnectin1 0elecom
(o* %td) which involved a service provider on whose website was posted wor>s of six well3>nown "hinese novelists without their
permission. S!T The defendant argued that "hinaUs "opyright .aw does not address the &nternet) and therefore that digital wor>s
could not infringe copyright. The "ourt found for the plaintifs) holding that no derivative wor> was created simply by the process of
digiti5ation and that "hinese copyright law gave the author the exclusive right to exploit and proCt from the wor> both online and of.
The &(, was found to be in a position to control the distribution of the wor>s) and was therefore liable for infringement.
M7. The liability issue has signiCcant international implications. :ecause the &nternet is a borderless medium and its mar>ets are
global) it is critical that compatible approaches to this issue be adopted around the world. &t is not necessary that the approaches be
identical+ they may difer depending on the particular circumstances and legal traditions in any given country. :ut they must be
interoperable if global networ>s and electronic commerce are to develop smoothly. This issue was the sub%ect of a D&,K wor>shop in
GGG) that examined national and regional legal framewor>s) notice and ta>edown systems) and the possibilities for international
harmoni5ation. ST D&,K continues to monitor developments regarding this issue) including legal decisions) mar>etplace events
and emerging legislation.
MM. 0uring the 0iplomatic "onference on the D&,K &nternet Treaties in GG7) the issue was intensively debated. The ultimate result
was that the treaties are essentially neutral on the sub%ect) with the issue of liability left to national legislation to determine. There is)
however) one reference to the issue) in an agreed statement to the D"T) which provides that+ RSiTt is understood that the mere
provision of physical facilities for enabling or ma>ing a communication does not in itself amount to communication within the
meaning of this Treaty or the :erne "onvention.R S;T The statement clariCes that the mere provision of wires used to
communicate) for example) does not constitute an act of communication. :ut the statement is limited in its applicationL it does not
cover a number of activities that service providers may engage in) and it does not deal with concepts of liability for contributing to
the infringement of another.
MP. (ince GG7) a number of legislative solutions to this issue have begun to emerge. S6T These statutes difer as to whether they
address copyright only) or ta>e a Rhori5ontal approachR that is) a rule governing liability of service providers regardless of the grounds
for illegality of the transmitted material. &n other words) the hori5ontal approach covers not only copyright infringement but also
other laws such as libel or obscenity. SQT There are laws now in force in Aermany and (weden) which approach the issue from a
hori5ontal perspective. Bapan also has introduced the R,rovider .iability .awR) S9T which states that a provider is liable only if it is
technically possible to prevent transmission of the infringing materialL and the provider >nows of the existence of the material andL
(iJ >nows that it is infringing or (iiJ reasonably ought to >now that it infringes (Art. 6 (JJ. A person whose rights have been infringed
can as> a provider to disclose information about the person transmitting the material if the information is necessary for a legal claim
or other legitimate reason (Art. Q(JJ.
MG. The European "ommunity has adopted a 0irective on Electronic "ommerce with provisions that will harmoni5e the treatment of
liability among its -ember (tates) again using a hori5ontal approach. S7T (ome commentators have argued that there are
inconsistencies between the E.'. "opyright 0irective and the E.'. E3"ommerce 0irective on the issue of online service provider
liability. SMT
P!. The alternative approach of implementing copyright3speciCc laws to determine online service provider liability) has been adopted
by other countries) including #ungary) &reland) (ingapore and the 'nited (tates of America. &n the 'nited (tates of America)
"ongress enacted copyright3speciCc legislation as part of the GGP 0igital -illennium "opyright Act (0-"AJ) after legislation in past
years establishing diferent standards in other areas of the law. As part of the 0-"A) the RKnline "opyright &nfringement .iability
.imitation ActR) establishes Rsafe harborsR to shelter &(,s from liability for copyright infringement in certain circumstances. SPT The
0-"A sets down guidelines with respect to copyright infringement online) although it does not deCne when a provider is liable for
copyright infringement and) in this respect) the existing principles of '.(. copyright law apply. &nstead) the 0-"A deCnes those
categories of provider activity where providers are exempt from liability for damages SGT provided that+ the provider is merely
acting as a Rpassive conduitR for the information) is not the producer of the information) and has responded expeditiously to remove
or disable access to infringing material upon notice from the copyright holder (the so3called Rnotice and ta>edownR provisionsJ. To
qualify for immunity) the provider must also implement a policy that terminates the subscriptions of repeat infringers) and
accommodate and not interfere with technical measures put in place to protect and identify copyright wor>s.
P. &n one '.(. case testing these Rsafe harborR provisions) +%S Scan) Inc* v* Remar= (ommunities) Inc*) the issue was whether a
service provider was liable for providing access to RadultR news groups that contained unauthori5ed copies of the plaintifUs
photographs) after having been informed that the site was infringing. S;!T &n this case) the provider argued that it would only
remove the materials when the infringing items were identiCed and listed with sufcient speciCcity) a difcult tas> given the number
of photographs on the site. The "ourt found that the plaintif had met its notice requirement and that) once notiCed) the provider
could not rely upon the immunity granted by the 0-"A. Action was also initiated in the 'nited (tates of America under the 0-"A)
when 6 record companies requested the "ourt to order four &(,s to bloc> access to a "hina3based website) .istenQever.com) that
was alleged to violate '.(. copyright laws. S;T The English3language site ofered thousands of copyrighted songs for free download)
before going oYine upon initiation of the legal action.
(cJ $ights of ,erformers in a 0igital Environment
P;. Dhile the D,,T does protect the rights of performers) its provisions relate to the aural aspects of performances) and not to
audiovisual performances. This is because diverse systems have evolved to protect audiovisual performers in diferent parts of the
world) some based on legal rights and others on contract) and a compromise between the systems is difcult to achieve. Dhile such
performances are protected by many national laws) and also by the $ome "onvention for the ,rotection of ,erformers) ,roducers of
,honograms and :roadcasting Krgani5ations) no multilateral treaty covers the rights of performers in authori5ed audiovisual Cxations
of their performances. The possible extension of international protection for performers to cover audiovisual performances might be
perceived as a general question) not speciCc to e3commerce. &t is) however) highly relevant because audiovisual performances will be
used in an increasing measure on the &nternet) through Clm and music videos for example) as available bandwidth increases. S;;T
-oreover) digital technologies permit the unauthori5ed manipulation and distortion of performersU images and voices (e.g.)
morphingJ. A satisfactory solution of this issue is therefore an important component of an overall clariCcation of the rights involved in
e3commerce.
P6. &n 0ecember ;!!!) D&,K organi5ed a 0iplomatic "onference on the ,rotection of $ights in Audiovisual ,erformances. S;6T Dhile
the scope of this "onference included a number of basic questions regarding that protection) it was also an important attempt to
establish appropriate rights in connection with the convergence of the digital and audiovisual worlds. The "onference resulted in a
general understanding between the participating government delegations concerning most substantive provisions of a D&,K
audiovisual performances treaty) except for the international recognition of transfer of rights under national law.
PQ. The deadloc> was related to the consequences that the international recognition of statutory transfers of exclusive rights could
entail. Those countries in favor of such recognition demand to have certainty and clarity on the producerUs ability to exercise the
exclusive rights of authori5ation for the efective exploitation of Clms in a global environment. Kpposition to that recognition is
founded mainly in the concern that this could imply the application of domestic rules on the legal regulation of transfer or entitlement
or rights in respect of the exploitation of Clms all over the world.
P9. The 0iplomatic "onference recommended to the D&,K Assembly of -ember (tates) at its meeting in (eptember ;!!) to
reconvene the "onference with the aim of Cnally adopting the new treaty. #owever) during the Assembly) -ember (tates considered
that it was necessary to continue consultations to resolve outstanding issues over the above3mentioned provision. They therefore
decided to carry the issue over to the ;!!; session of the D&,K Assemblies. S;QT &n the absence of such contacts) at the ;!!;
meetings the Aeneral Assembly approved the 0irector AeneralUs proposal that the &nternational :ureau should conduct informal
consultations with interested parties to explore the possibilities of convening an Rinformal ad hoc meetingR in the Crst half of ;!!6
Rfor the purpose of having informal exchanges on the remaining diferences and possible ways of resolving them.R -eanwhile) D&,K
is maintaining a close dialogue with governments and non3government organi5ations to bridge the existing gaps and to Cnd possible
ways forward in the negotiations. S;9T
(dJ $ights of 0igital :roadcasters
P7. Webcastin1 and di1ital >lm and television. The &nternet ofers manifold opportunities for copyright content providers and
distributors to supply their material to a global audience) including viaL (iJ webcasting and (iiJ digital Clm and television online.
?i' Webcastin1
PM. Debcasting) also >nown as RstreamingR) is the process of digitally transmitting musical recordings) and radio and television
broadcasts over the &nternet. S;7T The process is designed not to create permanent copies on end3listenersU computer hard drives)
although software is available that allows users to convert streamed audio Cles into other formats which can then be transferred via
peer3to3peer (,;,J systems) described below. S;MT (ome legislatures have responded to this new method of distribution of copyright
wor>s.
PP. The 'nited (tates 0igital -illennium "opyright Act (0-"AJ) for example) provides a statutory license for webcasters whose
services are not provided on3demand) and gives copyright holders the exclusive right to authori5e webcasts that are provided on3
demand. S;PT RKn3demandR transmissions are interactive broadcasts where the user chooses which songs to listen to from the
website. Apart from broadcasting transmissions) the 0-"A addresses four categories of webcasting+ (J sites providing original
programmingL (;J sites broadcasting secondary transmissions for analog radioL (6J aggregator sites facilitating access to commercial
radio stationsL and (QJ entertainment sites that provide both audio and entertainment news.
PG. The practice of retransmission of terrestrial radio stationsU over3the3air broadcasts via the &nternet has also raised copyright
concerns. &n 8ational .ootball %ea1ue et al v* i(rave0@*com) a case brought by 'nited (tates and "anadian motion picture and
broadcasting companies) the "ourt issued a permanent in%unction to prevent i"raveTO.com) a "anadian website) from converting
copyrighted television material from M =orth American television stations into digital Deb broadcasts and streaming them over the
&nternet.S;GT The unauthori5ed re3transmission was found to be an infringement of the plaintifsU exclusive right to perform and
display their wor>s in the 'nited (tates. Although i"raveTOUs transmissions may have been legal under "anadian copyright law) they
were not in accordance with 'nited (tates law) and it was then impossible to prevent 'nited (tates users from gaining &nternet
access to the service. i"raveTO has since relaunched its online service) broadcasting networ> and cable television programs) this
time using copyright protection systems to prevent users in the 'nited (tates from gaining access. S6!T
?ii' Di1ital >lm and television
G!. &n the audiovisual industries) the &nternet ofers an unprecedented channel for global distribution of Clm and television wor>s.
#owever) until recently) ma%or audiovisual companies have hesitated to engage wholeheartedly in the digital environment. The slow
increase in bandwidth) which has restricted the speed at which large Cles can be transferred) had recently protected the industry from
rampant piracy. #owever movie studiosU fears have now been raised by the availability) before their ofcial release) of pirated
versions of most mainstream movies. *or example) R(tar Dars Episode &&+ Attac> of the "lonesR was available online over the Cle3
swapping service) &nternet $elay "hat) a wee> before its ofcial premiere. $esearch has shown that between Q!!)!!! and 7!!)!!!
Clms a day are being downloaded over such Cle sharing networ>s and pirate video3on3demand sites.S6T "hanges in Clm release3
business structures) such as Rday3and3dateR releases) that open Clms simultaneously in various regions) help to stem piracy but do
not solve the problem. A further concern is with the so3called Ranalog holeR) referring to the gap in protection created when digital
signals are transformed into analog upon entry into a television set) at which point any copy protection mechanisms that have been
incorporated in the digital Cle are removed. The unprotected analog Clm can then be uploaded to the &nternet and pirated without
restriction. Another development closely watched by the Clm industry has been the proliferation of Rfan ClmsR) digital Clms that
feature the characters and mise en scZne of a Clm) a popular example being (tar Dars) without the authori5ation of the copyright
holder. S6;T &n one case) an animator distributed a (uperman fan Clm online) prompting the rightsholders) 0" "omics) to send a
cease3and3desist letter. S66T
G. =ew developments are also ta>ing place in the Celd of digital interactive television (iTOJ) involving the use of+
3 personal or digital video recorders (such as TiOo) $eplayTO and 'ltimateTOJ that allow viewers to digitally record shows by genre or
actor) and pause and rewind live TOL
3 video3on3demand (OK0J) allowing viewers to choose which program to watch either by pay3per3view or by subscriptionL and
3 two3way programming) that enables viewers to interact with other viewers. S6QT
These developments have) however) been delayed by the current lac> of copy protection that would secure the rightsholdersU
property in digital broadcasts. Kne such technology) put forward by the motion3picture and consumer electronics industry3based
:roadcast ,rotection 0iscussion Aroup) and approved by the *ederal "ommunications "ommission) is the Rbroadcast XagR) a mar>er
embedded in digital3TO broadcasts that controls how consumer electronic devices can play and record the broadcasts) and designates
those which cannot be copied. S69T Another initiative) the #ollywood3based "opy ,rotection Technical Dor>ing Aroup has been
established to develop protection for digital television and video distribution. S67T
G;. :roadcasting organi5ations have traditionally en%oyed protection in many countries for their broadcasts under either copyright or
related rights) and their rights are protected under both the T$&,( Agreement and the $ome "onvention. #owever) in this Celd) as
with performersU rights) an updating of existing international norms is needed. Existing treaties may not adequately ensure that
broadcasters (and providers of valuable programming not necessarily covered by copyright and related rights) such as certain sports
transmissionsJ are able to safeguard and exploit their eforts and investments over the &nternet. A new treaty could protect against
digital piracy and manipulation of broadcast signals) furthering the use of the &nternet as a medium for broadcasting activities) as
described above.
G6. 0iscussions are ongoing at D&,K concerning the potential for a treaty dealing with the rights of broadcasting organi5ations) and
treaty language proposals have been received by D&,K from the European "ommunity and a number of -ember (tates. S6MT The
D&,K (ecretariat prepared a technical bac>ground paper on the protection of broadcasts aimed to illuminate the issues involved
during further consideration of this matter by the (tanding "ommittee on "opyright and $elated $ights. S6PT
(eJ .in>ing of "opyright &nformation Knline
GQ. %iability for lin-in1 and deepAlin-in1 online content* The software that underlies the operation of the &nternet allows information to
be Rhyperlin>edR or Rhypertext reference lin>edR within and between sites. S6GT (uch lin>ing typically occurs when the creator of
one website provides a reference to another website) usually indicated in colored text or icons) using software that allows the user to
clic> on the reference and view the content on the lin>ed website. Dhile enabling users to surf Xuidly from one website to another)
this practice also raises copyright issues. A simple lin> from one website to the home page of another website does not normally
raise concern) as the use of such lin>s may be equated to the use of footnotes to refer to other sites. SQ!T Employing a simple lin>)
the user merely views the material from the lin>ed site) and is aware that it originates from a diferent website. This process does not
create a copy of the lin>ed wor>) other than that created in the random access memory ($A-J of the computer. Kften) no permission
is required to ma>e a lin> to a site) either because the website owner has given an implied license to lin> by posting his material on
the Deb) or by characteri5ing such lin>ing as fair use. SQT
G9. #owever) other lin>ing practices are more problematic. R0eep3lin>ingR connects a user directly to secondary material on another
site) bypassing that siteUs home or front page) and may amount to an infringement of copyright in the secondary material. (imilarly)
an Rembedded lin>R creates a reference to content from another website such that the secondary material appears to be content
originating from the Crst site. (uch lin>s) also called Rin3lineR lin>s) do not require a copy to be made of the lin>ed material) but may
violate the authorUs right to display or communicate their wor> to the public. SQ;T
G7. The use of deep3lin>s to retrieve pages from the targeted siteUs database may) in some %urisdictions) amount to an infringement of
rights in the database that contains the secondary information. &n Europe) the E.'. 0atabase 0irective requires -ember (tates to
protect database owners from Rrepeated and systematic extraction and2or reutili5ation of insubstantial parts of the contents of the
database implying acts which conXict with a normal exploitation of that database.RSQ6T This 0irective has been invo>ed to prevent a
news aggregatorUs website from deep3lin>ing to articles on commercial newspapersU sites. &n a case under 0anish copyright law) the
0enmar> :ailifUs "ourt issued an in%unction to prevent =ewsbooster.com from providing services that enabled users) for a fee) to use
>ey words to prompt Deb RbotsR (automated computer programsJ to search news sites. SQQT The defendants were prohibited from
ofering deep3lin>ing search services) from reproducing and publishing headlines from the sites and from distributing e3newsletters
with deep lin>s. &n Aermany) -unichUs 'pper "ourt has found similarly in a case brought by the Aerman newspaper -ainpost against
the search engine) =ewsclub) which was found to have violated the copyright protection in -ainpostUs news database by searching
and lin>ing directly to it. SQ9T #owever) a decision of the 0istrict "ourt of Aroningen) =etherlands (under appealJ) held that a
newspaperUs %ob listing section does not constitute a database under 0utch law) and cannot therefore be protected from being
excerpted on a %ob search website. SQ7T
GM. &n the 'nited (tates) where no sui 1eneris database law currently exists) copyright owners have found protection against deep3
lin>ing by relying upon laws related to copyright) trespass) breach of contract) and common law misappropriation. SQMT &n the case
of E7ay Inc* v* 7idder's Ed1e Inc*) it was found that use of Deb bots to extract data about auctions from an auction site amounted to
trespass. SQPT &n the case of 0ic-etmaster (orp* v 0ic-ets*com Inc*) -icrosoftUs (eattle (idewal> online service published a deep lin>
into Tic>etmasterUs website from which users could purchase tic>ets) bypassing Tic>etmasterUs home page) and therefore its revenue3
producing advertising and corporate information. &n that case) however) the 0istrict "ourt found that the deep lin>s were neither
deceptive nor unfair competition) nor did they constitute a violation of copyright) because the Deb address) or uniform resource
locator ('$.J) itself is not protected material. SQGT
GP. The issue of deep3lin>ing was also addressed in a '.(. case) #elly v* +rriba Soft (orporation) involving a Rvisual search engineR
that searched the Deb to reproduce many miniature RthumbnailR images with in3line lin>s to the original photographs) that appeared
in full si5e in a window on the defendantUs site when users clic>ed on the miniature image.S9!T Kne photographer) whose wor> was
included among the images without authori5ation) sued the search company for copyright infringement. Although the "ourt of
Appeals found in the circumstances that the compilation of the miniature images was fair use) S9T it also found that the use of
embedded lin>s to frame the full scale photograph did infringe the photographerUs copyright) violating his right to display the wor>s
publicly and diverting users from his site. &n another case brought under the 0-"A) "niversal (ity Studios) Inc* v* Reimerdes) the
"ourt granted a permanent in%unction to prevent the defendant from lin>ing to sites that downloaded the 0e"(( copyright
circumvention program) Cnding that this practice was equivalent to trafc>ing in circumvention devices in contravention of the
0-"A. S9;T
GG. %iability for framin1 online content* A related issue has arisen as a result of the practice of using browser software to RframeR
content from another online source. The legal difculty arises because the user sees the original website content) which may be
copyright protected) framed by a diferent website) with a diferent '$.) and possibly with diferent logos and advertising. This
practice may constitute copyright infringement in some %urisdictions) because a copy of the material is made in the userUs computer
memory. &n Aermany) for example) framing is considered an infringement of the transformation right provided by Articles 7;. and
6G of the Aerman "opyright Act. &n the case of Roc/e %e2icon) a #amburg court decided that the $A- copies created in the process
of framing constituted a reproduction of the wor>) that must be authori5ed by the rightsholder. S96T &t is clear that the law will
continue to respond) through legislative and %udicial developments) to questions raised by new practices of connecting information
and users to material online. :ecause of the borderless operation of the &nternet) it is preferable that these responses are
compatible) and enable users and website owners to exploit the Deb of online information with conCdence.
