Cyber Laws

UNIT 6 IPR ISSUES IN CYBER SPACE

Structure

6.0 Introduction
6.1 Objectives
6.2 Basic Concept: IPRs
6.2.1 Forms of IPR
6.3 Copyright issues in digital- medium, music and goods
6.4 Patent misuse
6.5 Linking, In-lining and framing
6.6 Trade Mark Issues
6.7 Domain Name Disputes – Cyber squatting
6.8 Search Engines and their Abuse
6.9 Regulatory Frame Work- National and International Scenario.
6.9.1 Legal Protection in India
6.9.2 International scenario
6.10 Summary
6.11 Answer / solutions
6.12 References /further readings

6.0 INTRODUCTION

Management of Intellectual Property Rights in cyberspace is an important

issue to combat property infringements in the virtual space ensuring security to
the Intellectual Property Rights holders that they can control the use of their
intellectual property and be protected from unauthorised or unlicensed use of
literary work, trademarks, trade names, service marks, images, music or sound,
piracy of software’s. The Infringements in digital media may take different
forms that include Copyright’s violations, Deep Hyper linking, Framing, Meta-
tags, spamming. The Trademark violation is the most crucial issue giving rise
to Domain Name Disputes and cybersquatting, where the defendant/infringer
intentionally gets the domain name registered that includes the trademarked
words, company name, brand name etc. of the plaintiff company.

The traditional laws for protecting intellectual property have been also
applicable to the infringements taking place in digital media. However, due to
inherent nature of the internet, the relative anonymity afforded to the digital
transactions , jurisdiction issues, the ease of copying and distribution of copies,
several pertinent issues have emerged in recognizing various forms of online
infringements and resolving conflicts of owner of the right holders, of authors,
publishers, film producers, music creators and software developers exploring
ways to make their products available online, while protecting their rights and
recouping their investment.
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IPR Issues in Cyber
Space
One cannot deny that the Information Technology Act, 2000 has proven to be
successful in setting down the framework of laws and regulation in cyber space
and addresses numerous concerns related to the misuse of technology, but at
the same time the particular Information Technology Act, 2000 suffers from
some of the serious lacunae which all have not been primarily discussed,
known as intellectual property issues. Further, Intellectual property is
considered as an intangible asset therefore, there has to be specific penal
provisions under Information Technology Act, 2000, as the infringement of the
intellectual property is very easy in the cyberspace.

6.1 OBJECTIVES

After studying this unit learner will be able to:

 Discuss the basic concept and various forms of Intellectual Property
Rights.
 Analyse the copyright issues in digital- medium, music and goods.
 Discuss the concept and issues of Linking, In-lining and Framing
 Discuss patent infringement through digital medium
 Describe Trademark issues and Domain Name Disputes – Cyber squatting
 Explain the functions of Search Engines and their Abuse.
 Discuss the IPR regulatory framework at the National and at International
level.

6.2 BASIC CONCEPT: IPRS

The term Intellectual Property can be defined as intangible property which is

creations of one’s mind and is not merely an idea but an expression of it viz;
musical, literary and artistic works; inventions; designs; symbols, names and
images. Novelty is considered as the main ingredient for fulfilling the
condition of the intellectual property. The rationale behind providing
Intellectual Property rights and legal protection to the creators and inventors is
to give them, the due recognition for their intellectual work and also the
monetary benefits for certain period of time. This will further encourage more
innovations; economic and technological growth, facilitate the transfer of
technology providing more job opportunities, growth in industry, joint ventures
and licensing.

6.2.1 Forms of IPR

There are basically seven forms of intellectual property: copyright and related
rights; trademarks, patent, industrial design, geographical indications, trade
secrets and plant variety. (https://www.wipo.int).
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 I. Copyright and related rights Cyber Laws
a. A copyright is used to protect creative literary, musical, dramatic, or
other artistic works like cinematographs films and sound recordings
inclusive of musical compositions, audio recordings, paintings, photos,
sculptures, books, articles, diagrams, movies, website content and even
computer software and programmes though the inventions related to
software are protected under patent law.
b. Rights Granted: provides economic and moral rights. The copyright
owner has exclusive rights pertaining to reproduction and distribution
of their literary and artistic work; Public performance of the work;
Broadcasting of the work; communicating the work to public by wire or
wireless means; Commercial rental of the work.
c. Copyright protection is available if the work is original and exists in
some tangible form based on the national laws. It does not necessarily
require registration except for evidence that establishes ownership. The
right is granted for specific period and may vary from country to
country and from aparticular class of work to another class of work.
II. Patents
a) A patent is an exclusive right granted to protect an invention which is a
product or a process and can also be applicable to newly engineered
plant species or strain however a discovery, scientific theory or
mathematical method is excluded from patentability, but its application
or use can be patentable.
b) Rights Granted: are territorial in nature and patent protection is
granted for a limited period.
c) Patentable and non-patentable inventions -An invention is
patentable, if it is Novel, has Inventive step (non- obvious) and capable
of industrially application. However, the methods of doing
somethinglike book keeping, trading of stocks; Diagnostic, therapeutic
and surgical methods for the treatment of humans and animals;
Inventions contrary to humanity, public order, morality, public health,
environment and safety are not patentable. For example, process of
cloning.
d) There are certain products or process which are Novel and have
Industrial application and are protected as Utility Model not as patent,
for a shorter period, generally 10 years and do not require inventive
step as the protection requirement like patents.
III. Trademarks
a) A trademark is a distinctive sign, word, symbol or mark used in trade to
distinguish the goods or services. Trademarks help consumers to identify
the source of products or services.It could be name, signature, logo, brand
label, phrase, slogan, letter, a numeral or any combination of them.
b) For registration of trademark, it should be (i) distinctive in nature
(distinguishable from other goods and service). Registration of trade mark
is valid for specific period and needs to be renewed.

