
- •Intellectual property on the internet: a survey of issues
- •Introduction
- •I. The internet and the development of the digital society
- •World Online Population
- •Cost of Internet Access
- •Developments in Means of Internet Access
- •Online Activities
- •Value of Commercial Transactions on the Internet
- •Percentage of Online Commercial Transactions Compared to Overall Commerce
- •Percentage of Individuals Purchasing Goods and Services over the Internet
- •Categories of Goods Purchased on the Internet
- •Distribution of Internet Sales between National and International Markets
- •II. The migration of intellectual property to the internet
- •III. (a) copyright and related rights
- •(I) introduction to digital copyright
- •(II) the wipo internet treaties
- •(A) Scope of Rights
- •(B) Enforcement and Management of Rights
- •(C) Status of the wipo Internet Treaties
- •(III) emerging copyright issues
- •(A) Scope of Copyright Protection in the Digital Environment
- •(B) Liability of Internet Service Providers
- •(C) Rights of Performers in a Digital Environment
- •(D) Rights of Digital Broadcasters
- •(E) Linking of Copyright Information Online
- •(F) Protection of Databases
- •(G) Peer-to-Peer File Sharing – Napster
- •(IV) licensing and rights management in the digital arena (a) Licensing and Collective Management of Rights
- •(B) Digital Rights Management
- •(C) Trends in Licensing and Rights Management
- •III. (b) trademarks and other rights in distinctive signs
- •(I) importance of trademarks online
- •(II) developments in use of trademarks online
- •(A) Use of Trademarks as Meta Tags
- •(B) Sale of Trademarks as Keywords
- •(D) Mousetrapping
- •(E) Linking and framing
- •(III) principle of territoriality and use of trademarks online
- •(A) Acquisition of Trademark Rights Through Use of a Sign on the Internet
- •(B) Infringement of Trademark Rights Through Use of a Sign on the Internet
- •(C) Acceptable Unauthorized Use
- •(D) Global Effect of Injunctions
- •(E) Enabling Co-existence of Rights on the Internet
- •(IV) wipo joint recommendation on protection of marks on the internet
- •(V) wipo joint recommendation on well-known marks
- •(VI) unfair competition
- •(A) Interactive Marketing Practices
- •(B) Transparency and Privacy Concerns
- •(C) National Versus International Standards of “Unfair” Marketing Practices
- •(D) Trade Secrets
- •III. (c) domain names
- •(I) introduction to domain names
- •(II) recent developments concerning domain names and intellectual property (a) New gTlDs
- •(B) Multilingual Domain Names
- •(C) Keywords
- •(D) Multiple Roots
- •(E) Creation of the Generic Top-Level Domain .Eu
- •(F) icann Reform
- •(G) World Implementation of the Enum Protocol
- •(III) wipo programs
- •(A) wipo Arbitration and Mediation Center
- •(B) Second wipo Internet Domain Name Process
- •(C) wipo Cooperation Program for ccTlDs
- •III. (d) patents
- •(I) patents in the digital environment
- •(A) Business Method Patents
- •(B) Software Patents
- •(C) Prior Art Effect
- •(D) Enforcement of Rights
- •(II) wipo programs
- •IV. The role of private international law and alternative dispute resolution
- •(I) private international law, intellectual property and the internet (a) What is Private International Law?
- •(B) Private International Law and the Internet
- •(C) Sources of Private International Law
- •(D) Private International Law, Harmonization and Intellectual Property
- •(E) Jurisdiction and Applicable Law in Intellectual Property Disputes
- •(II) alternative dispute resolution (a) What are the Methods of Alternative Dispute Resolution?
- •(B) The wipo Arbitration and Mediation Center
- •(C) General Characteristics of adr
- •(D) adr in e-Commerce
- •(E) adr, e‑Commerce and Intellectual Property
- •(F) adr and Legal Systems
- •(G) adr Limits and Challenges
- •(H) An Example: The wipo udrp Experience
- •(I) New Developments in adr
- •V. Issues for developing countries in the digital environment
- •(I) introduction
- •(II) ‘digital bridges’ over the digital divide
- •(III) access and participation in the digital economy
- •(IV) opportunities and challenges
- •(V) differential e-development
- •The Geography of Technological Innovation and Achievement undp Human Development Report 2001
- •(VII) wipo’s digital agenda in developing countries
- •(VIII) museums and images of cultural heritage online
- •(IX) traditional knowledge databases and digital libraries
- •VI. Digital delivery of intellectual property services
- •(I) developments in national intellectual property offices (a) Traditional Intellectual Property Office Administration
- •(B) Use of New Information Technology Systems in ip Offices
- •Japan Patent Office – Processing of Patent Applications
- •(II) wipo services
- •(A) wiponet
- •(B) The pct Treaty and Procedure
- •(C) The Madrid Agreement and Electronic Systems
- •(D) The Hague Agreement and Electronic Systems
- •VII. The wipo digital agenda
(B) Liability of Internet Service Providers
74 One issue of some concern in the intellectual property and Internet communities is the question of who should be liable for copyright infringement that takes place online. This issue is raised by the very nature of digital networks. When a work is transmitted from one point to another, or made available for the public to access, numerous parties are involved in the transmission. These include entities that provide Internet access or online services (‘ISPs’ or ‘OSPs’). When such service providers participate in transmitting or making available materials provided by another which infringe copyright or related rights, are they liable for the infringement? Such liability could arise in one of two ways: if the service provider itself is found to have engaged in unauthorized acts of reproduction or communication to the public, or if it is held responsible for contributing to or making possible the act of infringement by another.
