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PAPER: FLO/1.2 by Jürgen Betten IP and the Internet 1. Introduction The Internet is about 30 years old and has its origin in the year 1968 when a project group of the Department of Defence of the USA proposed - for defence purposes - the ARPANET (Advanced Research Projects Agency). In the early 1970's the Internet developed from the ARPANET. The Internet can be described as a global network connecting millions of computers and which uses a common Transmission Control Protocol, the TCP/IP. In order to get access to a particular internet computer, the Internet Protocol (IP) address is used. The most important service of the Internet is the World Wide Web (WWW or 3W) which was developed in 1993 in the CERN in Geneva, Switzerland. It has a special transmission protocol, the http (Hyptertext Transfer Protocol) with a special language HTML (HyperText Markup Language) to describe the documents (websites or web pages) stored on servers throughout the world. It is estimated that more than 100 millions of web pages exist with exploding tendency. The other main service of the Internet is the electronic mail or e-mail. It is estimated that there are more than 70 millions of e-mail users with yearly increase rates of at least 110%. The success of the Internet was mainly due to the fact that almost no rules exist, that it is free of charge, easy to use, and meets the requirements of the young generation to explore the world through the computer. At the very beginning when the Internet was mainly used by governmental and university people it was considered as an area free of law. But it turned out quite fast that the existing laws also cover the Internet and that the Internet does not give rise to really new IP problems, if you take into account the broadcasting or radio transmission or the satellite transmission. In this workshop we want to discuss only a few problems, mainly in the field of trademarks and patents. Nevertheless, we know that there are also a lot of problems in the copyright field. As far as copyright is concerned you should keep in mind that the international conventions, such as the Berne Convention for the Protection of Literary and Artistic Works, and the National Copyright or Author's Protection Laws mention only an unlimited list of protected works. Further, it is the primary function of the copyright law to let the author have a share in the fruits of his work, i.e. any use of the work. Therefore, and this was purported by a member of the competent senate in the German Federal Supreme Court some weeks ago in a conference of lawyers and patent attorneys specialized in the computer law, that it is quite clear that the judges will find ways to protect the rights of an author also in the Internet with the copyright law as it stands. Of course, it would be better - for clarification purposes - to have a so-called transmission right besides the right to reproduce or copy. Nevertheless, the copyright law can successfully be used in the Internet already now. One last general remark. Please make it clear to your client that the website or homepage is a very sensible publication which can easily be accessed from all over the world and that he should not only entrust the computer freaks in this firm with the design of the homepage, but it should be checked by the management, the law department, or attorneys as with usual publications.
2. Trademarks 2.1 System of Signs Designating Products or Companies We have heard yesterday in the workshop 2.4 more about domain names. If you look at the IP in general, we have to ask how the domain names fit into the system of trademarks, service marks, trade names (commercial names) and the like.All these "signs" are considered equal rights and the priority is decisive which sign prevails over the other sign. The general opinion as to domain names is that they are at least some kind of trade names so that they are to be considered to some extent equal rights to trademarks and trade names. The generic top level domains (gTLDs) like .com, .edu, .gov, .int, .mil, .net, and .org and the two-letter top level domains (TLDs) like .ca, .de, .tm (Turkmenistan), .tv (Tuvalu), .us etc. are registered on a first-come, first-served-basis and are accessible throughout the global Internet. Opposite thereto the trademarks and trade names are, due to the principle of territoriality, protected by national laws only for one country. In the great majority of countries the trademarks are also registered on a first-come, first-served-basis and the prior use is relevant only in exceptional cases, whereas in the US and some other countries the trademark must normally be used before granting it protection. This means that for trademarks only in a few countries the prior use has some influence on the priority, whereas in most countries the priority is determined by the application date. With trade names, in most countries the first use of the trade name in the corresponding country determines the priority, whereas the registration in the company register is more of declaratory nature. In view of the fact that the domain name is considered as a trade name, it can only be enforced in a country against a younger national trademark or trade name, if it has been used in this country. For this it is in my opinion, however, not sufficient to prove the "use" by showing that someone from this country had access to the web page of the domain name owner. The domain name should be used in commerce of this country, i.e. on advertisements, leaflets, business papers or in connection with the product, if the product can be distributed - like a computer program - through the Internet. 