Copyright issues in cyberspace: Linking & Framing:Links & Frames The most distinctive feature of the World Wide Web

is the ability to move instantly from one location to another. This is accomplished by embedding commands (tags) in the source code of a web site (known as "HREF" tags for Hypertext REFerence). When the user clicks on the link that appears on the source site, a command is sent to the webpage specified in the tag (the target site) and a request is made to send a copy of the material at that location back to the user and open it in the user’s browser window. A text link is one which appears as text on the user’s monitor. Text links are often underlined, but need not be. An image link is one that appears as a graphic. Tags can be programmed to bring all or simply a part of the other site to the user’s browser. When the tags are designed to bring material from the target site and open it in conjunction with material from the source site, a practice that is often done when the target material is surrounded or framed by the source material, this can lead to litigation. Because the user remains at the source site, linking and framing may create the impression, at least for Net Newbies, that there is an authorized association between source and target. Commentators who have analyzed this issue have concluded that such links are most likely non-actionable under applicable copyright or trademark law. Martin J.Elgison and James M. Jordan III, Trademark Cases Arise from Meta-Tags, Frames. There are no judicial opinions in the US on text links as yet, but just as with domain names, trademark owners with deep pockets are quite willing to threaten litigation in order to control this practice. Carl Kaplan, Is Linking Always Legal? The Experts Aren't Sure, NY Times on the Web (August 6, 1999). Copyright issues related to linking and framing are discussed in the module Copyright in Cyberspace. Trademark infringement and unfair trade practice grounds have usually been claimed as well although most such suits have settled before judgement. The issue was originally raised by Ticketmaster when it objected to "deep links" from a Microsoft site that took surfers directly to the ticket order page thereby avoiding the expensive advertising on the Ticketmaster home page. Ticketmaster Corp. v. Microsoft Corp. (S.D. Cal. complaint filed Apr. 28, 1997), (settled). The fees being paid by the sponsors of the target site are based on the simple assumption that site visitors will see the ads as they navigate their way through the site. When source sites link to target sites in such a way that surfers are re-routed around the ads, that assumption is threatened. Not only does "deep linking" implicate advertising concerns, but it may also undermine the expectations of website authors. For example, deep linking to an article on a news site not only deprives the target site's sponsors of expected exposure, but it also inhibits the ability of the site's author to properly identify herself or otherwise to take credit for the article. The related practice of "framing" may also serve to undermine web advertising. Ads are sometimes presented in "frames" that surround the web page itself. This allows advertisements or other framed information to remain constantly visible while the visitor navigates his or her way through the site. Controversy arises when both the source and target sites use frames. In such a case, the source site may use its own frames to obscure or cover up the target site's frames. Thus,

a visitor following a link from a framed source site to a framed target site will see only the source site's frames, and hence ads. As with deep linking, the target site's sponsors are being deprived of the exposure for which they paid and trademark dilution may also occur. Washington Post Co. v. Total News, No. 97 Civ. 1190 (PKL) (S.D.N.Y.complaint filed Feb. 20, 1997) Complaint and Settlement. Q. Courts recognize rights in the "look and feel" of a product to the extent those elements are not functional. This is the concept of "trade dress." See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) Opinion. Is framing a possible violation of trade dress? There are some technical solutions to unwanted linking and framing, which may be the reason why so little litigation has developed in this area. Target sites can codes their pages to open without being framed, deep pages can be programmed to accept traffic only from the home page, and advertising can always be moved to the pages that catch the most eyeballs. Ticketmaster was able to redirect users deep-linking from MS’s Sidewalk long before their legal battle was over. Technical solutions may also prove much less expensive and time-consuming than litigation, as well.

III. Other Trademark Issues In Cyberspace Beyond domain name problems, trademark issues pop up in a variety of forms in cyberspace. Some are "garden variety" trademark infringements; while the medium may have changed, the legal analysis has remained virtually unaltered. At the same time, however, the web's commercial explosion has presented trademark holders and the courts with some difficult new issues. For example, as discussed below, the technological ability to create hypertext links from one web site to others and to imbed hidden code called Meta tags in web pages that, although not viewable on the site, can be recognized by Internet search engines, poses novel questions of trademark and unfair competition law (not to mention copyright). Simultaneously, the lack of geographical limits on the Internet has spawned a host of cases regarding jurisdiction. The Internet has also generated some of the first test cases for the new federal anti-dilution statute. A. Linking and Framing One of the most significant technical features that distinguishes the Internet from all other communications media is the ability to dynamically connect multiple documents and elements. These dynamic connections most often appear in the form of "links" or "frames." It is important to understand the nature of links and frames to understand the context in which they can pose trademark concerns. Linking comes in two forms. When a net user clicks on an icon or highlighted text segment programmed as a hypertext reference link, the link instantly transports the user to another location. The link may lead simply to a particular point within the same web site, but, just as often, the link allows the user to leap from one site to a completely different, unrelated site

provided by a different source, across the country or across the world. This latter form of linking, called "linking out," is what most people mean when they speak of linking. If the user checks the Uniform Resource Locator (URL) address on the browser being used, the address will change from the page where the user started to that of the linked page. In contrast to hypertext reference links, image links bring an image contained in a separate file onto the page being viewed. The separate file may be an image file stored on the same server as the link or an image file stored on a separate, unrelated site, which is known as "linking in." For example, a travel agency advertising trips to Hawaii might link in photographs from hotel, airline, and resort sites to promote bookings. The end result is a web page that appears to be a seamless integration of content and images all provided by the same source. Framing is another type of dynamic connection that is similar to image linking, but that permits more sophisticated "capture" of content. A framing site brings entire web pages from another site into a window on the original site. Using framing technology a web developer can allow users to scroll through multiple sites simultaneously. For example, our travel agent might have a page that shows an airline's page in a left hand column window. In the right hand window, the content of the web sites of various destination resorts would display in cycles, that is, a new page, and new resort, would appear every five minutes. Across the bottom of the screen the travel agency might have a ledge, that is, a portion of the screen that does not change so long as the user is at the travel agency's site. The ledge might contain the agency's logos, links for navigating within the agency's site, and advertisements from sponsors. With both image links and framing, the URL does not change, which may give the impression that the site on which the link is located is an authorized provider of the linked or framed content. To prevent access to image files, web site owners can limit access to the files so that only requests to link from authorized pages are allowed. To prevent a site from being framed, developers add an instruction to the page's source code so that when the user clicks the link to the page a new window is opened so that the page appears in its own window without the linked page's frame around it. The ability to direct users from one site to another using hypertext reference links underpins Internet commerce. Although under some circumstances a party linking to or framing another's site may seek permission, doing so is not the norm. Content providers have been less receptive to framing and image links than they have to hypertext reference links, for which permission to link historically has been regarded as unnecessary. The first major case to challenge framing on intellectual property theories has settled. In Washington Post Co. v. TotalNews,[126] TotalNEWS provided a web site that featured a list of "name-brand" news services, identified by their trademarks, in a narrow column to the left, an advertising banner across the bottom right of the screen, and a content window in the upper right of the screen. When a user clicked on a news service, that news service's content appeared within the content window on the TotalNEWS web site. However, when the news service's content first loaded, its advertisements were obscured by the advertising banner on the TotalNEWS web site. Some of the framed sites, such as CNN Interactive, responded by setting their pages to refresh when loaded so that the pages appeared in their own window without the TotalNEWS frame.

