Intellectual Property Rights in the Digital Era, II

Connecting IP and IT

III. The Digital Era

The relationship between information technology (IT) and IP is not only direct but also cannot be ignored. This is so because use of IT may enhance the value or diminish its value. The use of IT may help in the enforcement of these IP and at the same time it may assist in the violation of the same. It is for us to decide and determine on which side this IT should be. The correct choice can be exercises only if we are aware of both the sides of the coin named Intellectual Property Rights. The front face of the coin is the IP segment but the other side popularly known as cyber law[15] is equally important. We cannot appreciate and protect IP completely and comprehensively unless we take care of the other side of the coin as well, which is posing the main challenge to the IP segment.

The use of IT has posed certain challenges before the IPRs holders. These challenges can be categorized under the following groups:

(1) Challenges for Copyright, and

(2) Challenges for Trademarks.

(1) Challenges for copyright: With the advancement of information technology, copying, modifying, and distributing of copyrighted materials has become very simple and difficult to trace. The copyright owners are now at the mercy of a technology that has raced ahead of the law. Because the Internet is a cooperative venture not owned by a single entity or government, there are no centralised rules or laws governing its use.

Internet and copyright infringement theories: The advent of information technology has made it difficult to apply the traditional theories to various cyberspace entities and organisations. The laws of various countries, including India, were modified keeping in view this nature of IT. The traditional jurisdictional theories were found insufficient and the concept of ‘long arm jurisdiction’ was adopted that extended the jurisdiction of the court over activities of cyberspace players having extra-territorial nexus. These cyberspace players can be grouped under the following headings:

(I) Internet Service Providers (ISPs),

(II) Bulletin Board Services Operators (BBSO),

(III) Commercial Web Page owner/operators, and

(IV) Private users.

(I) Internet Service Providers (ISPs): An ISP most often provides Internet access and he may be held liable for copyright infringement if he allowed the same directly or indirectly. He will, however, not liable for mere providing of services or when the infringement occurred without his knowledge and participation. An ISP/NSP can escape his liability by showing that he exercised a ‘due diligence’ to prevent the copyright infringement.

(II) Bulletin Board Services: The BBSs are more vulnerable to copyright infringement litigations than the ISPs. These BBSs may allow the subscribers to view, upload, and download copyrighted material of others. They are in direct control of the contents posted, uploaded and downloaded and it is difficult to prove that they were not aware of these activities.

(III) Commercial Web sites: The Web Page owners must be cautious of the things they post on their Web Pages so that they do not violate the stringent provisions of the copyright laws. A Web Page owner cannot successfully plead and prove that they were unaware about the copyrighted material because copyright notices are prominently given in authorized software. They also have the controlling power over the content of their pages. The owner are usually the parties that actually perform the uploads to their pages.

(IV) Private Users: A computer user who uploads copyrighted material to the Internet is liable for direct infringement. This liability could be avoided only if he can prove the fair use doctrine. Thus, an Internet user should not post copyrighted material on the Internet in a casual manner.

Online copyright protection in India: The reference to on-line copyright issues same.

It must be noted that copyright can be obtained in a computer programme under the provisions of the Copyright Act, 1957.[22] Hence, a computer programme cannot be copied, circulated, published or used without the permission of the copyright owner. If it is illegally or improperly used, the traditional copyright infringement theories can be safely and legally invoked. Further, if the medium of Internet is used to advance that purpose, invoking the provisions of the Copyright Act, 1957 and supplementing them with the stringent provisions of the Information Technology Act, 2000 can prevent the same.

(B) Information Technology Act, 2000 and on-line copyright issues: The following provisions of the Information Technology Act, 2000 are relevant to understand the relationship between copyright protection and information technology:

(a) Section 1(2) read with Section 75 of the Act provides for extra-territorial application of the provisions of the Act. Thus, if a person (including a foreign national) violates the copyright of a person by means of computer, computer system or computer network located in India, he would be liable under the provisions of the Act.

(b) If any person without permission of the owner or any other person who is in charge of a computer, computer system or computer network accesses or secures access to such computer, computer system or computer network[23] or downloads, copies or extracts any data, computer data base or information from such computer, computer system or computer network including information or data held or stored in any removable storage medium[24], he shall be liable to pay damages by way of compensation not exceeding one crore rupees to the person so affected. Thus, a person violating the copyright of another by downloading or copying the same will have to pay exemplary damages up to the tune of rupees one crore which is deterrent enough to prevent copyright violation.