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IPR Issues in Cyber c) Registered trademark owner has exclusive right to use and is also
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entitled to complete or partial assignments of rights in relation to the mark
to another person, including the right to earn royalties.Trade mark owner
can also permit restricted use of trademark by way of trademark licensing.
IV. Industrial designs
a) Consists of appearance of a product/logo; the shape of an object;
composition of design, pattern of cloth. The industrial design may have
three-dimensional features, such as the shape or surface of an article, or
two-dimensional features, such as patterns, lines or color.
b) For protection, an industrial design must be (i) new or original and (ii)
aesthetic and requires mandatory registration.
V. Geographical Indication (GI)–
a) It is a name or sign used on certain products which corresponds to a
specific geographical location or origin (e.g. a region, or country).
A Geographical Indication should have special quality or
reputation.
b) Geographical indications are typically used for agricultural
products, foodstuffs, wine and spirit drinks, handicrafts, and
industrial products. Examples: Basmati rice, Swiss watches,
Ethiopian coffee, Tequila for spirits produced in Mexico, Electrical
appliance Made in UK.
c) In order to function as a GI, a sign must identify a product as
originating in a given place and the qualities, characteristics or
reputation of the product should essentially be due to the place of
origin.
VI. Trade Secrets
a) A trade secret is any confidential secret information having inherent
economic advantage to company and is used in business that gives a
competitive edgeby reason of it being secret. Examples include
formulae, practice,program, process, recipes, pattern, technique,
compilation, method, and device or product mechanism.

b) To qualify trade secret protection, no registration is required.

However, to protect a trade secret having commercial value the
businessesmust limit the number of persons who knows or access the
information and get the non-disclosureagreements signed by
employees.Trade secret remains valid as long as one does not discover it
independently.

Among all the intellectual properties copyright, trademark and patent are three
of the most commonly considered intellectual property, but nowadays
Geographical indication is also gaining a lot of attention as it is related to
specific region or any specific nature of work and by protecting those specific
regional work the intellectual rights of those regional people are protected and
this protection is promoting the work of all these regional people.

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The Information Technology Act, 2000 does not mention any thing about Cyber Laws
intellectual property rights. On the other hand, it can be taken into
consideration that infringement of intellectual property rights is a very
common practice in the cyberspace and it is very easy to practice any kind of
infringement over cyberspace. There are some categories of intellectual
property that needs lawto regulate the protection of intellectual works in
cyberspace. They are:

 Intellectual works in digital form can easily be replicated.

 Intellectual works in digital form can easily be transmitted.
 Intellectual works in digital form can easily be modified and manipulated.
 Intellectual works in digital form can easily be form in resemblance or
equivalence can easily be created.
 One can easily search anything in digital space and link their own work
with someone else’s work.

Apart from the infringements stated above, Intellectual property infringements

in cyberspace comprise of any unauthorized or unlicensed use of: Trademarks,
Trade names, Service marks, Images, Music or sound or literary matter.

☞ Check your progress 1 Spend 2 min

1. What is trademark?

6.3 COPYRIGHT ISSUES IN DIGITAL- MEDIUM,

MUSIC AND GOODS.

The global usage of Internet makes it feasible for any user to share information
in cyberspace through various social media means leading to various concerns
and issues related to piracy and counterfeited goods leading to huge monetary
losses and as a result fake and pirated products in market. Gulla, R. K., 2007
has rightly pointed out that “the Internet in a way presents a troublesome
situation for copyright holders as the users become mass disseminators of
others copyright material and creates disequilibrium between the authors and
users”.

The copyrights owner has certain rights as discussed above but the
reproduction right is considered as very important and a very fundamental right
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IPR Issues in Cyber that grants the copyright owner the right to exclusive right to control the
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making of a copy of the work or to grant permission for its reproduction. The
right to communication to public is also the right of copyright owner however
growth in digital technology, use of computer system and networks that allows
easy access and transmission of work makes the copyrighted work less distinct
and is communicated to the public may lead to infringement of right of the
copyright owner.

In cases where the defendant copies cd’s onto its servers and do not create any
new form of aesthetics, expression but rather to repackage and retransmit the
same expression through another medium leads to infringement of copyright as
held in Books, Inc. V. Kinko's Graphics Corp,1991 that repetition of
copyrighted material that "merely repackages or republishes the original" is
unlikely to be deemed a fair use. It was retreated in Infinity Broadcast Corp.
V. Kirkwood, 2d Cir.1998, where court rejecting the fair use defense by
operator of a service that retransmitted copyrighted radio broadcasts over
telephone lines as cited in the case UMG Recordings, Inc 2000, in this case
Utilizing the technology "MP3" which permits rapid and efficient conversion
of compact disc recordings ("CDs") to computer files easily accessed over the
Internet the defendant or around in January 2000, launched its
"My.MP3.com" service, which is advertised as permitting subscribers to store,
customize and listen to the recordings contained on their CDs from any place
where they have an Internet connection. To make good on this offer, defendant
purchased tens of thousands of popular CDs in which plaintiffs held the
copyrights, and, without authorization, copied their recordings onto its
computer servers so as to be able to replay the recordings for its subscribers. In
this case court held that “defendant's "fair use" defense is indefensible and
must be denied as a matter of law”. Further other affirmative defenses, such as
copyright misuse, abandonment, unclean hands-on part of plaintiff, and
estoppel, are considered to be essentially frivolous and accordingly disposed
of. (UMG Recordings, Inc. v. MP3.Com, Inc. (harvard.edu)).

6.4 PATENT MISUSE

A patent ensures total protection of the patented invention under the legal
system of a country under the legislation of which it is obtained.

