ipr issues in digital media and digital commerce - ashish chandra

8/3/2019 IPR Issues in Digital Media and Digital Commerce - Ashish Chandra

http://slidepdf.com/reader/full/ipr-issues-in-digital-media-and-digital-commerce-ashish-chandra 1/32

Digital Media & DigitalCommerce

Dec 15, 2011

Ashish Chandra



Opening Statement

“This presentation is intended todiscuss e-commerce, media and

internet law and technology with an entrepreneurial

approach through emphasizing

the interaction between tech,business and law ”

2 © 2011, Ashish Chandra



Why is everyone so excited

about digital? (The ‘India’ Story)

• 800m + mobile users – shifting trend

to more data consumption on mobile

• 120m + internet users – India third

largest with a mere 10% adoption rate• National Broadband Plan estimate

broadband users @ 160m+ by 2016

• CAGR of 39% in Digital Advertisingduring 2007-10 making it the fastest

growing advertising market in India (as

per FICCI – KPMG Indian Media and Entertainment

Industry Report 2011)

3© 2011, Ashish Chandra



Why is everyone so excited about

digital? (The ‘India’ Story continues…) • Adoption of 3G & 4G technologies for data

transfer.

• Successful 3G and BWA auctions fetches Indian

Govt. more than Rs. 1 lakh crore (approx US$

22.2 billion) – its a serious business

• PPL’s revenue from mobile and digital rights

itself grew from a mere Rs. 7 crore in 2004-05 to

Rs. 138 crore in 2009-10 – a phenomenal 2000%

growth in just 6 years

• eCommerce valuation gone above the roof

• Expected shift in the manner of media

consumption and goods buying by urban and on

the move consumer 4© 2011, Ashish Chandra



What IPRs are involved in this

discussion??

• Trademark

• Copyrights

• Trade Secrets

• Patents• Contracts

• Data Privacy

• Common law rights

As a true IP lawyer, we should analyze and learn how acompany develops business model, deploys technologyand then uses IP laws and contract laws, to successfully

execute its business plans. 5© 2011, Ashish Chandra



Creating & protecting IP in “Global

Village” • Target Indian’s / people abroad

– Owning brand-names, copyrights and

protecting misuse of content

– Territorial restrictions and breaching pricingmodel and movement of goods

• Targeting India

– One of the largest consumption market

– Key market for English language content

Impact of each form of IP includes study of domestic as well asinternational IP laws




What we will discuss?

• Digital media & IPRs

• Digital commerce & IPRs

• Digital Contracts• Competition law issues

• New laws to watch out for




Digital Media & IPRs




Digital distribution of Media

• Cleaner: – Self

– Content Aggregators

– Third party service providers / OEMs• Ifs and Buts:

– P2P Networks

– Social Media Networks• Illegal:

– Breaking DRMs and unauthorized retransmissions

– Copy – paste - upload 9© 2011, Ashish Chandra



MVAS eco-system


(1) Content provider Telco End User

(On deck & off deck model & SMS / IVR

based)

(2) Content provider content

aggregator Telco End User (On deck

& off deck model & SMS / IVR based) (3) Content provider Content

aggregator OEMs Telco / End User

(typically through Mobile Apps)

(4) Content provider End User (typically

through WAP Sites)

(5) Content provider OEMs End User

(for eg: Star Plus app on iPhone / iPad)



Monetization of Media

• Text & graphics Advertisements – Self procured

– Network Advts

– Targeted Advts

• In-Video Advts

– Pre/mid/post scroll

• Subscription based• Through Telcos

• Enterprise valuation11© 2011, Ashish Chandra



What right does content owner

enjoys??• Copyright owners enjoy multiple distinct rights,

including:

– Reproduction

– Distribution – Public performance

– Derivative works

– Conversion of 2D to 3D and vice – versa – Personality rights

– Publicity rights




Digital Media – IPR issues

• Extent of extension of rights

– Means of diffusion

– Modes of display

• DRM v fair use• Technological standards – ‘open’ v ‘closed’

• Broadcast Reproduction Rights (“signal” or beyond)

• Performer’s rights • Other third party rights in overall packaged media

• Compulsory licensing

• Piracy13© 2011, Ashish Chandra



Why IP issues in media are

complicated? Eg of Music royalty

chart courtesy of Music Reports Inc, Woodland Hills, CA, www.musicreports.com 14© 2011, Ashish Chandra



Protecting Media o/s India

• WIPO treaties

• DMCA and its equivalents in other countries

• Extra territorial jurisdiction of IT Act

• Technology tools• Website blocking under IT Act

• Proposed WIPO Broadcasting / Webcasting

treaty• Music royalties to international societies

• Cloud computing




Intermediary Liability - Media

• Comparison: – YouTube v Viacom (US judgment)

– Super Cassette Industries (T-Series) v MySpace (Delhi High

Court)

• IT Act (sec 79 r/w sec 81)

• Copyrights (Amendment) Bill, 2011

• DMCA

– Is it for safeguarding innocent or safe-harbour forinfringers??

• Making ISPs accountable:

– Current ISP guidelines

– Graduated response (three strike principle) 16© 2011, Ashish Chandra



Digital Commerce & IPRs




Types of Digital Commerce

• B2C

• B2B

• C2C

• Social buying• Group buying

• Social Media buying

• Search engine buying• Television home shopping

• IVR based shopping




Digital Commerce – IPR issues

• Parallel import• Parallel export

• Breach of authorized distribution

channels

• Data privacy and data protection

• Use of third party trademarks

• Providing a venue for violation of law




Intermediary Liability - Commerce

• Section 79 of IT Act – Course of conduct – immunity available only if

• Mere access to a communication system

• Does not initiate the transmission

• Does not select the receiver of the transmission

• Does not select or modify the information contained in the transmission

• Observes Due Diligence

• Observes guidelines prescribed by Central govt.