(c) A network service provider (ISP) will not be liable under this Act, rules or regulations made there under for any third party information or data made available by him if he proves that the offence or contravention was committed without his knowledge or that he had exercised all due diligence to prevent the commission of such offence or contravention.[25] The network service provider under section 79 means an intermediary and third party information means any information dealt with by a network service provider in his capacity as an intermediary.[26]

(d) The provisions of this Act shall have overriding effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force.[27]

The on-line copyright issues are also adequately protected, though not in clear and express term. To meet the ever- increasing challenges, as posed by the changed circumstances and latest technology, the existing law can be so interpreted that all facets of copyright are adequately covered. This can be achieved by applying the ‘purposive interpretation’ technique, which requires the existing law to be interpreted in such a manner as justice is done in the fact and circumstances of the case. Alternatively, existing laws should be amended as per the requirements of the situation. The existing law can also be supplemented with newer ones, specifically touching and dealing with the contemporary issues and problems. The Information Technology Act, 2000 requires a new outlook and orientation, which can be effectively used to meet the challenges posed by the ‘Intellectual Property Rights’ regime in this age of information technology.

(2) Challenges for trademarks: The relationship between Trademark and Cyber world can be understood from the fact that computers and computer related products are capable of being identified in the minds of the purchasers of such products in the like manner as any other product avaispecific Internet site. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value. A domain name may have all the characteristics of a trademark and could found an action for passing off[30] under the trademarks law.

(ii) Web Site: Trademarks, both registered and unregistered, have been appearing within web sites compiled by a person who is not the trademark owner, and who is not associated with the trademark owner. The issues under this category can be grouped as follow:

(a) Linking

(b) Framing

(c) Meta-tagging

(a) Linking: Linking facilitates access to a third party website by permitting the user to click on a location on the linking site. The user is then automatically connected to the linking site without need to input any location information or concerned any directory index or search engines. Basically a link is an embedded electronic address that points to another location & takes the user there. The electronic address is stored & upon click sends the address to the browser, which moves the user to the website with that address. The web was built for the purpose of enabling hypertext capabilities allowing one site to hyperlink or link to & access another.

(b) Framing: Framing is a more advanced form of hyper-linking. A framing site, by virtue of certain commands in its HTML code, links to another site displaying that site within a window or a frame. The frame itself is comprised of contents from the framing site in contrast to the generic hyper-linking. The user remains at the framing site & views contents from both site. The address that the user’s browser displays may continue to be that of a framing site & user is unaware that the contents in the frame come from another site. Framing may raise more difficult trademark issues. The typical trademark case involves a company that attempts to pass off its own products as if they were from the trademark owner. This is because some Web users may believe that the trademark owner of the framed Web site somehow approved of the materials that are featured along with its site.

(c) Meta-tagging: Meta-tagging is a process whereby a site owner places certain words on his or her website, so as to ensure that the site figures on each engines when a word search of that particular word is made. Such a word may often be a word completely unrelated to the website itself and sometimes may also be a trademark. This possibility of using an unrelated trademark to promote traffic to once site through search engines searches has led to legal disputes. Some Web sites have embedded the names of famous trademarks in meta-tags so that search results will list links to their domains. In this way, they hope to increase the number of people who access the site. Although these people may quickly leave once they realise that some mistake has been made, their visit may still the valuable, since advertising rates often are related to the number of “hits” received by a site.

These issues require certain techno-legal solutions and safeguards that the companies or its key personal must keep in mind. Thus, the companies must formulate IP management strategy otherwise it may find itself in the clutches of law.

Footnotes:

[15] In India the Information Technology Act, 2000 governs the cyber law which is due for amendment.

[16] Section 2(ffb)

[17] Section 2(ffc)

[18] Section 2(o)

[19] Section 2(ff)

[20] Explanation to Section 2(ff)

[21] Section 3

[22] Section 13(1) (a) read with Section 2(o) [23] Section 43(a) [24] Section 43(b) [25] Section 79 [26] Explanation to Section 79 [27] Section 81 [28] GUI To select files, programs, or commands by pointing to pictorial representations on the screen rather than by typing long, complex commands from a command prompt.

[29] In this work the terms cyberspace and internet have been used interchangeably.

[30] M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.

[31] These strategies, with necessary modifications, are equally applicable to other persons.

[32] Praveen Dalal, E-commerce and jurisdictional issues in India, (Under Publication).

[33] The concept of long-arm jurisdiction signifies that the laws of a sovereign State have extra-territorial operations if an act or omission has produced an adverse affect within the territory of that country.

[34] Religious Technology Center v Netcom On-Line Communication services, Inc, 907 F.Supp. 1361(1995) [35] Dawson Cherie, Creating Borders on the Internet- Free Speech, the United States and International Jurisdiction, Virginia Journal of International Law, V-44, No-2 (Winter, 2004).

) Praveen Dalal. All rights reserved with the author.

* Arbitrator, Consultant and Advocate, Supreme Court.

Contact at: pd37@rediffmail.com/ perry4law@yahoo.com Contact at: +91 9899169611.

About Praveen Dalal (8 Articles)

Praveen Dalal is Arbitrator, Consultant and Advocate, Supreme Court of India.