Copyright, Domain Registration and Trademark Law for the Internet - Case Study Example

COPYRIGHT, DOMAIN REGISTRATION AND TRADEMARK LAW FOR THE INTERNET Copy rights Infringement Brief Analysis of the Case. As in any human Endeavour, law regulates cyberspace in the same manner with copyright, defamation, and obscenity stipulations designed to control an expected return.1 Thus the underlying principle is accrued benefits or its denial. Wanda is an Internet Service Provider registered in United Kingdom (UK). It is obvious that it is governed by laws in the United Kingdom as related to trade mark, copy rights and domain name registrations. The growth of knowledge economy has led to increased usage and abusage of the rights of individuals and organizations towards protection of their patented works. There is a constant struggle between old economy based laws of copyrights and the new knowledge economy paradigms challenging legal, moral and ethical issues. Aggressive internet entities as Google providing client services which go beyond the normal course of business have raised a number of issues on copyright and trademarks. In the present case of a suit of likely copyright infringement being faced by Wanda, the client's hosts have reportedly displayed extracts of texts and images of books by US publishers. The US publishers are likely to sue Wanda for copyright infringement. Wanda is unable to terminate the arrangements with its clients or remove the items on the web sites on its own due to contractual obligations. The issues to be analyzed are as follows:- (a) The said copyright infringement involves applicability of the laws in USA in UK and the connotations thereof. There is thus a need to study the copyright law in the United States as well as UK. (b) The status of extracts of texts and images needs to be discussed, when posted on a web site which is for universal and general use. (c) An assumption has to be made regarding display of source of the texts and images on the web site. In case the source has been displayed the connotations are likely to be different than otherwise. United Kingdom (UK) Copyright Law UK copyright law is based on the Copyright, Designs and Patents Act 1988, which is the main legislation which governs intellectual property rights in United Kingdom.2 It essentially covers creators of literary works, in this case and rights to its dissemination including copying and issuing to the public. The authors have a right for being identified as the creators of the work. These are supported by international conventions. The Regulations cover all types of works appearing in a variety of media. A work has to be original and based on some skills and labour employed for the same. It does not however apply to an idea which can be replicated in a different form. The owner of the work is the individual who created it. Rights of a copy of a work cannot be claimed. The period of copyright is said to extend upto 70 years till the last remaining author of the work has passed away. It is therefore an offence to make a copy of the work or adapt it without the writers direct permission unless it, amongst other purposes, is used for educational purposes, critique or news report and included incidentally.3 The law regarding web designing and hosting is relatively clear for example, when a web page is designed under a contract, the webmaster is the owner of the copyright of the underlying code of that website.4 Similarly the content on the web site will also be the prerogative of the web designer and thus he becomes the service provider and hence liable for copyright action. From a preliminary analysis of the case and the UK copyright law it is apparent that there has been infringement which has occurred in the case of the text and images unless the following has been carried out :- (a) Permission of the writer has been taken. (b) It has been done for educational, news reporting, critique or other such literary purpose. In this case an additional factor will be if the source has been quoted which will not invite copyright infringement. (c) It is merely an incidental inclusion. US Copyright Law The modified Copyright Act of 1976 provides legal provisons for patenting of authorship in the United States. The US copyright law has much the same legal provisions to protect the intellectual property rights of authors of original works including specifications on their national origin.Thus copyright is available for published works where work is first published in the United States of a country which a treaty party.5 The UK is incidentally a treaty party. Literary works are copyrights protected. However works which are mere titles, short phrases, variations in typographic ornamentation, lettering, coloring and so on are not protected. As also works which are common property are also not protected.6 Conclusion. There is very limited variation in the copyright laws in the UK and the US and thus these can be applied in exam of the current case uniformly. Extrapolating from Recent Examples of Copyright Violation cases of similar nature The case of copyright infringement by Wanda for allowing text and images from published works can be viewed from a number of points of view. The information and knowledge