On June 5, 1997, the parties settled with TotalNEWS agreeing to cease framing the plaintiffs' web sites in exchange for permission to link to the plaintiffs' web sites using hypertext reference links consisting only of highlighted plain text.[127] Each plaintiff is entitled to revoke permission to link to its site; however, if the defendant refuses to remove the link the plaintiff must convince a court that the link is an impermissible violation of rights under some theory of intellectual property. A more recent case involving framing, based substantially on copyright claims, has not settled, and has already generated two opinions.[128] Defendant Applied Anagramics is the owner of the "1-800-DENTIST" trademark, and exclusively licensed it to plaintiff Futuredontics. Evidently still desiring some credit or benefit relating to the mark, Anagramics created a web site that displayed the mark by framing Futuredontics' site. Futuredontics has sued for copyright infringement, alleging that defendants had created an unauthorized derivative work within the meaning of the Copyright Act, and alleging a false advertising claim under § 43(a) of the Lanham Act, arising out of certain representations made by Applied Anagramics. The district court's two opinions seemingly point in different directions and illuminate little. On the one hand, the court denied plaintiff's motion for preliminary injunction on the ground plaintiff had not shown a likelihood of success on merits; on the other hand, the court denied defendant's motion to dismiss on the ground that defendants had failed to show that plaintiff would not be entitled to relief under any set of facts that could be proved. Although the Futuredontics case does not illustrate this point, the TotalNews case demonstrates an important distinction between framing and linking in the context of advertising, the lifeblood of the web. With framing, the framing site's revenue generating advertisements are substantially more visible to the consumer than those of the framed site. Unlike the TotalNEWS style framing model, the hypertext reference linking model, permitted under the terms of the settlement, does not obscure the advertisements of the linked page. Where sites are linked, rather than framed, the link can enhance the revenues of both sites, providing additional consumers through links. Such economic benefits of linking, as well as the fair use nature of many such links, have caused linking to become ubiquitous on the net. However, not everyone accepts the theory that hypertext reference links are beneficial, or at least harmless. On April 28, 1997, Ticketmaster filed a complaint against Microsoft in federal district court in Los Angeles alleging that Microsoft's unauthorized links to interior pages of Ticketmaster's site constitute "electronic piracy," and accusing Microsoft of "feathering its own nest at Ticketmaster's expense."[129] In the complaint, Ticketmaster indirectly alleges that Microsoft's Seattle Sidewalk city guide at <>, a feature of the Microsoft Network, wrongfully linked users in search of tickets to Seattle-area sports and entertainment events directly to the page of the Ticketmaster site where such tickets could be ordered. The complaint states several counts, including trademark infringement, dilution, and federal and state unfair competition claims, all of which are primarily premised on a theory of web site dilution - likely the first of its kind. Pursuing an argument that would allow it to direct the flow of traffic into and within its web site, Ticketmaster essentially equates a web site with a trademark, claiming that is has an obligation to control "the manner in which others utilize and profit from its proprietary services, or face the

prospect of a feeding frenzy diluting its content."[130] After filing the suit, a Ticketmaster representative commented to the press that Ticketmaster's concern was not Microsoft's links to the Ticketmaster home page (<>), but Microsoft's direct links to specific parts of the Ticketmaster site that allowed a ticket customer to bypass the home page. Not surprisingly, the Ticketmaster home page contains advertising (in addition to other content) that was bypassed by a link, such as Microsoft's, to an internal page within the site. Significantly, shortly before the suit was filed Ticketmaster and Microsoft ended efforts to negotiate a partnership in which they would jointly provide a city events guide and ticketing service; Ticketmaster announced that it would offer its service in collaboration with City Search, another guide service.[131] Not surprisingly, Microsoft answered, denying the claims and asserting affirmative defenses such as fair use,[132] non-commercial use, estoppel, assumption of risk and First Amendment protection. Ultimately, if a court were to find Microsoft liable for the mere act of linking, the decision would have profound repercussions for all Internet users. It is likely that, if a court ultimately finds any liability at all, the decision will be quite narrow and limited to the particular facts of the case. But even if the case should settle, the issue will continue to resurface in the context of linking that results in diverting advertising revenues.[133] For example, one meta-search engine provides the results of other search engines, such as Excite or Infoseek, and attribute the content to the source engine, but without the logos, features, or advertising of the source engine. In place of other search engines' advertising, the meta-search engine may sell advertising on its site.[134] If metasearch engines like this become popular and reduce the number of direct searches on the source engines, thus reducing advertising revenues, the source engines may sue on theories similar to those in Ticketmaster. As is evident in Ticketmaster, linking highlights another complication which may be unique to the net: the ability of friend or foe to divert traffic from a trademark owner's web site, likely the intended site, to the proponent or opponent's site. The vast majority of search engines available on the web today report search results based on raw number of hits--the number of times the searched-for term appears on the web page. A detractor may deliberately overwhelm the trademark owner's presence on the web, or a supporter may unwittingly do so, thereby diverting traffic away from the trademark owner's site. A more sinister development involves the wholesale appropriation of the content of sites that receive a high numbers of hits. The appropriator downloads the content of a site that receives a substantial number of hits, for example <>, and then converts all text and images to white on white so that it becomes hidden. This hidden content is then made part of the appropriator's site, which, for example, may be a competing site selling videotapes of children's movies. When an Internet user searches for content that appears on the appropriated site, for example "Hercules," the search engine will return both the Disney site and the competing site, because both sites contain the same content, even though the user cannot see the appropriated site's content on the competing site. While such appropriation is a copyright violation, it may also qualify as unfair competition or trademark dilution. A related problem involves use of corporate logos by disgruntled former employees. In several instances, unhappy former employees have set up web pages, complete with doctored versions of

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.. "volfive/abel.html>). to name a few) can find the answers to simple and perplexing questions. The path is that part of the web site address that immediately follows the forward slash after the domain name (e. Search engines (Google. and to flaunt corporate logos and marks in the process. One of the questions you should be asking is — what can I copy and what do I treat as research or source material? When Is It OK to Copy From the Internet? Government information is in the public domain. requires careful consideration of First Amendment concerns as well as of trademark principles of fair use. However. cheaply. While each of these avenues of complaint has been available through more traditional forms of media in the past. In Patmont Motor Werks. the court held it does not merit the same protection. to rail against the injustices allegedly visited upon them by their former employer. and does not serve the same source identifying function as the domain name. Reasoning that the path merely shows how the web site's data is organized within the host computer.[135] the court was unwilling to extend trademark protection in a domain name dispute that focused on the path of the URL (as opposed to the use of someone else's registered mark).. which means that you are free to copy and paste whole documents without infringing on copyright. and virtually anyone else with an ax to v. Attempted enforcement of trademark rights against persons who use marks or content to divert traffic from a trademark owner's site. The same may be true of consumers displeased with "lemon" purchases. the opportunity to reach a broader audience.their target's marks. "[plaintiff] has cited no case in which the use of a trademark within the path of the URL formed the basis of a trademark violation.html" in <www. whether the troublesome use is by friend or foe. . is increased dramatically on the net.g. it is courteous to the source and helpful to the reader to give attribution to the government agency and include the URL in your document. This credit validates the information you're providing and gives direction to anyone wishing to study the topic in more depth. The court noted. Inc. Yahoo. Ask Jeeves and Dogpile."[136] Protection of content on website: To Use or Not to Use: That Is the Question Copyright Protection in Cyberspace The World Wide Web has given us access to boundless information. Inc. Gateway Marine.

