e-commerce law intellectual property and e-commerce

E-Commerce Law

Intellectual Property and e-commerce

What is intellectual property?

Intellectual property law relates to the protection of people’s ideas.

Intellectual property comprises:

What is intellectual comprises?

• Copyright• Performance rights• Moral rights• Domain names• Confidence

• Patents• Design rights• Trademarks• Passing Off

Relevance to e-commerce law?

Not all of these are relevant to e-commerce law. We shall confine ourselves to:

CopyrightTrademarksDomain namesPassing off

How is e-commerce effected?

E-commerce can be effected by:

Email; or

The internet.

IP law mainly concerns the e-commerce effected over the Internet.

Trademarks

Section 1 (1) of the Trade Marks Act 1994 defines a trade mark as:

‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings...............’

Trademarks

‘a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.’

The following have been held to be a trade mark

• Words

• Colours

• Sounds and Smells

• Slogans

• Logos / Designs

• Shape of goods and their packaging

Domain Names

A Domain name is a web address. For example:

www.marksandspencer.com

www.amazon.co.uk

www.ebay.co.uk

Domain Names

Domain names are in fact IP addresses. These are computer addresses.

212.219.32.8 Is the Law School’s IP address.

The English translation of these numbers can be very lucrative.

Domain names

Every country has their own set of domain names. In the UK we have:

.ac.uk Used by academic institutions, e.g. Northumbria University

.co.uk Used by UK companies

.org.uk Used by UK organisations

Top Level Domain Names

Top level domain names can be very valuable.

Some are more valuable than others. ‘.com’ is more valuable than ‘.br’.

Tuvalu

Tuvalu is a small island in the South Pacific. It is has the top level domain name of ‘.tv’

This is understandably very valuable.

www.kids.tv is for sale at $50,000

www.news.tv is for sale at $1,000,000

Domain names

How easy is it to create a domain name?

www.domainnames.com

Cybersquatting

Cybersquatting is a term that is used to describe a person who registers a domain name and then offers it for sale to the true owner.

There has been some litigation on this issue.

Marks & Spencer and others v

One in a Million Ltd [1998] FSR 265

Facts

The defendant’s registered numerous domain names which were already registered as trade marks.

The defendant was careful not to conflict with the operations of the trade mark owners.

Marks & Spencer v

One in a Million Ltd

The defendant’s had registered

www.bt.org

www.virgin.org

www.marksandspencer.co.uk

Marks & Spencer v

One in a Million Ltd

The court held that the defendants should transfer the names to their rightful owners.

Panavision International LP v Toeppen

Facts

Similar facts to the previous case. The defendant registered and set up a website www.panavision.com. Here the defendant actually displayed pictures of the town of Pana in America.

Panavision International LP v Toeppen

The defendant offered to sell the domain to Panavision.

Panavision International LP v Toeppen

Held

The court held that this contravened the Federal Trademark Dilution Act.

This act states:

Federal Trademark Dilution Act

  The owner of a famous mark shall be entitled … to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.

Panavision International LP v Toeppen

By attempting to sell the domain name to Panavision, this constituted the commercial use of another’s trade mark thereby contravening the Act.

Panavision International LP v Toeppen

Therefore, even though the defendant had some right to the domain name, the courts order that the domain name be transferred to the person with the best title.

World Intellectual Property Organisation (WIPO)

Domain name disputes are settled by WIPO.

www.wipo.org