Evolving IP Issues and Cyber Laws

Lovely Tokas and Aryaman Tyagi

Abstract

The development of technology has given rise to a cyber world through which we are connected and this rapid increase in information technology has given birth to various cyber-crimes. Challenges before the law-makers are not only to make laws but to protect and preserve cyber security in the field of Intellectual Property Rights.

The concept of Intellectual Property Rights (IPR) refers to the creation of human minds i.e. copyright, patent, trademark, designs. But the Information Technology Act, 2000 does not mention any concept related to infringement of IPR in the world of cyberspace.

It shows that there is a growing need to adopt technological measures in protecting the rights of intellectual property owners. New intellectual property problem has been increased such as cyber-squatting, trademark infringement etc. Cybersquatting is a major concern related to IP issue which involves the use of a domain name by a person with neither registration nor any inherent rights to the name. The research paper will answer how the trademarks and domain names being similar have been exploited by some people. And is there any remedy available or not?

So, this paper will suggest some measures as the Information Technology Act is lacking somewhere in defining the jurisdiction issues, scope, cybercrimes related to IPR. And, the Indian Trademark Act 1999 and Copyright Act, 1957 are also silent on issues arising out of online Trademark and Copyright infringement. So, as we know that intellectual property is one of the valuable assets of any person, for this purpose, there is a need for strict laws in the field of cyber laws so that crimes related to IPR could be avoided in future.

Introduction

The Internet is a global matrix of interconnected computer networks using the internet protocol to communicate with each other. Nothing embodies our electronic transformation more than this evolving medium. It has affected the way we live and the way we transact with others. India is a signatory to the Model Law and is under an obligation to revise its laws as per the said Model Law. With the urgent need to bring suitable amendments in the existing laws to facilitate Electronic Governance, the Information and Technology Act, 2000 was passed. E-commerce nowadays has become very popular especially in the corporate sector. The advantages and scope of publicity of business through e-commerce or business on the World Wide Web can reach the surfers very fast in any part of the world. But this has paved the way for the emergence of cyber-crimes[1]. Cyber-crime is where a computer is used as a means of committing crime or as a target ofcrime.

Advancement of Information Technology and computers has created a new world in the cyberspace, giving rise to various legal issues which are still in doubt i.e. Intellectual properties issues. IP issues such as trademarks, copyrights, designs, layouts become the major issue for concern today.

But IT Act, 2000 lacks somewhere to deal with the matters of Intellectual property. IT Act does not deal with the cyber-squatting i.e. stealing of domain names from its legal owner, controlling the conduct of cyber cafes, lack of enforceability of the provisions relating to e-governance, jurisdiction in the cyberspace, cyber stalking, credit card frauds, cyber defamation etc.[2]The Author in this research paper has highlighted important issues including copyright, trademark andcyber squatting.

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Objectives of Information Technology Act, 2000

This Act has main objects which are as follows:

  1. To respond and to give effect to the United Nations call to all states to give favourable consideration to Model law when they enact or revise their laws so as to facilitate harmonization of the laws governing alternatives to paper-based methods of communications and storage ofinformation.
  2. To provide legal recognition to transactions carried out by means of electronic data interchange and other means of electronic communication, commonly called as e- commerce that involves the use of alternatives to paper-based methods of communication and storage ofinformation.
  3. To facilitate e-filing of documents with the government agencies so as to promote efficient delivery of government service by means of reliable electronicrecords[3].