(fJ ,rotection of 0atabases
!!. As described above) S9QT the economic value and importance of databases) as repositories for digital information) have vastly
increased in the digital environment. There have been calls for an extension of the scope of existing international protection for
databases. 0atabases that are original by virtue of the selection and arrangement of their contents are already protected under
copyright. :ut copyright does not protect databases that are not original) such as a database that contains the entire universe of
relevant facts and is therefore not selective) and is arranged in a non3creative numerical or alphabetical way.
!. &n addition) even those databases that do qualify for copyright protection may receive a very narrow scope of protection)
allowing competitors to ta>e and mar>et substantial portions of the information they contain. (uch databases often represent
signiCcant efort and investment for their ma>ers) and these investments are %eopardi5ed by the ease and inexpensiveness of copying
them with todayUs technologies. &n response to this problem) the European "ommunity has adopted the RE.'. 0atabase 0irectiveR
requiring its -ember (tates to provide a separate sui 1eneris form of protection for databases. S99T Kn the other hand) concerns
have been raised that) if not carefully balanced) a new form of protection might result in a monopoly position of information providers
or otherwise be detrimental to the scientiCc) research and education sectors. S97T
!;. The issue of protection of databases is being considered within D&,K as one aspect of the D&,K 0igital Agenda) concerning the
principle of protection of non3original databases) as well as the form which such protection might ta>e. -any governments have
indicated that further analysis is required of this issue. *ive studies were commissioned by D&,K on the economic impact of non3
original database protection in developing countries and countries in transition) and are now available. S9MT These studies were
distributed in con%unction with the meeting of the (tanding "ommittee in -ay ;!!;) and a further study has been commissioned)
while the issue remains on the agenda of the (tanding "ommittee on "opyright and $elated $ights ((""$J. S9PT
(gJ ,eer3to3,eer *ile (haring 3 =apster
!6. The music industry has been at the vanguard of the intellectual property system in confronting the issues raised in the copyright
Celd as a result of emerging digital technologies. This is largely because music is ideally suited to distribution over the &nternet.
$evenues from digital music are forecast to reach '(V;. billion by ;!!M) representing MW of the music trade. S9GT The
development of compression software) such as -,6 (mpeg6J) S7!T has enabled music Cles to be digiti5ed and uploaded and
downloaded freely from Deb or Cle transfer protocol (*T,J sites. &n a case relating to -,6."om) an online music service) "<:
Recordin1s) Inc* v* <PB*(om) Inc*) the "ourt found -,6."om liable for copyright infringement for facilitating the piracy of digital
music) by ma>ing available its database of more than P!)!!! musical recordings) almost all unauthori5ed. S7T
!Q. -usic piracy has) however) reached unprecedented levels because of the emergence of Rpeer3to3peerR (,;,J Cle sharing
systems) that facilitate the swapping of music and video Cles between users. S7;T The original Cle sharing system was =apster)
described below) although numerous ,;, services have since emerged) including Aimster) S76T Ea8aA and Aro>ster (using the
*astTrac> networ>J) and -orpheus (using the Anutella networ>J. &t is now estimated that GGW of all Cles transferred through such ,;,
systems are unauthori5ed. S7QT This is signiCcant) in light of estimates that 9.7 billion unlicensed audio Cles were shared across
,;, networ>s in ;!!) a volume predicted to increase to M.QQ billion Cles in ;!!9. S79T
!9. The most notorious Cle sharing service is =apster) which uses a centrali5ed server acting as a search engine to assist users to
download music from the computers of other =apster subscribers. At its height) in *ebruary ;!!!) =apster was logging .9M million
simultaneous subscribers. The downloading of music by =apster users was found) in the case of +C< Records) Inc* v* 8apster) Inc* to
be a direct infringement of copyright held by the recording companies. The "ourt determined that) even though =apster was not
charging for its service and users were downloading the music for their personal use) the downloading was not a Rfair useR under the
'nited (tates "opyright Act ([!MJ. S77T &t was found that Rrepeated and exploitative copying of copyrighted wor>s) even if the
copies are not ofered for sale) may constitute commercial use.R S7MT The copies were found to have been made to save the cost of
purchase. This practice is cited particularly by the recording industries as a factor in the 9W drop in music sales experienced in the
past two years. S7PT &n addition to Cnding =apster users liable for direct infringement) the "ourt found that =apster itself had
engaged in contributory infringement) with actual and constructive >nowledge of the infringing activities) and vicarious copyright
infringement) because it had a direct Cnancial interest in drawing users to its service as customers. :y Bune ;!!) the number of
=apster users had fallen to ;!)!!!.
!7. #owever) while legal action has largely restrained =apster from ma>ing copyright music available online without authori5ation) it
has proven more difcult to regulate other ,;, systems with diferent networ> architecture that does not require a centrali5ed server
to process search requests and downloads) such that each userUs computer acts as a search engine. These systems) including
Anutella) Audiogalaxy) Ea8aA) -usic"ity) -orpheus and Aro>ster) are now said to attract some .6 million users in Destern Europe
alone. S7GT =onetheless) such ,;, systems have been targeted in anti3piracy campaigns) including legal action initiated by the
$ecording &ndustry Association of America ($&AAJ and the Australian =ational -usic ,ublishers Association against Audiogalaxy) which
resulted in the ,;, system removing most of its music Cles for download. SM!T
!M. &n Bapan) in a suit brought by G Bapanese record companies) the To>yo 0istrict "ourt issued a temporary in%unction against Bapan
--K) to prevent it from operating a ,;, service called *ile $ogue. SMT &n the $epublic of Eorea) in a suit brought by the $ecording
&ndustry Association of Eorea) the (ungnam 0istrict "ourt closed down (oribada) the $epublic of EoreaUs most popular ,;,
networ>. SM;T (imilar legal action has been initiated in the 'nited (tates of America by the -otion ,icture Association of America
against the operators of other ,;, networ>s) including Ea8aA) -usic"ity and Aro>ster) for infringement of copyright in motion picture
and sound recordings. SM6T &t is notable) however) that in the =etherlands) the Amsterdam "ourt of Bustice found in favor of Ea8aA
against :uma (temra) a 0utch music rights organi5ation. The "ourt held that Ea8aA was not liable for individualsU abuse of its Cle
sharing software. SMQT
!P. An alternative approach ta>en by the copyright industries is to target individual Cle3traders) through educational institutions or
corporations where much of the piracy occurs) although this approach is limited because of sheer volume of users and privacy
concerns. &n one such action) an American corporation) &ntegrated &nformation (ystems) reached a '(V million settlement with the
$&AA following evidence of illegal downloading and sharing of copyrighted -,6 Cles over its corporate networ>. SM9T &n another
action) $&AA has ta>en action to compel an online service provider to reveal the name of a customer accused of large3scale illegal Cle
swapping. SM7T As mentioned above) some 'nited (tates record companies have also sought to bring legal action directly against
the &nternet service providers) in an attempt to bloc> access to ofshore music sites) rather than attempting to initiate legal action in
foreign %urisdictions against the site owners themselves. SMMT
!G. "ontroversy has also arisen as a result of eforts by the copyright industries to protect their rights against piracy by using digital
technologies to monitor users of copyright material for potential violations. The Clm industry has employed search engines designed
to scour the Deb for copyright movies on ,;, networ>s) and then to send cease3and3desist letters to users via their &nternet service
providers (&(,sJ. The providers) in turn) are locating potential infringers by monitoring high bandwidth users who are most li>ely to be
exchanging copyright audiovisual material) because signiCcant bandwidth is required to swap large movie Cles. SMPT An alternative
technique employed by the copyright industries is to distribute RspoofR Cles of music or Clm wor>s onto the ,;, networ>s) that
contain only limited or degraded portions of the wor>) and are designed to discourage piracy by ma>ing the illegitimate Cle services
less attractive to use. SMGT
!. 0raft legislation was introduced into the 'nited (tates legislature by a 0emocrat "ongressman) #oward :erman) designed to
immuni5e copyright owners from liability for any ofences they may commit while Rdisabling) interfering with) bloc>ing) diverting) or
otherwise impairingR the unauthori5ed use of their wor>s on publicly accessible peer3to3peer Cle3sharing networ>s. SP!T The
legislation would provide copyright owners with a safe harbor from liability under American law for using tools including decoys or Cle
bloc>ing to prevent piracy of their copyright wor>s on ,;, networ>s) such as =apster. #owever) the proposal has provo>ed criticism
from domestic and international sources. Kne issue is raised by the fact that immunity would only extend to American law) but could
expose industry executives to liability in other %urisdictions for unauthori5ed access to computer systems) or violation of national
privacy laws. SPT
(ivJ .&"E=(&=A A=0 $&A#T( -A=AAE-E=T &= T#E 0&A&TA. A$E=A
(aJ .icensing and "ollective -anagement of $ights
. As a reward for their creativity and investment) the copyright system grants creators exclusive rights in their wor>s. Third
parties are prohibited from using wor>s in a manner that is covered by the exclusive rights) without obtaining permissions from the
rightsowners. $ightsowners will usually grant such permissions in exchange for compensation (a RroyaltyRJ and on the basis of
certain terms and conditions of use. These conditions are typically recorded in contractual arrangements concluded between
rightsowners (or their representativesJ and users (RlicensesRJ. The exclusive rights conferred by the copyright system thus facilitate
the commercial exploitation of creatorsU wor>s.
;. 'sers of wor>s can be either consumers (for example) a person purchasing a license for a computer operating system to be
installed on his home computerJ or intermediaries (for example) a boo> publisher who licenses the right to incorporate certain
photographs in an encyclopediaJ. Kften) intermediaries are also creators) but at a diferent stage of the production process) using the
wor>s of others as building bloc>s to which they add value for their own productions. The end product reaches the consumer either
by ways of a sale (the usual practice in the case of boo>s) for exampleJ) implying a transfer of ownership in the physical ob%ect rather
than in the rights themselves) or through a license (the usual practice in the case of software) for exampleJ) often depending on
industry practices. &n the case of a transfer of ownership) the rights and obligations of the parties with respect to the intellectual
property incorporated in the physical ob%ect tend to be governed by law) whereas) in the case of licenses) they are mostly regulated
by contract.
6. .icensing implies at least a minimum level of bargaining between the rightsowner and the person who wishes to use the wor> in
a manner covered by the exclusive rights. Even assuming that the terms of use and the royalty are totally standardi5ed) at the very
least there is a need to conclude an agreement between the user and the rightsowner or its representative. &n certain sectors) such
licenses are concluded on a one3to3one basis directly between the rightsowners and the users. This is the usual practice in) for
instance) the software industry. &n certain circumstances) however) the need to conclude agreements on a one3to3one basis) and a
fortiori) the individuali5ed negotiation of their terms) can be too cumbersome. This is well illustrated by considering the situation of
radio stations) which typically wish to broadcast a wide selection of the worldwide music repertoire. $adio stations would be forced to
identify) and negotiate with) the rightsowner of each song or other musical composition that they see> to broadcast) with a view to
concluding agreements with all of them. Aiven that the popular music repertoire is constantly evolving) this negotiation process
would be constant. "learly) the costs and eforts to secure the rights in the musical wor>s concerned would be such an enormous
burden for most radio stations that many of them would not be able to operate in a commercially viable manner. 'ltimately) this
would result in reduced consumer choice.
Q. The inefciencies described above associated with the individual exercise of rights are addressed by an intellectual property
practice >nown as the Rcollective management of rights.R SP;T Dhile the collective management of rights ta>es many forms and the
practice is more prevalent in certain industries than in others) SP6T one common feature shared by such systems is that they ofer
centrali5ed access to a plurality of wor>s for the beneCt of users. &n certain cases) the services of collective management
organi5ations may be more elaborate.
9. *or example) in the Celd of musical wor>s where there is a long tradition of collective rights management) the system typically
extends beyond the mere ofering of centrali5ed access and includes) in addition to documentation) also licensing and distribution) as
the three pillars on which the collective management of the rights of public performance and broadcasting is based. The collective
management organi5ation negotiates with users (such as radio stations) broadcasters) discotheques) cinemas) restaurants and the
li>eJ) or groups of users) and authori5es their use of copyrighted wor>s from its repertoire against payment and on certain conditions.
Kn the basis of its documentation (information on members and their wor>sJ and the programs submitted by users (for example) logs
of music played on the radioJ) the collective management organi5ation distributes copyright royalties to its members according to
established distribution rules. A fee to cover administrative costs) and in certain countries also socio3cultural promotion activities) is
generally deducted from the copyright royalties.
7. "ollective management organi5ations tend to be organi5ed on a territorial basis and) in order to better represent the interests of
their members) national collecting societies have associated themselves at the regional or international level. Examples of such
associations are the &nternational "onfederation of (ocieties of Authors and "omposers ("&(A"J SPQTand the &nternational *ederation
of $eprographic $eproduction Krganisations (&*$$KJ. SP9T Typically) in the Celd of musical wor>s) contracts of mutual representation
are concluded between the various national societies on the basis of which a particular national society is entitled to manage not only
its own national repertoire) but also the foreign repertoire of the other society. &n return) its own repertoire will be managed and
protected in each foreign country by the national society with which the contract of mutual representation has been concluded. As a
result of this networ> of agreements between the various national societies) each of them is in a position to license the entire music
repertoire of the world) which) from the point of view of the user) is highly desirable.
?i' Di1ital Ri1/ts <ana1ement
M. The digiti5ation of content) together with the increased reliance by rightsholders and intermediaries (including collecting
societiesJ on information technology) and the &nternet) is inXuencing the traditional means of licensing intellectual property rights) as
described above. The application of information technology to facilitate the exploitation of rights is commonly referred to as Rdigital
rights managementR (0$-J. 0$- systems are aimed at enforcing certain business rules in respect of the use of content protected by
intellectual property. Typically) these business rules concern questions of who is entitled to access a wor>) at what price and on which
terms. These terms address questions such as whether a user is entitled to ma>e any copies of the wor> (and) if so) how manyJ) for
how long a user is entitled to access a wor>L whether a user can excerpt the wor> or ma>e changes to itL whether a user can access
the wor> on one or on multiple devices) etc. &n efect) 0$- systems aim to automate the process of licensing wor>s and of ensuring
that license terms are complied with. The following elements are often associated with 0$- systems+ (J identiCers) i.e.) numbers or
codes permitting the unique identiCcation of a piece of content (comparable to) for example) the &(:= number for boo>sJL SP7T (;J
metadata) i.e.) information about the piece of content which may include) for example) the identity of the rightsholder) the price for
using the wor>) and any other terms of useL and (6J technological protection measures) i.e.) systems designed to ensure that certain
usage rules are complied with) in particular those concerning access and copy control. SPMT
P. .egal support for 0$- systems is to be found in the D&,K "opyright Treaty (D"TJ and the D&,K ,erformances and ,honograms
Treaty (D,,TJ) described above) in particular in their provisions on Kbligations concerning Technological -easures (Article of the
D"T and Article P of the D,,TJ and $ights -anagement &nformation (Article ; of the D"T and Article G of the D,,TJ. SPPT
:ecause the technology holds the promise of curbing rampant piracy of copyright wor>s) rightsowners have placed a great deal of
faith in 0$-) and technological protection measures in particular) as a means of enforcing their rights in the digital environment.
(ubstantial investments have been made in recent years with a view to the development and deployment of the systems in
question. This wor> is predominantly private3sector driven and many systems are already available) although not yet widely adopted
by the mar>et. Kne of the important issues that needs to be addressed is the need for interoperability) as many diferent proprietary
systems would need to be able to function seamlessly together for them to become truly attractive to users. Dhile there are many
eforts aimed at establishing interoperable standards) the degree of consensus that is required among a broad range of industry
sectors) as well as users) is a considerable challenge. SPGT =onetheless) mass mar>et deployment of 0$- systems is widely
anticipated) as it is generally recogni5ed that this li>ely would enhance legitimate access to copyright wor>s on the &nternet) to the
beneCt of users) intermediaries and content providers ali>e.
?ii' 0rends in %icensin1 and Ri1/ts <ana1ement
G. The interplay between information technology) the digiti5ation of content) the &nternet and the exploitation of intellectual
property rights is dynamic and it is particularly difcult to predict what the future will hold precisely. =otwithstanding) the following
remar>s can be made with respect to the future of licensing and management of rights in the digital environment) based on
experience gained and lessons learnt in recent years.
(iJ Approaches to managing intellectual property rights in the digital environment) as well as the type of licenses reXecting these
approaches) will need to ta>e account of the malleable and vaporous nature of digiti5ed content. Typical and by now well >nown
features of such content include the ease with which it can be transmitted from one device to another) its global accessibility once it
is made available on the &nternet) and the ease with which it can be reproduced) in the absence of any technical protection
measures. :ecause of the characteristics of digiti5ed content and the &nternet) users have certain expectations with respect to the
manner in which they wish to consume such content. To the extent such expectations are reasonably legitimate) rightsownersU
mar>et oferings (including the structures and terms of licensesJ) will be perceived as more attractive if they are consistent with them.
(iiJ &ncreased reliance on licensing and contracts as a means of managing intellectual property is a li>ely future trend. As content has
become more Xuid and its means of delivery to users more variable) mar>et oferings can now conveniently be tailored to suit the
particular needs of individual users) or groups of users) sharing common requirements. A more diversiCed and adaptable range of
products is reXected in a corresponding need for greater Xexibility in the structure of legal relationships between content providers)
intermediaries and consumers. "ontent providers) and) to an increasing extent) institutional users are of the view that contracts)
licensing in particular) ofer much needed Xexibility in this regard. Accordingly) certain sectors of the intellectual property industry in
recent years have increased their reliance on licensing as a means of ma>ing available content to users. An example of a sector in
which this trend can be discerned is the scientiCc) technical and medical publishing industry.
(iiiJ (ome have argued that information technology and the &nternet are a threat to collective rights management organi5ations)
because they would enable rightsowners to control and measure themselves directly the use of wor>s. *or a variety of reasons)
however) the more informed view probably is that these phenomena will) in most cases) require collecting societies to re3engineer
their business models and operating procedures) rather than %eopardi5e their very existence. &n part) the difculty results from the
fact that collective rights management organi5ations) li>e much of the intellectual property system) are organi5ed on the basis of
territoriality. The entities in questions are often organi5ed on a national basis) each of them having competence to grant licenses for
their territory. #owever) if a person residing in a particular territority ma>es a wor> available on the &nternet) it immediately becomes
globally accessible (much more so than) for example) a broadcast originating from within a particular countryJ. &n an efort to resolve
this problem) certain collective management organi5ations have been wor>ing towards enabling their system of mutual
representation to ma>e available to users global &nternet licenses. SG!T
(ivJ A topic of increasing interest concerns the future of exceptions and limitations in the digital arena. Dhile the D&,K &nternet
Treaties state that Rcontracting ,arties Sare permittedT to carry forward and appropriately extend into the digital environment
limitations and exceptions in their national laws which have been considered acceptable under the :erne "onvention)R the question
has been raised whether the broad use of licensing as a means of providing access to wor>s) as well as the widespread deployment of
technological protection measures) will not result in a situation where exceptions and limitations are rendered practically
meaningless. The interface between technological protection measures) licensing) and limitations and exceptions is a complex and)
as yet) poorly understood issue that is li>ely to engage industry) users) as well as policy ma>ers) for quite some time.