• Example: You may ask the owner of another Web site to give you permission (written) to post a document or graphic on your site (with proper credit — author's name. graphics or logo from another's Web site and put it on your Web site (or into printed materials or electronic correspondence or any other use). illustrations or other art (Corbis. organization's name. You can use their information as research material and paraphrase their information. photograph. but next week someone may decide the photos would be great with the article in your printed newsletter.)." they aren't offering you the choice to cut and paste their work into your document. Otherwise the photographer could demand more money for additional use(s) of the work or worse.. risk management and legal thing to do. If you didn't make arrangements for these "possibilities" when you contracted with the photographer. Getty. electronic mail and so forth to your Web site unless it was created by you or someone working for you under your direction (work-for-hire). saying something such as: We want you to copy and distribute this information. the fine print gives you the right to use the images as many times and any way you see fit. So even if they offer a "printer friendly version" or an option to "e-mail this piece to a friend.Other sites may offer reproduction rights to you. or the owner of the material has given specific permission (in writing) that you may create an electronic version and post it on your Web site. • You do not have the right to "copy and paste" text. sounds. it's wise to specify that the fee covers any and all use of the pictures. Do not overlook this step when posting logos of sponsoring organizations or companies on your site. sue you for copyright infringement. Newspapers. then the following month another someone might decide to post the newsletter (photos and all) on your Web site. text. You may only want to document the happening now. Eyewire). When Is OK a Relative Term? You do not have the right to post a document. • Example: If you purchase a royalty-free CD-ROM of stock photographs. URL). giving attribution to the source (According to an article in the December 2003 Washingtonian Magazine . and then the Ad Council selects these photos for the public service campaign it's creating on your behalf. Example: When you hire a photographer to cover an event. This exchange usually is a win- • . It's the professional. you are obligated to renegotiate fees for each additional use.. The companies own their own representations and will appreciate the courtesy of your asking permission. Example: You may request permission (in writing) from the owner of the text or graphic to create a link from your Web site to his to enable visitors to your site to have direct access to the information. chart. illustration. and next quarter one particular photo makes its way into a fund-raising mailing. magazines and newsletters that post their current issues and archived articles on the Web usually include a copyright notice on the individual pieces.

too. quizzes. . • Ironically although Web sites are protected by copyright: 1) if they are and 2) to the extent they are original. However. If the work was previously published in a different medium (print. if your site contains valuable creative material. You do have the right to use information on other Web sites as reference for articles. if you create links to those URLs. fact sheets. newsletter. It is best to make sure the designs are original. PowerPoint presentations. • Example: You want to know what points should be covered in a rental agreement for community groups wishing to use your facility. and most site owners will grant a nonprofit such permission. etc. You have bookmarked designs to be used from different web sites. publication date and copyright owner's name. you have a full-fledged web site full of designs created by another designer. • Example: Your notice may say WJB nonprofit invites people who wish to "reprint" material from this send an e-mail request to the Webmaster. Contains some public domain material mixed in with copyrighted material. Before you know situation for both parties. You may cite the best Web sites in a "Resource" sheet to print or post on your Web site. You may use search engines to locate information and samples. or you can draft a sample document for your attorney to review. Internet Copyright Issues and Design You have a web site or have plans for a new one. Example: You want to create a safety tip sheet for your program participants. or carry the license to reproduce rather than risking a copyright infringement issue. Exceptions occur when you are asking for free access to something the site charges money to view. Example: The notice should contain the copyright symbol (©). Lacks a copyright notice. • To Sum It Up Never assume that a work is in the public domain because it: • • • Is on the Web. and interactive programs that you are creating for your Web site. A publication date for online purposes is the date you uploaded the document. first get permission in writing from each owner. you can list points you want your attorney to include in your document. the act of uploading material onto a Web site for people to read implies that it is permissible to download and use the information. you may want to add a copyright notice to the site. Thus. Based on this research. You can research several Web sites and then compile and rewrite the information in your own words. e-mail) include that date. Using other web designs without the expressed written consent of the designer could put you in violation of copyright law.

The copyright belongs to the designer unless an agreement (valid and written contract) has been signed. during and after the completion of their project. If you are designing a web site. Avoid Internet Copyright Issues with a Contract It is best for the designer and the site owner to have a binding and signed agreement. This is important for clients and people who wish to have a web site designed so they can be aware of the Internet copyright issues they may face with their designer. does not retain copyright. obligation and deadline should be mentioned clearly in the contract. they may not own the copyright to thier design. The company provides information to the designer--the targets. or that you have . Protecting Yourself from Internet Copyright Issues as a Web Designer A written contract should be signed before the completion of the design process and project development begins. and transfers the rights to the company. There is an agreement to refer to in case of doubts. duration. rather than the company the site was designed for. Some of the benefits of this contract are • • • • It saves time and money on legal cases. Even with their involvement with the design process. philosophy. Why this is Important This is important for designers because it protects the original works of one designer from unauthorized use by another. make sure you are using something with free distrubtion and reproduction rights. color and links to be used in the site.A company has a contract with a third party for their web design. The rights. Things to Remember • Always create original work. Other Internet Copyright Issues for Designers A designer who creates a designer for the company he works for. There is mutual trust and respect between the designer and site owner. or the party it is being designed for. he or she may be the one liable for infringement issues. you need to be fully aware of the Internet copyright issues that can arise from using any portion of another web site to assist you in the creation of your project. under the "Work for Hire" guidelines. Anything taken from public domain does not retain copyright for the designer. If you must use something to assist you. Without a clause in the contract releasing liability from the designer. The designer and owner may be able to work together on future projects and the designer would be able to upgrade the site continuously.