2.2 Protection of Names of Computer Programs (German Speciality) In this connection a German speciality should be mentioned which is quite unknown outside Germany or even with German lawyers and patent attorneys, namely the protection of names of computer programs as "title". From a personal survey I know that this kind of protection might be available also in other countries, at least on the European continent. Just as in some other countries of the world, the title of literary and artistic works, such as books and films, is protected in Germany. This protection used to be provided for by the Unfair Competition Law. Since January 1, 1995 this protection is provided for by section 5 of the new Trademark Law. This kind of protection, which does not require a registration, but only the use of the title in Germany, was extended in the last years by the German Federal Supreme Court to the names of games, computer games, and computer programs, if they were distinctive. According to the grounding of the decision "PowerPoint" this new kind of protection can also be used for other "intellectual products" for which a name is used. This may help in those cases where a company A forgot to register the name of the computer program as a trademark in Germany, and a company B registered a trademark after the name of the computer program of company A was used in Germany. If you can show e.g. that you have offered the new computer program in the Internet and that some programs carrying the name had been shipped immediately thereafter to Germany and are usable in Germany, your program is protected as "title" in Germany as from the date of offering the product in the Internet, without registration as trademark. 2.3 Does incorporating a trademark in a web page fulfill the "use" requirement for a trademark through the Internet? In most countries where the use of the trademark is compulsory either before registration (as in the USA and Canada) or after a grace period of - in most countries - five years after registration, the trademark can only be enforced if the "use" requirement has been fulfilled. In most countries the trademark must be used in connection with the goods or services in respect of which it is registered. Some trademark laws even prescribe the use on the goods or on the packaging or wrappings and consider the use of the trademark only in advertisement not sufficient use to maintain the trademark right. In the USA the trademark owner must establish that the mark was used in commerce of the USA, that the mark was affixed to the goods, and that the use in commerce was considerable and not only de minimus use. To use the trademark only on the website in the Internet, i.e. on the display, will most probably not be considered sufficient use in all countries from which the website could be accessed. I have also doubts whether it will be considered sufficient use if you only prove by a log file that your website has been accessed by users from that country. In my opinion the product (or the packaging or wrapping thereof) containing the trademark must be shipped to the country in which the priority of the trademark is claimed. 2.4 Special Internet Problems in connection with Trademarks 2.4.1 Meta-Tags I have already mentioned in the introduction the HTML (HyperText Markup Language) which defines the logical structure of the document or web page, not the layout. Its commands are designated as "Tags" and written between acute brackets <>. One special command is the <META> command or Meta-Tag which contains information about the document (author, key words, abstract of the document etc.) This information is used especially by search engines to find the document and to determine the degree of relevancy of the document. With this it is possible to use trademarks as key words, your own trademark or - and this is more important for us - also the trademark of a competitor. You should realize that these key words cannot be seen by the end user without special efforts and this explains why it is possible that you hit upon a document which does not contain the key word for which you were searching. Let us assume that a competitor of "Coca-Cola" uses the trademark "Coca-Cola" as Meta-Tag. If now somebody is looking for "Coca-Cola" he will get a list of hits which contains also the homepage of the competitor. If the competitor optimizes this by multiple insertion of "Coca-Cola" as a Meta-Tag, he can even come up as number one or two on the list of say 3500 hits. Since most probably only the first hits of a search will be looked up, this would mean that it is possible to misuse a trademark of another company by Meta-Tagging. In some countries, at least on the European continent, this might be considered unfair competition. Some persons doubt whether this hidden use of someone other's trademark is considered a