A patent represents monopoly to the patentee that they have the exclusive right
to presents to the public the knowledge they have and the patented
invention can't be commercially used by any one, or made, distributed or sold
without the consent of patent holder. The object of the grant of Patent is to
encourage research and development, new innovation and industrial progress.
Any kind of practical application in the computer device is known to be
patentable but not all software’s are patentable but devices like pacemakers are
very much patentable, but a computer program is authorized for patenting only
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when it contributes to a particular art or a computer program creates a value Cyber Laws
edition within the existing program and enhances the speed and efficiency of
the existing program. In the Indian Patent Law, there is no specific provision
pertaining to the protection of software. The United States of America has
though recognises the patents for businesses like online stock trading,
gambling, e-commerce. Patent can also be misused by patent holder which
means an illegal behavior of patentee that leads to violations of the antitrust
law or when he tries to expand his product with the actual patent by getting
into other licensing agreements. When a patent misuse has been constituted,
the patent would be deemed useless. With the advent of digitized media, the
various patent infringements are seen in technology industries as given below:

 “Amazon tried to patent its one-click payment option. However, the court
decided it was too obvious an idea to patent.
 The file-sharing company Napster settled a lawsuit accusing it of
unauthorized distribution of music. It later filed bankruptcy.
 Nintendo was forced to pay a large sum to Tomita Technologies
International, Inc. for its 3DS gaming-system technology.
 Microsoft and Google dueled for five years over patent issues involving the
Xbox gaming system and Motorola smartphones”. (Famous Patent
Infringement Cases (upcounsel.com)).

6.5 LINKING, IN-LINING AND FRAMING

The Linking, In-lining and framing have become so common since in linking
person is providing link and is not making any copies of material available
online but the link here allows visitors to bypass information and
advertisements at the relevant home page, inlining allows display of graphics
on other website and framing often used in conjunction with inlining give
picture to picture image and the user can surf directly to the information
contained in another site without visiting its home page that may leads to
copyright or trademark infringement since it may cause loss of income to
businesses; create confusion among the users that the sites endorse each other
or are associated with each other which might not be correct and lead to
confusion as to original source and loss of reputation and goodwill of the
original information holder/ businesses.

“"Linking" allows a Web site user to visit another location on the Internet. By
simply clicking on a "live" word or image in one Web page, the user can view
another Web page elsewhere in the world, or simply elsewhere on the same
server as the original page. This technique is what gives the Web its unique
communicative power. At the same time, however, linking may undermine the
rights or interests of the owner of the page that is linked to. Suppose, for
example, that X sets up a homepage for her site. On the homepage she places
some advertisements, from which she hopes to make some money. The
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IPR Issues in Cyber homepage also contains links to various subordinate pages, which contain
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content that X believes consumers wish to see. Y then creates his own Web
site, which contains links to X's subordinate pages. The net result is that
visitors to Y's site will be able to gain access to X's material, without ever
seeing X's advertisements. This type of activity is called "deep linking.””
(Intellectual Property in Cyberspace (harvard.edu)).

Inlining
“"Inlining" is the process of displaying a graphic file on one website that
originates at another. For example, inlining occurs if a user at site A can,
without leaving site A, view a "cartoon of the day" featured on site B. IMG
links -- a special type of link -- can be used to display graphic files on one site
that are stored on another”. (Playboy Enterprises v - NYU Law)

Kelly v. Arriba Soft Corp,2003, a federal court of appeals ruled that it was not
an infringement to provide inlined links to "thumbnail" reproductions (here an
image search engine called ditto.com used inline links to reproduce full-size
photographic images from a photographer’s website) based on fair use
principlesbut there was no clarity as to whether inlined links to full-sized
reproductions constitute an infringement and are not automatically excused as
a fair use. In Perfect 10, Inc. v. Amazon.com, Inc ,2007, a federal court of
appeal again permitted the use of inlined links (reproductions of images from
an adult men’s magazine website) for thumbnail reproductions.

Framing
“"Framing" is the process of allowing a user to view the contents of one
website while it is framed by information from another site, similar to the
"picture-in-picture" feature offered on some televisions. Framing may trigger a
dispute under copyright and trademark law theories, because a framed site
arguably alters the appearance of the content and creates the impression that its
owner endorses or voluntarily chooses to associate with the framer”. (Playboy
Enterprises v - NYU Law).

In Futuredontics Inc. v. Applied Anagramic Inc, 2007, A district court ruled

that the addition of the reproduced Web pages within a “frame” by dental
website containing contents of other website detailing AppliedAnagramic as
well as its trademark and links to all of its Web pagesleads to modificationin
the appearance of the linked site and such modifications could, without
authorization, amount to infringement of derivative work.

Toavoid linking, framing, and inliningviolations one must seek permission

from original owner of content / information /graphics to for deep linking,
inlining, pulling full size images and framing graphic links comprising
trademarks that tends to side step the linked site's home page and need to sign
a linking agreement that give them right to display the Link and trademarks or
images in the Link at their Site.In case one could not obtain the required
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permission from the linked site, disclaimerclearly and prominently displayed Cyber Laws
and stating the source of information canreduce the liabilityfor unauthorised
use and compensatory damage.

6.6 TRADE MARK ISSUES

Trademark infringement issues arise when some other party uses the trademark
having deceptive similarity with the registered trademark of popular brand
with intent to confuse consumers as to the producer or manufactures of goods
or services. In cases of linking, framing apart from copyright infringement
trademark issues also arises. “Attempted enforcement of trademark rights
against persons who use marks or content to divert traffic from a trademark
owner’s site, whether the troublesome use is by friend or foe, requires careful
consideration of First Amendment (freedom of speech) concerns as well as of
trademark principles of fair use. The public relations nightmare that could
result from a misstep in this area should be balanced against both the perceived
need to police trademark rights and the proposed policing method.” (Sally M.
Abel,1999, p127)

6.7 DOMAIN NAME DISPUTES – CYBER

SQUATTING

Domain name is the internet/web address of a website, is a component of URL

(Uniform Resource Locator) which makes it easy to identify the Internet
protocol or IP address. It and may represents the trademark of an organization
or trade. Trademarks and domain names represent prominent marketing tool,
an identity of a business or an organization carrying the goodwill and
reputation attached with the business, organization, trade and service. It
provides a web address to the trademark in virtual world. For example, in the
URL: http://www.ignou.ac.in/ignou/studentzone/results/1, the domain name
would be: ignou.ac.in.

Cybersquatting, also known as “domain name hijacking” is a form of domain

name misuse and constitutes as an act of registering a domain name with
malafide intention which is actually someone else’ trademark. People create
and register domain names of other real owners as their own and take
advantage of it by selling them to the real trade owner on excessive price. It is
an unscrupulous practicethat leads to misrepresentation in the eyes of potential
buyers or services users impacting global trade and infringe the right ofthe
particular trademark.