In all such cases. imagination and creativity. and Trademark office to ensure complete legal protection. and make sure the client understands what this means. There is some relief if the excerpt is too short and there is no overt or covert profiteering motive. Writing an article is a time-consuming process that calls for a lot of language skills. always give credit somewhere on the web site design. Copyright Issues with Web Content Copying Website Texts . Make sure you include a clause in the contract to release all liability. . All web content including articles.Shameful Act it is an acknowledged fact that the work profile of a writer of website content or an article is truly unenviable. In view of this. But the final decision whether to accept or reject the plea rests with the judge. Always document your creations and file ownership with the United States Copyright. the design or content can be deemed stolen even if a designer has copied unintentionally or without being aware of the copyright laws. If you are unsure. the content writer can claim immunity under a provision called ‘fair use’. In legal parlance. The copyright laws are far too stringent that even if a complete sentence is found copied in an unauthorized manner. poems. In such cases. Patent. Designers may get caught in the cross-fire if a site owner is found to have infringed on another party's rights. the writer can sue the person who had copied the work for violation of Copyright laws. Copyright Violation – a cognizable offence The one question that obviously arises is . stories. a writer of web content or an author of an article can be justifiably angry if the work is copied in certain websites without proper written the author would ever come to know the article or web content has been copied? This question is particularly valid in present times when so much material is being written on the web and by far too many writers. Web Content Copyright and Copyright Law Copyright may be best defined as the inalienable right of the website owner to authorize or disallow someone from reproducing the original design or content elsewhere.• • documented license of use from the original author. or any other written material are protected by copyright laws. Anyone using a third party designer should take it upon themselves to research and look for infringement possibilties prior to accepting the project as completed. it will be construed as copyright violation.

The UDRP includes a mandatory. But both the content owner as well as the designer can claim relief under the copyright laws. Trademark issues in cyberspace: Domain name dispute: A domain name dispute is a conflict that arises when more than one individual or group believes it has the right to register a specific domain as well as . claims of abusive. the UDRP provides that disputes must be resolved by traditional means such as voluntary negotiation and lawsuits. As if these checks are not enough. There are innumerable ways whereby the owners of content and original designers can seek protection under the copyright laws. By sharing the content. . and . ardent readers and fans of a writer are watchful and oftentimes behave like human spiders to immediately inform the author about plagiarism. and . Even assuming this does not happen and the author never personally detects plagiarism. .museum).com. This means a bad faith violation of someone else's trademark. . Most commonly a domain name dispute would occur when a domain name similar to a registered trademark is registered by an individual or organization who is not the trademark owner. The UDRP was adopted by ICANN on 26 August 1999. the web technology today is far too advanced and there are programs like spiders that immediately detect stolen content. . . It is interesting to know that most of the writers are not averse to sharing the content and are only too willing to grant permission for copying the content. the authors stand to benefit as the work will be quoted and referred to in several other websites. It needs to be understood that design and text are two distinctly different things. Uniform Dispute Resolution policy: UDRP or Uniform Dispute Resolution policy defines how disputes over domain name registrations are resolved in the global top-level domains (. Many companies and website owners use spider to prevent content from it is a fact that authors are generally voracious readers and therefore the chances of their stumbling across their own work stolen by others is indeed very the writer gains more popularity and hardly loses anything. As a matter of fact. the writer may own only the written text but not the design which would invariably belong to the designer. namely. . The UDRP is part of the Registration Agreement that Internet users sign to register domain names in the global top-level domains (TLD).aero. The spider has the potential to mark the site and highlight copyright violations. low-cost administrative procedure to resolve a certain set of claims . Implementation began when the final policy documents were approved on 24 October 1999. All domain name registrars must follow the ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP). In situations other than course. bad faith registration. In most nonbinding.

Disputes alleged to arise from abusive registrations of domain names (for example. and some country code top-level domains. or arbitration before a registrar will cancel. When a registrant chooses a domain name. or transfer a domain 1999) o Public Comment Archive The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. court action. that registering the name “will not infringe upon or otherwise violate the rights of . Under the policy. most types of trademark-based domain-name disputes must be resolved by agreement.” among other things. the registrant must “represent and Historical Documents Concerning the Policy Chronology o Timeline for Development and Implementation of the Policy and Rules Staff Reports o o Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (29 September 1999) Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (24 October 1999) (form posted for public comment Proposed Implementation Documents September 29. The UDRP currently applies to all . 1999) o o Draft Uniform Domain Name Dispute Resolution Policy (29 September 1999) Draft Rules for Uniform Domain Name Dispute Resolution Policy (29 September 1999) Public Comments Submitted (comment period September 29-October 13. To 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 (see below for a list and links). . . . cybersquatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.General Information All registrars must follow the the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the "UDRP") top-level domains. and .

[2] The UDRP process has already been used in a number of well-known cases. Often there is contention over similar but not identical domain names. the arbitration panel found against the defendant registrant based on all three of the above factors and ordered the domain name turned over to Madonna. The registrant does not have any rights or legitimate interests in the domain name.g. such as Madonna Ciccone. Dan Parisi and "Madonna. in which the offended party files a court action claiming trademark or copyright infringement. he has a dispute with the owner of the website http://tribeca. the registrant has intentionally attempted to". p/k/a Madonna v. The goal of the UDRP is to create a streamlined process for resolving such disputes. and The registrant registered the domain name and is using it in "bad faith. in many jurisdictions it may still bring a lawsuit against the domain name registrant under local law. For example. or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark.[3][4] .net. or Whether by using the domain name. if the domain name owner has engaged in a pattern of such conduct. such as: • • • • Whether the registrant registered the domain name primarily for the purpose of selling. It was envisioned that this process would be quicker and less expensive than a standard legal challenge. by creating a likelihood of confusion with the complainant's mark. the administrative panel's UDRP decision can be challenged and overturned in a U. court of law by means of e. it must file a lawsuit against the trademark holder within ten days to prevent ICANN from transferring the domain name. The costs to hire a UDRP provider to handle a complaint often start around $1000 to $2000. A complainant in a UDRP proceeding must establish three elements to succeed: • • • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. internet users to the registrant's website. In particular.” and agree to participate in an arbitration-like proceeding should any third party assert such a claim.[1] If a party loses a UDRP proceeding. the Anticybersquatting Consumer Protection Act." In a UDRP proceeding. If a domain name registrant loses a UDRP proceeding. actor Robert De Niro has claimed ownership of all domain names incorporating the text "Tribeca" for domain names with any content related to film festivals.any third party. a panel will consider several non-exclusive factors to assess bad faith. In this case. For example.S. and Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor. renting. for commercial gain.

91 Each accepted proposal is discussed below. even if this is upheld. WIPO’s Final Report Against this background. a respondent can request that a case of reverse hijacking is found against the complainant but. 1999—a somewhat scaled back document from the maximalist intellectual property agenda set out in its earlier Interim Report. and after a considerable and involved process of its own. ACPA (the US anti-cybersquatting legislation). Leveraging the DNS .90 and indeed the entire domain name debate to this day. if their complaint fails.87 WIPO issued its Final Report on April 30. Furthermore. As well as the absence of an appeals procedure. there is no appeal process and the only recourse they have is to raise a costly lawsuit. • A set of somewhat confused procedures to administer those dispute resolution processes. ICANN adopted each of these features of the WIPO proposal verbatim or with modifications. a new case can be raised. • Proposing special pre-emptive protections for famous and well-known trademarks. there is no scope for further action against the complainant. the Report contained a number of innovative suggestions which shaped the UDRP.The UDRP process is weighted heavily in favour of the trademark owner since they can raise cases at will by simply paying the complaint fee and. and • Basically ignoring the RDNH problem. there is no function in place to nullify the case or provide any other resolution. were: • Leveraging ICANN’s control over the DNS to impose contractual mandatory dispute resolution clauses on all registrants in the open gTLDs. If a respondent loses their domain.88 WIPO stated that its design goal was to preserve “the right to litigate a domain name dispute. Limiting the scope of the proposed dispute-resolution process to disputes between a trademark holder and a non-trademark holder.”89 In addition to amassing and summarizing much of the available data on the contours of the cybersquatting problem. some of which echoed the White Paper. except for preemptive protection for famous and well-known marks. WIPO’s most notable proposals. • Substantive rules to be followed in the dispute resolutions. if any of the rules are broken by the centre through which the case has been raised. or by the panel selected. which ICANN rejected. the UDRP process is also flawed as.

