1 Protecting Intellectual Property in the Internet Age Conference on Information Technology Laws and Related Intellectual Property- Faculty of law, Delhi.

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Protecting Intellectual Property in the Internet Age

Conference on Information Technology Laws and Related Intellectual Property-

Faculty of law, Delhi University20th March 2010

Karnika Seth Cyber-lawyer, Attorney at law & Partner,SETH ASSOCIATES ADVOCATES AND LEGAL CONSULTANTS

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Introduction to Intellectual Property Rights Protecting Copyright in the digital millennium Passing off, Trademark infringement and dilution Linking, framing & metatagging Cybersquatting Domain name dispute resolution Trade secrets in software and reverse engineering Database Protection Legal remedies

Presentation Plan

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INTRODUCTION TO INTELLECTUAL PROPERTY RIGHTS (IPR)

Intellectual Property (IP) is defined as any "original creative work manifested in a tangible form that can be legally protected“

Right associated with intellectual property which gives legal protection is referred to as IPR.

When we speak of IP rights, we refer to controlling the way IP is used, accessed or distributed.

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Categories of IP rights

Categories of IP rights

Utility model/Designs

Plant Breeder’s rights

Geographical Indications

Trade secrets

Trademark & domain names Copyright

Patent

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IPR

Patents

Industrial Design

Trademarks

Works of Art

Literature

Music

Broadcasting

Dramatics Works

Sound Recording

Computer Programs Geographical Indications

Classification of IPR

Intellectual Property

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Intellectual Property can be clearly distinguished from Goodwill. UK & Australian Generally Accepted Accounting Principles (GAAP) has specified goodwill as an umbrella concept consisting of unidentifiable intangible assets and should not include those Intellectual Properties which are capable of individual identification and can be sold separately.

Copyright- is a bundle of rights granted to an author of an original artistic, literary or musical work to print ,publish, distribute, and sell, lease copies of his work and other allied rights. Copyright protection also extends to cinematographic film and sound recordings.

Designs- The designs entitled to protection are new and original designs having aesthetic value which have not been previously known or published in India or elsewhere.

Rights that different IP assets protect

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Trademarks- is an identification symbol which may be a word, a device, a label or numeral etc. or a combination thereof used in the course of trade that enables the purchasing public to distinguish one trader’s goods from similar goods of other traders

The purpose of Brand is:• To uniquely identify a company and its product.• To differentiate them from competitor.• To enhance the perceived value, the quality and satisfaction that a customer experiences.• To evoke distinct associate stands for certain personality traits and carries emotional attachment.• Above all brand is supposed to inspire trust. Trust failure can lead to brand failure and brand failure can be fatal.

Patents- is the grant of a monopoly right to an inventor who has used his skill to invent something new.

Rights that different IP assets protect

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Different Acts governing IP assets

Trade Marks

The Patents Act, 19 70Patents

The Copyright Act, 1957Copyright

Designs

The Protection of plant varieties and Farmers’ Right Act, 2001

Geographical Indications

Plant Varieties

Semi conductor IC layout design Act,2000

The Designs Act, 2000

The Geographical IndicationsOf Goods Act, 1999

The Trade Marks Act, 1999

Semi conductor IC layout

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IP- Duration of Term of Protection

Patents (20 years) Trademarks (10 years + renewals) Copyrights in published literary, dramatic, musical, and

artistic works (Lifetime of author +60 years). Copyright in photographs ,cinematographic film, sound

recordings –(60 years from year in which it was published)

Broadcast reproduction right-(25 years from the beginning of the calendar year next following the year in which the broadcast is made.)

Performers right-(25 years from the beginning of the calendar year next following the year in which the performance is made)

Industrial designs (10 years+ renewal permitted once for 5 years )

Trade-secrets and know how collectively “proprietary technology” (contract period-protected by contract provisions, doctrine of breach of trust)

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“Most creations resulting from human endeavors in various fields of art, literature ,science and technology constitute Intellectual Property”

Intellectual Property

Ownership

Intangibles

Time & cost intensive

Additional Profits Transferable

Special Rights

Valuable Assets

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Its creation is both time and cost intensive Requires an assembled trained workforce for its

creation Requires building of goodwill through advertising

programs Generates customer loyalty Adds to commercial value of organization Its exploitation brings consistent additional

profits to an organization

Why are IP assets important ?

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IP adds value at every stage of the innovation and commercialization process

Literary / artisticcreation

Invention

Financing Product Design

CommercializationMarketing

Licensing

Exporting

Patents / Utility Models

Copyright

Industrial DesignsTrademarks

Trademarks, Ind. Designs,

Geo. IndicationsAll IP rights

All IP rights

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To allow IP creators to benefit from their work

Artists and creators should be able to enjoy the fruits of their labor for a specified time period, after which the material becomes available for public use. If a business comes up with an attractive marketing logo, then no other businesses should be allowed to use that logo to promote their own products without permission.