(vJ Kne) rather radical) method of dealing with loss of revenue for rightsowners resulting from digital piracy is the imposition of levies
to compensate for the losses incurred. .evies can apply to any number of items) including) for instance) the hardware and devices
purchased by users to access the pirated wor>s. $esort to such levies) as a means of dealing with widespread infringing content in
the digital age) recently has been observed in a number of countries. SGT &nvariably) the imposition of levies is a highly
controversial measure. Those who oppose them argue that they reXect a misguided attempt to Cnd a Rquic> CxR to a complex
problem) introducing mar>et distortions and) ultimately) hurting consumers who sufer subsequent price increases. Kthers maintain
that they are one of a few realistic and efective means of safeguarding the interests of rightsowners in the face of rampant digital
and &nternet piracy.
III. (b) TRD"%R&$ !D OTH"R RIGHT$ I! DI$TI!CTI'" $IG!$
;!. This "hapter addresses issues that have arisen in the Celd of trademar> law) describing the changing importance of trademar>s
when used to identify enterprises online) before proceeding to some issues that have developed as a result of use of trademar>s on
the digital networ>s) such as meta tags and lin>ing practices. &t then focuses on the principle of territoriality that underlies the
trademar> system) before introducing D&,KUs programs in this area) in particular the Boint $ecommendation "oncerning ,rovisions on
the ,rotection of -ar>s) and Kther &ndustrial ,roperty $ights in (igns) on the &nternet) and Boint $ecommendation "oncerning
,rovisions on The ,rotection of Dell3Enown -ar>s) and concluding with a description of the concept of unfair competition as it applies
in the digital environment.
(iJ &-,K$TA="E K* T$A0E-A$E( K=.&=E
;. Trademar>s are an important tool in commerce) enabling consumers to identify the source of a product) and to lin> the product
with its manufacturer in widely distributed mar>ets. The exclusive right to the use of the mar>) which may be of indeCnite duration)
enables the owner to build goodwill and reputation in its enterprise and to prevent others from misleading consumers by false
association with an enterprise with which they are not connected.
;;. Trademar>s are of essential importance in e3commerce. &t is clear that trademar>s carry at least as much signiCcance on the
&nternet as in the of3line world. ,articularly following the downturn of the .com economy) online enterprises are focusing on building
recognition and goodwill) so as to inspire conCdence in themselves and in their brands) and to remain competitive. "onsumers)
operating in virtual mar>ets where face3to3face interactions are infrequent and there is little or no opportunity to inspect goods or
services before purchase) are willing to reward trusted sources ofering competitive products. SG;T &n fact) a survey of e3commerce
consumers reported that P!W of their decision whether to purchase is afected by issues beyond their online experience) and that
most importance was placed on brand performance. SG6T
;6. There is a general international consensus that trademar> protection under law should extend to the &nternet) and that its scope
should be neither less nor more extensive than the protection granted in the physical world. SGQT Dhile existing national or regional
trademar> law systems apply) together with the relevant international treaties) SG9T these provisions are of a general nature)
applying on a territorial basis) and are not tailored for the borderless world of the &nternet. The challenges of this new medium of
commerce are not limited to trademar>sL they exist with regard to all >inds of distinctive signs online) including trade names and
geographical indications.
(iiJ 0EOE.K,-E=T( &= '(E K* T$A0E-A$E( K=.&=E
;Q. Trademar> owners also face new challenges with respect to use of their mar>s in the digital environment. &n the current
mar>etplace) it is estimated that a typical large business owns between ;!! and 9!! corporate) product and service identities) that
need to be registered) maintained and defended. SG7T A corporate presence on the &nternet requires trademar> owners to defend
their rights against new forms of trademar> abuse and across millions of discrete sites) in multiple languages and domains. *or
example) trademar>s and logos may be used in a site or domain name in connection with pornographic or other ob%ectionable sites)
or by trade competitors to divert search engine trafc) or dilute or tarnish a brand.
;9. Kne provider of digital brand management services) Oeri(ign) estimates that M!W of domain names associated with top brands
are not registered by the true brand owner) prompting rightsholders to defensively register their mar>s as domain names) and ta>e
action to protect their mar> through domain name dispute resolution procedures) as described in "hapter &&&(cJ. &n addition to
cybersquatting) trademar> owners are facing new types of infringement) including user3trafc diversion through >eywords and meta
tags) or unauthori5ed lin>ing and framing) as described below. Added to this) the &nternet has vastly increased consumer choice by
ma>ing available a global spread of online enterprises which) together with a new diversity of media channels and increased
consumer control) has contributed to an erosion of brand loyalty. SGMT &n this environment) trademar> owners may employ services
of online brand management and RcybersurveillanceR companies) that assist in the protection and enforcement of their trademar>
rights in a digital environment.
;7. The means by which users locate businesses on the &nternet has also changed. *rom the early development of the &nternet) the
domain name system has served to facilitate usersU online navigation) using domain names and corresponding &nternet ,rotocol (&,J
numbers to identify computers connected to the networ>. 0omain names) because they are easy to remember and tend to mirror the
entityUs trademar> or business name) have functioned both on and oYine (in advertising and mar>eting practicesJ as business
identiCers) in a manner similar to trademar>s. #owever) users also have alternative mechanisms to locate sites on the Deb) mainly
through search engines such as Aoogle) Excite) AltaOista or ?ahoo\) as well as &nternet >eywords. SGPT The table below illustrates
the relative accuracy of such search methods+
-ebsite .eachability by "ategory of .e/uest and by 0earch 'ethod
"ategory of request
( success
)ia direct
do*ain na*e
syste* access
( success
)ia Google
search
( success
)ia
Real!a*es1
$a*+le
si,e
Top brand names G9W G7W 7W !!
$andomly3selected brand names 9W ;W W !!
$andomly3selected :oston ?ellow ,ages
results QW Q7W MW !!
-ost selective colleges and universities in
the 'nited (tates of America 9!W GGW 7GW !!
$andomly3selected colleges and universities
in the 'nited (tates of America 6W G7W 7W !!
;verall ?+vera1e , 0otal' BDE F2E &0E G00
]=ote+ $eal=ames ceased business operations in Bune ;!!;) but is included as one example of a >eyword system
(see/ttp5,,666*realnames*comJ.
(ource+ /ttp5,,cyber*la6*/arvard*edu,people,edelman,dnsAasAsearc/ 2
;M. (ome &nternet practices that may raise trademar> issues) such as Rhyperlin>ingR and Rmeta taggingR) are important to facilitate
usersU navigation of the Deb. =evertheless) they raise concerns for trademar> owners since they create associations and lin>s)
thereby increasing the ris> of confusion) dilution or other forms of unfair exploitation of trademar>s. A growing body of %urisprudence
is developing in some countries) as courts and legislatures determine the limits of legal activity in this Celd. SGGT Dhile there are
divergences of approach between countries based on their distinct national laws relating to trademar>s) trade practices and unfair
competition) it is difcult for enterprises to formulate a coherent mar>eting strategy for their activities in e3commerce. A number of
these emerging practices are described below) namely+ (iJ use of trademar>s as meta tagsL (iiJ sale of trademar>s as >eywordsL (iiiJ
pop3up advertisementsL (ivJ mousetrappingL and (vJ lin>ing and framing.
(aJ 'se of Trademar>s as -eta Tags
;P. A Rmeta tagR or Rmeta dataR is a >eyword or phrase embedded in a websiteUs #T-. (hypertext mar>up languageJ code as a
means for &nternet search engines to identify and categori5e the contents of the website. S;!!T -eta tags are not visible to normal
users on the website itself (although they can be made visible together with the source code of the pageJ) however) a search engine
see>ing particular >eywords will Cnd and list that particular site. The more often a >eyword appears in the hidden code) the higher a
search engine will ran> the site in its search results. &n various %urisdictions) trademar> owners have challenged the unauthori5ed use
of their trademar> as a meta tag. S;!T
;G. #owever) a trademar> employed as a meta tag) because it is used in a way that is invisible to the average viewer) is not used
primarily to distinguish particular goods or services) a Cnding that is generally necessary to establish trademar> infringement. &n
some %urisdictions) the courts have nevertheless found that companiesU use of competitorsU names as meta tags constitutes unfair
competition) S;!;T including the &ndian case of 0ata Sons %imited v* 7odacious 0atas) S;!6T and the &talian case of :enertel Sp+ v*
(ro6e Italia Srl.S;!QT &n the 'nited (tates of America) in the case of 7roo->eld (ommunications Inc* v* West (oast Entertainment
(orp) S;!9T the "ourt regarded the practice of meta tagging as potential trademar> infringement) stating that such use might
suggest sponsorship or authori5ation by the trademar> owner) or that consumers loo>ing for the products of the trademar> owner
might be misdirected and diverted to a competitorUs website and be at least initially confused in their search for the trademar>ed
goods. S;!7T
6!. #owever) while as a general rule the unauthori5ed use of a trademar> as a meta tag is considered unlawful) this approach is not
universal. A number of cases brought by ,layboy -aga5ine illustrate the complexity of the law in this area) and the diversity of
outcomes even within one legal %urisdiction. &n the American cases of Playboy Enterprises Inc* v* (alvin Desi1ner
%abel) S;!MT and Playboy Enterprises) Inc* v* +sia.ocus International) Inc*) S;!PT the "ourts prevented the defendants from using the
mar>s R,layboyR and R,laymateR as meta tags on their websites) as well as in related domain names. &n the case of Playboy
Enterprises Inc* v* Welles) it was held that use as a meta tag of the ,laymate trademar> by a former ,laymate of the year) to enable
consumers to locate her website) was a fair use. S;!GT (imilarly) in Playboy Enterprises v* 8etscape (ommunications) S;!T the "ourt
found that the use of trademar>s as meta tags by the defendantUs search engines) which lin>ed adult entertainment advertisements
to the trademar>ed terms) was in fair use.
6. &t is becoming clear that the courts may allow the use of trademar>s as meta tags where such use is not misleading or unfair. &n
the case of 8umtec Intersta/l) the Austrian (upreme "ourt held that it was legitimate for the defendant to use the plaintifUs
trademar> as a meta tag on its website) because such use enabled the public to be informed about products the plaintif produced
under patent) and because the average user would not be confused as to the ownership of the trademar>. S;T (imilarly) the
$egional Trial "ourt in the ,hilippines) in P/ilippine %on1 Distance 0elep/one (ompany) Inc* v* P/ilippine %ea1ue for Democratic
0elecommunications) Inc* and :erardo 7* #aimo) found that the defendantUs use of meta tags on a parody site clearly used to critici5e
the plaintifUs business schemes and raise public awareness of political issues) was not li>ely to confuse or mislead users and
therefore did not amount to trademar> infringement. S;;T &n the American case of 7i/ari v* :ross) the use of a meta tag was found
to be in fair use when the two parties are not competitors) and the tag was used by the defendant on a site critical of the plaintifUs
business and therefore unli>ely to cause confusion. S;6T (imilarly) in the case ofPromate- Industries %td* v* E=uitrac (orp.) the '.(.
"ourt of Appeals modiCed an earlier opinion to clarify that use of anotherUs trademar> as a meta tag may be permissible if it is not
deceptive) stating+ R&t is not the case that trademar>s can never appear in meta tags) but that they may only do so where a
legitimate use of a trademar> is being made.R S;QT
(bJ (ale of Trademar>s as Eeywords
6;. As noted above) &nternet users are increasingly resorting to search engines to locate information online) as an alternative to
relying on domain names to navigate the Deb. S;9T 'sers request a search of speciCed terms and the search engine then uses a
mixture of manual and automated methods to locate those >eywords on the Deb) either in meta tags) '$.s) >eyword listing or based
on a history of visits. :ased upon this data) the search engine attempts to ran> the information so that more relevant information is
provided Crst. -ost site owners see> to maximi5e their chance of being highly ran>ed in search results) because the higher the
volume of users to a site) the higher the potential advertising revenue. (ome of these search engines RsellR >eywords to advertisers
who want to target their mar>eting) such that) whenever the >eyword is entered into the search engine) an advertisement appears
along with any search results. $etailers) for example) have purchased >eywords so that their banner advertisements are displayed
whenever certain trademar>ed products are the ob%ect of a search. S;7T
66. This practice has been challenged by trademar> owners as a diversion of customers from their own website) or from the
websites of their preferred or authori5ed web retailers. #owever the legal treatment of such cases is still developing. &n the
abovementioned case of Playboy Enterprises Inc* v* 8etscape (ommunications (orporation) the "ourt denied preliminary relief stating
that the R,layboyR and R,laymateR >eywords sold by the defendant were used by searchers as common or generic words) not the
mar>s. S;MT &n the pending case of <ar- 8utritionals Inc* v* .indW/at Services Inc*) the plaintif has Cled suit against a number of
&nternet service providers) alleging that the search enginesU sale of >eywords containing its trademar> altered the search results
related to their product in a manner that amounted to trademar> infringement and dilution. S;PT
(cJ ,op3'p Advertisements
6Q. The pop3up ad is a window) not initiated by the user that appears on top of the content page when a site is loaded. A user who
clic>s on the pop3up graphic will be redirected to the advertiserUs website) otherwise) and unless closed by the user) the pop3up
window will close automatically after a short period of time. S;GT ,op3up ads are used as mar>eting tools designed to capture
consumersU attention) and are based on software designed to trac> usersU online activity and then deliver targeted advertising based
on their preferences.
69. &n the American case of Was/in1tonpost*8e6s6ee- Interactive (o* v* :ator (orp.) the "ourt issued a preliminary in%unction that
prohibited the defendant from enabling third3party advertising to appear on a userUs computer screen while the user was viewing
websites owned or afliated with the plaintifs) who were 7 online news companies. S;;!T The "ourt found that the software violated
the plaintifsU trademar>s by causing pop3up advertising to appear in proximity to them.
(dJ -ousetrapping
67. R-ousetrappingR is an aggressive mar>eting technique that forces users to remain on a speciCc website) sometimes while
disabling their browser functions or Xooding them with pop3up ads. Dhenever the user tries to leave the site by using the Rbac>R)
RforwardR or RcloseR buttons) a new window is automatically opened that prevents the browser from leaving the site. To exit the loop)
the user is forced to end the tas> or reboot his computer. S;;T A recent court decision at the suit of the 'nited (tates *ederal Trade
"ommission permanently barred the defendant from diverting or obstructing consumers on the &nternet and from launching websites
or webpages that belonged to unrelated third parties. &n that case) the defendant was registering &nternet domain names that were
misspellings or versions of legitimate domain names and) once consumers arrived on the defendantUs sites) they were unable to
exit. S;;;T
(eJ .in>ing and framing
6M. As described above in relation to copyright) S;;6T lin>ing technologies enable &nternet users to access content stored in the Cles
of millions of individual computers and enable users to use lin>s to retrieve information from Cles on the same or other
websites. S;;QT #owever) lin>ing can also raise concerns of trademar> infringement if it explicitly or implicitly suggests an
unwarranted association between the lin>ing and lin>ed sites) and leads a user to believe that an unassociated web page is afliated)
approved) or sponsored by the trademar> owner. &n the 'nited (tates case of 0ic-etmaster (orp* v* <icrosoft (orp*) S;;9T the plaintif
alleged that a deep lin> from the defendantUs site to events pages within its site implied a false association that constituted unfair and
deceptive trade practices and a dilution of its trademar>s) in addition to copyright infringement) trespass and false advertising. The
deep lin>s) which bypassed the plaintifUs home page and its associated advertising) potentially diminishing its revenue) also
conXicted with the plaintifUs contractual agreements with other companies that had paid to lin> to its site or advertise on its home
page. #owever) the 0istrict "ourt did not address the issues as the case was settled. S;;7T &n the case of .ord <otor (ompany v*
200 Enterprises) S;;MT however) the "ourt denied the claims for alleged unfair competition and trademar> dilution as a result of
lin>ing) because the defendants had not used the plaintifUs mar> in commerce) nor in connection with the sale) or advertising for
sale) of any goods or services.
6P. The related practice of framing) also described above in relation to copyright) S;;PT equally raises concerns of trademar>
infringement because of its potential to mislead or confuse viewers as to the origin of the site and the goods and services it displays.
&n contrast to lin>ing) users viewing framed material usually remain on the original site and view content from both sites) possibly
without being aware that the material has been called up from another site) raising the potential for trademar> liability.
6G. &n the American case of 0/e Was/in1ton Post v* 0otal 8e6s) Inc.) S;;GT six ma%or news organi5ations whose content had been
framed by the defendant alleged misappropriation) trademar> dilution and infringement) false and deceptive advertising) unfair trade
practices) copyright infringement) and tortious interference with their advertising contracts. The defendant in this case had framed
news content from the plaintifUs sites with advertisements that it had itself sold) thereby diverting advertising revenue and) by
maintaining its own site address for the material) made it appear that the news originated from its site. A settlement was reached
that permitted the defendant to maintain its lin>s to the news sites) upon agreement to cease framing the plaintifUs material in
association with any third party advertising or its '$..
(iiiJ ,$&="&,.E K* TE$$&TK$&A.&T? A=0 '(E K* T$A0E-A$E( K=.&=E
Q!. The developments described above share a number of common legal principles) arising from use of a trademar> as a sign on the
&nternet) for example as meta tags or domain names. To a large extent) these relate to the territorial nature of trademar> law in the
context of trademar>s used on a global medium such as the &nternet. Dhen a trademar> is used on the &nternet it is immediately
visible to a global audience and may be considered to have global efect. This particular feature of the &nternet ma>es it difcult for
businesses to foresee in which countries their business activities might become legally relevant. 0ue to the particularities of &nternet
technology) it is often difcult to Ct the RuseR of a trademar> on the &nternet into traditional legal concepts of use in the physical
world. The issues described below are addressed further in part (ivJ of this "hapter) in the context of the D&,K Boint $ecommendation
"oncerning ,rovisions on the ,rotection of -ar>s) and Kther &ndustrial ,roperty $ights in (igns) on the &nternet) described
below. S;6!T
(aJ Acquisition of Trademar> $ights Through 'se of a (ign on the &nternet
Q. &n some countries) where trademar> protection depends on prior use of the mar> in that country) the question arises whether
use on the &nternet can satisfy such a use requirement and) if so) what >ind of use would qualify as Rgenuine use.R This is important
because) in most countries) a trademar> registration is sub%ect to cancellation if the trademar> has not been used within a certain
period of time. S;6T &t seems that use of a trademar> on the &nternet may qualify as Rgenuine useR for the purposes of use
requirements. S;6;T The trademar> owner will have to show that its trademar> was actually present in that mar>et) for example by
proving actual sales or other commercially motivated relationships with customers in a country. S;66T This can be difcult if the
trademar> owner delivers goods or services exclusively over the &nternet) or) in particular) if the goods or services are provided for
free as in the case of &nternet search engines) which have little or no physical presence outside the &nternet.
(bJ &nfringement of Trademar> $ights Through 'se of a (ign on the &nternet
Q;. The use of a sign on the &nternet can infringe a trademar> only if such use is deemed to have ta>en place in the country where
the trademar> en%oys protection. The question arises under what conditions the appearance of a mar> on the &nternet might
constitute use in a particular forum and give rise to infringement. The notion of infringement can either be extensive or restrictive.