Ask. Even though legislation has not been enacted. is a bit different in that the domain names that are being "squatted" are (sometimes but not always) being paid for through the registration process by the cybersquatters. Cybersquatting. . the practice of registering names. [citation needed] Others post paid links via Google. someone recently registered www.wipo. a Michigan Republican. Cybersquatters usually ask for prices far greater than that at which they purchased it. Yahoo!.com and other paid advertising networks to the actual site that the user likely wanted. is registering. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. if enacted. would make cybersquatting illegal. This in order to sell it back to WIPO for several thousand dollars). as Internet domains. – DERIVATIVES Cybersquatting is the act of registering a popular Internet address--usually a company name-with the intent of selling it to its rightful owner. according to the United States federal law known as the Anticybersquatting Consumer Protection Act. Some cybersquatters put up derogatory remarks about the person or company the domain is meant to represent in an effort to encourage the subject to buy the domain from them. Senator Spencer Abraham. especially well-known company or brand names. The World Intellectual Property Organization (WIPO) has also outlined anti-cybersquatting tactics.Scope “Administrative” Process Substantive rules Meta questions The RDNH Problem Deeply Flawed Procedures Cybersquatting: cybersquatting • n. has introduced to Congress the Anti-Cybersquatting Consumer Protection Act. trafficking in.000. Violators would be charged a fine of up to $300. cybersquatter n. thus monetizing their squatting. however. which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own. almost all cybersquatting court-case decisions are against cybersquatters. Comparing cybersquatting to online extortion. Cybersquatting (also known as domain squatting). which have been endorsed by ICANN (Ironically enough. The term is derived from "squatting". in the hope of reselling them at a profit. or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. rent or otherwise have permission to use.

For example. a lawyer. but jurisdiction is often a problem. § 1129. Critics claim that the UDRP process favors large corporations and that their decisions often go beyond the rules and intent of the dispute resolution policy.C. Namejacking Yet another approach is "namejacking" (also "name-jacking" or "name jacking") which is accomplished by purchasing an individual's name as a top-level domain name. then the domain name can be purchased by anybody else after it expires. a financial professional.[1] At this point the registration is considered lapsed. A cybersquatter may use automated software tools to register the lapsed name the instant it is lapsed. As the name-jacked domains are set up using non-trademarked names and they have a purpose other than selling the domain name back to an individual. Since people frequently search the web to find out information. This strategy is one of a family of identity theft schemes including renewal snatching. If the owner of a domain name doesn't re-register the name with an internet registrar prior to the domain's expiration date. as different courts have ruled that the proper location for a trial is that of the plaintiff. Another strategy is as follows: Internet domain name registrations are for a fixed period of time. ." These "name jacked" sites are typically set up to sell high-profit items like ebooks and/or various business opportunities and require few purchases to be profitable. they circumvent the "Anti-cybersquatting Consumer Protection Act" (ACPA) laws U. Court systems can also be used to sort out claims of cybersquatting. or real estate agent . JohnJones. Legal resolution Domain name disputes involving alleged bad-faith registration are typically resolved using the Uniform Domain Name Resolution Policy (UDRP) process developed by the Internet Corporation for Assigned Names and Numbers (ICANN) Jones.[2][3] then someone else owns johnjones.or any other profession which interacts with the public on a regular basis). § 1125 and U. extension exaggeration and alert angling. A UDRP complaint may be initiated at UDRP proceeding with an approved dispute resolution service and that website will appear at or near the top of any searches for the name "John Jones.C. there is a high likelihood that potential clients will do some research on the internet before doing business with Mr. etc. for example John Jones = JohnJones. if John Jones has a thriving professional practice (perhaps he is a doctor. A victim of cybersquatting may also file an InterNIC Registrar Problem Report regarding a cybersquatter posing as a registrar.S. Setting up a website allows the purchaser to capitalize on any searches done for that name.Technical strategies for cybersquatters Cybersquatters sometimes register variants of popular trademarked names. If Mr. Jones has been "name jacked". name jacking provides low-cost web traffic to the name-jacked website.S. a practice known as typosquatting.

Meadows. § 1125 and U. and the cost of filing a case is prohibitive for the average individual.C. as shown in the case involving actor Kevin Spacey.S.S.S. in which Judge Gary A. $10. Under UDRP policy. § resided. Spacey later won the domain through the National Arbitration Forum. This expansion of the Lanham (Trademark) Act (15 U. In Virtual Works. v.000 in costs and fees vs. individuals or governments trying to take generic domain names away from their owners by making false claims of trademark violation. Some countries have specific laws against cybersquatting beyond the normal rules of trademark law. Jurisdiction is an issue. Brian Salle. Inc. the domain name must have been registered with the bad faith intent to later sell it to the trademark holder.S. § 1129 from defendant Garner W.the defendant. § 1129(1) (A). ruled that Spacey would have to file a complaint in a Canadian However.C. This means that domain names bearing close resemblance to trademarked names are not per se impermissible. (a dispute over the domain vw. of the United States District Court of the Central District of Under the ACPA (Anticybersquatting Consumer Protection Act) a cybersquatter can be held liable for actual damages or statutory damages in the amount of a maximum of $100.S. where the current owner of to his control and judgment for attorney's fees against Garner W. § 1125(d) to apply.C. The court rejected the plaintiff's argument that "all personal names" are protected under the act and established that personal names must be "protected as a mark" for 15 U. For example. This "bad faith" concept is reiterated in 15 U. Feess. the plaintiff. Countries such as China and Russia do not view cybersquatting in the same way or degree that US law does.00.000 to $3. failed to obtain control of their names on the internet. In one of the first applications of the ACPA. successful complainants can have the names deleted or transferred to their ownership (which means paying regular renewal fees on all the names or risk their being registered by someone else). Volkswagen of America. People often choose the UDRP (Uniform Dispute Resolution Process) created by ICANN because it is usually quicker and cheaper ($2. little known Heathrow Land Development in Florida attempted to use their narrow one-class trademark and the UDRP process to acquire heathrow. Monetary awards under the ACPA are infrequent at best.000 or more) than going to court. but courts can and often do overrule UDRP decisions. There have been several instances of companies.C. Inc.) is intended to provide protection against cybersquatting for individuals as well as owners of distinctive trademarked names.C. The court did award summary judgement under 15 U. with the award being the transfer of the domain briansalle. sought relief under 15 U. has the U. which indicates the lack of protection afforded to the average businessman or individual.S. although application of this act in the form of actual fines assessed are few in number. Meadows of approximately $30.S. Rather. Sometimes they are successful.S. § 1125 and U.C. This practice is called "reverse domain hijacking". for example. . The United States. including rock star Bruce Springsteen and actor Kevin Spacey. the Fourth Circuit Court of Appeals created a common law requirement that the cybersquatter must exhibit a bad faith intent in order to confer liability. even notable personalities. Anticybersquatting Consumer Protection Act (ACPA) of 1999.000.000 for each name found to be in violation.C. or the location of the server through which the name is registered.