Protecting IP is a method of promoting creativity

If one is not allowed to copy another person's work without permission then creativity is encouraged .

Need To Protect IPR

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Need To Protect IPR (Contd.)

Leads to increased global tradeExample: Jordan- where strengthened patent protection has been linked to tangible economic benefits. The International Intellectual Property Institute (IIPI) released a comprehensive report in August 2004 that analysed the establishment of globally competitive pharmaceutical and biomedical technology industries in Jordan. The findings of the report indicate that "Jordan's economy has benefited greatly from the recent adoption of better intellectual property protections This was reflected in a jump in the health-service contributions to the Jordanian GDP from 2.8 percent in 1997 to 3.5 percent in 2001. Employment in the health-services sector has increased 52 percent since 1997.”

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There are multiple perspectives about intellectual property rights on the Internet

Nature of internet- Borderless space, ease of flow of information, promptness, anonymity, easy to share, distribute and copy information at very less cost.

These multiple perspectives to IPR include: "Information Wants to be Free." These people believe there

should be no copyrights or other protections of intellectual property; everything made publicly available should be public domain.

"Right of Attribution." These people believe that the only rights owed to authors and creators is the right of attribution; otherwise, all information is free.

"Limited Use Rights." These people believe that copyright has validity but minor infringing behavior, whether "fair use" or not, should be legal.

"Strong IP Regimes." These people adhere strictly to intellectual property protections.

(Note that there is also the moral rights perspective, which existson a different scale but is most closely aligned with the Strong IPRegimes category.)

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Concerns of protecting intellectual property.

The Internet makes it possible to distribute any kind of digital information, from software to books, music, and video, instantly and at virtually no cost. The software industry has struggled with piracy since the advent of the personal computer, but as recent controversy over file-sharing systems such as Napster and Gnutella ,Aimster. ( , demonstrates, piracy is now a serious issue for any individual or business that wants to be compensated for the works they create. And since the Internet knows no borders, piracy is now a serious global problem.

Strong legislation such as the Digital Millennium Copyright Act (DMCA), cooperation between nations to ensure strong enforcement of international copyright laws, innovative collaboration between content producers and the technology industry, and standards developed by organizations like the Secure Digital Music Initiative (SDMI) that can prevent or deter piracy have already made an impact on addressing this problem. But as more and more digital media becomes easy to distribute over the Internet, the government and private sector must work together to find appropriate ways to protect the rights of information consumers and producers around the world.

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Protecting Copyright in the digital millennium

Copyright is about protecting original expression. In contrast to traditional analog methods of recording works of intellectual property - on paper, film , on magnetic tape etc. now is the era of digitalization.

Digitization converts all words, images, sounds, graphics and films into some binary numbers, either ones or zeros.

These digitally stored works, disassociated from their physical form, are then transferred over the networks to be finally reconstructed into recognizable art by a reference to their binary values.

This transformation represents that we are no longer transferring fixed expression of works as we would buy a book or license a video, but the digital representation of those works.

This liberation of works from their form or media, calls for a change in the way that we protect and enforce intellectual property rights and copyright in particular.

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Protecting Copyright in the digital millennium (contd.)

With the advent of digital technology some new types of work came into being and questions arose about how, and to what extent, they should be protected:

Computer programs have some of the characteristics of a literary work but are not written to be read directly by another person; rather a computer program is a set of instructions for a machine. European approach-to be patentable it should lead to a technical effect. A technical contribution typically means a further technical effect that goes beyond the normal physical interaction between the program and the computer.

Even though the European Patent Convention and its Article 52 excludes the patentability of programs for computers as such and despite the fact that the European Patent Organisation (EPO) subjects patent applications in this field to a much stricter scrutiny when compared to their American counterpart, that does not mean that all inventions including some software are de jure not patentable.

T 928/03, Konami, Video Game System -how to make the computer easier to use .

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The question of new, sui generis form of protection was seriously considered in the 1970s, but copyright protection became the norm. the TRIPS Agreement requires that ‘Computer program, whether in source or in object code, shall be protected as literary works under the Berne Convention’. Case on point-Ibcos computers v Barclays FinanceLtd(1994)FSR 275,Apple computer inc vsFranklin ComputerCorpn714F2d1240(3rd Cir 1983).

India party to Berne convention, Paris convention and UCC1952.

India-Copyright Act-Section 2(o)-computer programme is literary work.section 2(ffc) defines computer programme.,section 2(ffb) defines computer-copyright –tangible –storage in any medium

Protecting Copyright in the digital millennium (contd.)

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5 Exclusive Rights of a Copyright owner-

Section 14 Copyright Act,1957 To fix information in any tangible form To reproduce copyrighted work To sell, rent, lease or otherwise distribute

copies Perform and display copyrighted work To prepare derivatives of a copyrighted

work.

