JEANINE RIZZOCOMNET 9th June, 2010

INTELLECTUAL PROPERTY IN THE DIGITAL MILLENNIUM

The IP RightsThe IP RightsEU & Malta

• COPYRIGHT• TRADE MARKS• PATENTS• DESIGN RIGHTS

• Geographical Indications of Origin

Digital MillenniumDigital Millennium

COPYING in the digital era

COPYRIGHT?• Gives the creator of a work

exclusive rights over that work. • Lasts for life of author + 70 yrs

post mortis autoris • Copyright exists for the following

types of works:(a) artistic works(b) audiovisual works;(c) databases;(d) literary works;(e) musical works.

Restricted ActsReproduction

direct or indirect, temporary or permanent, by any means and in any form, in whole or in part;

Distributionissues of exhaustion

Translation and Adaptationeven into other computer languages

Communication to the public

Making Available (NEW)At a time and place chosen by the user

COPY – defined

Maltese Copyright Act:a reproduction in written or graphic form including digital reproduction, in the form of a recording or audiovisual work, or in any other material form

Of whole or a substantial part of the work.

Limitations = exception

(a) ….. …… …… ….. …… …… (w)

Transient and incidental copies are allowed. Transient = occur as part of transmission but

have no significance from a Copyright perspective

Incidental = occur only for technical reasons, for example rooter copies. They occur whether or not you want them to.

Peer 2 Peer• Making available to

others– Was “created” for the Net– Is the work being made

available legal?• Making of a reproduction

on your computer• File sharing =

transmission & reproduction

• Legality of source copy

The Napster set up

P2P – evolution from Napster to Grokster

Pirate Bay

• The Pirate Bay Case, Sweden• Site is a search engine and tracker of links to where you could download music or films. • BitTorrent software used: allows people to d/l

the same program at the same time, even if just a fraction of it.

• 4 people who ran the site sentenced to 1 yr in jail and $3.6m in damages for contributory liability/indirect copyright infringement.

DRM• Digital Rights Management

– aka Technological Protection Mechanism

• Is technology encrypted onto software which decides whether to grant access.

• Disallows you from carrying out certain acts:Eg, cannot make copies, cannot print;

cannot play on other brands of players

Trade Marks• any sign capable of being represented graphically which is

capable of distinguishing goods or services of one undertaking from those of other undertakings.

• Exclusive rights last for 10 years, and can be renewed ad infinitum.

• Stops others from using:– Identical sign on identical goods– Similar sign on identical goods, or identical sign on similar goods – if

there is likelihood of confusion.

• Special provision for well known marks.

Cyber-Squatters

• Cyber-squatters– Use popular trade marks. – Register them as domain names then sell them back to the

interested companies. – Example: www.marksandspencer.com

• Typo-squatters– Register as a domain name a misspelt version of the trade

mark• Example: www.amazone.com instead of www.amazon.com

Distinctiveness.

Territorial.

Registered for a specific set of goods/services.

Same sign can be used by unconnected entities, for different commercial sectors.

Needs likelihood of confusion.

No such requirement needed.Universal – for all www.

No classification system. Can exist in abstract.

Just one domain name exists, therefore cannot be used by unconnected entities.

No need of likelihood of confusion.

Trade Mark Domain Name

CASES• Marks & Spencer plc v One in a Million:• www.marksandspencer.com; www.bt.com • French Connection UK – www.fcuk.com • www.easyrealestate.com• www.shell.de• www.barcelona.com• www.eilberg.com

• www.walmartsucks.com• www.stopdanone.com

Google cases: Adwords, YouTube, Google cases: Adwords, YouTube, BooksBooks

Trade MarksTrade Marks• Google AdWords Case: Google sell

keywords to advertisers. Words entered as a search query trigger adverts or “sponsored links”. Google sued for TM infringement by 3 companies.

Real v FakeReal v Fake

Google Adwords Case

• The case was heard by the Court of Justice of the European Union.

• Cases filed in France by Louis Vuitton, Viaticum and Luteciel – especially in the case of LV, Google sold keywords to advertisers of imitations of LV products.

• Court of Justice turned out a peculiar judgment:

Court’s Decision

• The Court decided two points:1. Use by an advertiser of a keyword identical

to a third party’s trade mark constitutes a key prerequisite to finding TM infringement;

2. With regard to Google, the Court of Justice held that it did not infringe EU TM law since it was carrying out a commercial activity, selling advertising space.

Copyright – YouTubeCopyright – YouTube

Copyright Copyright

• YouTube case• Filed by Viacom and others against YouTube

for copyright content posted onto the site• YouTube claim protection of Safe Harbour

provisions under the eCommerce Directive:» They are not the ones to post the material to the site» They remove content when infringement notice received

Copyright Copyright

Copyright – Google BooksCopyright – Google Books

• Class action brought by the Author’s Guild against Google for infringement of copyright– Google had scanned, copied and produced digital versions

of books (public domain, orphan works, and copyrighted)• The claim was for Google to pay $125m• In 2008 a settlement was reached, but other Court

cases followed, and the settlement was reviewed. • Google conceded that it had copied 12m books, and

had identified 174 similar books to digitise.

The KindleThe Kindle

Writers are now selling their

publishing rights directly to

Amazon and not to “traditional”

publishers.

THANK YOU FOR YOUR ATTENTION

Jeanine Rizzo