'nder an extensive concept of infringement) it would sufce that a sign is visible on a computer screen in the country where a
conXicting right exists.S;6QT The exclusive right in a trademar> would then have an almost worldwide efect. &t could even be used
to bloc> use that was neither aimed at a country) nor had an efect in that country over and above the visibility of the sign on a
computer screen. 'nder this view) use of a sign on the &nternet could provo>e infringement claims in potentially every country in the
world. S;69T
Q6. 'nder a more restrictive concept) the Cnding of an infringement would require a connection between the use of the sign on the
&nternet and the country in which the trademar> en%oys protection. Dhile factors for establishing such a lin> with a particular country
need to be considered) diferent countries may adopt diferent standards. &f it were possible to agree on a set of criteria at the
international level) it would be easier for businesses to foresee in which countries their activities on the &nternet might become legally
relevant. 'nder such an approach two further questions might be usefully addressed+ *irst) would the Cnding of a connection with
particular countries require that the user intended to produce an efect in those countries) or that such an efect was at least
foreseeable@ (econdly) would it be necessary to distinguish between various degrees of interactivity of the website on which the sign
is used@ S;67T -oreover) use in the context of advertising might have to be treated diferently from use on websites for the purchase
of goods or services. S;6MT
QQ. $elated to these questions is the question of whether users of a sign on the &nternet should be able to avoid a lin> with a
particular country by the placement of a disclaimer on their website. S;6PT (uch statements may provide a Xexible tool for
enterprises to territoriali5e their use of a sign on the &nternet) and to avoid infringement claims in particular territories where
conXicting rights might exist. They pose) however) a number of problems+ Crst) the user of a sign might have to search for
conXicting rights all over the world in order to determine whether to disclaim particular countries (RThis product is not available in
countries F) ? and 8RJ or other individual rightholders (RDe have no relationship with A) :) and "RJ. The practical difculties of doing
so would be increased by the fact that such statements would probably have to appear in the languages used in each of these
countries. (econd) such statements would always bear a residual ris> of confusion.
(cJ Acceptable 'nauthori5ed 'se
Q9. .egal systems may provide exceptions for the Rfair useR of a sign that is protected as a trademar>. S;6GT (uch exceptions often
apply when a sign is used fairly and in good faith in a purely descriptive or informative manner. &t is also often stipulated that such
use should not extend beyond that which is necessary to identify the person) entity or the goods or services) and that nothing is done
in connection with the sign which might suggest endorsement or sponsorship by the trademar> holder. (uch exceptions may be
equally applicable when a sign is used on the &nternet. S;Q!T Kther examples of acceptable unauthori5ed trademar> use include use
in a non3commercial context or use that is protected by the right of free speech) such as consumer criticism expressed in relation to a
particular trademar>. S;QT
Q7. (ince approaches difer from country to country) international harmoni5ed criteria could increase predictability in this context)
for the beneCt of participants in electronic commerce. &t would not be realistic) or for that matter desirable) for such a harmoni5ed
approach to attempt to regulate every new means of using a distinctive sign on the &nternet. &n order to be technologically neutral)
any attempt might only see> to identify general standards for distinguishing acceptable from unacceptable practices. &n this respect)
two diferent approaches might be useful+ an attempt could be made to develop criteria concerning unacceptable use) or
alternatively) deCnition could) in a general way) be given to forms of Rfair useR that each country would treat as acceptable in its
territory. S;Q;T
(dJ Alobal Efect of &n%unctions
QM. The scope of a trademar> right is determined not only by deCning when such right is infringed) but also by specifying the
remedies available to the rightsholder when an infringement has ta>en place. &f a trademar> right has been infringed by the use of a
sign on the &nternet) the question arises whether its owner should be able to demand) with the help of the courts) that the defendant
cease every use of the sign throughout the &nternet@ S;Q6T (uch an in%unction would have an efect that is as global as the &nternet
itself. &f traditional trademar> law is to be translated into cyberspace) a national (and thus territorially limitedJ trademar> right should
not give rise to an exclusive right throughout the worldwide expanse of this medium. &t would) therefore) be appropriate if available
remedies were) as far as possible) limited to the territory for which the owner holds an exclusive right. S;QQT "ourts might have to
ta>e a creative approach in framing equitable relief) such as obliging the user of a sign on the &nternet to ta>e reasonable measures
for avoiding contacts with the territory in which the trademar> owner holds an exclusive right. This could be efected) for example) by
placing adequate statements on the website (e.g.) disclaimers) as aboveJ) by using technical mechanisms to bloc> access by &nternet
users located in a particular country) or by refusing to deliver goods or services to customers located in a particular territory.
"oncurrent users could also be encouraged to share a common gateway page or portal) or to mutually provide lin>s to their
respective websites. S;Q9T
QP. &nternet3wide in%unctions) however) should not be completely excluded as a possible remedy. Especially in cases where the use
of a sign on the &nternet has intentionally and in bad faith targeted a trademar> right) S;Q7T it may be appropriate to prohibit every
form of use of the conXicting sign on the &nternet in order to remove its efect on the territory (or territoriesJ in which the trademar>
en%oys protection) and to prevent such use from violating the legitimate interest of the trademar> holder.
(eJ Enabling "o3existence of $ights on the &nternet
QG. :ecause of the territoriality of trademar> rights) identical or confusingly similar trademar>s can be held in diferent countries by
diferent owners who are completely unrelated to one another. S;QMT This coexistence can be more difcult on the &nternet where a
sign may be visible on computer screens (or other digital devicesJ across the world. The user of a trademar> on the &nternet might
become involved in a dispute in a foreign %urisdiction) under a law that does not recogni5e the userUs right to the disputed trademar>)
but which accords rights in it to another person. Dhat had been coexistence of rights in the physical world becomes a conXict
between rights on the &nternet.
9!. (uch conXicts can lead to a situation where conXicting rightsholders may attempt to bloc> each other from using their sign on
the &nternet) with the help of their national courts) for example) where one trademar> holder has secured an in%unction in its
%urisdiction against the competing user) who) in turn) has done the same in its %urisdiction. &t would seem) therefore) that this problem
has to be addressed at its roots) that is) in trademar> law) in order to give legitimate right owners some certainty that they can use
their trademar>s on the &nternet without having to fear claims raised against them by rightholders in other %urisdictions.
9. Kne approach might be the adoption of a general principle according to which every holder of a right in a distinctive sign may
use that sign on the &nternet concurrently with any other rightholder) sub%ect to certain limitations. (uch a principle might be
regarded as an expression of the independence of national trademar> rights provided for by Article 7(6J of the ,aris "onvention. &n
court) the fact that a defendant holds an exclusive right in the sign in another country could form a defense or a rebuttable
presumption of legitimate use) the factual preconditions for which might have to be proved by the defendant.
9;. (uch a principle for the coexistence of legitimate rights could have to be limited in two respects in order to safeguard the
interests of trademar> owners. *irst) the ris> of confusion should be reduced to a minimum. To this efect) it could be required that
the user of the sign clearly indicate where the trademar> is protected) and that other users of the sign have no relationship with
it. The disclaimer statements described above could be used. A ris> of confusion) however) could not be avoided completely) since
&nternet users searching for a particular trademar> owner might call up the website of a concurrent user and only then) after reading
a clarifying statement on that website) reali5e that they did not Cnd what they were loo>ing for. This residual ris> of confusion)
however) may be outweighed by the fact that) in cases of conXicts between legitimate (national or regionalJ rights) the principle
enables each rightholder to use its right on the &nternet.
96. (econd) coexistence would not be appropriate if one of the users had registered or used its trademar> in bad faith. Knly good
faith use should proCt from the limitation of infringement claims. &n court) bad faith could serve as a means to rebut the presumption
of legitimate use. The facts constituting bad faith registration or use might then need to be proven by the plaintif. &n determining
bad faith) it might be possible to draw on Article Q(9J(cJ of the D&,K Boint $ecommendation "oncerning ,rovisions on the ,rotection of
Dell3Enown -ar>s) according to which >nowledge or reason to >now of the conXicting mar> is to be ta>en into account. S;QPT A
Cnding of bad faith could encompass situations where one rightsholder has acquired or uses a sign with a view to proCt from the
goodwill associated with the other trademar>. Additional criteria would have to be determined in order to render the application of
the bad faith exception predictable.
(ivJ D&,K BK&=T $E"K--E=0AT&K= K= ,$KTE"T&K= K* -A$E( K= T#E &=TE$=ET
9Q. :ased on preparatory wor> by the (tanding "ommittee on the .aw of Trademar>s) &ndustrial 0esigns and Aeographical
&ndications (("TJ) S;QGT the Assembly of the ,aris 'nion for the ,rotection of &ndustrial ,roperty and the Aeneral Assembly of D&,K
adopted) on the occasion of the thirty3sixth session of the Assemblies of the -ember (tates of D&,K) in (eptember ;!!) the D&,K
Boint $ecommendation "oncerning the ,rotection of -ar>s) and Kther &ndustrial ,roperty $ights in (igns on the &nternet (the RBoint
$ecommendationRJ. S;9!T The Boint $ecommendation addresses the complex questions raised above) resulting from the tension
between the global nature of the &nternet and the territorial rights of mar>s.
99. The ,reamble to the Boint $ecommendation ma>es clear that it does not purport to be a trademar> law for the &nternet) but is
intended to guide the application of existing national or regional laws with respect to legal problems resulting from the use of a sign
on the &nternet. Emphasi5ing the Rglobal natureR of the &nternet) the Boint $ecommendation aims at providing the clearest possible
legal framewor> for trademar> owners who wish to use their mar>s on the &nternet and to participate in the development of e3
commerce upon it. &ts purpose is) therefore) to help competent authorities S;9T to determine whether) under the applicable law) the
use of a sign on the &nternet has contributed to the acquisition) maintenance or infringement of a mar> or other industrial property
right in the sign) or whether such use constitutes an act of unfair competition) and thereafter to apply appropriate remedies.
97. The determination of the applicable law itself is not addressed by the Boint $ecommendation) but is left to the principles of
private international law) as they are applied in each -ember (tate. The provisions address three main questions+
Dhen can use of a sign on the &nternet be considered to have ta>en place in a particular country@
#ow can those who own conXicting rights in identical or similar signs be enabled to use these signs concurrently on the
&nternet@
#ow can courts ta>e account of the territorial basis of industrial property rights in signs when determining remedies@
9M. The Crst question is relevant for determining whether use on the &nternet has contributed to establishing) maintaining or
infringing an industrial property right in a sign in a particular country. The provisions are based on the assumption that not each and
every use of a sign on the &nternet should be treated as ta>ing place in the -ember (tate concerned) even though it might be
accessible to &nternet users based in that country. This fact is expressed in the term Rcommercial efect.R S;9;T The Boint
$ecommendation provides that only use that has commercial repercussions in a given -ember (tate) or) in other words) use that has
a Rcommercial efectR in a -ember (tate) shall be treated as having ta>en place in that -ember (tate (Article ;J. The provisions
introduce the words Ruse of a sign on the &nternet in a -ember (tateR as a shorthand expression for use of a sign on the &nternet)
which is deemed to have ta>en place in a -ember (tate as a result of its commercial efect.
9P. The determination of whether use of a sign on the &nternet has produced a commercial efect in a particular -ember (tate) and
whether such use can be deemed to have ta>en place in that -ember (tate) is to be made on the basis of all relevant circumstances.
A competent authority is therefore free to determine which factors are relevant in a given case. The provisions) however) provide a
detailed but non3exhaustive list of factors) which can be relevant for determining commercial efect) as follows+
doing or planning to do business in a -ember (tateL
character and level of commercial activity carried out in a -ember (tateL
location of customersL
use of a Rterritorial disclaimerR stating that the goods or services ofered are not available or only available in particular
-ember (tatesL
actual delivery of goods or services to customers located in a -ember (tateL
speciCc language use on the &nternet siteL
prices indicated in the currency of a -ember (tateL
address or contact information in a -ember stateL
interactivity of the websiteL and
registration of the website under a country code top level domain.
The provision states that the list of factors is neither cumulative nor exhaustive) but functions as a chec>list of factors which might be
relevant in a given case) without obliging the competent authority to express an opinion about every listed factor. &t follows the
model of the Boint $ecommendation "oncerning ,rovisions on the ,rotection of Dell3Enown -ar>s) which also sets out a list of guiding
factors for the determination of a well3>nown mar>. S;96T
9G. The provisions are only applicable to rights that are protected in a commercial context. &n so far as -ember (tates also protect
certain rights in signs) such as personality rights) in a purely non3commercial context) they are free to either grant such protection in
relation to use of a sign on the &nternet independently of whether such use has a commercial efect) or to apply the present
provisions.
7!. The second question is a direct consequence of the tension between territorial rights and a global medium. :ecause of that
territoriality) diferent owners can hold industrial property rights in identical or similar signs in diferent countries. This can create
problems if a sign is used on the &nternet. :ecause of the necessarily global nature of the &nternet) such use might be considered as
infringing a right under the law of a -ember (tate in which the right of the user is not recogni5ed. As mentioned above) what was
coexistence of rights in the real world turns into potential RconXict of rightsR on the &nternet. &n the discussions ta>ing place in the
("T) it was emphasi5ed that such conXicts should be resolved on the basis of a fair balance of interest) providing efective protection
for rightholders without unreasonably burdening commercial activities on the &nternet.
7. The provisions Crst restate the principle according to which) except where otherwise provided for) there shall be liability in a
-ember (tate under the applicable law when a right is infringed) or an act of unfair competition is committed) through use of a sign
on the &nternet in that -ember (tate. The provisions then introduce a two3step procedure) called a Rnotice and avoidance of conXictR
procedure (,art OJ. $ightsholders who use their sign in good faith are exempt from liability up to the point when they are notiCed of a
conXicting right (Article GJ. As a consequence) they would not be sub%ected to any in%unction) or held liable for any damages
occurring) before notiCcation. 'sers would) therefore) not be forced to underta>e a worldwide search for conXicting registered or
unregistered rights before using their sign on the &nternet. This would have been almost impossible to achieve) and very costly) and
certainly detrimental to the development of commerce over digital networ>s.
7;. =otiCcations) when sent by the rightsholder or her representative) by mail) e3mail or facsimile) in the language or one of the
languages used in connection with the sign on the &nternet) are efective) pursuant to Article ) if they include the following+
the right alleged to be infringedL
the identity of the rightsowner and information reasonably sufcient to contact him or his representative by mail) e3mail or
facsimileL
the -ember (tate in which that right is protectedL
relevant details of such protection) allowing the user to assess the existence) nature and scope of that rightL and
the use that is claimed to infringe the right.
As a second step of the procedure) users who have received a notiCcation relating to a RconXictingR right) have to ta>e reasonable
measures for avoiding or ending the conXict (Article !J. &f they fail to do so) they may be sub%ect to liability.
76. &n order to provide rightholders with a sufcient degree of legal certainty as to how to avoid liability for the infringement of
conXicting rights which they are already aware of) -ember (tates would have to accept a RqualiCed disclaimerR as a sufcient
measure to avoid liability (Article ;J. (uch disclaimers are statements designed to avoid a commercial efect in a particular country)
and to avoid confusion with the other rightsholder. The user would also have to abide by his statement by as>ing customers where
they are located) and refusing delivery to those who have indicated that they are based in the country disclaimed. 'sers would)
however) not be required to verify the statements made by their customers because this is almost impossible in cases where the
whole transaction ta>es place over the &nternet.
7Q. The third question also addresses a problem resulting from the tension between territorial rights and a global medium. An
in%unction to cease every use of a sign on the &nternet would go far beyond the territory in which a conXicting industrial property right
in that sign exists. &t would have an efect) which is as global as the &nternet. A decision as to remedies should therefore ta>e the
territorial limitation of industrial property rights in mar>s or other signs into account. $emedies should be limited) as far as possible)
to the territory in which the industrial property right is recogni5ed) and they should only be available if the allegedly infringing use of
the sign can be deemed to have ta>en place in that territory. This is determined with regard to the Rcommercial efectR of such use in
the -ember (tate in question. Thus) the Rcommercial efectR of &nternet use should serve as a yardstic> for determining a
RproportionateR remedy. 'se of a sign on the &nternet that infringes an industrial property right in a -ember (tate should not be
prohibited any more than is proportionate to the commercial efect that such use has produced in that -ember (tate (Article 6J.
&n%unctions should generally be limited to what is necessary to prevent or remove the commercial efect in the -ember (tate (or the
-ember (tatesJ in which the infringed right is protected) and damages should be granted only for the commercial efect of the use in
that -ember (tate.
79. The provisions require courts to be creative in considering limitations of use designed) on the one hand) to avoid a commercial
efect in the -ember (tate) or in the -ember (tates) in which the infringed right is protected) and to avoid any confusion with the
owner of that right on the other hand) such as RqualiCed disclaimersR) gateway web pages and the li>e (Article QJ. ,rohibitions to
cease every use of a sign on the &nternet might still be necessary in certain cases. #owever) the provisions exempt such users from
such Rglobal in%unctionsR if they hold a right in the sign they use on the &nternet and do not act in bad faith (Article 9J.
77. The Boint $ecommendation also requires -ember (tates to protect industrial property rights against new and emerging infringing
uses) as they occur on the &nternet. Article 7 requires that RSaTny use of a sign on the &nternet) including forms of use that are made
possible by technological advances) shall be ta>en into consideration for determining whether a right under the applicable law of a
-ember (tate has been infringed) or whether that use amounts to an act of unfair competitionR. &t is envisaged that this will provide
for use of mar>s and signs in banner advertisements) when sold or purchased as >eywords and in meta tags) as well as future uses as
they become evident.
(vJ D&,K BK&=T $E"K--E=0AT&K= K= DE..3E=KD= -A$E(
7M. :ecause of the heightened attention that fame attracts) well3>nown mar>s have for a long time been considered to warrant
special protection) over and above that accorded to other) ordinary mar>s under intellectual property law. S;9QT That special
protection is well established in the ,aris "onvention as well as in other regional or international agreements. S;99T Dhile there is an
international obligation to accord protection to well3>nown mar>s) there exists no established treaty deCnition of what constitutes
such a mar>. &t is left to the appreciation of the competent authority in the country where protection is asserted. S;97T
7P. Dell3>nown mar>s have been the special target of a variety of abusive practices on the &nternet. D&,K) through the ("T) has
been wor>ing to develop provisions in this area) which were adopted as a Boint $ecommendation "oncerning ,rovisions on the
,rotection of Dell3Enown -ar>s by the D&,K Aeneral Assembly and the ,aris 'nion Assembly in (eptember GGG. S;9MT The
provisions intend to clarify) consolidate and supplement the existing international protection of well3>nown mar>s) as established by
Article 7 bis of the ,aris "onvention and Articles 7.; and 7.6 of the T$&,( Agreement. &n particular) the Boint $ecommendation in
Article ; contains a list of factors that may be used by a competent authority to determine whether a mar> is well3>nown in its
territory. S;9PT Dhile the Boint $ecommendation does not have the force and efect of a treaty) -ember (tates may consider the use
of any of these provisions as guidelines for the protection of well3>nown mar>s.
7G. The Boint $ecommendation (Article 7J expressly addresses conXicts between well3>nown mar>s and domain names. According to
this provision) a domain name shall be deemed to be in conXict with a well3>nown mar> at least where that domain name) or an
essential part thereof) constitutes a reproduction) an imitation) a translation or a transliteration of the well3>nown mar>) and the
domain name has been used or registered in Rbad faith.R &t is understood that Rbad faithR will include the cases that are currently
>nown as Rcybersquatting.R &n this regard) D&,K) in the recommendations in the $eport of the Crst D&,K &nternet 0omain =ame
,rocess) developed a deCnition of the abusive) bad faith registration of a domain name) that was subsequently incorporated into the
'niform 0omain =ame 0ispute $esolution ,olicy ('0$,J) by the &nternet "orporation for Assigned =ames and =umbers
(&"A==J. S;9GT
(viJ '=*A&$ "K-,ET&T&K=
M!. "ommerce means competition) and where there is competition) acts of unfair competition are liable to occur. E3commerce is no
exception. This new channel of commerce has) for some time) been regarded as a Rwild westR) where almost anything can and does
happen. E3commerce will reali5e its potential) however) only if some scope of protection and recourse against acts of unfair
competition is provided. ,rotection against unfair competition supplements the protection of intellectual property rights. Dithout
such protection) companies are li>ely to gauge the ris>s of damage to their reputations) loss of customers and liability from engaging
in e3commerce) with the threatened consequence that innovation and freedom of competition is stiXed.