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Making of a RAM copy without authorization would constitute infringement

MAI systems corp v Peak computer 991F2d511(9th circuit 1993)

Copyright owner of OS software sued a computer repair company for infringement, based on repair company’s turning on a computer running the OS for servicing the machine. In doing so, the defendant was able to view the software program to assist him in diagnosing the problem.

Held, loading of copyrighted computer software into the memory of a cpu causes a copy to be made which in absence of permission from copyright owner constitutes infringement.

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Digital downloads and reproduction & display rights

Kelly v Arriba Soft Corp 280 F3d 934(9th Cir2002)

Plaintiff leslie kelly had copyrighted many images of American west. Some were located on her website. Defendant produced thumbnail pictures in its search engine’s search results and by clicking on them, larger version could be viewed within Arriba’s page.

Circuit court held, use of thumbnails is fair use but display of larger image within its webpages is violation of author’s exclusive right to publicly display his works.

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Digital downloads and distribution rights

Marobie –Fl.inc v National Association of Fire Equip Distributors 983 F Suppl1167(NDIll)

Court held that the act of placing unauthorised copies of Plaintiff’s electronic clip art files on the defendant’s webpage constitutes an infringement of distribution rights of the plaintiff as plaintiff’s files became available for downloading by internet users.

Another case in point-Playboy enterprises ,inc v Frena 839 F Supp 1552(M.D.Fla1993)

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Types of Copyright Infringement

Direct Infringement

Contributory Infringement

Vicarious Infringement

It is wholesale reproduction and distribution of Copyrighted works

It occurs when someone knowingly encourages infringing activity

When for financial benefit the operator in spite of his ability to control and check infringements deliberately restrains from checking the users from committing such acts-playboy enterprises inc vs webbworld,inc 991 F Supp 543(N.DTex.1997)

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E-Copyright Protection and digital music

The MP3 revolution The Napster story P2P file sharing technology facilitates 1-store MP3 music files

on individual computer hard drives available for copying by other Napster users 2-search for MP3 music files stored on other users computers and 3-transfer exact copies of the contents of other users MP3 files from one computer to another via the Internet.

Napster free of charge music share software ,napster internet site. It provided technical support for indexing and searching of MP3 files also.-complaint for being contributory and vicarious copyright infringer. Napster used fair use defence.

Court held Napster is guilty of contributory and vicarious copyright infringement

DMCA 1998-Section 512-safe harbour doctrine for ISPs-ISP to prove that it lacks requisite knowledge of infringing activity. (analogous to Section 79 IT Act,2000)

New avtaars-Gneutella and kazaa.

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Passing off, Trademark infringement and dilution

Passing off “No body has any right to represent his goods as the goods of

somebody else”

Lord HalsburyPassing off action allows trader A to prevent trader B from passing their goods off as if they were A’s.

Passing off is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up, and such use damages, or is likely to damage the goodwill and reputation of a business. Passing off can apply to virtually any name, mark, logo or get-up which distinguishes a company, business, product or service from the other. Passing off attracts doctrine of strict liability: the intention of the person passing itself off as another trader is irrelevant.

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Attributes of Passing Off

Lord diplock in Erven Warnink v J Townend 1979 (2)AllER 927-To Succeed in an action for passing off, a claimant should establish that:

The claimant has a goodwill

The misrepresentation damages or is likely to damage the goodwill of the claimant.

Passing off is made in the course of trade.

The defendant made a misrepresentation that is likely to deceive the public.

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Example of passing off action

Domain name similar to that of known companies are used by persons in order to promote their products or services.

A company creates a website to promote his business of soft drinks and deliberately gives it the domain name www.cocacola.com , now this domain name is bound to confuse and mislead the customers as that of the well known Coca-Cola and encourage them to buy the product which infact is of another company. This can be termed as passing off.

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Cases on Passing off

Yahoo! Inc. vs Akash Arora(1999)

FACTS: The defendant installed a website Yahooindia.com nearly identical to plaintiff’s renowned yahoo.com and provided services similar to those of the plaintiff.

DECISION: The Delhi High Court granted an injunction restraining defendant from using yahoo either as a part of his domain name or as a trade mark .It held that trade mark law applies with equal force on the internet as it does in the physical world.

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Precedents on Passing off

In the case of Marks & Spencer Plc and others v. One in a Million Ltd. and others, the deputy judge of the English Court held that:

"Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer.“

In the case of Rediff Communication Limited v. Cyberbooth and Ramesh Nahata of Mumbai (1999), the Bombay High Court supported an action of passing off when the Defendants used the term ‘RADIFF’ (similar to the name ‘REDIFF’ of the Plaintiff) to carry on business on the Internet.

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Passing off action under the Trade Marks Act, 1999

A registered Trademark has the backing of infringement and passing off remedies under the TMA act.

The Act does not provide for infringement action in respect of unregistered Trademarks.

Only Passing off remedy is available in case of unregistered Trademarks.