trademark infringement, because the trademark is hidden and not used as a trademark. According to Art. 5 No. 1(a) of the European Trademark Harmonization Directive "the proprietor of a trademark is entitled to prevent all third parties using in the course of trade any sign" - i.e. even an invisible sign - "which is identical with the trademark in relation to goods or services which are identical with those for which the trademark is registered." If we assume that the web page relates to identical goods or services, the use of the Meta-Tag could probably be seen as an infringement of Art. 5 No. 1(a) of the European Trademark Harmonization Directive. In Art. 5 No. 3(b) of the European Trademark Harmonization Directive it is made clear that it may be prohibited "using the sign on business papers and in advertising", i.e. on the web page. In the USA this was considered unfair competition because of confusion or misleading representation. Stephanie Chong of Canada questioned in an article, "whether the end-user might be confused by trademark usage which he or she cannot see. The end-user may not be confused once the list of hits is perused and each site examined. If, however, you have a long list of hits and only the first ones are examined, the risk of confusion might be high if the wrong webpage is at a prominent place." 2.4.2 HyperLinks We distinguish between normal "links" or "outline links" and so-called "inline links" or "embedded links". With the outline links you will jump after a click to a remote webpage. In the case of the embedded link the object (the other or remote webpage or part thereof) will be integrated in the base webpage you see in the moment. If this integrated part contains someone else's trademark, this might be a trademark infringement. The same might be true if by a normal (outline) link a special page of someone else is addressed, without seeing the first or home page so that, if a trademark of someone else is used on this (special) page, this might be considered as use of the trademark in the base website. A special case of the embedded link is the so-called framing, where the embedded parts of remote webpages of other parties are framed. Apart from an infringement of the copyright act also trademark infringement could arise. 3. Patents 3.1 Preliminary Results Concerning the patent protection of computer programs which was a topic on the last Forum I would like to make a preliminary remark. In view of the practice of the last two to five years and the developments in the USA, Japan, Korea, and in Europe, it can be said that you can get a patent in principle for all computer programs (including business methods) which are new and inventive and for which it makes sense to invest the high costs for filing a patent application. This is at least valid for the USA, Japan, Korea, the EPO, and the GPO. In this connection I would like to mention only a few decisions: "In re Alappat" (US-CAFC), "Sohei" (Technical Board of Appeal of the EPO) and now "State Street Bank" (US-CAFC). You probably know from the Annual Report 1997 of the EPO that the applications concerning data processing had in 1997 the highest growth rate of 28%. It seems to be that even the UK Patent Office might find some ways in the future to come along the still negative court decsions or to induce a new positive court decision in the UK. Taken this, it is clear that also for all Internet technologies patents are granted to a great extent. According to a report of an American search company over 500 PCT patent applications were published in 1997 by WIPO for technologies concerning the Internet such as: browsers, data compression, e-commerce, interfaces, Java applications, multimedia, payment, protocols etc. For quite a lot of these PCT applications the regional phase with the EPO was entered. Therefore it seems to be worthwhile to have a closer look at how a patent application could be better prepared to meet the requirements of a use of the patent in the Internet world. 3.2 Claim Drafting 3.2.1 Program Product or Media Claims and Internet Claims In the moment the hottest topic in the field of patent protection of computer programs is the protection of "program product claims" or "media claims" - in the USA also named "Beauregard" claims. Such "media claims" read as follows:
The intention of such media claims is to enforce the patent against direct infringement, i.e. to protect the product which is commercialized or put to the market, whereas you can enforce your method claims only under contributory infringement. Such kind of claims are granted by the USPTO, the Japanese and the Korean Patent Offices. With the EPO and the GPO it is not yet clear whether and in which form such kind of claims are granted. In my opinion it is not a question of amendment of the EPC or the EPO Examination Guidelines, but only a question of finding convincing arguments according to which such kind of claims are necessary for sufficient protection of the invention. It is generally accepted that the enforcement against direct infringement is easier to establish than against contributory infringement. Further, infringement of a European patent is dealt with by national laws, which are still not harmonized. Further, it would be discriminative in comparison with other technologies to grant only method claims and not claims directed to the actual product being commercialized. Therefore a need exists to have protection against contributory (indirect) and direct infringement. According to the German law adapted to the EPC, it is up to the applicant to decide for what kind of claims he wants to have protection. The same is valid for the EPC. For the Internet you need claims that would read not only on storage mediums, but on the transmission and electronic distribution or such kind of claims like