M. Dhereas issues concerning trademar>s and the &nternet have been at the forefront of discussions) questions relating to acts of
unfair competition have attracted much less attention. ,rotection against unfair competition) however) covers an even broader scope
of issues relevant for electronic commerce. &t provides a legal framewor> for all forms of mar>eting) and it supplements the
protection of intellectual property through statutory rights. (o far) e3commerce has not been sub%ect to speciCc regulations dealing
with matters of unfair competition. =ational or regional laws apply together with international provisions contained in the ,aris
"onvention S;7!T and the T$&,( Agreement. S;7T The application of these rules to e3commerce) however) poses a number of
problems.
M;. :ecause mar>eting activities on the &nternet may be sub%ected to a variety of often contradicting legal systems) the
development of mar>eting strategies in e3commerce becomes more difcult. Dhat is allowed in one country may be forbidden or
strictly regulated in another. Even though Article ! bis of the ,aris "onvention and Article 6G of the T$&,( Agreement give some
guidance as to the internationally applicable rules for the protection against unfair competition) there remain many areas which are
regulated diferently in various national legal systems. *or example) comparative advertising and bonus or discount schemes are
forbidden in some countries) generally allowed in others) and more or less strictly regulated in still other countries. (uch regulatory
diferences afect the free circulation of goods or services in the digital environment.
M6. Experience has already shown that enterprises cannot simply continue their habitual mar>eting eforts online. They have to
adapt to and use the particular technical features of the &nternet) such as its interactivity and support of multimedia applications. As
the most Xexible part of industrial property law) unfair competition law may ofer solutions to the new problems that have arisen in e3
commerce. S;7;T =evertheless) problems may arise with regard to the following issues+
(aJ &nteractive -ar>eting ,ractices
MQ. :ecause e3commerce relies on interactive contacts with prospective customers) attracting their attention is a core issue. Knline
mar>eting often uses strong incentives such as lotteries) free gifts or rebates) and tends towards more aggressive practices) such as
comparative advertising or unsolicited e3mails (spammingJ. Dith the broadband technologies that will become available in the next
few years) new forms of RimmersiveR mar>eting may also become prevalent. S;76T 'nder a number of legal systems) such
inducements may be considered contrary to honest trade practices. (hould the standard for establishing unfair practices in e3
commerce ta>e the speciCc nature of the medium into account@ Aiven the mediumUs compelling interactivity) should more stringent
standards be considered@
(bJ Transparency and ,rivacy "oncerns
M9. &n an interactive medium li>e the &nternet) the safeguarding of transparency and privacy is of particular importance. 'nfair
competition law may have to include rules requiring a clear distinction between informative text and advertising) and protecting
consumers against the unauthori5ed collection of data for commercial purposes. Another related problem that may have to be
addressed) noted above) is the Xooding of users with unsolicited advertising and spam mail.
(cJ =ational Oersus &nternational (tandards of R'nfairR -ar>eting ,ractices
M7. Dhether a particular statement is misleading will usually be determined with regard to the public to which it is addressed. :ut
mar>eting practices in e3commerce are often directed at a public in more than one country. Dhat can be misunderstood in one
country might be perfectly clear in another. (hould mar>eting online be required to ta>e into account the level of >nowledge or the
understanding of the audience in every country where the message can be received) or at least in every country foreseeably afected
by it@ Kr should it be enough for an advertiser to show that a statement was not liable to be misunderstood in a Rhome countryR@
(dJ Trade (ecrets
MM. The protection of trade secrets is in many countries covered by unfair competition law. The protection of trade secrets on the
digital networ>s relies heavily on technological measures for information security) especially because after a trade secret has been
stolen and posted on the &nternet) courts sometimes experience difculty Cnding the RsecrecyR element of a trade secret. (ecrecy
issues are therefore of particular importance in the digital environment.
III. (c) DO%I! !%"$
MP. This "hapter introduces the topic of domain names) as they relate to intellectual property issues connected with the &nternet
domain name system (0=(J. Although not currently classiCed as a form of intellectual property) domain names as identiCers function
in a manner similar to trademar>s) and recent developments in the 0=( and in connection with the &nternet "orporation for Assigned
=ames and =umbers (&"A==J) established to coordinate the 0=() raise signiCcant issues for the intellectual property system. The
"hapter concludes by addressing D&,KUs programs in the Celd of domain names) and the wor> of the D&,K Arbitration and -ediation
"enter in the area of domain name dispute resolution resolving domain name disputes.
(iJ &=T$K0'"T&K= TK 0K-A&= =A-E(
MG. 0omain names are &nternet addresses in simpliCed form) designed to enable users to locate sites more easily. S;7QT They can be
registered in the Rgeneric top3level domainsR (gT.0sJ) such as .com) .org) .net) .bi5 or .info) or any of some ;Q6 Rcountry code top3
level domainsR (ccT.0sJ) such as .ch ((wit5erlandJ) .fr (*ranceJ or .5a ((outh AfricaJ.
P!. &n addition to their function as locators of &nternet sites) domain names have a function as identiCers of businesses and their
goods or services on the &nternet) which gives them an economic value comparable to that of other identiCers. This characteristic of
domain names has given rise to a great many ownership disputes with other signs that existed prior to the advent of the &nternet and
were protected by intellectual property rights) such as trademar>s. As noted in the D&,K ,rimer on Electronic "ommerce and
&ntellectual ,roperty &ssues (D&,K ,rimerJ) S;79T published in -ay ;!!!) the tension between domain names and other identiCers is
largely a result of the incongruous nature of the systems to which each type of identiCer belongsL the 0=( is to a large extent
managed by the private sector) and gives rise to registrations that result in a global presence) accessible from anywhere in the world
3 while the intellectual property system is managed by public authorities according to the principle of territoriality) giving rise to rights
that can only be exercised in a speciCc territory. The tension has been heightened by certain practices that involve persons abusively
registering as domain names distinctive signs) especially trademar>s) with a view to subsequently selling the domain names to the
owners of the identiCers) or simply ta>ing unfair advantage of the goodwill associated with them.
P. Among the solutions found to the question of the interface between domain names and intellectual property rights) one of the
most signiCcant has been the entry into force of the 'niform 0omain =ame 0ispute $esolution ,olicy ('0$,J. S;77T The '0$, was
adopted by the &nternet "orporation for Assigned =ames and =umbers (&"A==J S;7MT on August ;Q) GGG. The procedure introduced
by the ,olicy allows trademar> owners to settle cases of abusive domain name registration (cybersquattingJ without resorting to
national courts. 'pon accreditation by &"A==) the D&,K Arbitration and -ediation "enter began to provide its services for the
settlement of disputes concerning gT.0s and certain ccT.0s that had voluntarily adopted the '0$,.
P;. At the same time) on the basis of the Cnal $eport of the Crst D&,K &nternet 0omain =ame ,rocess) S;7PT certain issues called for
further reXection. Those issues had to do with the wrongful registration of domain names that infringed designations other than
trademar>s) such as &nternational =onproprietary =ames (&==sJ for ,harmaceutical (ubstances) names of intergovernmental
organi5ations) names of persons) trade names and geographical indications li>e geographical names and indications of source. &n
addition) the $eport emphasi5ed the concern of the owners of intellectual property rights regarding the introduction of new gT.0s)
fearing as they did the spread to the new domains of the abusive registration practices sufered in existing gT.0s. S;7GT
P6. The past two years have seen signiCcant developments in the context of intellectual property and domain names. Those
developments are considered in detail in (ection && of this "hapter. The &nternet landscape has itself recently undergone considerable
change with respect to both the identiCers that are used upon it (including multilingual domain names and >eywordsJ) as well as
issues related to the organi5ation) management and coordination of the 0=( (including the introduction of new gT.0s) emergence of
multiple roots) and &"A== reformJ. These developments) described below) have a bearing on intellectual property concerns.
(iiJ $E"E=T 0EOE.K,-E=T( "K="E$=&=A 0K-A&= =A-E( A=0 &=TE..E"T'A. ,$K,E$T?
(aJ =ew gT.0s
PQ. The introduction of new generic top3level domains (gT.0sJ to complement those already existing (.com) .org) .net) .edu) .gov)
.mil and .intJ has been the sub%ect of intense debate for a number of years. &"A== undertoo> a long process that included+ the
publication of criteria for the evaluation of proposed new T.0s) a request for proposals) publication of the non3conCdential parts of the
QM proposals received) a period set aside for comments from the public and the publication of the report on the evaluation of the
proposals received. *inally) on =ovember 7) ;!!!) S;M!T &"A== authori5ed the inclusion of seven new gT.0s in the 0=(. The new
gT.0s are+ .aero (for the aeronautical industryJ) S;MT .bi5 (for business activitiesJ) S;M;T .coop (for accredited cooperativesJ)
S;M6T .info (for various activitiesJ) S;MQT .museum (for museumsJ) S;M9T . name (for personal namesJ S;M7T and .pro (for professional
entitiesJ. S;MMT
P9. The new gT.0s fall into two categories+ (iJ the RunsponsoredR gT.0s (.bi5) .info) .name and .proJ) which operate under policies
established by Rthe global &nternet community directly through the &"A== process)R S;MPT L and (iiJ the RsponsoredR gT.0s (.aero)
.coop and .museumJ) each being Ra speciali5ed T.0 that has a sponsoring organi5ation representing the narrower community that is
most afected by the T.0.R S;MGT The seven new gT.0s are managed under contracts concluded with &"A==.
P7. All the new gT.0s are operational with the exception of .pro. 0omain names can be registered under the six new gT.0s that are
operational by approaching any &"A==3accredited registrar. S;P!T Each of the registrars for new gT.0s has ta>en measures to protect
intellectual property rights) either preventively by introducing procedures whereby the owners of intellectual property rights can
assert those rights before the registrations are made available to the wider public) or e2 post facto by adopting the '0$,) or both. &n
addition) some registrars that administer domains reserved for certain categories of users) such as .bi5 or .name) have introduced
special procedures for settling disputes that relate to the restrictions on registration) whereby third parties can contest a registration
that is alleged to have been made in breach of such restrictions. These measures are explained in paragraphs ;63;P of this
"hapter.
PM. -ore than a year after the decision to introduce the seven new gT.0s) the &"A== :oard of 0irectors resolved S;PT to launch an
evaluation process S;P;T addressing the performance of the new gT.0s and their impact on the 0=(. The evaluation relates to a
number of technical) business or legal issues. ,rovision is made for the examination of+ (iJ the efcacy of the various preliminary
registration and other measures ta>en to limit the ris>s of violation of trademar> rights in the start3up phase of new gT.0sL (iiJ the
greater diversiCcation of the 0=() and its efect on the interface between domain names and intellectual property rights+ (will it allow
greater coexistence between trademar>s and other distinctive signs in the 0=() or will it on the contrary cause an increase in
problems of intellectual property rights being infringed by the registration of domain names@JL (iiiJ the reaction of &nternet users)
search engines and directory services to this greater diversiCcation of the 0=(L and (ivJ the design and coordination of Dhois
services in an extended 0=(. &"A== proposes to publish its Crst evaluation report in ;!!6.
(bJ -ultilingual 0omain =ames
PP. 'ntil recently) it was only possible to register domain names in $oman script (those that ma>e up the English alphabetJ or A("&&
characters. S;P6T #owever) there are developments in the &nternet community to allow the registration of domain names written in
other non3A("&& characters such as Arabic) "hinese) "yrillic) Bapanese or Eorean.
PG. &n Banuary ;!!!) the &nternet Engineering Tas> *orce (&ET*J formed a Dor>ing Aroup on the &nternationali5ation of 0omain =ames
to Rspecify the requirements for internationali5ed access to domain names and to specify access and a standards trac> protocol based
on the requirements.R S;PQT (ince that time) a number of commercial testbeds using various technologies have been established and
began to register multilingual domain names. S;P9T &n view of the fact that the &ET* has not yet set deCnite standards on the sub%ect)
no multilingual domain name has yet been added to an ofcial 0=( area Cle) and none is yet operational.
G!. The discussion of the multilingual domain names issue is ongoing in various fora) including &"A==) which set up a wor>ing group
in -arch ;!!! Rto identify the various internationali5ation eforts and the issues they raise) to engage in dialogue with technical
experts and other participants in these eforts) and to ma>e appropriate recommendations to the :oard.R S;P7T Kn the
recommendations of that wor>ing group S;PMT an &nternationali5ed 0omain =ames "ommittee was established Rto serve as a general
coordination body for the wor> on policy issues identiCed in the &0= Dor>ing Aroup report and such other policy issues that the &0=
"ommittee shall identify.R
G. =umerous issues remain to be addressed) as it is important that the introduction of multilingual domain names to the 0=( does
not afect its stability. -ost importantly) the &ET* will conclude its process of developing standards by which non3A("&& characters
may be used in 0=( protocols. At the same time) procedures for the adoption of the T.0s themselves in non3A("&& characters are
being considered) as well as domain name registration services that function in non3A("&& characters.
G;. The Cnal report of the &nternationali5ed 0omain =ames "ommittee) dated Bune ;M) ;!!;)S;PPT notes that these matters could to
a large extent be settled on the basis of experience acquired in the ccT.0s) the new gT.0s and more recently through the process of
re3allocating the .org domain. The "ommittee explains that) if the internationali5ation of domain names calls for necessary
adaptations) a certain number of principles applicable to existing T.0s) including the adoption of a new T.0 or the selection of a
registrar) could be transposed to domain names in non3A("&& characters. *or instance) in the same way as .info was created on the
basis of the semantic lin> between the word3form RinfoR and the concept of Rinformation)R the "ommittee suggests that a new T.0 in
non3A("&& characters could also be selected on the basis of a semantic association between a particular geographical entity (such as
"hinaJ) or a language (such as Aree>J) or equally a cultural entity (such as Thai museumsJ.
G6. The internationali5ation of domain names was also discussed in the framewor> of the &nternational Telecommunication 'nion
(&T'J and D&,K at a symposium organi5ed %ointly in Aeneva by the international organi5ations on 0ecember 7 and M) ;!!. S;PGT
Each organi5ation published a brieCng paper to explain the impact of the internationali5ation of domain names from) respectively) the
technical and intellectual property standpoints. The &T' wor>ing document) entitled RTechnology and ,olicy Aspects)R S;G!T deals
among other things with the technological challenges to the development of internationali5ed domain names) such as the need to
standardi5e the underlying technologies so that such names may be incorporated in the 0=( without difculty. &t also mentions a
number of policy and coordination issues raised by internationali5ed domain names) such as the determination of the authority with
respect to each language. The efect of the internationali5ation of domain names on intellectual property is discussed in the D&,K
brieCng paper entitled R&nternationali5ed 0omain =ames @ &ntellectual ,roperty "onsiderations.R S;GT
GQ. As noted in the Cnal $eport of the (econd D&,K &nternet 0omain =ame ,rocess (R(econd D&,K ,rocessRJ) S;G;T the
internationali5ation of domain names will have repercussions for intellectual property. The conXicts that ensue from the use) in a
designation system such as the 0=() of the various languages and alphabets used throughout the world is well >nown in the
trademar> Celd. #owever) the internationali5ation of domain names may be expected to raise a number of new considerations with
respect to such disputes) including+ the importance of phonetic similarity in what is essentially a visual or textual communication
medium) the speed and modest cost at which a domain name registration can be obtained as compared with a trademar>
registration) and the automatic nature of domain name registrations as opposed to the examination procedure that precedes the
registration of trademar>s. As described in greater detail in paragraph ;;! below) the D&,K Arbitration and -ediation "enter has
already administered a number of disputes relating to internationali5ed domain names. S;G6T
(cJ Eeywords
G9. The &nternet >eyword system ma>es it possible to locate websites using ordinary words) without resorting to technical preCxes
such as http+22 or www.) or top3level sufxes such as .com) .net) .org or .info. 'sually it is sufcient to type the >eywords into the
window of the navigation software to be led directly to the website @ and indeed) in some cases) to the 'niform $esource .ocator
('$.J @ that is sought. The efect of this) however) is that the >eywords can themselves be regarded as virtual identiCers and
consequently have intellectual property implications) as described in the context of trademar> infringement in "hapter &&&(bJ above.
Eeywords do not constitute an alternate routing system to the 0=() but rather form a layer super3imposed upon it. A number of
companies ofer >eyword services) among them "ommon=ame .td.) S;GQT and =etscape. S;G9T There are also >eywords in non3A("&&
characters.
G7. (ome providers of >eywords (in A("&& charactersJ currently ofer dispute3resolution services to address bad faith use of
trademar>s involving >eywords. S;G7T These procedures correspond to a large extent to those under the '0$,. They are only
adopted voluntarily) however) as the providers are under no obligation to %oin the &"A== system or adopt any of its policies.
GM. The use of >eywords in navigation software and search engines holds some potential for relieving the growing pressure on the
0=() by providing alternatives to domain names to navigate the &nternet. #owever) the increase in their use is li>ely to be
accompanied by a growing ris> of intellectual property violations) exacerbated by the internationali5ation of the 0=(. &t remains to be
seen whether the mar>et will adopt these >eyword systems and how efciently their dispute3resolution procedures will wor>.
(dJ -ultiple $oots
GP. The structure of the 0=( is traditionally based on a single central root) so as to permit reliable universal communication on the
&nternet. As stated by the &nternet Architecture :oard (&A:J+
RTo remain a global networ>) the &nternet requires the existence of a globally public name space. The 0=( name space is a
hierarchical name space derived from a single) globally unique root. This is a technical constraint inherent in the design of the
0=(. Therefore it is not technically feasible for there to be more than one root in the public 0=(. That one root must be
supported by a set of coordinated root servers administered by a unique naming authority.R S;GMT
GG. A number of attempts have been made to multiply the number of roots used on the &nternet. (ome are either purely private and
therefore totally outside the public 0=() or experimental and designed in such a way as not to have an adverse efect on its
operation. Kthers) on the other hand) have a commercial purpose) and see> to establish top3level structures to rival that managed by
&"A==. (ome fear that such developments may %eopardi5e the stability and reliability of the 0=(. ,reservation of the universal
character of the networ> is an essential concern for the &nternet community) and &"A== has reafrmed its Rcommitment to a single)
authoritative public root for the &nternet 0omain =ame (ystem (0=(J and to the management of that unique root in the public
interest according to policies developed through community processes.R S;GPT
;!!. The adoption of multiple roots also carries a ris> in terms of the protection of intellectual property rights in the 0=(. That
protection is derived from a contractual system based on the '0$,. &t is implemented through contracts between &"A== and
registrars and) in turn) contracts under which domain name applicants agree to abide by the '0$,. :ecause multiple roots are
outside the contractual system established by &"A==) there is nothing to ensure that their operators will apply or even adopt the
'0$,) and thereby protect intellectual property rights. To address this issue) some operators have opted for systems comparable to
the '0$,L for instance) the company =ew.net S;GGT has introduced a -odel 0omain =ame 0ispute $esolution ,olicy.