Her Majesty the Queen and. Check auDA for further details. because most businesses now know that nailing down domain names is a high priority Recognizing Cybersquatting How do you know if the domain name you want is being used by a cybersquatter? Follow these steps to find out. a registered business name with an Australian Business Number (ABN) issued by the Australian Taxation Office. Domains that can then be offered back to the previous registrant . Canadian trademark holders (whether Canadian or Foreign). the Canadian Internet Registration Authority (CIRA) . Aboriginal Peoples and Indian Bands. the CIRA themselves seem to encourage the practice by publishing .com. Canadian country code top-level domain must meet "Canadian Presence" requirements. there were 1823 complaints filed with WIPO.Australia is another example – auDA requires anyone registering a . Panasonic. abbreviation or acronym" of their name. This list is directly promoted on the site home page.[4] In 2007 it was stated that 84% of claims made since 1999 were decided in the complaining party's favor.i. However. However.or a business or corporation with an affiliated name . Foreign Businesses with a physical Canadian presence. with the intent of selling the names back to the companies when they finally woke second-level domain to have a valid entitlement for that domain . Fry's Electronics. Any Australian citizen over the age of 16 can obtain an ABN (which is free) and use it to register as few or as many domain names as they like but they need to have a "close and substantial" connection to the name or it needs to be an "exact match. The list is extensive and includes individual citizens and residents of Canada and in addition. Registrations for a . since 1999.a very extensive Domains To Be Released List.has taken a similar approach to Australia. Canada – through its own internet regulating body. as with Australia. . which was a 25% increase over the 2005 rate. Opportunities for cybersquatters are rapidly diminishing. In an unusual departure from trying to avoid the practice of cybersquatting. even this has failed to protect Canada from cybersquatting acts.[4] The History of Cybersquatting The practice that's come to be known as cybersquatting originated at a time when most businesses were not savvy about the commercial opportunities on the Internet.e. the United Nations copyright agency WIPO (World Intellectual Property Organization) an inflated price. Internationally. provided an arbitration system wherein a trademark holder can attempt to claim a squatted site. Hertz and Avon were among the "victims" of cybersquatters. this has failed to protect Australia from such cybersquatting acts. The practice gives the impression of being intentionally designed to promote cybersquatting by allowing Canadian (or other) cybersquatters to literally go shopping for domains to register. In 2006. Some entrepreneurial souls registered the names of well-known companies as domain names.on their website .

Trademark experts consider the ICANN arbitration system to be faster and less expensive than suing under the ACPA. you do not have a case of cybersquatting. you may also have a case of cybersquatting. contact the domain name registrant. the likelihood is very strong that the site is operated by a cybersquatter who is trading off your company's popularity to sell Google ads to your competitors. and the website you encounter (www. Find out whether there is a reasonable explanation for the use of the domain name. you can use the "WHOIS Lookup" at whois. or if the registrant is willing to sell you the name at a price you are willing to pay." or "under construction. have a case of trademark infringement. Sometimes. absence of a website does not always mean the presence of a cybersquatter.) Contact the domain name registrant. Of course. and the procedure does not require an attorney. . if your trademark is "Moby Dick" for fine art dealing with whaling. Pay. under certain circumstances. (For more information. It may cheaper and quicker than filing a lawsuit or initiating an arbitration hearing. To find the name and address of a domain name owner. if it makes is for road cleaning machines. If the domain takes you to a functioning website that is comprised primarily of advertisements for products or services related to your trademark. There may also be an innocent explanation and the domain name owner may have perfectly legitimate plans to have a website in the future. first check to see if the domain name takes you to a website. If it does not take you to a functioning website.Check where the domain name takes you. For example. If the domain name takes you to a website that appears to be functional. As a general rule. but does not compete with your products or services. you probably aren't looking at a case of cybersquatting. see Nolo's article What to Do If the Domain Name You Want Is Taken. The absence of a real site may indicate that the domain name owner's only purpose in buying the name is to sell it back to you at a higher price." or "can't find server. What You Can Do to Fight a Cybersquatter A victim of cybersquatting in the United States has two options: • • sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA). paying the cybersquatter is the best choice. if your company is well-known for providing audio-visual services and the website you encounter is packed with ads for other company's audio-visual services. has a reasonable relation to the domain name. or use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN). You may. but instead takes you to a site stating "this domain name for sale." the likelihood increases that you are dealing with a Before jumping to any conclusions. For example.mobydick.

This international policy results in an arbitration of the dispute. and the domain name has been registered and is being used in bad faith.that is. then a court will probably allow him to keep the domain name. a policy for resolution of domain name disputes. domain names. Suing Under the ACPA The Anticybersquatting Consumer Protection Act (ACPA) authorizes a trademark owner to sue an alleged cybersquatter in federal court and obtain a court order transferring the domain name back to the trademark owner. For extensive information on cybersquatting. However. In some cases. the cybersquatter must pay money damages. financial remedies are not available under the UDNDRP. An action can be brought by any person who complains (referred to by ICANN as the "complainant") that: • • • a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights the domain name owner has no rights or legitimate interests in the domain name. the trademark is distinctive and its owner was the first to use the trademark in commerce. get Trademark: Legal Care for Your Business & Product Name. ICANN adopted and began implementing the Uniform Domain Name Dispute Resolution Policy (UDNDRP). the trademark owner must prove all of the following: • • • • the domain name registrant had a bad-faith intent to profit from the trademark the trademark was distinctive at the time the domain name was first registered the domain name is identical or confusingly similar to the trademark. All of these elements must be established in order for the complainant to prevail. . If the complainant prevails. Information about initiating a complaint is provided at the ICANN website. the domain name will be canceled or transferred to the complainant. In order to stop a cybersquatter.Using the ICANN Procedure In 1999. and the trademark qualifies for protection under federal trademark laws -. not litigation. If the accused cybersquatter demonstrates that he had a reason to register the domain name other than to sell it back to the trademark owner for a profit. by Stephen Elias and Richard Stim (Nolo). and changes to trademark statutes. Defenses to ACPA lawsuits.

IPR Issues and Resources .

Copyright Infringement .

there have been both technological (IPR/encryption wrappers) and legislative efforts to continue incentives for authors to create useful works. As such. Recent initiatives have been at the international level include at the OECD. 96) hosted by the World Intellectual Property Organization (WIPO). . and a conference (Dec.Issues Copyright has been the focus of protecting intellectual property on the Internet.

Resour c e s Basics of Copyright Copyright Resource Page INTERNATIONAL LAW Government Agencies The EU Green Paper in IPR EFG Intellectual Property Page Cryptolopes Liability Based on Traditional Forum Analogy Intellectual Property Implications of WTO and NAFTA Online Service Operator and Provider Liability for Contributory Infringement Is Still Uncertain .