proliferation one, which is supported by liberal legal opinion, is that copyrights and patents are systems designed for collaboration, systematically processing transmission and generating a culture of creativity and innovation.7 Thus the law needs to interpret the process of copyrights and other infringements within this broad paradigm of creation of a culture of knowledge through transparency. Text and images may have to be considered separately. Images can be considered as a violation of copyright in case there has been considerable labor and expertise involved in their production as originals and not just reproduction of events which have occurred or are naturally occurring. In case this is a reproduction of an original, the right of copyright is further eroded. This is clear from a judgment in a case of Interlego A.G. Appellant v. Tyco Industries Inc. and Others Respondents.8 Extrapolating from copyright violation cases of similar nature would reveal that the law at present is not very well defined and prone to varied interpretations by web service providers as well as web sites. The Google search engine has been under some criticism in the recent past due to its Library Project which envisages digital copying of a large number of works from a number of libraries with whom Google has a contract.9 However it does not necessarily have a contract with the original authors and publishers. The extract which is proposed to be made available to users of Google services are phrases and various related text. It has tried to take on board a number of publishers by certain clauses which can be termed as unique in the history of the copyright law in that it has asked the publishers for an opt out policy, which has placed the onus on the publishers to give it a list of books which are to be excluded from its library project. On 19 October 2005, a group of publishers led by McGraw Hill and including Pearson, Penguin (USA), Simon & Schuster and John Wiley filed a lawsuit against Google seeking it to suspend its library project as it was seen to be of a commercial nature and with an adverse impact on the potential market for their books. The publishers also contended that they were already in the process of electronically converting books in their inventory under the Open Content Alliance. The issue of relevance to the case being considered is the ancillary revenue anticipated from use of excerpts with regards to mass market titles. In the subject case of Wanda similar apprehensions have been expressed by US Publishers who were concerned about the use of text and images in the web sites which could possibly deny them some ancillary revenue and hence can be considered of commercial value. In an examination of the case of the Library Project, application of the UK court laws would be revealing, in case the US publishers want to file the case in UK courts. UK copyright laws are implicated if the books are scanned in UK or the copies are stored on severs in the UK. The courts examining the case would also like to seek clarification on the following issues:- (a) Has an infringement taken place and whether substantial portion of the work has been reproduced or communicated to the public In this case it does apparently appear that a substantial portion has not been reproduced and only relevant images and text seem to have been reproduced. (b) The second aspect is the use, if it is for research of non commercial nature and for private purposes, criticism, review or to report current events. In this case the use can be deemed to be fair. As any non commercial research, private study, and so on does not imply copyright infringement under the provisions of the CDPA 1988. Another issue which is worth considering is that in the exception clause of research or private study copying is permissible by a party other than the researcher or the student only if it is known that it will also result in copies of the same material will be provided at the same time substantially or for the same purpose. Google is said to satisfy this criteria as it is believed that the final users of Google Book Search will be using it for a variety of purposes and hence under the U.K. law authors and publishers may have a very reasonable chance of winning a claim of infringement under the copyright law. U.K. copyright law, is unable to countenance unpredictability of this sort. The modus operandi of digital tools that promote access to information invariably implicates copyright law. These tools are presumptively illegal unless they fall within one of a number of specifically-articulated and narrowly-crafted exceptions. But, critically, generative tools tend not to fall anywhere. Or they may potentially fall everywhere. Users will exploit the innovation in ways that may or may not be exempt under copyright law, yet the underlying innovation is impossible to categorize in any meaningful way. However the result of technology of the computer, the internet and World Wide Web is that reproduction of text, images, music or video has greatly been facilitated which is beneficial to the society at large. Recognizing this attribute, it is seen that Article 5.1 of the Information Society Directive under which it is essential that Member States