In a famous case, Yahoo! Inc. v. Akash Arora, 1999, the defendant created and
registered a similar website on domain name “YahooIndia.com” and started
providing similar services under the name“Yahoo India” as a trade mark. It
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IPR Issues in Cyber was deceptively identical to the plaintiff’s website Yahoo. Inc. which is based
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in U.S.The High Court of Delhi held that the defendant is liable for deceptively
using Yahoo as a domain name and passed an injunction order to restraint the
defendant from misusing the trade mark. Thus, trademarks or domain names
are equally protected in cyberspace. InTata Sons Ltd v. MonuKosuri and
others,2001, the defendant registered the domain name which was deceptively
identical to the plaintiff’s trademark, “Tata”. The court passed an ad interim
injunction in favour of the plaintiff. In Acqua Minerals Ltd. v. Pramod Borse
and others, 2001, the defendant knowingly registered “Bisleri.com” as its
domain name who was not the real owner of the trademark. When the real
owner came to know about it, they filed an action against the defendant. The
court passed an injunction order against the defendant to protect the domain
name. (Seth, 2012,259-260).

It is considered as the easiest way of IP misuse which is committed in

cyberspace and the increasing cases of cybersquatting is becoming a concern
for protecting the identity and goodwill over cyberspace. Domain name is
beneficial for universal connection as it givesa worldwide recognition. There
are many international regulations which gets effected through WIPO to
effectively protect a domain name.

☞ Check your progress 2: Spend 2 Min

1. What is meant by domain name?

6.8 SEARCH ENGINES AND THEIR ABUSE

Cyberspace is a virtual place with endless possibilities, where Internet offers

search engine to search and find data in cyberspace. Search engine is a
‘searchable index of resources available on internet’. (Sharma, 2015,
525).Search engines connects the user with World Wide Web in one place and
is a tool which searches online data or content, for example, Google andYahoo.
When any website’s keyword is searched the user is tuned with the original
page of the websites or the domain name. However, there is possibility of
unfairness in this process that can lead to trademark infringement issues. The
main source of income for such search engine is advertisements showed on the
side of the search content. These search engines allow the advertisers to
purchase the advertising space on the page of the trademark actually searched
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online by the users.These days search engines follow the fashion of showing Cyber Laws
sponsored ads or links on the webpage searched or the keywords mentioned by
the user. Such practice of search engine is objected by trademark owners as
violation of trademark in cyberspace being unfair trade practice and
misleading. It has potential to create confusion in the mind of the consumer
regarding the trademark or keyword searched.
‘The meta tag helps one to preview that how the webpage will render on the
browser. The <meta> tag is placed within the <head> tag, and it can be used
more than one times in a document. The metadata does not display on the
webpage, but it is used by search engines, browsers and other web services
which scan the site or webpage to know about the webpage’(HTML meta Tag
- javatpoint).
Meta tags do not affect the appearance of a website and are not visible to the
Internet user but have been the subject of trademark infringementbecause it can
be used by companies in a deceptive manner by putting misleading terms in
hidden text or metatags on a web site to divert or confuse e-consumers, internet
users where the name of competing companies is substituted with the actual
terms that should be used to describing the website. For example, a shoe
manufacturing company may bury the meta tag "Bata" in its Web page to lure
internet users searching for Bata products.Besides the infringement issues, the
exercise of territorial jurisdiction over a domain name dispute and choice of
law is the major concern.

It is clear that the ranking over cyberspace can be manipulated and distorted
with the help of some illegitimate tricks. Therefore, a proper legal recourse is
necessary to overcome all such issues related to the search engine manipulation
and the consumers have to remain aware and be conscious at all times about
the fact that the information they are getting by using any search engine can be
misleading.

☞ Check your progress 3: Spend 2 min

1. Enlist copyright issues in cyberspace.

6.9 REGULATORY FRAME WORK- NATIONAL

AND INTERNATIONAL SCENARIO

6.9.1 Legal Protection in India

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IPR Issues in Cyber
Space
The internet has created a new virtual world and Information Technology Act,
2000 maintains that world in cyberspace by giving protection to various legal
challenges and their suitable solution. Intellectual Properties such as copyright,
trademark, patent, layout and circuit designs are the new members of this
virtual world which exists in the cyberspace. Therefore, the protection of these
rights is as essential as any other right within the cyberspace and with the ever-
changingtimes, the demand for protection and remedies is also changing and
the need of new and effective law to protect the new inventions is in
demand.(Aiswarya etall ,2018).

Copyright -In India copyright law is governed by Copyright Act 1957 as

amended from time to time. The act prohibits the unauthorized acts of making
Xerox copy of a book, copying a computer software program, and
incorporation of a portion of another’s song into a new song. TheCopyright
Act is applicable to original Literary, Dramatic, Musical, Cinematograph films,
sound records and Artistic works (see sec 13 of copyright act). It also covers
Anonymous and pseudonymous works and Posthumous work at presents the
act is compatible with Trade-Related Aspects of Intellectual Property Rights
(TRIPS) Agreement and is in harmony with WCT and WPPT. Section 52 of
the Copyright Act, 1957 includes in itself the principle of limitation and
exception to infringement of copyright as envisaged under Article 10 of WCT.
The acts allow fair use /fair dealing of a literary, dramatic, musical or artistic
work (not including a computer program) for the limited use like for private
and personal use including research, criticism or review whether of that work
or of any other work, reporting current events, for the purpose of a judicial
proceeding / a report of a judicial proceeding.The section further provides that
the following acts do not amount to copyrights infringement;-(a)making of
copies or adaptation of a computer Programme by the lawful possessor of a
copy of such computer Programme from such copy in order to utilize the
computer Programme for the purpose for which it was supplied or to make
back-up copies purely as a temporary protection against loss, destruction, or
damage in order only to utilize the computer Programme for the purpose for
which it was supplied;(b) the doing of any act necessary to obtain information
essential for operating inter-operability of an independently created computer
Programme with other programmed by a lawful possessor of a computer
Programme, if such information is not otherwise readily available;(c) in the
observation, study or test of functioning of the computer Programme in order
to determine the ideas and principles, which underline any elements of the
Programme while performing such acts necessary for the functions for which
the computer Programme was supplied; (d) making of copies or adaptation of
the computer Programme from a personally legally obtained copy for non-
commercial personal use.Thus,the Copyright, can be assigned or transferred or
the owner of the work can license specific uses to another person and
accordingly specify the gravity of ownership being given to another

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person.The Copyright expires after 60 years from the end of the calendar year Cyber Laws
in which the author diesLiterary, dramatic, musical or artistic works; The
Copyright shall subsist until 60 years from the beginning of the calendar year
following the year in which the film/sound recording /photographs/computer
programs is made available or first published as the case may be to the public.