Link Liability (Contributory Copyright Infringement) .

Issues Contributory infringement (and the consequential liability) is one of the most contentious areas of the copyright debate. would the ISP be liable for the violation of civil rights or breach of contract? . is an ISP liable for contributory infringement when it allows its users to link to hacker sites? If an ISP closed a user's account when informed by an IP owner. For instance.

Resour c e s Ausweb97-Culture-Trapping the Web. Times-Mirror. Suit from News Giants (CNN. Reuters and TotalNEWS) Media. Dow Jones.Titans battle over content (Ticketmaster and Microsoft) Para-Site Draws Ire.Internet Style (Shetland News and. Battle Sites: Online Service Operator and Provider Liability for Contributory Infringement Is Still Uncertain Computer Information Systems Law and System Operator Liability in 1995 War in the Shetlands! . sue thyself (CNN and TotalNEWS) SPA Files Copyright Suits Against ISPs and End Users Lawsuit Dropped: SPA Still Demands Monitoring . Time Warner. The Washington Post Company. Shetland Times) Christian Science Monitor Op-Ed on Links (Shetland News and Shetland Times) The Shetland News Appeal on Links and Copyright and Shetland Times Statement on Links and Copyright (Shetland News and Shetland Times) 'Hot Link' Lawsuit Worries High-Tech Industry (Ticketmaster and Microsoft) CNNfn .

Domain Name Registration (Trademarks) .

some companies have purchased domain names related to competitor's names in order to make it more difficult for the competitor to enter the online market. Also. Hence.Issues The issuance of trade marks was not conceived of in the context of a global view. . a number of recent controversies have occurred with respect to large trademark holders pursuing smaller pre-existing "ma & pa" sites. Others are purchasing domain names for their resale value (stockpiling).

Resour c e s InterNIC is not a Net cop Trademarks and DNS Domain Name Legal Bibliography Remedies in Internet Domain Name Trademark Lawsuits Font Protection Issues Owners of fonts want to distribute them for different purposes at different prices. Paris Copyright Embedded FAQ Fonts Initiative Resour c e s Caching Issues Bandwidth on the network is limited. Committee on Development and Intellectual Property (CDIP). and they currently have no verifiable way of counting the number of accesses to their documents cached elsewhere on the network. Second. caching. some Web sites derive revenue based on the amount and kind of access to their servers. However. Neither a purely legal nor purely technical solution is likely to be successful. Resour c e s (A) CACHING ON THE INTERNET Issues under discussion in WIPO 1. Sixth Session The WIPO General Assembly in 2007 established a Committee on Development and intellectual property . and continues to be so. cached copies can be out of date yet still contain information which is time sensitive (such as prices or stock quotes). They fear that freely distributing fonts for reading documents might allow people to author documents without paying for additional rights such as redistribution. Are Fonts Copyrightable Font Discussion and Protecting OpenType The Font Meeting at W5. caching raises two issues. The traditional technical solution . First. is to allow copies to be saved at distributed points throughout the network.

2009.A. Traditional Knowledge and Traditional Cultural Expressions : Seventeenth Session The IGC was established by the WIPO General Assembly in October. 2000 1. Inter-governmental Committee on Intellectual Property and Genetic Resources. Switzerland. TK and TCEs. The Sixth Session of the Committee is scheduled to be held on November 22-26. Sale of goods legislation (the Uniform Commercial Code in the United States of America) can apply when determining the extent of the warranties that a vendor of software has made. Trademarks & Design Act. The Seventeenth Session of the Inter-governmental Committee is scheduled to be held on December 610. Switzerland. and the intellectual property (IP) aspects of access to an benefit-sharing in genetic resources. 2010. feels that the software is being exported from that country and contains "secrets" such as encryption devices. traditional knowledge (TK) and traditional cultural expressions (TCEs) against misappropriation and misuse. 2000 (C) Other issues Computer Software: IP issues related to computer software I.S. Suggested amendments to Design Act. Scope of this paper Protecting and commercializing software calls on a host of different areas of law. Entertainment law (as a sub-set of copyright law) is called on when dealing with multi-media content.with a view to discuss development related issues related to intellectual property rights. and the client and software developer. The IGC is currently engaged in evolving the text of international legal instruments(s) which would provide effective protection to GR. Employment law is referred to in determining the legal status of the relationship between the developer and its workers. the export of which is prohibited. if for some reason the U. (B) Issues relating to Patents. 2010 at Geneva. important when determining ownership. 2. And so on. Standing Committee Documentation 3. Statutory and common law forms of property rights are used to protect the software. . A working paper on mandate of the Committee on Global IP Infrastructure (CGI) has been prepared on the basis of the suggestions received from developed country. Trade legislation can apply. It provides a forum for debate and development of legal mechanisms and practical tools concerning protection of genetic resources (GR). for example. 2000. 2010 at Geneva. It is requested that assessment and comments on the utility of the projects proposed by various countries under CGI may be provided by the 15th September. on Information Technologies Working Standards and Group The Standards and Documentation Working Group (SDWG) of Standing Committee on Information Technology (SCIT) held its 11th session from October 26-30. The law relating to damages and economic loss can apply in the event that software is faulty.

II. While in relative terms some of the software companies in British Columbia mass market their software.up and growing companies (which software companies are by definition)... This paper is intended to high light issues that can be avoided by contract.Computers are having a profound impact on the way people work and communicate. The significance of this is that the majority of transactions are recorded in contracts. and provides a more extensive description of the applicability of the Freedom of Information and Protection of Privacy Act (B. Software related issues in British Columbia most frequently relate to the development of tools to be used for the development of applications (particularly multi-media applications today). building on the ideas of others. It will also have a significant impact on how data is managed. Rapid technological change. when compared to software developers in the U. includes a brief introduction to the law of copyright.S. . and who has access to it. and an effective strategy the software will weigh the advantages of each form of protection against the peculiarities of each product and the market place that it will be sold in.). This gives parties the opportunity to clearly set out their agreements in ways that are enforceable and avoid the pitfalls they might otherwise fall into.A. The forms of protection can exist simultaneously. but will likely be used as a tool by business in an increasingly competitive business environment. their market penetration is small.S. Copyright software. There is no intention to provide an analysis of the various areas of law. Because the law in Canada differs from the U. The intention of this paper is to provide a reference to some of the issues that a general practitioner might encounter when acting for start . and the development of custom applications. Copyright is the main form of protection relied on by owners of paper is confined to Canadian law. has resulted in an explosion of licensing.A. The paper makes two limited exceptions to this . Most of the alternatives are statutory. This 1. Software Protection protection strategies More than one form of intellectual property protection is available to protect software. Ownership of data bases and privacy rights are only two examples of issues that people are having to deal with as a result of this. trade secrets. is based on the common law.C. and one major type. This latter act not only affects conventional intellectual property rights. caution is advised when reviewing case law and commentaries about some aspects of copyright.