(eJ "reation of the Aeneric Top3.evel 0omain .E'
;!. The creation of the generic top3level domain .eu was one of the ob%ectives stated in the eEurope initiative approved by the
European "ouncil in -arch ;!!!. At the end of the public consultation process on the creation of the generic top3level domain .eu
initiated by the European "ommission) S6!!T the European ,arliament and "ouncil adopted on April ;;) ;!!;) a $egulation on the
implementation of the top3level domain .eu. S6!T The $egulation sets out the conditions for the implementation of .eu (for instance
the designation of a registrarJ and lays down the general policy framewor> within which the registrar will operate.
;!;. A number of provisions on the operation of .eu relate to intellectual property protection. &t is provided) for example) that the
owners of prior rights or rights established by national and2or community law) as well as public entities) will beneCt from a speciCc
Rsunrise periodR during which they can register domain names corresponding to their rights. &n addition) the $egulation provides for
the introduction of a Dhois service providing information on the owners of domain names under .eu. (uch a service is essential in
any domain name registration system that see>s to ensure protection for intellectual property rights. S6!;T *inally) it provides for
implementation of a policy of alternative dispute settlement for conXicts involving .eu domain names and intellectual property rights.
The European "ommission also conducted an online consultation on cybersquatting) S6!6T so as to develop the best possible
framewor> to prevent speculative and fraudulent registrations of domain names in the .eu domain. The .eu domain is proposed to be
managed by a non3proCt organi5ation) and registration of domain names is expected to begin in ;!!6.
(fJ &"A== $eform
;!6. The &nternet "orporation for Assigned =ames and =umbers (&"A==J is the entity responsible for coordinating certain 0=(
functions. S6!QT &"A== is a non3proCt organi5ation incorporated under the laws of the (tate of "alifornia in the 'nited (tates of
America. &ts creation is the result of the 'nited (tates AovernmentUs goal) since GGM) to privati5e the 0=( and thereby increase its
competitiveness) S6!9T and represents the completion of a process that began with the publication in Bune GGP of the Dhite ,aper of
the =ational Telecommunications and &nformation Administration (=T&AJ of the 'nited (tates 0epartment of "ommerce) entitled
R(tatement of ,olicy on the -anagement of &nternet =ames and Addresses.R S6!7T
;!Q. The 0epartment of "ommerce entered into a -emorandum of 'nderstanding S6!MT with &"A== under which &"A== was
entrusted with the following functions+ R(iJ set policy for and direct allocation of &, number bloc>s to regional &nternet number
registriesL (iiJ oversee operation of the authoritative &nternet root server systemL (iiiJ oversee policy for determining the
circumstances under which new T.0s are added to the root systemL and (ivJ coordinate the assignment of other &nternet technical
parameters as needed to maintain universal connectivity on the &nternet.R The -emorandum of 'nderstanding between the
0epartment of "ommerce and &"A==) which has been amended and renewed a number of times) has recently been renewed until
(eptember ;!!6.
;!9. Dhile &"A==Us functions and authority are primarily of a technical nature) the organi5ationUs performance of these functions
sometimes raises public policy issues) including a number relating to intellectual property. As &"A== is a private sector organi5ation
sub%ect to the laws of one particular country) the question has been raised whether it can legitimately address those public policy
issues without the additional involvement of public authorities) including intergovernmental organi5ations. $ecently) &"A== has
undergone a reform process S6!PT in an attempt to address) inter alia) this question. &t seems unli>ely) however) that the results of
the &"A== reform will succeed in resolving this question satisfactorily and deCnitely. S6!GT
(gJ Dorld &mplementation of the Enum ,rotocol
;!7. The Enum ,rotocol S6!T is the result of wor> conducted by the &nternet Engineering Tas> *orce (&ET*J Dor>ing ,arty responsible
for the conversion of international public telephone numbers with a view to their use in the 0=(. This ,rotocol) put forward by the
&ET* in (eptember ;!!!) ma>es it possible to convert telephone numbers into domain names and to relate them to communication
services through what is >nown as 'niform $esource &dentiCers ('$&sJ. S6T The best >nown forms of '$& are the 'niform $esource
.ocators ('$.sJ) which are used to locate resources on the Dorld Dide Deb.S6;T Enum enables anyone to simply use a telephone
number to reach any subscriber who has included his particulars (mobile telephone number) e3mail address) &nternet address) text
message address) etc.J in the Enum database. S66T Aiven that the ,rotocol allows telephone numbers to be converted into domain
names) it has been suggested that those domain names should be registered under the top level domain .arpa) originally introduced
during the initial development of the 0=( and managed by the &nternet Architecture :oard (&A:J. S6QT
;!M. The implementation of the Enum ,rotocol is under consideration by the &nternational Telecommunication 'nion (&T'J. S69T &ts
potential implementation raises concerns) particularly of a regulatory and political nature. &t is suggested that the management of
numbering resources in the 0=( be considered a matter of national competence) for each &T' -ember (tate to which the country
code is given (for example) in *rance) which has telephone numbers predicated by the 66 country codeJ. &t is proposed that &T'
retain administrative control over the Enum database. A number of questions remain as to its implementation+ Dhat body should one
approach to have data published@ Dill there be registration services and registries@ And if so) how will they be selected@ Dill they
be public bodies) designated by (tates@ Dill implementation of the ,rotocol be possible only in &T' -ember (tates@ Dill there be a
coordinating body@ These questions need to be addressed before it is decided whether) and if so to what extent) the global
introduction of the Enum ,rotocol is li>ely to afect the 0=(.
(iiiJ D&,K ,$KA$A-(
;!P. D&,KUs activities in connection with domain names have intensiCed in recent years) and concentrate on three areas+ (iJ the
domain name dispute resolution services of the D&,K Arbitration and -ediation "enterL (iiJ the (econd D&,K &nternet 0omain =ame
,rocessL and (iiiJ the D&,K "ooperation ,rogram for ccT.0 Administrators.
(aJ D&,K Arbitration and -ediation "enter
;!G. The D&,K Arbitration and -ediation "enter (the D&,K "enterJ is an institution based in Aeneva ((wit5erlandJ to provide
Alternative 0ispute $esolution (A0$J services. &t was established in GGQ to ofer arbitration and mediation services for the resolution
of international commercial disputes between private parties. -ore recently) in addition to the traditional disputes) it has
concentrated on the administration of &nternet domain name disputes.
?i' Resolution of Disputes in t/e :eneric 0opA%evel Domains ?10%Ds'5 *com) *or1 and *net
;!. *ollowing the adoption on August ;Q) GGG) of the 'niform 0omain =ame 0ispute $esolution ,olicy ('0$,J) &"A== has
accredited a number of institutions to administer complaints Cled under the ,olicy) S67T among which the D&,K "enter is today the
leading provider.
;. The procedure laid down in the '0$, allows a complainant to request the transfer or cancellation of a domain name on the
grounds that+ (iJ it is identical or confusingly similar to a trademar> in which he or she holds rightsL (iiJ the owner of the domain name
has no rights or legitimate interests in itL and (iiiJ the domain name has been registered and is being used in bad faith. The '0$, is a
mandatory procedure that applies to every domain name by virtue of a clause in the domain name registration contract. The
registrars accredited by &"A== to register domain names in the gT.0s are obliged to abide by the decisions rendered under the '0$,.
;;. To date) Q);9Q complaints have been brought before the D&,K "enter) including about P9W in the .com domain) PW in .net and
!W in .org S6MT. (ome G!W of these cases are settled within an average period of 9! days and at a cost of '(V)9!! each. S6PT
-ost complainants ma>e use of the model complaint made available by the D&,K "enter on its site.S6GT The parties to these
disputes originate from !9 countries. The cases are decided by independent intellectual property and &nternet specialists on the
D&,K list of panelists)S6;!T which today comprises over 6!! experts from some 9! countries in many regions of the world.
?ii' Resolution of Disputes (oncernin1 t/e 8e6 10%Ds
;6. The '0$, also applies to the resolution of intellectual property disputes that arise in the new generic top3level domains
(gT.0sJ) .aero) .bi5) .coop) .info) .museum) .name and .pro. The D&,K "enter has itself administered PQ '0$, complaints concerning
the .info domain and 6P concerning the .bi5 domain. &n addition) most registrars have implemented dispute3settlement procedures
speciCcally suited to conXicts arising in the initial registration phase) or are in the process of doing so. The purpose of these
procedures is to provide trademar> owners with additional means to ensure the protection of their rights at the introduction of the
new domains. S6;T The D&,K "enter has been designated by the registry operators of certain new gT.0s to administer their
disputes in accordance with their speciCc procedures) as described below.
;Q. *info dispute resolution policy* The .info domain implemented a (unrise $egistration ,eriod (from Buly ;9 to August 6) ;!!J)
during which only trademar> owners could register a domain name that was identical to the textual elements of their trademar>)
provided the trademar> registration had national efect and was issued prior to Kctober ;) ;!!!. That period was followed by a
(unrise "hallenge ,eriod (from August ;P to 0ecember ;7) ;!!J) during which such sunrise registrations could be challenged under
a (unrise "hallenge ,olicy ((",J) S6;;T exclusively administered by the D&,K "enter. The ,olicy enabled any third party to apply for
the cancellation or transfer of a domain name that had been registered in violation of the conditions of .info sunrise registration. The
D&,K "enter received )9MG challenges to .info registered domain names under the (",) all of which have been resolved. The (",
intellectual property protection measure had one serious shortcoming) however) in the absence of any veriCcation of intellectual
property rights upon application for domain name registration. This allowed speculators to register .info names) by providing false
trademar> registration information. As a result) the operator of the .info registry) AClias) decided to Cle (", challenges to any sunrise
registrations not independently challenged) in order to clear its database of potentially improper sunrise registrations. The D&,K
"enter resolved 6)9G; of such Rchallenges of last3resort)R since 0ecember ;7) ;!!) completing this procedure in mid ;!!;. The
.info domain has been open to the general public for registrations since (eptember ;) ;!!) and the '0$, applies to all such
registrations.
;9. *biH dispute resolution policy* The .bi5 domain implemented a period (from -ay ; to August 7) ;!!J) during which trademar>
owners could Cle one or more Rintellectual property claimsR relating to an alphanumeric string) or name) identical to their mar>s)
thereby enabling the registry to advise them if the same string was registered as a domain name during the start3up period. 'pon
notiCcation by the .bi5 registry) trademar> owners who had Cled such a claim were given the opportunity to commence opposition
proceedings under the (tart3'p Trademar> Kpposition ,olicy ((TK,J with any accredited dispute resolution service provider)
requesting the transfer of the contested domain name. S6;6T To date) the D&,K "enter has received 66P oppositions under the
,olicy) of which 66Q have been resolved. The .bi5 domain has been open to the general public for registrations since Bune ;9) ;!!
and) as above) the '0$, applies to all such registrations.
;7. *name dispute resolution policy. The .name domain devised yet another mechanism to handle abusive registration practices in
the initial stages of its operation. S6;QT This mechanism enabled trademar> owners to apply for a defensive registration in the
preliminary phase (from August 9 to 0ecember Q) ;!!J) by reserving a given alphanumeric string or name in order to prevent the
registration of domain names that included the string at the second or third) or both) levels. The registry also ofers trademar>
owners a =ameDatch service that advises them of any .name registration that matches their trademar>ed name.
;M. *pro dispute resolution policy. The .pro registry is not yet operational) but proposes to implement a Rsunrise periodR during
which owners of trademar>s registered prior to 0ecember 6) ;!!) can register a name that corresponds to their mar>) provided
they meet the registration eligibility restrictions for .pro. 0uring the Rsunrise challenge periodR any person will be able to submit a
challenge against a sunrise domain name for non3compliance with these registration conditions. As above) when registrations open
to the general public) the '0$, will apply to all .pro domain name registrations.
;P. &n addition) the registries that administer domains restricted to certain categories of users) such as .bi5) .name) .coop) .museum
and .aero) have established special dispute resolution procedures that relate to registrantsU eligibility for registration. The D&,K
"enter has been designated to handle complaints Cled in relation to these special procedures. The .bi5 domain) for example) which is
intended solely for names used or intended to be used for Rbona Cde business or commercial purposes)R has introduced a procedure
to resolve disputes between domain name holders and third parties who allege that the domain name at issue has been registered in
violation of the .bi5 registration restrictions. S6;9T This procedure operates parallel to any '0$, proceedings. &n the .name domain)
which is reserved for the registration of names of persons or Cctional characters) registrations are sub%ect to an Eligibility
$equirements 0ispute $esolution ,olicy (E$0$,J. The D&,K "enter received its Crst case under this ,olicy on -ay P) ;!!;. &n the
domains .coop) .museum and .aero) the "harter Eligibility 0ispute $esolution ,olicy ("E0$,J applies) S6;7T and enables any third
party to request the cancellation of a registration allegedly made in violation of the applicable registration conditions.
?iii' Resolution of Disputes in cc0%Ds
;G. To date) ;P ccT.0 administrators have designated the D&,K "enter for the resolution of domain name disputes arising in their
domains as follows+ .A" (Ascension &slandJ) .AE ('nited Arab EmiratesJ) .AA (Antigua and :arbudaJ) .A( (American (amoaJ) .A'
(AustraliaJ) .:( (:ahamasJ) .:8 (:eli5eJ) ."" ("ocos &slandsJ) ."? ("yprusJ) .E" (EcuadorJ) .*B (*i%iJ) .AT (AuatemalaJ) ..A (.ao ,eopleUs
0emocratic $epublicJ) .-0 ($epublic of -oldovaJ) .-F (-exicoJ) .=A (=amibiaJ) .=' (=iueJ) .,A (,anamaJ) .,# (,hilippinesJ) .,=
(,itcairn &slandJ) .$K ($omaniaJ) .(" ((eychellesJ) .(# ((aint #elenaJ) .TT (Trinidad and TobagoJ) .TO (TuvaluJ) .'A ('gandaJ) .OE
(Oene5uelaJ and .D( (Destern (amoaJ. -ost of these ccT.0s have adopted the '0$, or a variant of it. Kf the GQ ccT.0 domain
name disputes that have been submitted to the D&,K "enter to date) PP have been resolved. S6;MT
?iv' Resolution of Disputes (oncernin1 InternationaliHed Domain 8ames
;;!. Although the internationali5ation of domain names is not yet fully operational in the 0=() the preliminary registration phases
and the testbeds of the various providers of internationali5ed domain name registration services have already given rise to a number
of disputes. The '0$, applies to disputes concerning internationali5ed domain names registered with &"A==3accredited gT.0
registrars. The D&,K "enter has to date received 6; complaints that relate to registrations of internationali5ed domain names
registered through the Oeri(ign A$( testbed) and 6! of those cases have been resolved. S6;PT The internationali5ed domain name
cases submitted to the D&,K "enter relate to names in "hinese script (e.g.) 0;!!!3!G9 ^ @@@@@@@@.com_J) Bapanese script (e.g.)
0;!!!3MG ^@@.com_J) Eorean script (e.g.) 0;!!399 ^ @@@@.com_J) or characters peculiar to =orwegian (`J) Aerman (aJ) *rench
(bJ and (wedish (cJ.
?v' Resolution of #ey6ord Disputes
;;. The D&,K "enter has also been designated to resolve disputes concerning &nternet >eywords. S6;GT
?vi' ;nline Searc/ Inde2 of Decisions $anded Do6n "nder t/e "DRP
;;;. The "enter has launched an online search index comprising more than ;)9!! D&,K domain name case decisions under the
'0$,. The index) which is regularly updated) afords access to all legal or other information contained in decisions handed down in
the '0$, context) and is available on the D&,K site) at /ttp5,,666*arbiter*6ipo*int,domains,searc/,
(bJ (econd D&,K &nternet 0omain =ame ,rocess
;;6. Dhile the Crst D&,K &nternet 0omain =ame ,rocess focused on the protection of trademar>s and service mar>s in the 0=() it
became apparent that designations other than trademar>s were also sub%ect to abuse in the 0=(. The $eport issued at the
conclusion of the Crst D&,K ,rocess made particular note of abusive practices with respect to trade names) geographical indications
and the names of persons in that connection. S66!T
;;Q. Kn Bune ;P) ;!!!) D&,K received a request from G of its -ember (tates) S66T subsequently ratiCed by the D&,K Aeneral
Assembly) S66;T to underta>e a second consultation process to address the intellectual property issues relating to domain names that
were outside the scope of the Crst D&,K ,rocess. &n response) in Buly ;!!!) D&,K initiated the (econd D&,K &nternet 0omain =ame
,rocess. This ,rocess addressed the bad faith) abusive) misleading or unfair registration as domain names of the following
identiCers+
&nternational =on3proprietary =ames (&==sJ for pharmaceutical substancesL
names of intergovernmental organi5ationsL
personal namesL
trade namesL and
geographical indications) geographical names and indications of source.
;;9. The Cnal $eport of the (econd D&,K ,rocess) entitled RThe $ecognition of $ights and the 'se of =ames in the &nternet 0omain
=ame (ystem)R was published on (eptember 6) ;!!) S666T and submitted to the -ember (tates of D&,K at the Aeneral Assembly
held from (eptember ;Q to Kctober 6) ;!!) and also to the :oard of &"A==.
;;7. At the ;!! Aeneral Assembly) D&,KUs -ember (tates resolved to sub%ect the $eport to comprehensive analysis by the D&,K
(tanding "ommittee on the .aw of Trademar>s) &ndustrial 0esigns and Aeographical &ndications (("TJ) which would convene in two
special sessions for this purpose. The (tanding "ommittee was established in -arch GGP to facilitate the international development
of the law of trademar>s) industrial designs and geographical indications) and is composed of D&,K -ember (tates and also) as
observers) non3-ember (tates) and intergovernmental organi5ations. The ("T met in special session from =ovember ;G to
0ecember Q) ;!!) and from -ay ; to ;Q) ;!!;) in order to analy5e the $eport on the (econd D&,K ,rocess. The ("T formulated a
number of recommendations S66QT on which D&,K -ember (tates too> a decision at their Aeneral Assembly from (eptember ;6 to
Kctober ) ;!!;. The questions addressed in the $eport of the (econd D&,K ,rocess) the recommendations of the special sessions of
the ("T and the decision of D&,K Aeneral Assembly are discussed below.
;;M. International 8onproprietary 8ames ?I88s' for p/armaceutical substances. S669T The &== system is a naming system introduced
in accordance with a resolution of the Dorld #ealth Krgani5ation (D#KJ) in order to allocate a generic name to all approved new
pharmaceutical substances. That generic name cannot be sub%ect to any exclusive rights and is freely available for use by all. &n the
&== system) health authorities) intellectual property ofces and the private sector have agreed that the names involved cannot be
registered or used as trademar>s. &n the 0=() however) &==s are not protected against appropriation by private parties) and their
registration as domain names creates a situation that appears to be incompatible with the underlying principles of the &== system. At
the special sessions of the ("T) numerous (tates and entities) in particular the Dorld #ealth Krgani5ation (D#KJ) declared
themselves in favor of protection of &==s from registration by private entities in the 0=(. #owever it was also argued that the scale
of improper registration of &==s as domain names) and the lac> of evidence of adverse efects of that practice) did not warrant the
introduction of protection measures. The participants decided that no particular form of &== protection would be recommended in the
0=( at the present stage) but that D&,K together with D#K would continue to monitor the situation and that) where necessary) it
would bring any important developments in this area to the notice of -ember (tates. At its meeting from (eptember ;6 to Kctober )
;!!;) the Aeneral Assembly of D&,K approved this recommendation.