The act provides economic rights under sec 14 of act to commercially exploit
his creationand also grants moral rights as envisaged under Section 57 of the
Act which are special rights of the author of the work viz., (i) Right to claim
authorship of the work; and (ii) Right to restrain or claim damages in respect of
any distortion, mutilation, modification or other act in relation to the said work
if such distortion, mutilation, modification or other act would be prejudicial to
his honor or reputation (“Right Against Distortion”). The moral rights can also
be exercised by legal representatives post death of the author. As per the
Amendment, the right against distortion is available even after the expiry of the
term of copyright.

With the advent of the information technologies and Internet, copyright

disputes infringement of copyrighted works in digital medium do arise but the
existing Copyright Law is also applicable to copyright challenges arising due
to use of digitaltechnologies and Internetand can be construed to cover
electronic publication. In addition to the Copyright Act, 1957, there is also
Copyright Rules, 1958 and the International Copyright Order, 1999. The
Copyright Rules contain the rules and regulations and provides various
procedures and where, the International Copyright Order is concerned, it deals
with the protection of copyright works of nationals of various foreign
countries.

Patent- It is governed by the Patents Act 1970; Patents Rules 1972. Section
2(m) of the Patent Act, 1970 provides for the definition of Patent which states
that: - “Patent means patent for any invention granted under this Act”.
To strengthen the patent law, India became signatory to many international
agreements like Trade Related Intellectual Property Rights (TRIPS), Paris
Convention and the Patent Cooperation Treaty and Budapest Treaty. The Act
provides for period of 20 years for every patent from the from the date of
application of patent irrespective of whether it is filed with provisional or
complete specification. However, in case of applications filed under PCT the
term of 20 years begins from the International filing date accorded under
PCT.Under the Patent Act, both processes and products are entitled to qualify
as inventions if they are new, involve an inventive step and are capable of
industrial application. however before grant of patent, Act allows both pre-
grant and postgrant opposition. Section 48 of the Indian Patents Act 1970,
confers exclusive rights upon the patentee to exclude third parties from
making, importing, using, offering for sale or selling the patented invention,
patented product or patented process and use of patented invention without the

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IPR Issues in Cyber prior permission from the patent holder may amount to infringement. the
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patent owner can however grant permission in the form of a license.
It is interesting to note that in some countries Industrial design is also protected
under patent, because these designs are created with some specific purpose and
they impact consumers’ choice between products. According to World
Intellectual Property Organization (WIPO), industrial designs impact
marketability and commercial value of product

☞ Check your progress 4: Spend 2 Min

1. What is termed as ‘patent’ according to the Patent Act, 1970?

Trademark-Trade Marks Act (TMA), 1999 protects the rights of the

trademark owners or business entities for a term of 10 years from the date of
application, renewable every 10 years on payment of the requisite fee.Sec 135
of the provides remedy in suits for infringement or for passing off in form of
injunctions and damages. Section 103 imposes penalty for applying false
trademarks, trade descriptions which shall be punishable with imprisonment
for a term not less than six months but which may extend to three years and
with fine which shall not be less than fifty thousand rupees but which may
extend to two lakh rupees. Further, section 104 of TMA imposes penalty for
selling goods or providing services to which false trade mark or false trade
description is applied punishable with imprisonment for a term not less than
six months which may be extended to three years and with fine which shall not
be less than fifty thousand rupees which may be extended to two lakh rupees.
In cases where trademark is unregistered in such situation common law remedy
of passing off is provided to the owner of the trademark. Section 29 of the
Trademark Act, 1999 deals with circumstances leading to infringement of
registered trade mark as where person affixes it to goods or the packaging
thereof; offers or exposes goods for sale, puts them on the market, or stocks
them for those purposes under the registered trade mark, or offers or supplies
services under the registered trade mark; imports or exports goods under the
mark; or uses the registered trade mark on business papers or in advertising.
Section 29(7) deals with violation of trade mark through labelling or packaging
goods, as a business paper, or for advertising goods or services, advertising ,
Sec27(8) provides that a registered trade mark is infringed by any advertising
of that trade mark if such advertising(a) takes unfair advantage of and is
contrary to honest practices in industrial or commercial matters; or(b) is

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detrimental to its distinctive character; or (c) is against the reputation of the Cyber Laws
trade mark. (www.indiankanoon.org).

Three types of remedies are available against infringement of IPR 1. Civil

Remedies- injunctions, damages, rendition of accounts, exparte order, seizure,
destruction or forfeiture of infringing goods. 2. Criminal remedies- section 63
of the Copyright Act, 1957 deals with Offences of infringement of copyright
and Chapter XII of the Trademarks Act, 1999 deals with offences, penalties
and procedures pertaining to trademark infringement. 3. Administrative
Remedies- import/ export of goods including protection of patents, trademarks
and copyrights under Indian Customs Act, 1962; Confiscation of infringing
material by Custom Authorities; Restrictions against parallel importation of
goods.
Trademark infringement through search engine is also subject of trademark
litigation. Considered as unfair trade practice and a matter of great concern for
judiciary to provide adequate protection to trademark owners in digitized
medium. The advancement of digital technology, therefore presents legislators
with a choice, either to expand or modify the existing law taking into account
the new concerns that emerged due to cyberspace.