make a provision in their national laws for exception to the reproduction right for "transient" and "incidental" reproductions which can satisfy a number of criteria, browsing has been included. The provision has been included in the UK laws and implemented under section 28A to the CDPA 1988. This is said to include, "Copyright in a literary work, other than a computer program or a database, or in a dramatic, musical or artistic work, the typographical arrangement of a published edition, a sound recording or a film, is not infringed by the making of a temporary copy which is transient or incidental which is an integral and essential part of a technological process and the sole purpose of which is to enable :- (a) A transmission of the work in a network between third parties by an intermediary; or (b) A lawful use of the work, and which has no independent economic significance". In case this exception is used it fits Google's Library Project though there are many problems particularly as it involves communicating to the public. Wanda and the web sites under its operation can also be similarly benefited in case this clause is applied to it in a liberal manner though on face value its access is to a limited clientele and to that extent the communication may be to a select audience and not to the public at large.10 There is another salient legal consideration which includes an assessment of fair use generally considered by courts in copyright cases, which covers four nonexclusive issues, the purpose and character of the use, if it is commercial or not for profit or for educational purpose, the nature of the work, how much of the work is being used by the web site in relation to the sum total of the work and how is it affecting its potential market or value. The last factor is the most significant and will need some deliberation before the fair use clause is applied to the Google case and concomitantly to the Wanda case. In the case of Wanda as indicated, the principle of fair use can be reasonably applied as from a commercial and commodification perspective, the use appears to be limited, particularly so in the light of the corresponding transaction costs. A display of text and images on the web site may also lead to an increase in demand of the copyrighted work in general as is seen with excerpts of books in book reviews which invariably benefit the authors. It in no case would imply a right to use without the permission of the author.11 However if substantial portions of the books have been used in toto then the question of fair use does not arise and Wanda will be suspect for copyright violations. Another case of Kelly -v- Arriba Soft would further clarify the issue of a search engine using retrieved images12. Arriba Soft which had developed a search engine for retrieval of images had been capturing images and then converting these into low resolution thumbnail representations which were then catalogued and displayed to the people who wanted to seek them on query in the search engine. Kelly was one of the photographers whose photos were being so displayed and he objected to his photographs being copied. It was on face value a clear case of copyright infringement, where the original producer of the work was representing against his sole authorship of the work. However we have to see if this was to be considered as fair use or otherwise The fair use factor in this case was in Arriba's favour as it was seen that Arriba was not attempting to profit from selling Kelly's images as also the transformative nature of use was substantial and the thumbnail images were seen to serve an entirely different function than that of the original images as these were only forming a functional indexing tool without any aesthetic purpose. Thus Arriba Soft was deemed to have not added to the image itself whereas thumb nailing was seen to have "improved access to information on the internet versus artistic expression" assessed to be transformative as the public benefited from "enhancing information-gathering techniques on the internet." This transformation also is said to have outweighed the commercial nature of the use, and the case is said to have gone in Arriba Soft's favour. This judicial ruling is valid in the case of Wanda as well, where the text and the images have been merely transformative and may not have been used for commercial purposes but for an informative and educational purpose. Thus these cannot be viewed as infringement of the copyright law given our understanding of the fair use clause. Recommendations. From the above analysis, a study of the copyright law in the United States and the United Kingdom, in case US Publishers seek compensation in a copyright infringement case from Wanda, it is evident that there is a fair chance of Wanda being provided relief under the fair value clause as well as under Section 28 A of the CDPA 1988 in case the text and images have been used purely for a non profit purpose and for educational, informative and review. The substance of the text and the images should be restricted and not substantial to gain this relief. As also the value of payments should not be so high that its denial would place the copyright owners at financial loss which is not normally