– Malafide commissions – immunity not available

• Conspired, Abetted, Aided or Induced

– Omissions – immunity not available if

• Fails expeditiously to remove or disable access to the infringing / violating

transmission on:

• Receiving actual knowledge of the unlawful act

• Being notified of such unlawful act by Central Government or its agency

• Section 104 of Trademarks Act

• Section 51 Copyrights Act 20© 2011, Ashish Chandra



Intermediary Liability - Commerce

• Baazee.com / eBay case – Criminal liability of intermediary and officers

under IPC and IT Act

• Ramkumar Patent case – Contributory liability of intermediary

• Sanjay Kr. Kedia v Narcotics Control Bureau

– Abuse of safe harbour




Digital Contracts




23

Types of Internet contracts

• Click wrap – Standard contracts & non-negotiable

– “I Accept” / “Continue”

• Browse wrap

– Standard terms and conditions & non-negotiable

– Acceptance by way of course of conduct• Email contracts

– Offer through emails

– Acceptance of offer through emails

• SMS based contracts

– Send message to a keyword (i.e. “STAR”) or numeric short code (i.e. “57827”) • Tele-shopping / TV shopping

– Reference to terms and conditions in a specified hyperlink

– Generic description of goods on the media

– Acceptance through placement of order

© 2011, Ashish Chandra



24

Digital Contracts• Essential elements of contract:

– Offer & receipt of offer

– Acceptance & receipt of acceptance

– Record of instrument creating the contract (preferably for evidence purpose)

• Provisions in IT Act

– Section 11 – Attribution of electronic record (who has made the offer & who hascommunicated the acceptance?)

– Section 12 – Acknowledgement of receipt (whether the offer & acceptance wasreceived and acknowledged?)

– Section 13 – Time and place of dispatch (enters computer resource outside the

control of originator) and receipt (at designated computer resource, if specified,or general computer resource, if not specified)

• How IT Act could meet the requirements of contract:

– Offer & receipt of offer – Section 11 read with Section 13

– Acceptance & receipt of acceptance – Section 12 read with Section 13

– Electronic Record as evidence – Indian Evidence Act© 2011, Ashish Chandra



25

Issues to be considered

enforcement of e-Contracts• Fair terms: You can’t have your cake and eat

it too!!

• Reasonable notice: Avoid hide and seek!!

• Upfront intent to be bound: Caveat Emptor!!

• Changes: With prior notice and with consent

(‘opt out’)!!

• Keep copies: Facility to print and keep the

copy!!

• Date, time & place: Website should record

the date & time and IP Address of the person

accepting the e-contracts




26

Jurisdiction for enforcement• International: Key Principles

– Choice of jurisdiction in contract

– Territory principle (place of business)

– Nationality principle (head office)

– Effect principle

– Minimum contact principle

• Domestic: Key Principles – Civil Procedure Code read with Section 13 IT Act

– Supreme Court in Bhagwandas Goverdhandas Kedia v. M/s Girdharlal

Parshottamdas and Co.: 1966 SCC 543 & and A.B.C. Laminart Pvt. Ltd and

Another: 1989 SC 1239

• the normal rule applicable to postal communications would not beapplicable to communications which are instantaneous as in the case of a

telephone conversation or a telex message.

• when a contract comes into being in cases where the communications are

exchanged by post and communications are exchanged over the telephone

or telex the contract is only complete when the acceptance is received by

the offerer and the contract is made at the place where the acceptance isreceived




Competition Law issues




Competition law issues

- conflict or compliment

• IPR laws – self sustained code for anti-

competition? – Statutory License

– Compulsory License

– Fair Use

– Tariff determination

• Sector specific regulations eg: – Telecom & Broadcasting: TRAI

– Medicines: Drug controller of India






• Usual restrictions by IPR owners – Refusal to deal

– Patent pooling & cross licensing (similar to

copyright societies)

– Differential terms of sale of same product – Different prices for different territories

– Closed technological standards

– Cartelization v. collective bargaining

– Excessive rights management

– Tie-in sales

– Non Compete arrangements




• Section 3 – Anti-competitiveagreements

– Exception to IPR owners for:

• Retraining any infringement

• Impose reasonable conditions

• Section 4 – Abuse of dominant position

– IPR creates monopoly

– Puts IPR owner into a dominant position

– Trigger point is “abuse” of dominant

position



Very important to define and understand “relevant

market” in IP intensive industry 30© 2011, Ashish Chandra



New laws to watch out for

• Copyright (Amendment) Bill, 2011• Proposed - Utility Patents Bill, 2011

• FDI in retail (including retail eCommerce)

• Comprehensive MVAS guidelines by TRAI• Proposed Mobile TV guidelines

• WIPO Broadcasting Treaty

• RBI notifications under PSSA on internet and mobile

payments

• Proposed amendments to PRB Act

• Internet content regulation

• Network neutrality 31© 2011, Ashish Chandra



Ashish Chandra:

Email: [email protected]


mailto:[email protected]

mailto:[email protected]

ipr issues in digital media and digital commerce - ashish chandra

Documents