The following laws govern other form of IPR for ex: Designs Act, 2000 deals
with laws relating to Industrial Designs; The geographical Indications of
(Registration and Protection) Act, 1999 for Laws relating to Geographical
Indication; Information Technology Act, 2000 deals with electronic records.

☞ Check your progress 5: Spend 2 min

1. What remedies are available against infringement of IPR?

6.9.2 International scenario

Important treaties which provide international protection to Copyright are: -

i. Berne Convention for protection of Literary and Artistic Works, 1886.
ii. Universal Copyright Convention, 1952
iii. Agreement on Trade Related Aspects of Intellectual Property Rights,
1994.

The purpose of making these treaties is to create uniformity in dealing with the
disputes related to the Intellectual Property Rights, because copyright is
governed within the country according to the internal laws of the country and
with the help of these treaties, uniform protection is given to all member
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IPR Issues in Cyber countries of that particular treaty. It is an important remedy against
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infringements and provides protection to copyright internationally. India is a
member country to these treaties and has given protection against all member
countries if any infringement of the copyright takes place. However, the
registration process of the copyright may differ from one member country to
another member country.

The Universal Copyright Convention (UCC) -was adopted in 1952 under the
support and protection of United Nations Educational, Scientific and Cultural
Organization (UNESCO) with a view to extend international copyright
protection universally. After the entry into force of the Revision Act, in 1971,
the members have to strictly comply in accordance to the revised version. The
Intergovernmental Copyright Committee has been also established in
compliance with Art. 11 of the UCC consisting of the representatives of 18
Contracting States. (Universal Copyright Convention. United Nations
Educational, Scientific and Cultural Organization (unesco.org))

Berne Convention-

The Berne Convention deals with the protection of works and the rights of
their authors. It is based on three basic principles: (1)Works originating in one
of the Contracting States (that is, works the author of which is a national of
such a State or works first published in such a State) must be given the same
protection in each of the other Contracting States as the latter grants to the
works of its own nationals (principle of "National treatment"), (2)
Protection must not be conditional upon compliance with any formality
(principle of "Automatic" protection),(3) Protection is independent of the
existence of protection in the country of origin of the work (principle of
"Independence" of protection). If, however, a Contracting State provides for
a longer term of protection than the minimum prescribed by the Convention
and the work ceases to be protected in the country of origin, protection may be
denied once protection in the country-of-originceases. Berne convention
contains a series of provisions determining the minimum protection to be
granted, as well as special provisions available to developing countries that
want to make use of them. The Berne Convention allows certain limitations
and exceptions on economic rights, that is, cases in which protected works may
be used without the authorization of the owner of the copyright, and without
payment of compensation. These limitations are commonly referred to as "free
uses" of protected works, and are set forth in Articles 9(2) (reproduction in
certain special cases), 10 (quotations and use of works by way of illustration
for teaching purposes), 10bis (reproduction of newspaper or similar articles
and use of works for the purpose of reporting current events) and 11bis(3)
(ephemeral recordings for broadcasting purposes).As to the duration of
protection, the general rule is that protection must be granted until the
expiration of the 50th year after the author's death. There are, however,
exceptions to this general rule. In the case of anonymous or pseudonymous
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works, the term of protection expires 50 years after the work has been lawfully Cyber Laws
made available to the public, except if the pseudonym leaves no doubt as to the
author's identity or if the author discloses his or her identity during that period;
in the latter case, the general rule applies. In the case of audiovisual
(cinematographic) works, the minimum term of protection is 50 years after the
making available of the work to the public ("release") or – failing such an
event – from the creation of the work. In the case of works of applied art and
photographic works, the minimum term is 25 years from the creation of the
work. (https://www.wipo.int/treaties/en/ip/berne/summary_berne.html).

Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS Agreement), it provides that the principles of national treatment,
automatic protection and independence of protection also bind those World
Trade Organization (WTO) Members not party to the Berne Convention. In
addition, the TRIPS Agreement imposes an obligation of "most-favored-nation
treatment", under which advantages accorded by a WTO Member to the
nationals of any other country must also be accorded to the nationals of all
WTO Members. Under the TRIPS Agreement, an exclusive right of rental
must be recognized in respect of computer programs and, under certain
conditions, audiovisual works. Under the TRIPS Agreement, any term of
protection that is calculated on a basis other than the life of a natural person
must be at least 50 years from the first authorized publication of the work, or –
failing such an event – 50 years from the making of the work. However, this
rule does not apply to photographic works, or to works of applied art.
(https://www.wipo.int/treaties/en/ip/berne/summary_berne.html).

The U.S. Copyright Act states that a copyright exists once an “original work
of authorship [is] fixed in any tangible medium of expression . . . from which
[it] can be perceived, reproduced or otherwise communicated.”17 U.S.C.
102(a).Copyright owners (or their assignees) have the right to carry out or
authorize reproduction and distribution of their work; preparation of derivative
works; and, for literary, musical, and various visually based works, the public
performance or display of their work. Copyright law also imposes limitations
on the exclusive rights that copyright owners enjoy during the life of a
copyright. Some of those limitations apply to the use of a particular product,
such as consumers’ ability to make an archival copy of a computer program
without authorization of the copyright owner(17 U.S.C. 117).

The Digital Millennium Copyright Act (DMCA), 1998

‘The Act modifies the details of copyright law in a variety of ways, including
instituting a royalty-setting process for Internet music broadcasts (Webcasts)
and specifying exemptions for library and archival copying. It also established
two major provisions of current digital copyright law—the ant circumvention
prohibitions and the safe-harbor requirements for Internet Service Providers
(ISPs)—that are intended to enhance the ability of copyright owners to protect

