WIPO update Intellectual Property Issues in the
Digital Agenda
Lucinda Jones
World Intellectual Property Organization
International Conference on the Legal Aspects of an
E-Ecommerce Transaction
The Hague
October 26, 2004
Overview
 WIPO
Digital Agenda
 WIPO Internet Treaties
 WIPO Recommendation on Trademarks on
the Internet
 Domain name dispute resolution
Emerging IP Issues

Trademarks
– metatags, framing, deep linking
– cybersquatting

Patents
– patentable subject matter (hyperlinks), business method patents

Copyright
– digital music and filmdistribution
 peer-to-peer file sharing via MP3, Napster, KaZaa
 new legal subscription services (itunes, MusicNet, Emusic.com)
– secondary liability of ISPs for copyright infringement
– database protection
WIPO Digital Agenda
2. Entry into force of the WCT and the WPPT before
December 2001
3. Promote adjustment of the international legislative
framework to facilitate electronic commerce
through:
 extension
of principles of WPPT to audiovisual
performances
 adaptation of broadcasters’ rights to the digital era
 progress towards possible international instrument
on protection of databases
WIPO Digital Agenda ...
4. Implement the recommendations of the Report of
the WIPO Domain Name Process and pursue the
achievement of compatibility between identifiers
in the real and virtual worlds through the
establishment of rules for mutual respect and the
elimination of contradictions between the domain
name system and intellectual property rights
Development of legislative framework
 WIPO
‘Internet Treaties’
 Audiovisual
 Protection
performers’ rights
of broadcasting organizations
WIPO Internet Treaties
WIPO Copyright Treaty (WCT)
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in force March 6, 2002
48 States ratified or acceded
WIPO Performances and Phonograms Treaty
(WPPT)



in force May 20, 2002
44 States ratified or acceded
ensure that rightsholders control dissemination of
protected material over Internet, including right to
make available ‘on demand’
Internet Treaties - digital agenda
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Right of reproduction
– temporary reproduction
Right of making available
Limitations and exceptions
Technological measures
Rights management information
General update
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computer programs
databases
distribution and rental
enforcement
economic and moral rights for performers
economic rights for producers of phonograms
Trademarks on the Internet
 Use
of trademarks on the Internet
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–
–
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commercial use on the Internet
extension of offline branding strategies to Internet
‘passive’ websites (advertising)
‘interactive’ websites such as mail order (e.g.,
Amazon)
– direct delivery of goods or services (e.g., Yahoo)
– use in Internet addresses/domain names
 Problems:
– trademarks are territorially limited whereas the Internet
is a global medium
– specialty and territoriality
WIPO activities
- trademarks on the Internet
 WIPO
Internet Domain Name Processes
 WIPO Joint Recommendation Concerning the
Protection of Marks, and other Industrial Property
Rights in Signs, on the Internet
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–
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adopted by Member States in September 2001
‘soft law’ persuasive authority
needs implementation in national laws
no specific trademark law for the Internet
facilitates application of existing laws to the use of
signs on the Internet
WIPO Joint Recommendation
 Problem
areas:
– how to allow coexistence of conflicting rights on the
Internet
– territorial rights on a global Internet
– territorial scope of court decisions
– predictability of legal consequences for use of a sign on
the Internet
Trademark use in a country?
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Use of a sign on the Internet is use in a country only if that
use has a commercial effect in that country (Article 2)
Non-exhaustive list of factors for determining commercial
effect, such as
– serving customers in a Member State
– prices indicated in currency
– indication of address
– domain name registered in a ccTLD
– language of site
Infringing use in the country of
protection?