bearable. However in case there is a design or motive of substantial commercial gain, then Wanda is liable for copyright infringement. In this case it may be more prudent for it to seek action in UK courts rather than in the US, as there are certain common law remedies available in UK. In the latter case it would be advisable for Wanda to contact its web site owners and ensure that the infringement is immediately stopped, seek adequate compensation and ensure that for further, "copying" the permission of the copyright owners is sought. Domain Name Dispute With emergence of the internet as a major mode of trade, commerce, education, information and entertainment globally, the problem of identical and similar characterized and sounding domain names has been a major one in the past few years. Domain names establish identity of the brand and as such there is a general consensus that these have the same value as a brand in the non digitized world. Since domain name registry has been separated from normal registry of companies, there is scope for deviant businesses to operate with acquired names of famous brands on the internet. The proliferation of the internet has also seen mushrooming growth of the business of pornography which is one of the dominant transactions greatly facilitated by the ease with which images can be placed on the net. There are thousands of registrations of domain names on the internet and registry is emerging as a significant area of expertise as well as manipulation. However domain name laws have not necessarily followed the same rising curve as the large number of registrations. This has resulted in the need for a reformation in the law and since this is an international problem, the evolution of such a law will be time consuming. Wanda's problems are similar to many other search engines and popular sites. An online pornography site (based in the US) has registered a name www.WandaIsNaughty.com, thus there is likely to be confusion and embarrassment to Wanda's online users causing damage to the ISP's brand name and reputation. Pornographic sites being in large numbers on the internet, there is a need for the site owners to have a unique identity or tag which is easy to bookmark and thus attract clicks and eyeballs. A common practice has been to identify popular sites and either acquire the domain name immediately on it being available or go in for similar sounding domain names. The latter seems to have happened in the case of Wanda. Though consumers are said to be showing greater awareness of variations in domain names and trademarks on the internet, this alone may not be the panacea to the problem of domain name identity fraud by pornographic sites. While it is felt that individuals will recognize the difference between Wanda.com and WandaIsNaughty.com, this by itself will not be adequate to turn away visitors to the site from clicking on the wrong site advertently. However there appears to be strong grounds to say that there is a subtle difference between the two, Wanda and WandaIsNaughty. It entails keying in nine additional words with two in large case, making it rather difficult for the user to misspell it as only Wanda. There is however all possibility of a user attempting to click on WandaIsNaughty keying in only Wanda with the intent of going to the former. While this may lead to delay in access to the site to the user, it will invite to Wanda visitors which it would not like to be identified with. The scope of confusion is however remote and hence how tenable this is legally needs consideration.13 Trademark infringement is valid only if it causes consumer confusion and relates to similar products to your invention.14 There are a number of similar branded domain names trading in different commodities and representing different establishments such as Delta Airlines, Delta Faucet, and Delta Dental which are coexisting in the marketplace as the products are different and thus prevent consumer confusion. In case there is a dilution of a famous mark such as Coca Cola, "Jeans", Rolls Royce, "software" which diminishes the market value of the famed brand name, there is some ground for legal relief however this will need abundant proof that actual dilution is taking place before such a claim can be preferred. Some company's also bring in such minor variations as Victoria's Secret varied as Victor's Little Secret. Even in such cases it is felt that proof of dilution is required which may be difficult to establish given considerable growth in consumer awareness in the internet economy.15 When the domain name strings are suggestive of likely explicit content as, "a1porno.com, a1asians.com, free-black-gay-sex.com" these strings describe the content available which is also the case in WandaIsNaughty.com which is a suggestive domain name.16 Will this also establish that this is leading to Wanda being identified as a pornographic site is debatable A case similar to Wanda which relates to an internet pornographic site may throw greater light on the issue. Though this has occurred in case of use of an expired domain name, it may have some relevance in the current case as well.17 The case relates to the domain name Tina which had expired and which was renewed by a pornographic