;;P. 8ames and acronyms of inter1overnmental or1aniHations* [BB! The names and acronyms of intergovernmental organi5ations
are protected by Article 7 ter of the ,aris "onvention and by the T$&,( Agreement) as well as by the provisions of other international
treaties that aford protection to certain names of intergovernmental organi5ations or names used at the international level+ such as
the GQG Aeneva "onventions which prohibit the use of the name R$ed "ross.R S66MT Article 7 ter of the ,aris "onvention does not
confer automatic protection on the names and acronyms of intergovernmental organi5ations) but requires each organi5ation to notify
D&,K of the names for which it see>s protection) and D&,K then communicates these to the -ember (tates. The protection provided
by the ,aris "onvention extends to any registration or use of the name or acronym of an intergovernmental organi5ation as a
trademar>) while it is understood that a -ember (tate can impose a condition that the registration or use should only be restricted if
it is liable to mislead the public or create a false association between the trademar> in question and the name or acronym of the
organi5ation.
;;G. &n light of the fact that international law provides intergovernmental organi5ations with immunity from national %urisdiction) the
provisions of Article 7 ter of the ,aris "onvention are applied principally through the national industrial property ofces) to which
notiCcations under Article 7 ter are sent and which then ensure that the protected names and acronyms are not registered or
improperly used as trademar>s. At the ("T special sessions) the legal advisers of the 'nited =ations system) representing more than
;! 'nited =ations bodies and programs and a number of other intergovernmental organi5ations) spo>e on the adverse implications)
for both users and organi5ations) of the registration of names and acronyms of intergovernmental organi5ations as domain names.
The meeting recommended that the '0$, be amended to allow complaints to be Cled by international organi5ations under certain
circumstances) while ta>ing into account the privileges and immunities of intergovernmental organi5ations under international law.
At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K adopted the recommendation of the ("T with
respect to the names and acronyms of intergovernmental organi5ations and instructed the D&,K secretariat to transmit the said
recommendation to the &nternet "orporation for Assigned =ames and =umbers (&"A==J. S66PT
;6!. Personal names* [BBD! "ases decided under the '0$, demonstrate that the protection it confers to trademar>s and service
mar>s has been broadly interpreted as applying not only to registered mar>s) but also to unregistered and Rcommon lawR mar>s. As
a result) numerous persons have Cled complaints under the '0$, against the improper registration of their personal names as
domain names. There are) however) two limitations on the application of the '0$, to personal names. The Crst limitation relates to
the fact that certain countries do not recogni5e rights in common law or unregistered mar>s. &n those countries) the '0$, can only
be invo>ed to protect the names of persons against improper registration as domain names where the notoriety or commercial
reputation of the persons in question extends to another country in which such mar>s are recogni5ed and granted trademar>
protection. The second limitation relates to the fact that names of persons are protected only in so far as they are used in business)
based on the fundamental principle of trademar> law. The '0$, thus does not aford protection to personal names that en%oy
notoriety independently of their use in commerceL for example) the names of political or historical Cgures. (ome participants in the
("T special sessions) especially those representing countries that do not recogni5e unregistered mar>s) considered that the
protection of personal names in the 0=( related to the question of the extension of the '0$, to trade names. #owever) the meeting
recommended that no action be ta>en in this area. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of
D&,K adopted this recommendation.
;6. :eo1rap/ical indications) 1eo1rap/ical names or indications of source* [B&0! Aeographical indications are protected by certain
provisions in international treaties) in particular the ,aris "onvention and the T$&,( Agreement. S6QT =evertheless) in the absence of
an international framewor> for the recognition of geographical indications) and the fact that the applicable laws at present relate to
trade and goods) whereas domain name registrations are wider in scope) it is problematic to amend the '0$, to cover the improper
use of geographical indications as domain names. *ollowing the discussions of the ("T special sessions) it was recommended that
the Aeneral Assembly of D&,K should entrust the ("T with determining the best means of addressing the question of the protection
of geographical indications in the 0=(. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K adopted
the recommendation of the ("T with respect to geographical indications) it being understood that the ("T is to continue the
discussions on this topic.
;6;. Dith respect to the protection of country names) it was generally accepted that there currently exists no standard for the legal
protection of such names at the international level. &t was evident that many country names have been registered as domain names
by persons or entities having their residence or registered ofce outside the country in question) and that in most cases the registrant
was an individual or entity with no lin> to the government of the country concerned. S6Q;T -ost participants at the special sessions
favored some form of protection for country names against registration by persons who had no connection with the constitutional
authorities of the countries themselves) and some proposals were made as to the manner in which such protection could be
provided. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K noted that all 0elegations supported
the recommendation of the ("T with respect to country names) except those of Australia) "anada and the 'nited (tates of America.
&t noted) however) that a number of issues regarding the modalities of protection of country names in the 0=( warrant further
discussion. S6Q6T The Aeneral Assembly decided that these discussions should be continued in the ("T with a view to reaching a Cnal
position.
;66. 0rade names. S6QQT Trade names en%oy protection at the international level by virtue of Articles P) G and ! of the ,aris
"onvention. The extension of the '0$, to trade names has proven difcult for a number of reasons in particular+ the diversity of
national mechanisms of trade name protection) the lac> of evidence of abusive registration of trade names as domain names) the fact
that multiple owners of a trade name may have a legitimate interest in a single name (as the existence of a trade name is relatively
easy to prove in many countriesJ) and the fact that the main users of trade names) namely smaller businesses operating at the local
level) are liable to have difculty in qualifying for protection at a global level under the '0$,. ,articipants in the special sessions
recommended that -ember (tates should >eep the matter under review and raise it for further discussion if the situation so
demanded. At its meeting from (eptember ;6 to Kctober ) ;!!;) the Aeneral Assembly of D&,K adopted this recommendation.
(cJ D&,K "ooperation ,rogram for ccT.0s
;6Q. "oncurrently with their request that the Krgani5ation underta>e the (econd D&,K &nternet 0omain =ame ,rocess) the G
-ember (tates concerned requested the launch of a program for the beneCt of the administrators of ccT.0s. S6Q9T The request was
duly ratiCed by the Aeneral Assembly of D&,K) S6Q7T and the program commenced in August ;!!!. The goal was to improve the
protection of the intellectual property in ccT.0s in a collaborative exercise with their administrators.
;69. 'nder the program) D&,K+ (iJ developed the ccT.0 :est ,ractices for the ,revention and $esolution of &ntellectual ,roperty
0isputesL (iiJ regularly advises ccT.0 administrators upon request on intellectual property issues and the design of suitable
procedures for the settlement of disputes) and provides the services of the D&,K Arbitration and -ediation "enterL (iiiJ advises ccT.0
administrators who have initiated national consultation processes along the lines of the D&,K &nternet 0omain =ame ,rocessesL and
(ivJ published a ccT.0 database and a trademar> database portal.
;67. The ccT.0 :est ,ractices for the ,revention and $esolution of &ntellectual ,roperty 0isputes were presented in draft form at the
conclusion of the D&,K "onference on &ntellectual ,roperty duestions $elating to the ccT.0s) organi5ed on *ebruary ;!)
;!!. S6QMT The draft was published online for public comment) S6QPT and the Cnal version was published on Bune ;!) ;!!. S6QGT
The :est ,ractices provide a guide on intellectual property issues for use by ccT.0 administrators. They emphasi5e the importance of
domain name registration practices designed to prevent conXict between domain names and intellectual property rights) A0$
procedures and) Cnally) describe the dispute resolution services of the D&,K Arbitration and -ediation "enter) which are available to
any ccT.0 administrator who may have designated the "enter for this purpose. (ince the launch of the D&,K ccT.0 program) D&,K
has provided advice on the management of intellectual property issues to 9! ccT.0 administrators) and ;P ccT.0s have retained the
D&,K "enter as their dispute3resolution service provider.
;6M. &n addition) D&,K collaborates closely with certain ccT.0s in the course of their national consultations) which are the national
equivalent of the D&,K &nternet 0omain =ame ,rocesses. The administrators of the domains .nl (=etherlandsJ and .ie (&relandJ) have
embar>ed on such processes with a view to developing dispute3resolution procedures for disputes arising in their domains. The
administrators of the .nl and .ie domains have requested D&,KUs participation in their national processes) in so far as they relate to
intellectual property concerns. The consultation process concerning .nl was completed in =ovember ;!! with the publication of a
report that recommended the adoption of an arbitral procedure for the resolution of domain name disputes) based on alleged
infringements of trademar>s and trade names. S69!T *ollowing a public tender) the .nl administrators designated the D&,K
Arbitration and -ediation "enter to administer disputes under the new .nl dispute3resolution procedure) due to come into efect early
;!!6. The national consultation process in .ie is ongoing) with D&,KUs involvement.
;6P. D&,K also published a ccT.0 database in Banuary ;!!;. S69T This database) which is regularly updated) has lin>s to the
websites of almost all of the ;Q6 ccT.0s) and provides information on each ccT.0 as to whether the administrator has implemented a
registration contract) a Dhois service) or alternative dispute3resolution mechanism. Analysis of the data shows that) of the ;Q6
ccT.0s included in the database) Q (or Q7.GWJ have introduced a registration contract) G (or QP.GWJ provide a Dhois service) and
97 (or ;6WJ have adopted a dispute3resolution mechanism. &t also reveals that QG ccT.0s (almost ;!.WJ) are not visible on the Deb)
with their sites being either non3existent or inaccessible.
;6G. D&,K has also published a trademar> database portal to facilitate preliminary trademar> searches for persons wishing to register
a domain name in a gT.0 or ccT.0 and satisfy themselves that the name does not infringe third3party trademar> rights. S69;T At
present) the portal is screening the trademar> databases compiled by 97 national) regional and international industrial property
ofces or agencies.
III. (d) PT"!T$
;Q!. This "hapter describes the patent system) as it has adapted to the evolution of digital technologies) focusing on issues that have
arisen with respect to+ the scope of patentable sub%ect matter) including business method patents and software protectionL prior art
efectL and enforcement of patent rights. &t then examines D&,KUs response and related programs in the Celd of patent law.
(iJ ,ATE=T( &= T#E 0&A&TA. E=O&$K=-E=T
;Q. &nventions are characteristically protected by patents. Oirtually every country that accords legal protection to inventions @ and
there are more than 7! such countries @ grants such protection through the patent system. &n addition) inventions may also be
protected by other types of rights) such as utility models or trade secrets. The protection of inventions through patents is recogni5ed)
in particular) in two multilateral treaties) the ,aris "onvention and the T$&,( Agreement. The patent system provides a framewor> for
innovation and technological development by) on the one hand) granting an exclusive right to the owner of a patent to prevent others
from commercially exploiting the patented invention for a limited period S696T and) on the other hand) balancing this right with a
corresponding duty to disclose the information concerning the patented invention to the public. This information) which is classiCed
and stored in the patent documentation) is available to anyone and) increasingly) is accessible online through &nternet3based
systems. S69QT The mandatory disclosure of the invention thus enriches the available pool of technological >nowledge) facilitates
technology transfer) and enhances the opportunities for creativity and innovation by others. S699T
;Q;. The patent system has played a vital role in promoting the development of the underlying technical infrastructure for the
&nternet and e3commerce that ta>es place across its networ>s. E3commerce relies in a critical way on various computer and networ>
technologies) both hardware and software. The mar>et exclusivity established through efective patent protection has provided a
reward for investment and has %ustiCed the expenditures on research and development to achieve further technological progress.
#owever) the new technologies pose challenges to the conventional legal scheme for the patent system. The following addresses
several of the current issues associated with digital media and e3commerce in the context of patent protection.
(aJ :usiness -ethod ,atents
;Q6. &n order to be eligible for patent protection) an invention must fall within the scope of patentable sub%ect matter. Article ;M. of
the T$&,( Agreement provides that) sub%ect to certain exceptions and conditions under that Agreement) patents shall be available Rfor
any inventions) whether products or processes) in all Celds of technology) provided that they are new) involve an inventive step and
are capable of industrial application.R Dhile it is possible to provide limited exceptions) which are allowed under the T$&,(
Agreement) under national and regional laws) the general rule is that patent protection for an invention will not be refused simply
because it falls in a particular Celd of technology.
;QQ. ,atents have recently been granted to certain inventions concerning Cnancial services) electronic sales and advertising methods
and business methods) including business methods consisting of processes to be performed on the &nternet) and telephone exchange
and billing methods. S697T A signiCcant decision in the 'nited (tates of America) for example) found a business model for managing
an investment portfolio to be patentable sub%ect matter) in State Street 7an- C 0rust v* Si1nature .inancial :roup. S69MT &n Europe)
the :oards of Appeal of the European ,atent Kfce (E,KJ) in the S;$EI case) S69PT has decided that a computer system involving a
number of independent management tas>s) including Cnancial and inventory management and a system operation method was
patentable as such. The case required the E,K :oards of Appeal to decide whether the addition of Cnance3related expressions for
data would classify the apparatus and method as principally performing a Rmethod of doing business as suchR. S69GT &t is expected
that the number of these e3commerce3type patents may increase signiCcantly) bearing in mind its potential for individuals) companies
and national economies) as well as the global economy. (uch patents are viewed by some as important for creating incentives and
spurring investment in new digital technologies.
;Q9. Kn the other hand) this trend has been critici5ed by those who stress that a number of such patents concerning business
practices and methods reXect familiar ways of doing business that are not new or novel 3 the only aspect that is diferent is that they
occur in cyberspace. &n Europe there is the view that the sub%ect matter of a patentable RinventionR must have a Rtechnical
characterR or involve Rtechnical teaching)R i.e.) an instruction addressed to a person s>illed in the art as to how to solve a particular
technical problem using particular technical means. S67!T &n Bapan) a business method itself which is a man3made arrangement) or a
method using only such an arrangement) is not patentable sub%ect matter. S67T &n the 'nited (tates of America) issues were raised
as to Rpatent qualityR due to the granting of some business method patents for inventions that did not meet the requirements of
novelty and non3obviousness. &n response) the 'nited (tates ,atent and Trademar> Kfce ('(,TKJ issued a RDhite ,aper on
Automated *inancial or -anagement 0ata ,rocessing -ethods (:usiness -ethodsJ)R S67;T and has ta>en a number of
measures. S676T &n addition) the Bapan ,atent Kfce (B,KJ) the E,K and the '(,TK conducted a trilateral comparative study on
computer implemented business methods) that was designed to facilitate consistent search and examination practices across the
ofces) in light of ever3increasing numbers of Clings related to business method inventions. The Trilateral $eport produced the
following consensus summary+ S67QT
RA technical aspect is necessary for a computer3implemented business method to be eligible for patenting. (&n the 'nited
(tates of America) the Rin the technological artsR feature may be implicitly recited in the claim. The E,K and the B,K require that
the technical aspect be expressed in the claim.J
To merely automate a >nown human transaction process using well >nown automation techniques is not patentable.R
;Q7. :ecause the phenomena of digital networ>s and e3commerce are so new and still emerging) some claim that gauging the
novelty of a business model in this area and whether it meets the requirements of patentability is a tenuous tas>. &t is also contended
that competition may be harmed in the digital mar>et place if companies are able to obtain patents for basic business methods that
already exist in non3cyberspace. Kn the other hand) other commentators argue that patent protection is merited given the
technological innovation reXected in such new business models and that this protection is needed in order to provide incentives for
further investment in new on3line businesses. A lawsuit Cled in Kctober GGG) in which Ama5on.com) the &nternet boo>seller) sued its
rival) :arnesandnoble.com) illustrates the sta>es involved. Ama5on.com) in (eptember GGM) started using a Rone3clic>R technology
to enable its online customers to ma>e repeated purchases from its website without having to repeatedly Cll out credit card and
billing address information. &t received a patent for its one3clic> technology in (eptember GGG ('nited (tates ,atent =o. 9)G7!)QJ)
and alleged that :arnesandnoble.comUs one3clic> chec>out system) >nown as RExpress .ane)R infringed its patent. The decision of the
0istrict "ourt awarding preliminary in%unctive relief to Ama5on was ta>en on appeal to the "ourt of Appeals for the *ederal "ircuit. &n
-arch ;!!;) the case was settled between the two parties. S679T
(bJ (oftware ,atents
;QM. A similar discussion concerning patentable sub%ect matter has occurred in respect of software patents) as the signiCcance of
software itself extends well beyond the software industry. As mentioned above) the T$&,( Agreement (Article ;M.J does not allow the
exclusion of software in general from patentability. S677T &n addition to the question as to whether computer programs as suc/ should
be regarded as RinventionsR under the patent law) this broad scope of patentability has prompted a discussion on the sub%ect of where
to draw the line between copyright and patent law protection for computer programs. A .IdIration Internationale des (onseils en
PropriItI Industrielle (*&",&J review of international patent protection of software) e3commerce and business methods) S67MT for
example) found that generally countries in Europe as well as (outh Africa explicitly exclude computer programs as suc/ from
protection under their patent laws) while Australia) "anada) "hile) &srael) Bapan) S67PT the $epublic of Eorea and the 'nited (tates of
America do not exclude such protection. The same countries) with the exclusion of "hile) also do not exclude granting patent
protection to business method as suc/. Although some patent ofces have established examination guidelines for computer related
inventions) including software related inventions) very little international harmoni5ation has been achieved in this area.S67GT
;QP. &n the Celd of information technology) the value of intellectual assets often resides in the RcontentR of the information. &n the
past) software has often been sold as an integral part of the computer system) while) today) software products are often mar>eted in
the form of computer readable media) for example) dis>ettes and "03$K-s or directly over the &nternet. (oftware3related inventions
are thus stored in such media) and commerciali5ed separately from the computer hardware. &t is necessary) therefore) to claim such
software3related inventions as a computer readable medium storing the software that performs the claimed functions. This type of
claim is commonly called R:eauregard3type claim.R S6M!T Kther types of claims) such as R.owry3type claimR (a computer readable
medium storing a data structure) which data structure is interrelated to the medium structurally and functionallyJ S6MT or a
Rpropagated signal claimR (a claim to a computer data signal that is embodied in a carrier waveJ S6M;T have also been advanced by
practitioners. As this topic is relatively new) there is not as yet international harmoni5ation concerning an acceptable claim format
with respect to software3related inventions.
;QG. &n Europe) the European "ommission issued a proposal for a 0irective on the protection by patents of computer3implemented
inventions in *ebruary ;!!;. S6M6T Dhile inventions using software can already be patented through the European ,atent Kfce
(E,KJ) or national patent ofces) implementation of the conditions for patentability vary) and so the 0irective is designed to
harmoni5e the way in which national patent laws deal with software inventions. &n particular) the proposal provides that) in order to
meet the requirement of inventive step) as is the case with inventions in general) a computer3implemented invention must ma>e a
technical contribution to the state of the art. European cases in which a Rtechnical contributionR has been found include an invention
to increase computer processing speeds) and an invention by which an F3ray machine was controlled by a data processing unit.
*urther) the proposal does not follow the practice of the E,K in permitting claims to computer program products either on their own
or on a carrier) as this could be seen as allowing patents for computer programs Ras suchR. S6MQT
(cJ ,rior Art Efect
;9!. As noted) patents are granted only to inventions that are novel) involve an inventive step and are useful or industrially
applicable. To determine if the requirements of novelty and inventive step are met) the claimed invention is compared with the
existing state of the art. The existing state of the art is sometimes referred to as the Rprior art.R ,rior art in electronic form) which
exists in cyberspace only (Rcyber artRJ) raises questions as to its availability as Rprior artR and) thus) whether it can be applied against
an invention for which a patent is sought in determining novelty or inventive step. The questions include whether that >ind of
information has become Rprior artR even if it was disclosed on the &nternet for only a limited period.