(Section 27 of TMA Act, 1999).

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Section 29 of the Trademark Act states that when a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. A registered trade mark is infringed ,if:-

1. The mark is identical and is used in respect of similar goods or services or2. The mark is similar to the registered trade mark and there is an identity or

similarity of the goods or services covered by the trade mark3. And Such use is likely to cause confusion on the part of the public or is

likely to be taken to have association with the registered trade mark.

For example, if you are not the Nike® company or authorized by it, it is an infringement to sell sports clothes called "Nikestuff “Legal remedies under Indian Trademarks Act-Injunction ,damages, delivery up of infringing goods, destroying infringing

goods and material, etc.For cases see heading cybersquattingSatyam infoway vs Sifynet solutions 2004 (6)SCC 145..

Trademark infringement

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Dilution is a trademark law concept forbidding the use of a famous trademark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products, might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs.

A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (i.e., just the word Pepsi spoken, or on a billboard).

Dilution

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Case law on DilutionAvery Dennison Corporation

Vs. Jerry Sumpton, et al.

Facts: Jerry Sumpton and his company Freeview registered thousands of domain names - primarily typical surnames - and used these domain names to offer "vanity" email addresses to people who want an address incorporating their name.  Two of the names registered included avery.net and dennison.net.  Avery Dennison brought suit against Sumpton claiming trademark dilution.

Decision: The Ninth Circuit held that Avery Dennison failed to meet the required of elements of dilution.  The court concluded that the Avery and Dennison trademarks were not famous.  Although the court acknowledged that the trademarks had reached a level of distinctiveness, dilution requires that a mark be both distinctive and famous.  According to the court for a mark to meet the "famousness" element of dilution it must be truly prominent and renowned. Additionally, the court held that Avery Dennison failed to meet a second requirement for dilution:  commercial use.  Commercial use under the dilution statute requires that the defendant use the trademark as a trademark, capitalizing on its trademark status.

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Cases on Dilution

Teletech Customer Care Management, Inc. vs

Tele-Tech Company, Inc

Facts: The plaintiff, a large provider of telephone and Internet customer care services, had been continuously using the mark for approximately fifteen years and had waged an extensive promotion and advertising campaign for its services. The defendant, a contractor providing engineering and installation services to the telecommunications industry, registered the domain name teletech.com.

Decision: The court held that there was no likelihood of confusion, because the parties’ businesses were so dissimilar. However, the court found dilution, ruling that TELETECH was a famous mark, and ordered the defendant to transfer the domain name to the plaintiff.

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Metatagging

Metatagging, sponsored listings amount to trademark infringements

Playboy Enterprises inc v Netscape Communications corp 55 FSupp2d1070(S.D Cal1999)-plaintiff trademarks –playboy, playmate alleged infringement by defendant by marketing selling 450 words including these trademarks to advertisers., banner ads on search results page ,diversion of traffic

Held PEI cannot monopolize these words. violates First amendment rights of netscape, other trademark holders of these words ,users of search engines.

Playboy Enters v Calvin designer label 985 Fsupp 1220(NDCal1997)-Defendants repeated use of words ‘playboy’ within machine readable code in defendants internet webpages constituted trademark infringement

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LINKING

A link is simply a connection between the content of two different files (or between different parts of a single file). It is a technique through which the author of a website connect his text with others and enable web browsers to quickly move from one page to another. A link may lead either to another page in the same web site, or to a page on a different computer located elsewhere on the Internet.

Linking and framing

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TYPES OF LINKING.

Surface linking: When the home page of a site is linked, it is the case of surface linking.

Deep linking:

When a link bypasses the home page and goes straight to an internal page within the linked site, it is the case of deep linking.

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PRECEDENT ON LINKINGTicketmaster vs. Microsoft

Facts: In April, 1997, Ticketmaster filed a complaint in federal court in the Central District of California alleging that "Microsoft's actions diluted their trademarks; created a false, deceptive and misleading representation that there was a formal relationship between the two of them; constituted unfair competition and business practices; and constituted a commercial misuse of their trademarks.“

Microsoft at that time operated Sidewalk, a recreational and cultural guide Web site. What Microsoft was doing was simple -- if a Sidewalk user wanted to buy a ticket to a particular event mentioned on the site, Sidewalk offered them a link to Ticketmaster's ticket purchase page. They were actually promoting Ticketmaster sales and sending them customers. A month after the suit was filed; Ticketmaster blocked Sidewalk users from their site. Links set up from Sidewalk then took users to a Ticketmaster page that read, "This is an unauthorized link and a dead end for Sidewalk.“

Status: In February of 1999, the 2-year-old lawsuit was settled out of court. "Details of the settlement were not made public, but the deep links were removed, directing Sidewalk users to the Ticket master homepage.