site on the presumption that it would be able to profit from the viewer ship enjoyed by the earlier domain name combined with sexually explicit images, advertising and other models of revenue, to generate profits. Another strategy followed by some registrars is frequent change in domain names such as Tina's Webcam being renamed as "Wanda's Webcam" and after a short while to "Sophy's Free Live Cam" by the same registrar. With such strategies being used by flexible pornography site operators, it will be difficult to legally see the end of such seeming damage to non pornographic sites as Wanda being difficult to pin point.18 Another such example is that of the case of Hasbro,Inc. V .Internet Entertainment Group, Ltd. The court in this case issued an order prohibiting the Internet Entertainment Group from use of domain name candyland.com as it had violated the federal and state dilution statutes. However Hasbro had strong grounds as it was the manufacturer of the children's game, Candy land.19 The linkage of children's game and an internet pornography site had invited natural and legal ire of the courts. The applicability of this example thus to the case of Wanda and WandaIsNaughty may not be directly relevant. There is definitely a possibility of tarnishing of image of the original domain name in such cases more so where the same domain name is being used earlier by a non pornographic site which is reasonably or even very popular to a purely pornographic one. It is said that even some very popular sites as Yahoo are victims to such similar naming strategies used by pornographic sites.Legal internet experts as P Boylan have commented that there is a grey area in domain names and trade marks for which an international agreement under WIPO (World Intellectual Property Organization) needs to be evolved to ensure that the problem of domain names and trade marks is resolved and identified business is carried out by sites with specific domain names.20 Recommendations. Under the circumstances, it would be difficult for Wanda to undertake legal action against the pornographic site, WandaIsNaughty for it does not fulfill the criteria of confusion of the consumer. It may attempt to buy it over either at present for which the price may be prohibitive or once the name is likely to expire. Arbitration proceedings could also be initiated which may provide some relief. Trade Mark Liability Case Trademark searches account for 20 percent of all online searches.21 Thus trade mark liability for search engine businesses is another area of dispute which has emerged over the years of internet usage. This is a typical issue of the knowledge economy, where search engines in their attempt to make maximum information available to the clients are said to be infringing on the trade mark as well as copyrights of various companies including logos. The battle between the most popular search engines Google and various companies are now in the public domain and are watched with great concern by various legal luminaries. In the instant case too, Wanda which is running a search engine business is being challenged by Bristol a trademark owner of international business repute for inserting its trade mark in their search engine violating UK trade mark and has sought a licence fee for the same. A number of pertinent issues have thus been raised as follows:- The nature of search engine business being that of providing universal access, does it constitute trade mark infringement if the companies name appears on the search engine site when it is desired to be accessed by a viewer Is the trade mark being used for generating business for the search engine Is the trade mark beneficial to Bristol if its trademarked name appears in the search engine generating more recall and translating into business Can it claim licence fee from the search engine Laws Governing Trademark The name of a company is its most coveted assets. A trade mark is thus a badge of recognition of the company. Thus it is essential that a company files for trademark as early in its business development as possible at the state and federal level where applicable.22 A trade mark registered on the UK Trade Marks Register has a 10 years validity and can be renewed thereof. Others are prevented from using the trade mark to avoid confusing consumers and recover money from its usage by another person particularly an imitating competitor. European Trademark Office protects trademarks in the European Union. Agreement of Madrid in relation with the International Registration of Trademarks (1891) provides protection of a trademark in all member countries23 A few examples of trademarks are such catchy ones of famed international firm as Nike, Just Do It and Nike Swoosh design.24 Some Typical Trade Marks Cases in the Internet Age Geico filed a lawsuit against Google for infringement of its trademark on its search engine, a problem which is being faced between Wanda and Bristol. The argument on trade mark infringement rests strongly on the confusion it is likely to cause in the minds of the consumer on the source of the goods or services and the dilution or weakening of the distinctive quality and mark of Geico. Bristol too is an international brand and can claim that it is famous