Documente Academic
Documente Profesional
Documente Cultură
on the Web
Trademark, Copyright and
Patent Issues That Impact All
Companies in the Internet Age
Why Important?
Top IP concerns:
Cybersquatting
Unlawful copying of digital media
content
Reverse engineering
Phishing
Sale of counterfeit goods online
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Overview
Transactional Issues:
Licensing Web Content
Web Publishing
Web Site Development
Counseling Issues
Web Content Clearance/Fair Use
Contentious Issues
Domain name recovery (cybersquatting)
DMCA
Litigation of online copyright infringement and licensing
cases
Copyright and trademark issues arising from phishing,
online counterfeiting, key word purchases, hyperlinking,
pop up ads, framing
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Web Publishing
Publish and/or
purchase a book
that is printed and
shipped to you or
to download a
digital copy
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Web Publishing
Form of license, same issues
Technological safeguards on
unauthorized copying
Does third party site have terms of
use prohibiting unauthorized use of
digital content purchased?
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Contentious Issues
Cybersquatting
DMCA
Litigation of online
copyright/licensing cases
Trademark and copyright issues
unique to the web
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Cybersquatting
Trademark, or confusingly
similar mark, is used in a web
site address
Prohibited by federal law
Vehicles for domain name
recovery
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UDRP Proceedings
Arbitration proceeding
Not necessary to own registered mark
Confusingly similar
No legitimate right to the domain name
Registered in bad faith
ICANN
WIPO in Switzerland and NAF in Minneapolis
Complaint, Reply, and Surreply, then a single
member or three member panel will decide.
All filed electronically.
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Amazon
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DMCA: Anticircumvention
Fair Use
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Phishing
Criminally fraudulent process of attempting to
acquire sensitive information such as usernames,
passwords and credit card details by
masquerading as a trustworthy entity in an
electronic communication
Communications purporting to be from popular
social web sites, auction sites, online payment
processors or IT administrators are commonly
used to lure the unsuspecting public
Typically carried out by email or IM, and it often
directs users to enter details at a fake website
whose look and feel are almost identical to the
legitimate one. Even when using it may require
tremendous skill to detect that the website is fake
MasterCard/UDRP recovery and investigation
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Legislation on Phishing
No legislation directly prohibits, but there may be
copyright and trademark remedies available since
site content and trademarks are copied
Credit Card Fraud Act
The Identity Theft and Assumption Deterrence Act
Fair and Accurate Credit Transaction Act
California's Anti-Phishing Law
California in 2005 became the first state to enact
legislation designed specifically to deter phishing. Some
victims of phishing, including those who provide Internet
access service to the public, own a Web page, or own a
trademark, may recover up to $500,000 for each proven
violation of the statute. Other victims may recover up to
$5000 for each violation of the statute. The statute also
allows the state's attorney general or a district attorney
in the state to bring an action to enjoin further
violations.
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Online Counterfeiting
Best Practices for Trademark Owners
Educate the public so they are not deceived
on online searches, marketplace and
shopping sites
Request that Payment Service Providers (such
as credit card and debit card companies,
PayPal) terminate service and indemnify PSP
for wrongful termination
Report abuses of PSPs trademark if
trademark owners are unable to make a
purchase on a site bearing the PSPs mark
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Online Counterfeiting
Contact the providers of Internet
shopping services under the DMCA or
Lanham Act
Is Copying of Hyperlinks a
Copyright Infringement?
In the DeCSS case Universal v. Reimerdes,
2600 Magazine prohibited from posting
hyperlinks to DeCSS code because it found the
magazine had linked for the purpose of
disseminating a circumvention device
Intellectual Reserve v. Utah Lighthouse
Ministry: linking to unauthorized copies of a
text might be a contributory infringement of
the work's copyright
Ticketmaster v. Tickets.com found that
hyperlinks to ticket broker sites copied by
tickets.com from the ticketmaster web site
were not infringements of copyright
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Hyperlinking Best
Practices
In an email, do not provide a live
hyperlink
Beneath a hyperlink in a site,
include a disclaimer that the site
owner is not affiliated with, does
not endorse or sponsor the
trademark owners services
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Framing
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Framing
Perfect 10 v. Amazon.com:
Google's in-line links were not
infringements of the copyright
owner's rights to copy and display
its work.
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Pop Up Ads
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Pop Up Ads
Are a site owners copyrights or
trademarks infringed when a
competitors pop up ad is displayed
when a consumer access the site?
Most courts hold no when:
No use in commerce of the site
owners trademark in the ad itself
Not a derivative work
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Seminar Intermission
What is a Patent?
Exclusive rights granted to an
inventor for a limited period of time
in exchange for a public disclosure of
the invention
Rights extend for 20 years from
earliest filing date or 17 years from
date of issuance depending when the
application was filed
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What is a Business
Method Patent?
Business method patent is a type
of utility patent which is directed to
new methods of doing or
conducting business
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Famous Business
Method Patent and
Industries
E-commerce
Insurance
Investment
Banking
Tax Compliance
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In general, Bilskis
main claim requires the
steps of:
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Why is Bilski
Important?
CAFCs decision was extraordinarily
over broad
As a result, software, pure business
methods, medical diagnostic
methods, biotechnology methods,
medical device and e-commerce
patents may be unpatentable/invalid
in view of the CAFCs decision
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How Should
Software/Business
Methods be Protected
Until the
Supreme Courts
Software and business methods should
Decision?
still be protected
with patents
Patent claims should be included that
satisfy the narrow MOT test
Patent claims satisfying the broader CUT
test should also be included
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