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Universal vs Movie-List

Facts: Movie-List , a collection of links to over 900 movie trailers, was deep linking to trailers within the Universal Web site. Originally, they were actually running the trailers, which were the property of Universal Studios, on the Movie-List server.  Not only were they deep linking to trailers, Movie-List was also selling CD-ROMS with trailers they had downloaded.  Universal then sent them a cease and desist, stating, "You are not permitted to link to other sites that contain our copyrighted material without our authorization. Accordingly, you must remove all images from our films as well as links to other sites that have our servers.“

Status: All trailers have been removed from the Movie-List server, and the owner no longer sells the CD-ROMS. He has removed all of the deep linking to Universal pages.

Case law on framing- Washington post Co v Total news inc97Civ1190(SDNY)

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Shetland Times vs. Shetland News

Facts: The first deep linking case was filed in 1996 in Scotland, involving The Shetland Times, a newspaper and The Shetland News, a news delivery Web site. The News posted headlines from the Times, using actual Times headlines as the text of the hypertext link. For example, one such link on the Shetland News home page was "New Prime Minister Elected," which linked directly to a story in the Shetland Times with the exact same headline. The links also bypassed the Shetland Times home page which carried large volumes of advertising.

Decision: In October, 1996, Scotland's Court of Session banned the links, "finding it plausible that a headline is a literary work and that the News practice of incorporating the Times headlines verbatim in its link lines violated the latter's copyright" (Kaplan). The Scottish Court did not rule on the matter of deep linking.

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CASES ON FRAMING The Washington Post Company et al.

vs. Total News, Inc.

Facts: As a one-stop news site, TotalNews.com linked to many news sites, but kept a frame, or border around them, which the news sites argued made it look like the content was from TotalNews.com, changed the ad layout on the page, and kept totalnews.com as the address for book marking purposes.

In the complaint the news companies claimed that TotalNews misappropriated their trademarked and copyrighted material, thereby engaging in a host of crimes including unfair competition, federal trademark dilution, and trademark and copyright infringement. The news organizations said that their websites, as they appeared within the Totalnews frames, were substantially altered from the form in which they intended them to appear to users and that it was done solely for Totalnews' profit.

TotalNews argued that the case was in essence about its freedom to link, which it claimed was a fundamental right on the Internet.

Status: The court never decided the TotalNews case because the parties settled. Totalnews agreed to remove the frame.

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Framing

Hard Rock Café International (USA) Inc. vs.

MortonFacts: Peter Morton was a founder of the Hard Rock Café who sold his interests in

the business to the parent company. Morton retained ownership of a Hard Rock Hotel and Casino and was granted a license to use certain service marks and trademarks. The parent company later sued Morton, claiming that he violated the license agreement by illegally framing the site to sell CDs.

Decision: The court pointed out that the framing made it unclear to a user whether he or she had left the Hard Rock Hotel website, especially since, though the content on the page changed, the bookmark able domain name stayed the same. This use was found to violate the license agreement and Morton was ordered to either permanently cease framing the CD store’s website or present evidence that it can frame that site in accordance with the terms of the license agreement.

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Cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. The Cybersquatter then offers the domain to the person or company who owns a trademark contained within the name at an inflated price, an act which some deem to be extortion

Cyber squatting

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Cybersquatting

Panavision International vs.

ToeppenFacts: Toeppen engaged in dilution by cyber squatting in

registering the domain panavision.com offered to sell the domain to the plaintiff for $13,000. Mr. Toeppen put a map of Pana, Illinois up on his panavision.com website.

Decision: The Ninth Circuit upheld the lower court’s conclusion that Mr. Toeppen was engaged in extortive efforts and was diluting the famous PANAVISION mark. Mr. Toeppen’s cause was not helped by the fact that he had registered many domains containing known brands, such as deltaairlines.com, neimanmarcus.com, eddiebauer.com and lufthansa.com.

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Domain name dispute resolution policy

Judicial dispute resolution under Federal Trademark dilution Act-Comp examiner agency vs juris inc

Judicial Dispute Resolution under Anti cybersquatting Consumer Prevention Act,

Dispute resolution under UDRP-ICANN approved domain name dispute resolution service providers.3 elements identical/deceptively similar mark,no legitimate use, bad faith registration

ADNDRC,CPR institute for dispute resolution, National arbitration forum, WIPO example Tata sons ltd case,Bennett coleman and co case, Asian paints.com case

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This .IN Domain Name Dispute Resolution Policy (the "Policy") sets out the terms and conditions to resolve a dispute between the Registrant and the Complainant, arising out of the registration and use of the .in Internet Domain Name.

The .IN Registry shall appoint an Arbitrator out of the list of arbitrators maintained by the Registry. The Arbitrator shall conduct the Arbitration Proceedings in accordance with the Arbitration & Conciliation Act 1996 as amended from time to time and also in accordance with this Policy and rules provided there under.