enough to have been so targeted for trademark violation. The argument for infringement of trade mark rights includes factors such as negative impact on the trademark, subjecting consumers to confusion, loss of goodwill for trademark owners and resultant need for remedial action for overcoming the confusion. Other issues also include that of profit, is the search engine profiting from the trademark infringement or its facilitation and are alternate solutions available wherein such a violation is not required, thus implying that this is being undertaken either deliberately if not a malafide intent. While the argument for non infringement of trademarks is valid, it states that search engines which are not paid, cannot be said to be violating trademark as income is not being generated from tagging of the trademarked commodity but through attendant advertisements which are alongside. The format of the search engine is also said to be distinct to enable the user to identify which is a paid advertisement and a non paid link. The searcher on the site would have varied uses and purposes for the search, such as comparing, commenting or critiquing the product. The fact that the search engine has a policy in place for protecting the trade mark owners will also go in favor of the search engines. Google has such a policy. Thus there is said to be no trademark infringement. Wanda may also consider having such a policy if it is not in vogue already. These arguments are based on a mock case presented by Jarboe Greg.25 In a follow up of the Geico case in the Federal courts of the USA, Federal judge, Leonie Brinkema is said to have ruled in an oral decision that the policy of Google to allow advertisements based on trademarked keywords can continue.26 The judge had ruled in the Geico case that allowing a competitors sponsored links to appear near the search results of Geico or Geico Direct did not prove to be causing confusion. The issue of Google's advertisers using trademarks within the advertisements was sought to be resolved mutually. This case was deemed not binding as a precedent on other cases as it was felt that GEICO did not give convincing evidence of the critical aspect of confusion involving its brand name.27 Thus other litigants are hoping that they can still pursue their representations on misuse of their brand name in Google's search engine. Geico itself is said to be favorably considering pursuing lawsuits with other search engines and other trademark owners were also said to be free to pursue their case against Google. The issues addressed by this judgment were only the direct ones. Legal experts considered the chances of Google being held accountable for its advertisers as limited. Recommendations. In the case of Wanda and Bristol, too a similar parallel can be drawn and there appears to be no apparent reason for Wanda to pay license fees to Bristol. Wanda is a search engine and is using Bristol as a part of its word search links and programmes and not for generating advertisements. There is no revenue being generated from this transaction on the internet for Wanda. On the other hand in case this trademarked word is being used by any of the advertisers on Wanda then Bristol does have a case for compensation which can be resolved mutually with the respective advertisers. But a preliminary examination of the case study does not indicate the same. There are no grounds thus for Wanda to consider any license fees to Bristol as no trade mark violation has taken place. Since this is a new economy case, there are some grey areas within the whole paradigm of trademark infringement on search engines. The judgment in the case of Geico vs. Google is also thus not considered as a precedent. It is apparent that the law and jurisprudence in such cases is developing and would need refinement which is already underway with a large number of search engine related cases expected over the years. (Note- Format of endnotes does not include ibid or op cit as then you can conveniently change the sequence of paragraphs if you so desire without losing track of the foot notes.) BIBLIOGRAPHY 1. Boylan, P. (1999). Trademarks, Brand Names and Domain Naming. Lessig, Lawrence. (1999). Commentaries : The Law Of The Horse. 2. Ganley, Paul. (2006). Google Book Search: Fair Use, Fair Dealing and the Case for Intermediary Copying. Working Paper. 3. Jarboe, Greg. (2004). Trademark vs Search:Do you Soogle. 4. Kamath, Nandan. (2000). Law Relating to Computers, Internet and E-Commerce. Sec Edition. Universal Law. New Delhi. 5. Newcomb, Kevin. (2004). Google Trademark Issues Remain Unresolved. 6. Privy Council. PC. [1989] A.C. 217. Lord Keith of Kinkel, Lord Templeman, Lord Ackner, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle. 1988 Feb. 15, 16, 17, 18, 22, 23, 24, 25, 29; March 1, 2, 3; May 5. 7. Savirimuthu, Joseph. (November 2005). Open Source, Code and Architecture: It is the Memes Stupid. International Review Of Law Computers & Technology, Volume 19, No. 3. 8. http://www.icann.org/ 9. http://www.clickz.com 10. http://www.copyrightservice.co.uk. 11. http://en.wikipedia.org/ 12. http://www.copyright.gov/ 13. http://www.registeringatrademark.com 14. http://cyber.law.harvard.edu 15. http://www.ukincorp.co.uk. Read More