Copyright in the Digital Medium

Technology is a double-edged sword. On one hand, it is creating new means to fix the original expression in a tangible form and on the other hand, it is being exploited in infringing the copyrights with impunity. Even some of the internet activities, like caching, browsing, mirroring, scanning, downloading, uploading, or file swapping are an anathema to a purist. The question is whether such activities really infringe the five exclusive statutory rights of a copyright owner, such as:

  1. To fix(store) the information in a tangibleform
    1. To reproduce the copyrightedwork
    1. To sell, rent, lease or otherwise distribute copies of the copyright work to thepublic
    1. To perform and display publicly the copyrightwork
    1. To prepare derivative works based on the copyrightwork

The answer is yes. Internet activities like caching, browsing, mirroring, scanning, uploading, downloading or file swapping may result in:

  1. Transmission of information from one computer system or network to another, involving temporary storage (RAM) of that information
  2. An unauthorized storage of such information is a violation of the copyright owner’s exclusive right to make copies i.e. to reproduce the copyrighted work.
  3. A violation of the copyright owner’s exclusive distribution right.
  4. An appearance of a copyright image in the web browser infringing the copyright owner’s public displayright.
  5. An infringement of the copyright owner’s exclusive right to prepare derivative works

That is, prima facie, the nature and characteristics of internet activities which is such that there will certainly be infringements to the exclusive statutory rights of a copyright owner.[4]

The Scope of Trademarks in the Online Medium

Internet and the World Wide Web represent the online medium. It is natural that a business entity claiming ownership of certain trademarks would like to extend its monopoly to this new medium as well. But the monopoly rights of trademark owners to own, license, sell, exhibit, market or promote are being threatened by web-based technology tools, like search engines, Meta tags, and hyperlinks.

Meta tagging raises several trademark issues, including: is it trademark infringement or passing off to embed another’s trademark in HTML tags on one’s web page? What about repeating another’s trademark as buried code or invisible text on one’s web page? Is it unlawful for a search engine or directory to sell premium placements for banner ads keyed to another’s trademark? How about the sale of an enhanced relevancy ranking for searches keyed to another’s trademark? What about liability of search engines in providing a “cached” copy of the web page as viewed on the day it was indexed, when the original was no longer available on the ‘official’ website?

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Overture or Google might suggest to an advertiser who pays to use the term “sports shoes” to also add Nike, Adidas or Bata to their search term, to help them get more visibility. So, when a request for “Nike running shoes” is keyed in, the advertiser who could be retailer, a rival shoe maker or a sale discounter would automatically get the top billing in the search results. Hence the search engines have to exercise caution in selling third party ads that link to search terms with trademarks owners’ (e.g. Nike) name alone, or in variations or phrases.

In view of these possible trademark infringements, Google has recently introduced its trademark policy. It has agreed to remove ads is a trademark owner goes through Google’s formal trademark complaintprocedures[5].

In Niton Corp. v. Radiation Monitoring Devices, Inc.[6] an infringement action was brought in against the Radiation Monitoring Devices (RMD) for directly copying Niton’s Meta tags and HTML code. The result- an internet search using the phrase “home page of Niton Corporation” revealed three matches for Niton’s website and five for RMD’s website. The court granted injunction againstRMD.

Domain Names: Digital Marks in the Online Medium

In the last ten years domain names have become a kind of e-commerce marks in the online medium. These are digital business addresses- a point of business contact or transaction. Functionally speaking, domain names provide a system of easy-to-remember internet addresses, which can be translated by the Domain Name System (DNS) into the numeric addresses (Internet Protocols [IP] numbers) used by the network. It is important to know that there is no legal definition of what a domain name is.

Defining Domain Name

The term domain name describes any alphanumeric or designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the internet.

The domain name consists of different parts. The first part is known as ‘second-level domain’ (or sub- domain) and is the part that can be chosen by the person registering the name. The end part, which reflects standard term throughout the world, is known as ‘top- level domain’ (or domain extension). These are commonly referred to as gTLDs i.e. ‘generic’ (or global) Top Level Domains. Earlier there were only seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org). Seven more gTLDs have recently been introduced; these are .aero, .biz, .coop, .info, .museum, .name and .pro.