The remedies available to a Complainant pursuant to any proceeding before an Arbitrator shall be limited to requiring the cancellation of the Registrant's domain name or the transfer of the Registrant's domain name registration to the Complainant. Costs as may be deemed fit may also be awarded by the Arbitrator.

Domain name dispute resolution

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Protection of Software in the e-world

There is some technology and logistical processes, of uncertain efficacy, in the pipeline that could result in extra-judicial prospective protection of software. These measures are legitimate as per Article 11WCT,Article 18WPPT, Some examples:

Technical Support Limit technical support to registered users. This is the philosophy of

many (all?) shareware companies offering technical support, including most prominently Netscape. This is a corollary of the principle of deriving value from ancillary services: Unregistered users can use the product for free, but will have to pay for support.

Limit technical help built into the software and rely instead on hard-copy documentation. Many shareware companies also offer hard-copy documentation as part of the benefits of registration. There is nothing to prevent photocopying or scanning of the documentation to defeat this decidedly low-technology approach, but it will require infringers to go through some extra steps that may not be worth the effort.

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Usage Metering and Encryption

"Super distribution" (Cox). Cox's approach is to use a hardware component that calculates fees based on usage and then submits periodic reports to a home base. (This could also be done as a debit card approach--each use would offset credits on a card; when the credits are zero, the user would have to recharge the card). This approach's advantages include that it would encourage free distribution of software and allow appropriate royalties to flow to creators of components. However, some serious concerns exist: the approach would impose hardware costs, misuse of the metering information could result in privacy invasions, and the hardware would be potentially subject to tampering.

Authorization codes. Software would require an authorization code that would permit the software to operate for a certain period of time. Authorization codes would be obtained (for a fee, of course) from a home base. While this does not impose hardware costs, the concerns about privacy and tampering exist here as well.

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Software envelopes (Griswold). Copyrighted material would be contained in an encrypted software envelope that would periodically communicate with a home base upon use. The software would require authorization from the home base to continue functioning. If the user has not paid for the use, authorization would be denied and the software would be disabled. (This is somewhat analogous to the process used for satellite transmission feeds). The periodic communication could be counted to determine a metering charge. Again, the privacy and tampering concerns remain.

Centralized software. Software could be centralized in one location and users access the program remotely via the Net on a subscription or per-use basis. This is analogous to the old timeshare models. Once again, there are privacy and tampering concerns. It also remains to be seen if consumers, accustomed to walking out of a software store with a tangible product, will adapt to lacking any possessory interest in software.

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Note that in the metering models, there will be a tremendous increase in the amount of information transmitted back and forth on the Net. These transmission demands will create costs that must be borne by someone--ultimately, the user.

Software-based controls Limited functionality programs. These are frequently used in software

programs today, with limits such as disabled printing and saving or "time bombs." Chances are that these limited functionality approaches will merge with the metering approaches described above, since the Net will be an efficient way to remove the limits. As with the other proposals, these are subject to tampering.

Build "bugs" into the software, requiring users to get updated, bug-free versions (suggested and rejected by Dyson). This is a crude way to disable software and likely to produce ill-will. Furthermore, without other protections there is nothing to prevent the dissemination of the non-buggy versions once released.

Copy protection. Among other approaches, software could have a sensor that causes the software to self-destruct if user tries to copy (Barlow). While highly effective when it works, copy protection has fallen into disfavor with consumers and is rarely seen now.

Post hoc infringement control Agents could scour the Net looking for publicly available infringing copies. This

will not prevent private piracy but could be extremely effective at preventing unauthorized public distribution. Of course, as in the Cold War, we could see countermeasures by the pirates, leading to a classic arms race--the person with the mightiest agent wins!

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One other approach to revitalize existing copyright laws is to recognize the ability of copyright holders to impose "shrinkwrapped" online use licenses on content. These might say, "I give the right for distribution for educational and research purposes only." Infringement of such licenses would give holders a right of action; one that would probably rarely be enforced, but would enhance the power of motivated holders.

Finally, there may be technology solutions to assist in preventing infringement. For example, Bell Labs has created a method to insert "serial numbers" for documents. This would imbed unique codes in documents, so that each and every copy could be traced to the original source, without being immediately obvious to any infringer. While this would not disable copying, it would provide disincentives if everyone knew the risk that the infringing copy could be traced back to them. (Voss). (See also Jim Warren, proposing a similar concept.).

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The CSS and DeCSS

CSS- Content Scramble system is an access control and copy prevention system for DVDs developed by motion picture studios.

Encryption based system. Jon Johansen in 1999 devised a computer programme that circumvents CSS called deCSS on 2600.com

Led to 2 complaints-copyright infringement under DMCA and trade secret misappropriation-US Courts granted permanent injunction. Universal city studios inc v corley 273 F 3d 429(2d Cir 2001)

Superior court enjoined defendants from disclosing or distributing on their websites or elsewhere the Decss and master keys or algorithms of Content Scrambling system.

