Information Technology and Intellectual Property Rights
Prof. A. B. Suraj PGDIPR, NLSIU January-March 2010
An overview of prevalent criteria to establish and enforce IPRs
Sui Generis protection of IC Layouts
To appreciate the contribution of protecting IP in gaining global competitive advantage
IPRs General Bases
Economic (and technological) rationale aids overall development Social benefits Public Domain and Basic Research Legal monopoly fair regulation within territory
Forms of IPRs
Patents Patents Act, 1970 Copyrights Copyright Act, 1957 Trade Marks Trade Marks Act, 1999 Industrial Designs Designs Act, 2000
Forms of IPRs ...
Layout Designs of ICs Semiconductor Integrated Circuits Layout-Design Act, 2000 Geographical Indications Geographical Indications of Goods (Registration and Protection) Act, 1999
Forms of IPRs ...
Plant varieties Protection of Plant Varieties and Farmers' Rights Act, 2001 Traditional Knowledge partly by Biological Diversity Act, 2002 Trade Secrets Contractual no legislation in India
Across IPRs ...
National legal systems define criteria Territorial applicability only Registration is imperative Enforcement is multi-faceted
Claims of infringement and violation Defenses on grounds of "Fairness" Compensation/damages, interim measures Criminal remedies
Patent a monopoly right to an inventor 20 year period of monopoly granted for inventions that satisfy:
Novelty Inventive Step or Non-obviousness Utility or industrial application
What can you do with a Patent?
Section 48 of the Patents Act, 1970:
Make Use Sell Distribute Import
the invention within India Effect of Patents only territorial
Subject Matter of Patents
Must relate to any new process and/or a new product improvements also considered across any field of technology (TRIPs) Any process, machine, manufacture, composition of matter or material India has a long list of non-patentable subject matter, for example:
Computer programs per se or algorithms; Mathematical or Business methods; Traditional knowledge
US Case Studies
Gottschalk v. Benson (1972) NO unless there is a physical effect Diamond v. Diehr (1981) YES if part of an otherwise patentable process with a tangible result State Street Bank (1998) YES useful computation is in itself a tangible result
EU Case Studies
EPO Board In re Vicom Systems (1987) YES mathematical method must be directed to "technical process"
Digital processing of images Though not tangible or concrete, its utility was of "technological character"
In re Sohei (1996) YES despite "mix of technical and non-technical elements" if for an ultimate technical solution
Statutorily provided privilege to authors, aiming towards:
Creative and Intellectual enrichment of the public Progress of Scientific and useful Arts (literary, artistic, musical, dramatic, cinematographic films, sound recordings and now performances & broadcasting) Open Source and Copyleft
Bundle of rights right to make copies; communicate to the public; make adaptations and allow translations Fair Use nature and purpose based factors
Includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral Also packaging, combination of colours Or any combination thereof Sound = inherently distinctive and to be graphically represented
Any Mark capable of:
Being represented graphically; and Distinguishing goods/services of entity from those of others
to identify origin; to advertise/propagate the brand; and to indicate quality
Layout Designs protection:
Originality "uncommon product of intellect" Not commercially exploited (for more than 2 years) Inherently distinctive Distinguishable from other registered designs
IC Layout Designs ...
Use or sale of whole or original part of registered layout-design without permission is an infringement No violation if used for scientific evaluation, analysis, research or teaching Creation of an independent original layoutdesign from analysis can be separately registered
IC Layout Designs ...
Concept of "registered user" as notified by the Registrar
Licenses regulated strictly Statutory support to Users
Deterrent criminal remedies for:
Infringement Misrepresentation of "registration"
of information is legally protected
Enforcement of IPRs
Key trends from India and across the Globe
Large expectations driven by small initiatives!!
IBM v. Amazon = high profile dispute over 5 e-commerce based patents settled for unknown value Transmeta v. Intel = dispute over patents in power saving chips settled at over $150bn RIM v. NTP = Blackberry technology involved complex legal processes eventually settled at over $600mn
Negotiations are crucial, failing which litigation for compensation is undertaken
Record verdicts of compensation $1.62bn
Injunctions temporary (immediate) and permanent (final) Damages or compensation based on account on profits
Actuals; Loss of Goodwill; Deterrent Microsoft cases in India = > Rs.1 crore
Legal and other costs
Police and Court Commissioners
Litigation Remedies ...