Cyber-squatter, typo-squattersand other trademark infringers have made the web a legal minefield. The questions that have foxed the courts for many years now are- Is domain name a property? If yes, to whom does such property belong? Is a domain name property of the first person that registers it or is it the property of the trademark owner that has invested time and money developing goodwill and reputation associated with the mark?

A cyber-squatter[7]is “an internet user who has registered multiple ‘domain names’ with the hope of selling them to the businesses who own trademarks identical to those names”. Another variant is a typo-squatter, who seeks to profit from controlling domain names, but instead of acquiring a domain name identical to the registered trademark owner, the typo-squatter[8]obtains common typographical permutations of domain names surrounding a high trafficsite.

Domain Name Disputes and Trademark Law

In Yahoo! Inc. v. Akash Arora[9], the defendant was restrained from using the domain name “yahooindia.com” which had the format, content and color scheme identical to the plaintiff’s “yahoo.com”. It was observed by Dr. M.K. Sharma, J. of the Delhi High Court that “ if an individual is a sophisticated user of the internet he may be an unsophisticated consumer of information and such a person may find his/her way to the different internet site which provides almost similar type of information as that of the plaintiff and thereby confusion could be created in the mind of the said person who intends to visit the internet site of the plaintiff, but in fact reaches the internet site of the defendant”.

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It was held that although the word ‘services’ may not find place in the expression used in sections 27 and 29 of the Act, services rendered have to be recognized for an action of passing off. That is, the two marks/domain names “Yahoo!” of the plaintiff and “yahooindia” of the defendants are almost similar expecting for the use of suffix ‘India’ in thelatter.

In Ruston and Hornhy Ltd. v. Zamindara Engineering Co.[10]where it was found that there was a striking similarity in between the two words “Ruston” and “Rustam India” and the fact that the word “India” was added to the respondent’s trademark was inconsequential and would not make any difference and the appellant was entitled to succeed for infringement of his trademark.

It is significant to note that the concept of trademark is closely related to commerce- whether offline or online. In both the places, its basic premise has remained the same i.e., to protect the public so that it may be confident that, in purchasing a product bearing a particular trademark which it favorably knows, it will get the product which it asks for and wants to get and secondly, where the owner of the trademark, has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by trademark infringers, includingcyber-squatter.

Conclusion and Recommendations

From this research paper we can conclude that there is no provision related to Trademark and Copyright Act in India under the IT Act. Also, it lacks somewhere in respect of jurisdiction issues, cybercrimes related to IPR, cyber stalking, cyber defamation etc. Intellectual Property is one of the valuable and important assets of any person because a person puts his skills and labors for creation of Intellectual property. So, there is a need of strict laws in this field, so that crime related to IPR could be avoided infuture.


[1] Harsh Chander, Cyber Laws And Its Protection 14 (PHI learning Private Ltd. Publication, 2012).

[2] Mr. Atul Satwa Jaybhaye, Cyber Law and IPR Issues: The Indian Perspective, (Bharti Law Review, 2016).

[3] Dr. Farooq ahmad, cyber law in india28, (New Era Law Publications 2012).

[4] Vakul Sharma, Information Technology Law and Practice 465-466, (Universal Law Publishing Co., 2011).

[5] Vakul Sharma, Information Technology Law and Practice516, (Universal Law Publishing Co., 2011).

[6]Niton Corp. v. Radiation Monitoring Devices Inc., U.S. 27 F Supp 2d 102 1998.

[7] Robert C. Scheinfeld & Parker H. Bagley, Long Arm Jurisdiction; Cybersquatting, N.Y.L.J., (Nov. 27, 1996).

[8]Robert C. Cumbow, typo-squatters Pose Threat to Trademark Owners on the Web; Misspell a Domain Name, Wind up at a Rival Site, N.Y.L.J., (Oct. 13,1998).

[9]Yahoo! Inc. v. Akash Arora & Anr., (1999) Arb. L.R. 620.

[10] Ruston and Hornhy Ltd. v. Zamindara Engineering Co. (1970) SC 1649.