Use of a sign on the Internet is infringing use in the
country where the conflicting trademark right is protected
only if that use has a commercial effect in that country
(Article 6)
– disclaimer is one factor among others for determining
(lack of) commercial effect
Conflicts between legitimate
rightsholders
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‘Coexistence’ - same trademark can be held by different
people in different countries (territoriality)
conflict of mutually exclusive rights on the Internet
conflicting court decisions - solution?
 Notice
and avoidance of conflict procedure
– after notification, no liability for infringement of
trademark rights if (Article 10) if
 user informs other rightsholder of details of his right
 takes expeditious measures to avoid commercial
effect
Measures to avoid commercial effect

A ‘sufficient measure’ for avoiding conflict (Article 12):
– statement not to deliver goods/services in the country
where conflicting right is protected (language of
website)
– asking where customers are located before delivery
– refusing to deliver to customers indicating they are
based in country where conflicting right is protected
– no obligation to verify
Domain name /trademark conflicts
 First
WIPO Internet domain name process - 1999
– addressed conflicts between trademarks/domain names
 domain names are unique and commercially valuable
 domain names are global and for all purposes
 domain names assigned first-come, first-served
without examination vs. trademarks
 an Internet Protocol address used like a trademark
 trademarks are an easy target for cybersquatters
– limited options for dispute resolution
Domain name dispute resolution
 Uniform
Domain Name Dispute Resolution Policy
(UDRP)
– adopted by ICANN in December 1999
– applicable to gTLDs (.com, .net, .org)
 including new gTLDs (.aero, .biz, .coop, .info,
.museum, .name, .pro)
 can be adopted by ccTLDs
– contractual basis via registration agreements
– ‘administrative procedure’ retains recourse to courts
 very few court cases < 1% of UDRP decisions
UDRP characteristics
 Scope
– clear criteria
 domain name identical or confusingly similar to a
trademark
 no right or legitimate interest
 bad faith registration and use
 Remedies
– decision within 14 days, published online
– cancellation or transfer (unless court proceedings within
10 days)
– possible without intervention by enforcement authorities
– no monetary damages
Outstanding domain name issues
 Second

WIPO Internet domain name process - 2001
– International Nonproprietary Names (INNs)
– geographical indications
– personal names
– trade names
– names and acronyms of international organizations
WIPO General Assembly recommended..
– providing protection for names and acronyms of IGOs
and country names
– transmitted to ICANN in February 2003, under
consideration by ICANN working group
WIPO Arbitration and Mediation Center
 WIPO Arbitration
and Mediation Center
– 22,000 cases (UDRP, ccTLDs, new gTLDs)
– 6,500 cases under UDRP, covering 10,000 domain names
and parties from 119 different countries
– of which 96.5% resolved
– 82.9% in favor of complainant
– 350 domain name panelists, experts from 50 countries
 Procedures
– established procedural framework for dispute administration
– model complaint and response used as standard
Domain name cases
 Sample
cases filed in 2004:
– federalrepublicofgermany.biz, harrybelafonte.com,
ryder2004.com, iso9000standards.com,
nikondigital.com, cajamadrid.com,
delete-yahoo.com, felschlössli.ch
– e.g., 108 domain names transferred to Ticketmaster
Corporation
– e.g., spikelee.com - common law trademark,
respondent’s use of name for a pornographic site was in
bad faith
Domain name cases...
 Country
code top level domains (ccTLDs)
– 43 countries designated WIPO Center to provide
dispute resolution services
– 205 cases by August 2004
– .eu to be launched in 2005
 ‘Internationalized’ domain
names
– 42 cases involving domain names in non-Roman (nonASCII) scripts such as Arabic, Chinese or Cyrillic
– cases conducted in 11 different languages
 Index
of 6,000 WIPO Center decisions
– searchable via factual and legal search terms
Future issues….
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Exceptions and limitations (‘copyright balance’)
DRM and private copying levies
Collaborative creativity
Copyright and economic development
Licensing models for software
Peer-to-peer file sharing
Liability of Internet intermediaries (notice and takedown)
New business models for exploitation of copyright
Thank you
www.wipo.int
arbiter.wipo.int
Lucinda Jones
[email protected]
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CORE Dispute Resolution Procedures