Copyrights & TMs registration is best proof else, legal presumptions apply
Civil remedy enforceable by a District Court compensatory and injunctions Criminal remedy law provides for minimum imprisonment and fines offence is cognizable and non-bailable
Prevalence of Piracy
Total counterfeit trade = $624 bn Total online piracy = $84 bn Software piracy: Global = 35%; India = 73%; China = >90% Top Hollywood studios spend more than $40 mn on counter-measures
Figures from data sources of 2008
Liability in Cyberspace
"Deep pocket" strategy ISPs; Credit Card agencies Service Providers are exempted from liability if lack of knowledge despite "due diligence" Comprehensive Search & Powers given to the Police Seizure
Goodwill and reputation Consumer perception/identification Scientific and literary acclaim Advertising reach Traditional usage and "prominence" enjoyed Media fame
One form of IPR leads to the other!
Pressures of Enforcement
IPRs = fiercely competitive usage; justifies criminal remedies too IPRs and Global recognition
IPRs are territorial in nature No single authority or uniform standards National systems and interests continue to preside
Principles of Traditional Management
Perfect replicability & standardization Ever-increasing scale Incremental process efficiency
Efficiency + Productivity = Growth
Role of IPRs game-changer?
RoI = Return on Innovations Maximizes interests; with minimal efforts
Visibility and full exploitation Internal and external aggressive pursuit of IP protection Role of Intellectual assets in business alliances and joint ventures
Intellectual assets ...
Identifying the key geographical areas for marketing and registration of IPRs Study the level of innovative behaviour among the competitors; and suppliers Role of building brand equity
Typically of three types:
Captive entity wholly owned subsidiary IP is fully owned; but has other legal implications Joint venture a new combined company IP is based on the Shareholding Agreement
BOT Model involves transition risks
Contracting - with a local Supplier Enforcement with due diligence e.g., Confidentiality; Parentsubsidiary relations
Determining factors = cost, commitment, control, flexibility and liability models
IP issues in Contracting
Sharing regime + sustained ownership Disparities in applicable laws & IP rights Identify, define and document processes and products Due diligence & IP Valuation
IP issues ...
Enforcement involves local issues too Employer-employee relations framework of trusteeship Data protection and security Dispute settlement enforcement and arbitral
Licensing in IPRs
Emerging trends in global supply chain Minimum level of "reasonable control" as evidenced in Contracts and practices Raises anti-trust and RTP claims as well
Securitization of IPRs
Methods of valuation and their accuracy Procedure of affirming "secured interest"
Liability of Service Providers in ECommerce
Scope and content of "due diligence" Increasing burden on the ISPs to be "IP-Police"
Domain names and related legal disputes
Essential to `connect' identify and access online resources Wide online exposure leads to being highly reputed and valued Most effective depiction of Trademarks in the cyberspace
Are Domain names protected as Intellectual Property? Extensions through Top-level Domain several and exclusive
Emergence of the ICANN and in 1999 the Uniform Domain Name Dispute Resolution Policy [UDRP]
UDRP is akin to Arbitration proceedings Though mandatory to all registrants, no binding effect Lacks legitimacy of binding arbitration clauses Level of deference by Courts is very low
Typology of Domain name disputes
Classical Cyber-squatting "Non-commercial" form of cyber-squatting may correspond to Fair Use terms Involving Personal names Cultural names and Geographically significant
Deliberate misspelling of domain names intention to confuse the user
Results in a Civil action in the US
US Anti-cybersquatting Consumer Protection Act, 1999 Protects even Personal names which are protected as a trademark Regardless of the nature of goods or services Applies even against Fan sites; gripe sites
"Intentional" act of registration is also sought to be penalized
Element of intentional deception Periodic registration and its implications
Cyber-squatting = plaintiff must be the owner of a "famous mark" and show:
(1) that a domain name "is identical or confusingly similar to, or dilutive of" the owner's mark; and (2) that the defendant registered the domain name with a "bad faith intent to profit" from the name.
Grounds for a Complaint
To complain and invoke the UDRP process the following are the grounds:
that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and that the registrant has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered and is being used in bad faith.
Intentional acts to be proved bad faith of commercial use of trademark ACPA provides for forfeiture/cancellation and transfer of the disputed domain name