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Reverse engineering

Process of moving backwards in order to understand the ideas, principles, and algorithm, contained or expressed in computer programme. Processes used are disassembly and decompilation.

Sega Enterprises ltd vs Accolade inc 977F2d1510(9th Cir 1992)-held access code part of interface between console and game cartridge was a functional element unprotected by copyright

India protects this right-copyright Act,Section 52 (1)(ab),(ac)

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Database Protection

Copyright protection to tables, compilations and computer databases does not extend to any data itself, but only to the way in which it is organized. This fundamental copyright principle is expressed in Article 10.2 of the TRIPS Agreement: Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.’

UK Database Protection Act, EU Directive on Data base protection India has no separate legislation on database protection. Provisions of

copyright Act, IT Act, IPC prevail.

The WIPO Copyright Treaty (WCT), although not binding on WTO members that have not joined the WCT, similarly provides in Article 4:

"Computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention. Such protection applies to computer programs, whatever may be the mode or form of their expression."

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Sections 54 to 62 deals with civil remedies for infringement of copyright. Civil remedies include injunction, damages and accounts, delivery of infringing copies and damages for conversion. Costs: The costs of all parties in any proceedings in respect of the infringement of copyright shall be at the discretion of the court.

There are three types of remedies against copyright infringement

Civil Criminal Administrative

Legal remedies-Copyright infringements

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Legal remedies-copyright infringement

The Law provides civil and criminal remedies in case of infringement of copyright. Copyright infringement is a cognizable offence where a Police Officer not below the Rank of a Sub-Inspector can arrest the offender without the warrant and conduct the search even without prior authorization of a Court.

Copyright infringement if proved in a Court of Law carries a minimum mandatory sentence of imprisonment of six months and minimum fine of Rs. 50,000 which can extend up to Rs. 2 lakh. The Act further provides that there will be an enhanced penalty in case of second and subsequent convictions.

In Civil Cases, the District Court can be persuaded not only to give an interim injunction without notice to the other party but also usually gives a direction under Order 39 Rule 7 of C.P.C. where a Commissioner appointed by the Court will visit the premises of the infringers and will be empowered to conduct a search of the inventors premises and cease infringing material from the infringers premises. The seized material can be used at a later point of time to establish infringement.

In UK these types of orders are called ANTON PILLOR ORDERS

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Section 63 defines what constitutes a criminal offence-copyright infringements.

Any person who knowingly infringes or abets the infringement of-

(a) the copyright in a work, or(b) any other right conferred by the Act (except the right conferred by

section 53A, which is the right to share in the resale price of the original copy will be punished with imprisonment for a minimum term of six months and a maximum of three years and with a fine which may vary from a minimum of 50,000 rupees to two lakh rupees.

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Administrative Remedy –Against Importation of infringing copies:

The Act provides for an effective administrative remedy to prevent importation into India of copies of a copyright work made outside India, which if made in India, would infringe the copyright in the work. Section 53 of the Copyright Act empowers the Registrar of Copyright to make an order prohibiting the importation into India of such copies on the application of the owner of the copyright in any work, or his duly authorized agent, after making such enquiry as he deems fit. The Registrar’s order prohibiting such import brings into play the provisions of the Customs Act as goods the importation of which is banned in the Act. The only difference is that the copies confiscated under this provision do not vest in the Government of India but are to be delivered to the owner of copyright in the work.Section 64 Copyright Act -power to police to seize infringing copies and plates for purpose of making infringing copies of the workPossession of plates to make infringing copies-bailable offence-imprisonment upto 2 years and fine (Section 65)

Legal remedies-copyright infringements

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Copyright Infringement

Copy in a work will be considered infringed-

1. when any person, without a licence granted by the owner of the copyright, or the Registrar of Copyrights, or in contravention of the conditions of a licence so granted, or of any condition imposed by a competent authority-

i. does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, orii. permits for profit any place to be used for the communication of the work to the public where such communication constitutes an

infringement of the copyright in the work, unless he was not aware and had no reasonable ground for beleiveing that such communication to the public would be an infringement of the copyright; or

Kind of Infringement Relief

Civil Remedies: Injunction Damages Account of profit Delivery of infringing copies Damages for conversion

Criminal Remedies: Imprisonment of the accused or

imposition of fine or both Seizure of infringing copies.

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Copyright Infringement (Contd.)

2. when any person-i. makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, orii. distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, oriii. by way of trade exhibits

in public, oriv. Imports into India, any infringing copies of the work.

Kind of Infringement Relief

Administrative remedies: Administrative remedies

consist of moving the Registrar of Copyrights to ban the import of infringement is by way of such importation and the delivery of the confiscated infringing copies to the owner of the copyright and seeking the delivery.

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Trade Mark Infringement

The taking of any essential feature of the mark or taking the whole of the mark and then making a few additions and alterations would constitute infringement.