;9. Although similar questions have been addressed with respect to prior art published on paper) publication on the &nternet may
have diferent implications. Authenticity) veracity and integrity are the critical issues for prior art in cyberspace) since cyber art is
considered to be more vulnerable to alteration and modiCcation. The determination of the timing of the disclosure and the
accessibility of the cyber art to the public) given the networ>Us capacity for instantaneous dissemination on the international scale)
are other concerns. *urthermore) national laws may extend the concept of the prior art to include prior uses. 'nder such national
laws) the concept of RuseR may be revisited in a computer environment. &n addition) the above3mentioned questions are applicable in
the context of a grace period for public disclosure of an invention before Cling a patent application. S6M9T D&,K conducted a survey
of its -ember (tates concerning) among other issues) disclosure of information on the &nternet) focusing on current national
approaches and the need for harmoni5ation at an international level) and the summary of its results is available online. S6M7T
(dJ Enforcement of $ights
;9;. As in other Celds of intellectual property) %urisdictional questions and enforcement of rights are also relevant to patent
protection. The &nternet raises complex issues in this regard) as patent protection is provided on a country3by3country basis) and the
patent law of each country has application only within its borders) in accordance with the traditional principles of territoriality. *or
example) where patented software is sold and delivered over the &nternet internationally) any infringement action would require a
consideration of the %urisdictional and choice of law issues. ,rivate international law issues in the Celd of patents are discussed in
"hapter &O below. -oreover) the Crst practical issue may be that of detection) since the unauthori5ed importation of such software by
means of the &nternet) unli>e the importation of tangible goods) cannot be detected and stopped by customs authorities.
;96. Kne of the questions particular to patent protection may be the case where a patented product invention consists of elements
that are physically located in diferent territories. Kr) for example) in the case of process patents for a method to process and
transfer certain data using computeri5ed networ>s (for example) the &nternetJ) distinct elements in the claimed process could be
performed in diferent territories. &f an alleged infringer operates a system containing all of the claimed elements within the territory
in which the invention is protected) there would be a straightforward claim for infringement. #owever) the questions of infringement
and %urisdiction would be more difcult where a patented invention involves activities in several countries by several individuals. &n
particular) Article ;P of the T$&,( Agreement requires that a patent confer on its owner the right to prevent others from RusingR the
patented product or process. Dhat constitutes RusingR a patented product or process is increasingly complicated in the case of
&nternet3related e3commerce patents.
;9Q. This question may be examined in the context of the abovementioned case) State Street 7an- C 0rust v* Si1nature .inancial
:roup [BFF!) where the "ourt of Appeals held that the patent involved patentable sub%ect matter. The patent "laim in that case
provides as follows+
RA data processing system for managing a Cnancial services conCguration of a portfolio established as a partnership) each partner
being one of a plurality of funds) comprising+
3 computer processor means for processing dataL
3 storage means for storing data on a storage mediumL
(iJ means for initiali5ing the storage mediumL
(iiJ second means for processing data regarding assets in the portfolio and each of the funds from a previous day and data regarding
increases or decreases in each of the funds) assets and for allocating the percentage share that each fund holds in the portfolioL
(iiiJ means for processing data regarding daily incremental income) expenses) and net reali5ed gain or loss for the portfolio and for
allocating such data among each fundL
(ivJ means for processing data regarding daily net unreali5ed gain or loss for the portfolio and for allocating such data among each
fundL and
(vJ means for processing data regarding aggregate year3end income) expenses) and capital gain or loss for the portfolio and each of
the funds.R
Each of the recited RmeansR in "laim of the patent corresponds to a physical structure that could be located at sites remote from
the other Rmeans.R &ndeed) the various RmeansR could be located in diferent countries. Aiven this situation) it may not be clear in
which %urisdiction the accused infringer is actually RusingR the patented invention. Although such questions remain largely
hypothetical for the moment) real cases can be anticipated to follow. Thus) increasing consideration must be given to these questions
in future to ensure that rightsholders and tribunals are well prepared.
(iiJ D&,K ,$KA$A-(
;99. D&,K has been addressing a number of issues in this area * *irstly) the (tanding "ommittee on the .aw of ,atents ((",J studied
the desirability and feasibility of harmoni5ing rules concerning the patent law implications of the disclosure of technical information
on the &nternet) such as its impact on patentability. S6MPT The discussion revealed that most of the countries recogni5e the prior art
efect of information disclosed on the &nternet under the general rules and practices applicable to the determination of prior
art. S6MGT Dithout any international harmoni5ation with respect to the deCnition of prior art) it is apparent that the practices
concerning the determination of the contents and timing of disclosures on the &nternet vary from one Kfce to the other. Against this
bac>drop) the (", agreed that in the Crst instance) it was necessary to establish general principles concerning prior art that would
also cover the disclosure of information on the &nternet under the (ubstantive ,atent .aw Treaty ((,.TJ. The "ommittee would) at a
later stage) consider the need to establish special provisions speciCc to &nternet disclosures in the ,ractice Auidelines under the
(,.T. S6P!T
;97. (econdly) the ,atent .aw Treaty (,.TJ and the accompanying $egulations) which were adopted in Bune ;!!!) contain provisions
for harmoni5ation of the formal requirements concerning patent applications and patents which are applied by the industrial property
ofces of (tates and regional industrial property organi5ations. S6PT &n relation to new methods for electronic administration) Article
P and $ules P and G of the ,.T and its $egulations) in particular) provide general rules relating to the Cling of communications in
electronic form or by electronic means using digital signatures) incorporating the requirements with respect to electronic Cling under
the ,atent "ooperation Treaty (,"TJ. S6P;T
;9M. Thirdly) following the adoption of the ,.T) the (", initiated wor> on harmoni5ation of substantive patent law in =ovember ;!!!)
namely) negotiations of the draft (,.T. The draft (,.T focuses) in principle) on issues of relevance for the grant of patents and validity
of patents) such as the deCnitions of prior art) novelty) inventive step2non3obviousness and industrial applicability2utility) the drafting
and interpretation of claims) the requirement of sufcient disclosure and patentable sub%ect matter. S6P6T Although still at an early
stage of the negotiation) the (", expressed its will to achieve deep harmoni5ation) i.e.) harmoni5ation of legislation as well as of
practices regarding the core issues of patentability and validity of patents.
Defamation Law falls under Tort .aw. &t refers to false statements about a person) communicated as fact to one or more other
persons by an individual or entity (such as a person) newspaper) maga5ine) or political organi5ationJ) which causes damage and does
harm to the targetNs reputation and2or standing in the community. 0efamation is addressed primarily by state legislation.
#owever) "onstitutional .aw may also apply) as the right of freedom of speech also extends to certain defamation claims. 0efamation
is categori5ed as either 0lander or Libel.
The general harm caused by defamation is identiCed as being ridiculed) shamed) hated) scorned) belittled or held in contempt by
others) and lowers him2her in esteem of a reasonably prudent person) due to the communication of the false statement. This tort can
result in a lawsuit for damages. -any states have statutes requiring that the allegedly damaged party must Crst demand a printed
retraction of the defamatory statement) before they may proceed to court. &f the plaintif proceeds with a lawsuit without Crst see>ing
the retraction or if he2she receives a retraction but proceeds anyway) most states will limit the damages they may pursue to the
actual or special damages they experienced) such as loss of employment or wages.
<alice e if intentional malice can be shown2proven) than the act usually qualiCes as defamation for damage to oneNs reputation.
#owever) even without this) if it is obvious that the statement would do harm and that it is untrue) one can still pursue this tort if
he2she can demonstrate actual2tangible harm) such as loss of business (called special damagesJ.
%ibel is defamatory statements and2or pictures published in print or writingL or broadcast in the media) such as over the radio) on TO
or in Clm. The publication does not need to be made to more than one person to qualify as libel. #owever) it must be represented as a
fact) not an opinion. &f one libels the reputation of a deceased person) the targetNs heirs may be able to bring an action for damages.
Kral defamatory statements are categori5ed as slander. 0amages for slander are generally more difcult to identify and proveL
although when malice is involved) it can be easier to accomplish. These statements must also be represented as fact) rather than %ust
an opinion) to be considered slanderous. (lander of title refers to a remar> regarding property ownership which maligns the owner
and his2her ability to transfer the property) and results in a monetary loss.
Defamation Per Se refers to defamatory statements that are so vicious and the harm is so obvious) that malice is assumed) and proof
of intent is not required for general damages (i.e. falsely accusing someone of committing a crime involving immoralityL claiming
someone has a repugnant) contagious diseaseL or statements claiming that the individual is unCt or unable to perform his
employment duties.J -ost states speciCcally recogni5e these categories of false statements as defamatory per se. .ibel per se is also
referred to as libel on its face) meaning it meets all the required elements without further proof. Defamation Per Juod is the opposite
of per se) in that it is not obvious and extrinsic proof is required to demonstrate that the communication was damaging.
Exclusions2Exceptions20efenses to defamation+
f Hfair commentI 3 a statement of opinion which was arrived at based on accurate facts) which do not allege dishonorable motives by
the person about whom the statements were made.
f (tatements made about a public person (political candidates) governmental ofceholder) movie star) author) celebrity) sports hero)
etc.J are usually exempt) even if they are untrue and harmful. #owever) if they were made with malice e with hate) disli>e) intent
and2or desire to harm and with rec>less disregard for the truth e the public person may have a cause of action. This was determined
by the '.(. (upreme "ourt and has been re3interpreted various times.
f -inor errors in reporting) such as publishing a personNs age or title inaccurately or providing the wrong address.
f Aovernmental bodies due to the premise that a non3personal entity cannot have intent.
f ,ublic records are exempt from claims of libel.
f Truth e the communication was true.
"opyright #A.org
#no6 9our Ri1/tsK
0efamation+ Dhat it is and #ow to 0eal with it
&s &t .egal *or (omeone to (hare ?our $evealing ,hotos or Oideos for $evenge on the &nternet
'nfortunately) in most states) the answer is Hno) it is not illegal to share those photos.I &ndeed) posting explicit photos of someone
is legal in every state but "alifornia and =ew Bersey.
+rticles +bout Defamation %a6
Dhat "an ?ou 0o if (omeone *alsely Accuses ?ou of $ape@
&t is an ugly reality) but it is >nown to happen+ petty people misusing the very serious charge of rape as a way to gain an upper
hand) get revenge) or otherwise harm another person. The results of such a false accusation can be devastating) even if the person
wrongfully accused is ultimately acquitted. (o) what can the innocent person do in such a case@ Dhat are the consequences to the
false accuser@
&s There a .aw Against "yberstal>ing or "yberharassment@
Dith the rise of social networ>ing) many have lost some of their concerns about personal privacy. &ndeed) millions of Americans
share the intimate details of their lives with an audience of do5ens to thousands to sometimes even millions of people everyday)
and thin> nothing of it. :ut what happens when someone begins to use this information against you@ Are they violating any laws by
following you online or bothering you on the &nternet@
&s &t .egal *or (omeone to (hare ?our $evealing ,hotos or Oideos for $evenge on the &nternet
&n this modern digital age) it is often common for romantic partners) particularly those in long distance relationships) to exchange
revealing photos of one another. These photos are often intended for the eyes of the receiver only. :ut) how can you be sure@ Dhat
happens if you brea> up or the other person turns out to be less discrete than you had hoped@ &s it illegal for someone to share
those photos with others@
Are (exual #arassment &nvestigations "onCdential@
An all too common occurrence in the modern wor>place is the sexual harassment. This can ta>e many forms) li>e unwelcome sexual
or romantic advances) sexual blac>mail) ofensive touching) discussions of intimate activities that ma>e others uncomfortable) etc.
Dhile there are a number of laws to protect those who complain of such activities) what of those who are accused) particularly if the
sexual harassment claim is determined to be unfounded or used as a means of embarrassment or retaliation@
Dhat are the .aws $egarding ,apara55i
-any will long remember the death of ,rincess 0iana in GGM. (he passed away as a result of a fatal car crash during a high3speed
papara55i chase. This led to a number of laws in both England and America relating to the papara55i.
Dhen "an ?ou (ue for 0efamation@
Dhen we thin> of personal in%ury lawsuits we thin> of vehicle accidents) slip and fall in%uries) or dog bites) but some >inds of
personal in%ury do not necessitate that the victim is actually physically in%ured in order to recover compensation.
0efamation+ Dhat it is and #ow to 0eal with &t
0efamation is when someone tells one or more persons an untruth about you) and that untruth harms your reputation. 0efamation
is the general term) while slander and libel refer to particular types of defamation. .ibel is a written defamation) and slander is
verbal. There are three >ey factors to consider when deciding whether a defamatory statement should be ta>en to court.
As (ocial -edia &ncreases in ,opularly) 0efamation $ises 3 Dhy ?ou -ay =eed a .awyer
The popularity of social media steadily increases) and the number of users continues to s>yroc>et. 0efamation is a problem that is
growing) especially for those in business. ,eople can be vicious) ma>ing claims or saying things that are malicious and untrue. &s
your reputation or business at ris>@ ?ou may need a social media defamation attorney to represent you.
All ,ersonal &n%ury .aw Articles
Defamation %a6 A "S
A:A 3 -edia) ,rivacy) and 0efamation .aw "ommittee
The -edia) ,rivacy) and 0efamation .aw "ommittee concentrates on the law of and insurance coverage for media law issues)
privacy law developments) and defamation law concerns. Kur topics are wide3ranging within these spheres) including insurance
coverage for controversial news reporting) invasion of publicity rights) unbiased press coverage) reducing liability exposure)
freedom3of3information litigation) identity theft) maintaining a positive relationship with an insurance carrier) public access to court
hearings) and a plethora of other sub%ects.
"iti5en -edia .aw ,ro%ect 3 (ubstantial Truth
RTruthR is an absolute defense against defamation. (ee =ew ?or> Times "o. v. (ullivan) 6M7 '.(. ;9Q (G7QJ) and Time &nc. v. #ill)
6P9 '.(. Q (G7MJ. "onsequently) a plaintif has to provide convincing evidence of a defamatory statementUs falsity in order to
prove defamation.
0efamation .aw 3 ,ositive Burisprudence
Kver the past Cfteen years) national and international courts have developed a body of case law that see>s to reduce defamationNs
infringement on freedom of expression) a right guaranteed in treaties and constitutions around the world. "ourts in democratic
countries have played an especially signiCcant role in reform because free speech is vital to their political system. The decisions
exhibit noteworthy trends in legal change and frequently refer to each other as persuasive precedent. This Article presents an
overview of such positive %urisprudence and focuses on decisions from international) "ommonwealth) and 'nited (tates courts.
*irst Amendment "enter
The *irst Amendment was written because at AmericaUs inception) citi5ens demanded a guarantee of their basic freedoms. Kur
blueprint for personal freedom and the hallmar> of an open society) the *irst Amendment protects freedom of speech) press)
religion) assembly and petition. Dithout the *irst Amendment) religious minorities could be persecuted) the government might well
establish a national religion) protesters could be silenced) the press could not critici5e government) and citi5ens could not mobili5e
for social change.
(ection ;6! of the "ommunications 0ecency Act
This page provides an overview of section ;6! of the "ommunications 0ecency Act (R(ection ;6!RJ) an important federal law that
provides legal protections to operators of websites and other types of interactive computer services. This page also collects
information involving (ection ;6! from across the "iti5en -edia .aw ,ro%ect website. ?ou will Cnd bac>ground information on
(ection ;6! as well as listings of recent blog posts) lawsuits) and news.
Telecommunications Act of GG7
The Telecommunications Act of GG7 is the Crst ma%or overhaul of telecommunications law in almost 7; years. The goal of this new
law is to let anyone enter any communications business 33 to let any communications business compete in any mar>et against any
other. The Telecommunications Act of GG7 has the potential to change the way we wor>) live and learn. &t will afect telephone
service 33 local and long distance) cable programming and other video services) broadcast services and services provided to
schools.
;r1aniHations Related to Defamation %a6
Anti30efamation .eague
The Anti30efamation .eague (A0.J is an international Bewish non3governmental organi5ation based in the 'nited (tates. 0escribing
itself as Rthe nationUs premier civil rights2human relations agencyR) the A0. states that it RCghts anti3(emitism and all forms of
bigotry) defends democratic ideals and protects civil rights for allR while it RSadvocatesT for &srael S...T with policyma>ers) the media
and the publicR and Rdefends the security of &srael and Bews worldwide
&nter American ,ress Association
The &nter American ,ress Association (English acronym for (ociedad &nteramericana de ,rensa) &nc.)J is a nonproCt organi5ation
devoted to defending freedom of speech and freedom of the press in the Americas.
(tudent ,ress .aw "enter 3 .ibel and ,rivacy &nvasion
(tudent %ournalists can get in trouble when they carelessly collect and2or publish extremely private details or false information
about an individual or entity that seriously harms their reputation. Enowing the basics of defamation law) which includes both libel
(written defamationJ and slander (spo>en defamationJ) and invasion of privacy law can help you avoid such trouble.
Publications Related to Defamation %a6
*irst Amendment .ibrary
&n addition to (upreme "ourt opinions) the library also contains transcripts of select (upreme "ourt oral arguments and even audio
Cles of some of those arguments. -a%or historical materials related to the *irst Amendment are li>ewise available) as are all of the
state constitutional guarantees related to freedom of expression and religion.
*requently As>ed -edia .aw duestions 3 .ibel and (lander
.ibel and slander are legal claims for false statements of fact about a person that are printed) broadcast) spo>en or otherwise
communicated to others. .ibel generally refers to statements or visual depictions in written or other permanent form) while slander
refers to verbal statements and gestures. The term defamation is often used to encompass both libel and slander.
&nternet 0efamation .aw :log
As the &nternet continues to change the way we communicate) courts have struggled to determine the appropriate application of
due process to those accused of defaming others online. "learly) defamation claims involving comments made by an anonymous
&nternet poster are unique.
0efamation and *reedom of (peech
0ario -ilo
6MQ pages / ;6Qx97mm
This item is printed to order. &tems
which are printed to order are normally
despatched and charged within 93!
days.
GMP3!3G3G;!QG;3; / #ardbac> / Q *ebruary ;!!P
#rice2 345.66 Add to Dish .ist

Examines the highly topical and controversial issue of balancing freedom of speech and the media with
the right to reputation
0iscusses and compares the law in Cve %urisdictions in detail+ England and Dales) the European "ourt of
#uman $ights) (outh Africa) Australia) and the '(A
"ombines academic insight and rigour with current case law and legislative developments to ma>e it of
interest to scholars and of practical application for practitioners
"onfronts difcult philosophical questions in regard to the limits of freedom of expression and reputation
in the speciCc context of the law of defamation
0ebates how aspects of privacy law can be used to shed light on the concept of public interest speech for
defamation law
The law of defamation contemplates the clash of two fundamental rights+ the right to freedom of expression)
including freedom of the media) and the right to reputation. The rules of defamation law are designed to mediate
between these two rights. The central proposition that this boo> ma>es is that defamation law needs to be
reformed to balance the conXicting rights. This discussion Xows from a theoretical analysis of the rights in issueL
the value underlying the right to reputation that has most resonance is human dignity) while the value that is most
apposite to freedom of expression in this context is the argument that free speech is integral to democracy. The
argument from democracy emphasi5es that speech on matters of public interest should receive greater protection
than private speech. This boo> argues that fundamental rules of defamation law need to be reformed to ta>e into
account the dual importance of public interest speech on the one hand) and the right to human dignity on the
other. &n particular) the presumptions that defamatory allegations are false and have caused damage) the principle
of strict liability to primary publishers and negligence liability to secondary publishers) and the availability of
punitive damages) should not survive constitutional scrutiny. The quantum of damages and costs rules) and the
remedies available in defamation cases) should also be reformed to reXect the importance of dignity to the
claimant) and the free speech interest of the public in receiving accurate information on matters of public interest.
.eadership2 (cholars) academics) and advanced students of media law) constitutional law) freedom of
information and speech law) human rights) civil rights) defamation law) and constitutional law) practitioners of
defamation law) %ournalists) editors) and those interested in freedom of the media.