75 Such issues have arisen under Chinese copyright law, for example, in the case of Wang Meng. v. Century Interconnecting Telecom Co. Ltd, which involved a service provider on whose website was posted works of six well-known Chinese novelists without their permission.110 The defendant argued that China’s Copyright Law does not address the Internet, and therefore that digital works could not infringe copyright. The Court found for the plaintiffs, holding that no derivative work was created simply by the process of digitization and that Chinese copyright law gave the author the exclusive right to exploit and profit from the work both online and off. The ISP was found to be in a position to control the distribution of the works, and was therefore liable for infringement.
76 The liability issue has significant international implications. Because the Internet is a borderless medium and its markets are global, it is critical that compatible approaches to this issue be adopted around the world. It is not necessary that the approaches be identical: they may differ depending on the particular circumstances and legal traditions in any given country. But they must be interoperable if global networks and electronic commerce are to develop smoothly. This issue was the subject of a WIPO workshop in 1999, that examined national and regional legal frameworks, notice and takedown systems, and the possibilities for international harmonization.111 WIPO continues to monitor developments regarding this issue, including legal decisions, marketplace events and emerging legislation.
77 During the Diplomatic Conference on the WIPO Internet Treaties in 1996, the issue was intensively debated. The ultimate result was that the treaties are essentially neutral on the subject, with the issue of liability left to national legislation to determine. There is, however, one reference to the issue, in an agreed statement to the WCT, which provides that: “[i]t is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention.”112 The statement clarifies that the mere provision of wires used to communicate, for example, does not constitute an act of communication. But the statement is limited in its application; it does not cover a number of activities that service providers may engage in, and it does not deal with concepts of liability for contributing to the infringement of another.
78 Since 1996, a number of legislative solutions to this issue have begun to emerge.113 These statutes differ as to whether they address copyright only, or take a ‘horizontal approach’– that is, a rule governing liability of service providers regardless of the grounds for illegality of the transmitted material. In other words, the horizontal approach covers not only copyright infringement but also other laws such as libel or obscenity.114 There are laws now in force in Germany and Sweden, which approach the issue from a horizontal perspective. Japan also has introduced the ‘Provider Liability Law’, 115 which states that a provider is liable only if it is technically possible to prevent transmission of the infringing material; and the provider knows of the existence of the material and; (i) knows that it is infringing or (ii) reasonably ought to know that it infringes (Art. 3 (1)). A person whose rights have been infringed can ask a provider to disclose information about the person transmitting the material if the information is necessary for a legal claim or other legitimate reason (Art. 4(1)).
79 The European Community has adopted a Directive on Electronic Commerce with provisions that will harmonize the treatment of liability among its Member States, again using a horizontal approach.116 Some commentators have argued that there are inconsistencies between the E.U. Copyright Directive and the E.U. E-Commerce Directive on the issue of online service provider liability.117
80 The alternative approach of implementing copyright-specific laws to determine online service provider liability, has been adopted by other countries, including Hungary, Ireland, Singapore and the United States of America. In the United States of America, Congress enacted copyright-specific legislation as part of the 1998 Digital Millennium Copyright Act (DMCA), after legislation in past years establishing different standards in other areas of the law. As part of the DMCA, the ‘Online Copyright Infringement Liability Limitation Act’, establishes ‘safe harbors’ to shelter ISPs from liability for copyright infringement in certain circumstances.118 The DMCA sets down guidelines with respect to copyright infringement online, although it does not define when a provider is liable for copyright infringement and, in this respect, the existing principles of U.S. copyright law apply. Instead, the DMCA defines those categories of provider activity where providers are exempt from liability for damages119 provided that: the provider is merely acting as a ‘passive conduit’ for the information, is not the producer of the information, and has responded expeditiously to remove or disable access to infringing material upon notice from the copyright holder (the so-called ‘notice and takedown’ provisions). To qualify for immunity, the provider must also implement a policy that terminates the subscriptions of repeat infringers, and accommodate and not interfere with technical measures put in place to protect and identify copyright works.
81 In one U.S. case testing these ‘safe harbor’ provisions, ALS Scan, Inc. v. Remarq Communities, Inc., the issue was whether a service provider was liable for providing access to ‘adult’ news groups that contained unauthorized copies of the plaintiff’s photographs, after having been informed that the site was infringing.120 In this case, the provider argued that it would only remove the materials when the infringing items were identified and listed with sufficient specificity, a difficult task given the number of photographs on the site. The Court found that the plaintiff had met its notice requirement and that, once notified, the provider could not rely upon the immunity granted by the DMCA. Action was also initiated in the United States of America under the DMCA, when 13 record companies requested the Court to order four ISPs to block access to a China-based website, Listen4ever.com, that was alleged to violate U.S. copyright laws.121 The English-language site offered thousands of copyrighted songs for free download, before going offline upon initiation of the legal action.