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IPR Issues in Cyber their work from infringing uses and to identify and prosecute those users found
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to be infringing copyright. The DMCA makes it illegal to circumvent a
technology that controls access to copyrighted materials—for example, an
encryption program that prevents unauthorized viewing of a movie on the
Internet.”[ 17 U.S.C. 1201(a)(1).]. The DMCA further prohibits manufacturing
or trafficking in products “primarily designed or produced for the purpose of
circumventing” technologies that are designed either to control access to
copyrighted material (as in the previous example of a movie distributed via the
Internet) or to prevent the use of such material in an infringing way. [ 17
U.S.C. 1201(a)(2) and (b)].In contrast, the DMCA does permit some
circumvention activities or products that do not infringe copyright. For
example, copyright law explicitly recognizes copying a computer program for
archival purposes as a limitation on the exclusive rights of owners of copyright
on computer programs. Hence, if a manufacturer of computer programs
applied a copy-control technology to prevent unauthorized copying of its
product, a lawful purchaser could legally circumvent that technology to make
an archival copy. The example of software copying illustrates a central
principle of copyright law: copyright owners have no legal obligation to
facilitate any activity that qualifies either as a limitation on their exclusive
rights or as fair use generally. At the same time, if the DMCA’s prohibitions
are to be effective legal instruments for deterring infringement, copyright
owners must take measures to protect their intellectual property from
unauthorized access and use. Thus, the fair use and other consumer concerns,
such as personal privacy on the Internet was taken into account while crafting
the anticircumvention provisions. However, technological progress is placing
growing strains on whatever balance had previously been achieved between
the rights of copyright owners and the interests of consumers.’ (Copyright
Issues in Digital Media, Aug2004).

International Patent protection Regime- There are many Patent‐related

treaties: WIPO‐administered treaties; Paris Convention (concluded 1883);
Patent Cooperation Treaty (1970); Strasbourg Agreement (1971); Budapest
Treaty (1977): Patent Law Treaty (2000);WTO TRIPS Agreement (1994);
Treaties outside WIPO; Regional treaties. Many inventors and other patent
owners provide products or services around the world. However, the protection
of a patent granted by the U.S. Patent and Trademark Office ends at the U.S.
border and cannot be usedin other countries to prevent the use of the particular
invention, owner of the patent needs to seek individual protection in each of
the country in absence of any single international patent. But if both the
foreign national’s home country and the country granting the patent have
signed an international treaty the rules of reciprocity to file patent application
may apply that requires a country that issues a patent to a foreign national to
provide the foreign national with the same rights as a patent owner that a
citizen of that country will have. For example, most of the nations have signed
the Paris Conventionthat deals with reciprocal rights in relation to patent

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applications though an inventor still needs to file a separate application in each Cyber Laws
country that has signed the Convention, but each country will use the U.S.
filing date for the application and to get advantage of this protection, a U.S.
inventor must file their application in the foreign country within a year of filing
in the U.S and the inventors of design patents must file application within six
months of the U.S. filing.However, filing for multiple patents to enforce one’s
patent rights in foreign countries by way of infringementsuits is very expensive
including hiring of lawyer fee.(International Patent Law and Protection.
Justia)

The Patent Cooperation Treaty is another international treaty that allows

patent protection for an invention simultaneously in each of a large number of
countries by filing an "international" patent application. Such an application
may be filed by anyone who is a national or resident of a PCT Contracting
State.t may generally be filed with the national patent office of the Contracting
State of which the applicant is a national or resident or, at the applicant's
option, with the International Bureau of WIPO in Geneva. If the applicant is a
national or resident of a Contracting State party to the European Patent
Convention, the Harare Protocol on Patents and Industrial Designs (Harare
Protocol), the Bangui Agreement, or the Eurasian Patent Convention, the
international application may also be filed with the European Patent Office
(EPO), the African Regional Intellectual Property Organization (ARIPO), the
African Intellectual Property Organization (OAPI) or the Eurasian Patent
Office (EAPO), respectively. The Treaty regulates in detail the formal
requirements with which international applications must comply. Filing a PCT
application has the effect of automatically designating all Contracting States
bound by the PCT on the international filing date.The international application
is subjected to an international search. (Summary of the Patent Cooperation
Treaty (PCT) (1970) (wipo.int))

Protection in cases of Domain Name Disputes-The WIPO provides for the

effective and speedy online complaint resolution mechanism and relief to the
victim in cases of domain name disputes which is known the ‘Uniform Domain
Name Dispute Resolution Policy’ adopted by ICANN on October 24, 1999.

The procedure introduced by the policy allows trademark owners to settle

cases of disputed domain name registration without resorting to national
courts. On ICANN’s authorization, the WIPO Arbitration and Mediation
Centre started offering its services for resolving the issues. (Sople, 2016, 287).
“All registrars must follow the Uniform Domain-Name Dispute-Resolution
Policy (often referred to as the "UDRP"). Under the policy, most types of
trademark-based domain-name disputes must be resolved by agreement, court
action, or arbitration before a registrar will cancel, suspend, or transfer a
domain name. Disputes alleged to arise from abusive registrations of domain
names (for example, cybersquatting) may be addressed by expedited
administrative proceedings that the holder of trademark rights initiates by
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IPR Issues in Cyber filing a complaint with an approved dispute-resolution service provider.To
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invoke the policy, a trademark owner should either (a) file a complaint in a
court of proper jurisdiction against the domain-name holder (or where
appropriate an in-rem action concerning the domain name) or (b) in cases of
abusive registration submit a complaint to an approved dispute-resolution
service provider”.(Uniform Domain-Name Dispute-Resolution Policy -
ICANN).

6.10 SUMMARY

The terms Intellectual Properties and Cyberspace is entirely different but in

digital world almost every information is available over cyberspace and
because of this many of the intellectual property works are getting infringed or
being misused which results in consumers being misled and violation of the
rights of the owners of the intellectual property. The rationale behind providing
Intellectual Property rights and legal protection to the creators and inventors is
to give them the due recognition for their intellectual work and also the
monetary benefits for certain period of time to encourage further innovations;
economic and technological growth but the IPR violations in digital media like
Copyright’s violations, Deep Hyper linking, Framing, abuse of search engines
by use of Meta-tags, spamming and especially trademark violation giving rise
to Domain Name Disputes are major concerns. Therefore, Management of
Intellectual Property rights in cyberspace is an important issue to combat
property infringements in the virtual space. It is seen that conventional laws for
protecting intellectual property in India and at International level is also
applicable to the infringements taking place in cyberspace.