With such "Internet claims" you could stop someone who is offering the computer program stored on a server outside the patented area and could be downloaded in a country where a patent exists. According to a not yet published decision of a Technical Board of Appeal of the EPO in principle the media claims and the Internet claims are admissible. It is now up to the Examination Division to decide which form such kind of claims should have. The German Patents Court will most probably decide on this question during the next year. 3.2.2 Apparatus and Use Claims In case of distributed computing on different places of the world by using one inventive and protected method, apparatus and use claims might be helpful, besides the method claims. Let us take a multi-user system in global environment distributed all over the world and a patented system (covered by method and system claims) which is run partly on a workstation in Tokyo, on a workstation in Paris, and a workstation in New York. In this case you need not only method and system claims to protect the invention, but also apparatus claims directed to the individual workstation or use claims (use of a workstation for carrying out the method or part thereof). 3.3 Protection of Data Structure The protection of data structures, not of the data or the content itself, is especially important for protection of inventions in the database field. In view of the fact that in the Internet a lot of databases are stored all over the world, the database can easily be stored on a server in a country without patent protection. According to the US-CAFC ("In re Lowry") data structures imply a physical organization of data and are therefore considered patentable. This data structure can also be considered as the frame of the data making it a physical entity and is therefore independent of the content or the data in the data structure. This approach of the US-CAFC was taken over by the Japanese and the Korean Patent Offices and according to the new Japanese and Korean Examination Guidelines data structures are explicitly protected. Such a "data structure claim" could have the form:
If the data structure of the database could be protected by patent claims, the essence of the database is protected. In this case a further claim should be directed to the use of the data structure, e.g. for access to the database or downloading of a part of the database, so that you can stop the use of the patent in a country with patent protection, even if the database is stored on a server in a country without patent protection. For the time being data structures can be protected as a patent claim in the USPTO, Japan and Korea, but not yet in the EPO. This seems to be - in view of the EPO decision "BBC/Colour Television Signal" - only a question of time, as it was the case with the program product claims.
4. Infringement of IP rights 4.1 Is offering of protected products an infringement? For the Internet the act of "offering" of protected goods or services is most important. According to Art. 29 (a) of the European Community Patent Law and Art. 5, 3.(c) of the European Trademark Harmonization Directive the "offering" of goods or services could be prevented as a separate act. The same is valid for a lot of other countries outside the EU. It should, however, be mentioned that in some countries, probably in Switzerland, the offered goods or services must also be present in this country or in this jurisdiction. In the UK the offering must take place in the UK jurisdiction and I was told that it is not yet decided whether the offer through Internet is in the UK jurisdiction. In case of doubt you still have the possibility to order the product through the Internet so that the product will enter the corresponding country. One possibility to avoid an infringement by offering the protected product seems to be to use a disclaimer, such as "not for sale in UK" or the like, if the product is only protected in UK. 4.2 Enforcement of IP rights It is my opinion that the main problems the Internet causes are not so much the IP laws, but the international enforcement of rights, namely
Such problems were the subject matter of workshop 3.1 and are therefore not dealt with in this workshop.
5. Conclusion In my opinion the existing IP laws are well prepared to solve the problems in relation to the Internet, even if they have to be stretched or extensive argumentation as to relevancy must be put forward, but we do not need a new IP Cyberlaw as some Professors are proposing. What we need is an improvement of the Treaty concerning Enforcement of Foreign Judgements and a harmonization of enforcement which was discussed in workshop 3.1.
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