The infringing mark must be used in the course of trade, i.e, in a regular trade wherein the proprietor of the mark is engaged.

The use of the infringing mark must be printed or usual representation of the mark in advertisements, invoices or bills. Any oral use of the trade mark is not infringement.

Advertising with the unauthorized use of the registered trade mark is also an act of infringement.

Any or all of the above acts would constitute infringement if the same is done in such a manner as to sender the use of the mark likely to be taken as being used as a trade mark.

Sec 135 Relief in suits for infringement or for

passing off, includes injunction and at the option of the plaintiff, either damages or an account of profits.

In brief, the relief to which a plaintiff is entitled are-

An injunction restraining further use of the infringing mark.

Damages or an account of profits.

An order for delivery-up of infringing labels and marks for destruction or erasure.

Injunction may be of the following types:-

Anton Piller Order Mareva Injunction Interlocutory Injunction Perpetual injunction.

Kind of Infringement Relief

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Geographical Indications of Goods - Infringement

Sec 22- A registered geographical indication is infringed by a person who, not being an authorized user, uses such indication on the goods or suggests that such goods originate in some other geographical area other than the true origin of the goods which mislead the public.

A registered geographical indication is infringed by a person who, not being an authorized user, uses such indication to the goods which although literally true as to the territory, region or locality in which goods originate, falsely represents to the public that the goods originate in the region, territory or a locality in respect of which such registered geographical indication relates.

Kind of Infringement Relief

In case false geographical indication is established, it carries penalty with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but may extend to two lakh rupees.

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Legal remedies for infringement of Patent

Indian Patent Act-Section 108 Injunction Damages or account of profits Infringing goods and materials be

destroyed. Suit be filed in district court or high

court having original civil jurisdiction

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Patent Infringement

Where any person threats any other person with proceedings for infringement of a patent.

The colorable imitation of an invention.

Immaterial variations in the invention.

Mechanical equivalents. Taking essential features of the

invention.

Section 106. Court has the power to grant following relief in cases of groundless threats of infringement proceedings:

A declaration to the effect that the threats are unjustifiable.

An injunction against the continuance of the threats and

Such damages, if any, as he has sustained thereby.

Section 108-The relief which a court may grant in any suit for infringement includes an injunction and at the option of the plaintiff, either damages or an account of profits.

In brief, the relief which may be awarded in a suit for infringement are-

Interlocutory/interim injunction. Damages or account of profits. Permanent injunction.

Kind of Infringement Relief

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Design Infringement

Sec 22- lays down that the following acts amount to piracy-

To publish or to have it published or expose for sale any article of the class in question on which either the design or any fraudulent or obvious imitation has been applied.

To either apply or cause to apply the design that is registered to any class of goods covered by the registration, the design or any imitation of it.

To import for the purpose of sale any article belonging to the class in which the design has been registered and to which the design or a fraudulent or obvious imitation thereof has been applied.

Kind of Infringement Relief

The judicial remedy for infringement of a registered design recommended in the Act is damages alongwith an injunction. Section 22(2) stipulates remedy in the form of payment of a certain sum of money by the person who pirates a registered design. A suit in the appropriate manner for seeking the relief in the form of an injunction is also recommended.

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The Semiconductor Integrated Circuits Layout-Design Act, 2001 - Infringement

According to Section 18, a person who-

does any act of reproducing, whether by incorporating in a semiconductor integrated circuit or otherwise, a registered layout-design in its entirety or any part thereof, except such act of reproducing any part thereof which is not original.

does any act of importing or selling or otherwise distributing for commercial purposes a registered layout-design or a semiconductor integrated circuit incorporating such registered layout-design or an article incorporating such a semiconductor integrated circuit containing such registered layout-design for the use of which such person is not entitled under this Act.

Kind of Infringement Relief

Any person who infringes the right of registered proprietor shall be punishable with imprisonment for a term which may be extended to three years, or with fine which shall not be less than fifty thousand rupees but which may extend to ten lakh rupees, or with both under section 56 of the Act.

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Thank You!

SETH ASSOCIATESSETH ASSOCIATES ADVOCATES AND LEGAL CONSULTANTSADVOCATES AND LEGAL CONSULTANTSNew Delhi Law OfficeNew Delhi Law Office: C-1/16, Daryaganj, New : C-1/16, Daryaganj, New Delhi-110002, IndiaDelhi-110002, IndiaTel:+91 (11) 65352272, +91 9868119137Tel:+91 (11) 65352272, +91 9868119137Corporate Law OfficeCorporate Law Office: B-10, Sector 40, NOIDA-: B-10, Sector 40, NOIDA-201301, N.C.R ,India201301, N.C.R ,IndiaTel: +91 (120) 4352846, +91 9810155766Tel: +91 (120) 4352846, +91 9810155766Fax: +91 (120) 4331304Fax: +91 (120) 4331304E-mail: E-mail: [email protected]