6.11 SOLUTION/ANSWERS

Check your progress

1. A trademark is a distinctive sign, word, symbol or mark used in trade to

distinguish the goods or services. Trademarks help consumers to
identify the source of products or services. It could be name, signature,
logo, brand label, phrase, slogan, letter, a numeral or any combination
of them.
2. The domain name is a component of a uniform resource locator (URL)
used to access web sites, for example: URL:
http://www.example.net/index.html. It is Top-level domain,i.e . net.
Domain name: example.net.
3. The following IPR issues arises in cyberspace: Copyright issues;
Patent’s infringement; Linking, In-lining and framing; Trade Mark

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 disputes including domain Name Disputes – Cybersquatting and abuse Cyber Laws
of Search Engines.
4. As per section 2(1)(m) of Patent Act, 1970 patent means a patent for
any invention granted under this Act.
5. Civil Remedies- injunctions, damages, rendition of accounts, exparte
order, seizure, destruction or forfeiture of infringing goods. 2. Criminal
remedies- section 63 of the Copyright Act, 1957 deals with Offences of
infringement of copyright and Chapter XII of the Trademarks Act,
1999 deals with offences, penalties and procedures pertaining to
trademark infringement. 3. Administrative Remedies- import/ export of
goods including protection of patents, trademarks and copyrights under
Indian Customs Act, 1962; Confiscation of infringing material by
Custom Authorities; Restrictions against parallel importation of goods.

6.12 REFFERENCES/FURTHER READINGS

 Acqua Minerals Ltd. v. Pramod Borse and others (2001 PTC 619).
 Ahuja V. K (2017).Law related to Intellectual property rights. 3rd ed.
LexisNexis.

 Aiswarya etall (2018). IPR and Cyberspace-Indian Perspective with

Special Reference to Software Piracy. International Journal of IPR
regulatory framework.119 (17), 1677-1692.
 Books, Inc. v. Kinko's Graphics Corp., 758 F.Supp. 1522, 1530-31
(S.D.N.Y.1991)
 Consim Info Pvt Ltd v. Google India Pvt. Ltd. Retrieved on March 10,
2020 from https://indiankanoon.org/doc/155459494/.
 Controller General of Patents, Designs & Trademarks (2020).
Retrieved from http://www.ipindia.nic.in/patents.htm
 Copyright Issues in Digital Media (Aug2004). The Congress of the
United States Congressional Budget Office. Retrieved from
https://www.cbo.gov/sites/default/files/108th-congress-2003-
2004/reports/08-09-copyright.pdf
 Futuredontics Inc. v. Applied Anagramic Inc (1997 46 USPQ 2d 2005)
;(C.D. Calif. 1997).
 Gogoi, C. Trademark Infringement through Keyword Advertising in
India: Issues and Challenges. Retrieved March 10, 2020, from
http://docs.manupatra.in/newsline/articles/Upload/.

 Gulla, R. K. (2007). Digital Transformation of Copyright Laws and the

Misty Indian Perspective. Icfai Journal of Intellectual Property Rights.
6(3), 1-26.
 HTML metaTag - javatpoint. Retrieved from
https://www.javatpoint.com/html-meta-tag

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IPR Issues in Cyber  International Patent Law and Protection. Retrieved from
Space
https://www.justia.com/intellectual-property/patents/international-
patent-protection/.
 Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003).
 Linking, Framing, Meta Tags, and Caching. Retrieved from
https://cyber.harvard.edu/property00/metatags/main.html

 Nolo eCommerce Center. Linking, Framing and Inlining.

https://www.garage.com/resources/reference-library/internet-
law/linking-framing-and-inlining/
 Perfect 10, Inc. v. Amazon.com, Inc. CV-05-04753-AHM (9th Cir.,
May 16, 2007).

 Playboy Enterprisesv - NYU Law. Retrieved

https://www.law.nyu.edu/sites/default/

 Rich stim. Connecting to Other Websites - Copyright Overview.

Stanford Copyright and Fair Use Center. Stanford Libraries Home,
Justia, NOLO, LibraryLaw.com &Onecle.
 Saha.S (2012).Challenges to Intellectual Property Rights in
Cyberspace.LAP Lambert Academic Publishing .
 Sally M. Abel (1999). Trademark Issues in Cyberspace: The Brave
New Frontier. 5 MICH. TELECOMM. TECH. L. REV:91. Retrieved
from
https://repository.law.umich.edu/cgi/viewcontent.cgi?article=1158&co
ntext=mttlr;
https://assets.fenwick.com/legacy/FenwickDocuments/Trademark_in_
Cyberspace.pdf
 Seth, k. (2012). Computers, Internet & New Technology (1sted.).
Nagpur: Lexis Nexis Butterworths Wadhwa.
 Sharma, V. (2015). Information Technology Law & Practice: Law &
Emerging Technology. Cyber Law & E-Commerce (4th. ed.). New
Delhi: Universal Law Publication.
 Sople, V. (2016). Managing Intellectual Property: The Strategic
Imperative (5th ed.). Delhi: PHI Learning Pvt. Ltd.
 Summary of the Patent Cooperation Treaty (PCT) (1970). Retrieved
from
https://www.wipo.int/treaties/en/registration/pct/summary_pct.html.
 Tata Sons Ltd v. MonuKosuri and others (2001 PTC432.).
 UMG Recordings, Inc v. MP3.com, Inc., No. 00 Civ. 472(JSR). United
States District Court, S.D. New York., May 4, 2000. Retrieved from
https://h2o.law.harvard.edu/cases/2623.
 Uniform Domain-Name Dispute-Resolution Policy - ICANN.
Retrieved from https://www.icann.org/resources/pages/help/dndr/udrp-
en.

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 Universal Copyright Convention. United Nations Educational, Cyber Laws
Scientific and Cultural Organization. Retrieved from
http://www.unesco.org/new/en/culture/themes/creativity/creative-
industries/copyright/universal-copyright-convention/.
 WIPO. Retrieved from
https://www.wipo.int/edocs/mdocs/africa/en/wipo_tiscs_kla_17/wipo_t
iscs_kla_17_t_4.pdf
 Yahoo! Inc. v. Akash Arora, (78(1999) DLT 285).

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