Registration is simple and inexpensive.C. Additionally.S. The convention is based on three main principles . hosted by Pacific Business & Law Institute in January 25. and the fact that registration has some evidentiary weight. The Berne Convention is often referred to by our courts when interpreting the Copyright Act. and it has been questioned if an hexagonal box around the letter "c" is sufficient. the Universal Convention has little practical affect as it was designed to encourage the U. 1995 is attached to this paper.Reference is made to the paper with this material entitled "Application Procedures to Secure Intellectual Property Protection" for a discussion of the advantages of registering ownership of a copyright. the Copyright Act should be referred to for the applicable provisions enacting the provisions of this convention . Canada is also a party to two international conventions. governing the deposit of computer programs. B.for example. The principle purpose of this convention is to prescribe a minimum standard of copyright protection. the effect of it is to obtain the additional protection that is afforded signatories to the Universal Copyright Convention.the copyright symbol. 1985.A. There are regulations in the U. The second convention. 2. The most important is the Berne Convention. to become a signatory to the Berne Convention. Member states are free to extend the scope of protection beyond this. and the name of the owner of the copyright. Patent Office reopened a patent granted to Compton's with respect to a search engine. the marking must consist of three elements .S. and retracted the grant.A. It is insufficient to substitute (c) for the copyright symbol ©. C-42 as amended. Mutala for a conference held in Vancouver. Interestingly. R. Because the practise in Canada is to incorporate the terms of international conventions in our statutes.S. If marking is used. . Developers are increasingly looking to patent protection for their software.C. Copyright protection is statutory.S.A.. the U. This includes the right to statutory damages and attorneys fees.A. a matter of federal jurisdiction and arises out of the Copyright Act. With permission. followed by the year of first publication. there is no requirement in Canada to deposit a copy of the work. section 5. If the owner chooses to mark the work. Patent It is beyond the scope of this paper to do more than highlight the availability of patent protection for certain aspects of software programs. Regulations of the United States Copyright Office set out the requirements for affixing notice to computer software. an introduction to the law of copyright extracted from a paper prepared by Catherine D. It is not necessary to mark works with a copyright notice.S.automatic protection. equal protection of foreigners and independence of protection. which is required in order to obtain registered protection in the U.

Corona. In the U.. Interestingly..3. Software has been widely recognized in the U. . the information cannot be widely known. The essential characteristics of a trade secret are that the information has some value to the person possessing it. representations to financing institutions. the most jealously guarded secret of any software developer is its source code.A. there is also a significant degree of statutory protection. and because of the ineffectiveness of shrink wrapped licenses. because copyright law does not prevent this. such as patent. Information which attracts trade secret protection can also attract other forms of statutory intellectual property protection. copyright and industrial design. The internal engineering and design is then readily available through this reverse engineering. and there is a fierce debate in the U. and can arise out of everyday business activities such as contracting out research.A. This is particularly important with respect to the internal engineering and design of the software. Often.S. it cannot regain its status as a trade secret. and some effort has been made to keep the information confidential.S. It is usual.S.S. decided by the Supreme Court of Canada. This is important. however. to restrict through contract the right to reverse engineer software whether or not it is mass marketed. Once the information has been disclosed.A as to whether reverse engineering represents a breach of the law of copyright. The argument is based on the premise that it is legally possible to dissemble or decompile software. The Canadian case of Lac Minerals v. reference should be made to the applicable legislation. It has not been decided with any degree of certainty whether reverse engineering is a breach of copyright in Canada.A. Having said that. This is because opponents of the concept of trade secret protection argue that the information is readily available. is an excellent starting point for reviewing the law relating to the misappropriation of confidential information. Disclosure can be inadvertent. trade secret protection is given little consideration as a tool for protecting computer software. Their license obligates the licensee to take reasonable steps to protect the software and documentation from unauthorized copying. as attracting trade secret protection. and contracting for the development of custom software. Trade secrets Trade secret protection arises at common law. Trade secrets are not property rights per se. discussions with potential business partners. Novell is the only distributor of mass distributed software that includes in their licenses reference to the fact that their source code is a trade secret. The issue of the availability of this protection arises more often with respect to widely distributed commercial software. because if one intends to rely heavily on trade secret protection in the U.

Quoting from the Regulatory Impact Analysis Statement with respect to this legislation: "While certain aspects of this technology can be awarded protection under the Patent Act.section 6. general consensus for the need for the protection of integrated circuit (IC) topographies which goes beyond existing intellectual property (IP) legislation. It arises automatically. it does not provide adequate protection for the design.section 6. and import or commercially export the topography or an integrated circuit product that incorporates the topography s. Generally. George Lucas was unsuccessful in his claim that the television program "Battlestar Gallactica" infringed his copyright in "Star Wars". III. and recommended to provide for trade secret protection in an employment contract. This is in addition to any patent protection that may apply with respect to any new invention which might exist in the chip. .it does not protect the idea itself.1. The act provides for protection to the end of the tenth calendar year after the earlier of the first commercial exploitation or the date of filing. Copyright protects the way in which an idea is expressed .Because employees often know more about a company's trade secrets than the owners. There is also. Traditionally.Registration extends to the layout design of the topography or the layout design incorporated in an IC product (semi-conductor chip) or an intermediate form. Integrated Circuit Technology Act. the topography of the chip might also be important assuming that their design is original. in the international arena. copyright lasts for the life of the author plus fifty years . copyright subsists for the lesser of fifty years from publication or 75 years from creation . To the extent that they do. 1990. . manufacture. Filing is easy and inexpensive.." Registration gives the holder the exclusive right to reproduce. For example. By way of summary.. although there can be advantages to registering ownership. S. 3(1). A. copyright protection of software has followed the rules governing literary works. copyright is the main property right arising out of the creation of software. Where the identity of the author is unknown.C. Section references in this part refer to the Copyright Introduction Copyright Act. it is common. c. although a separate body of rules is developing. 37 This form of protection is mentioned because some developers are considering "hard" coding their software into micro chips. 4.

private study. Employee versus work for hire The author of a work is the first owner of the copyright . A less relevant exception allows the adaption or modification of a computer program to allow it to run with a particular computer section 27(2)(l).whether it is a contract of service (employment) or a contract for services (independent contractor). Some commentators in the U. all of these rules can be modified by agreement. the Copyright Act restricts an absolute assignment to the life of the author plus twenty-five years . Copyright law relies on the same tests as employment law to determine the nature of the relationship .section 27.section 27(2)(m). and to prevent others from making copies . Copying for research. The exception to this is when an employee creates the copyright. the assignees of the . Notwithstanding this. outside of working hours. A limited exception exists permitting copying for purpose of backup . the copyright belongs to the contractor. Restrictions on transfer When taking an assignment of a copyright from the original author. as section 13(3) does not apply. review or newspaper summary is permissible. 3. Rules governing ownership A number of general rules apply regarding ownership.section 13(3). If a consultant or outside contractor creates the software.A. and the copyright would belong to the employee. it is common to include in an employment agreement confirmation of the employers property rights. the copyright then belongs to the employer . The last twenty-five years of the copyright belong to the author's estate -. criticism.section 3(1).S. A further right was added in 1993 when section 3(1)(h) was included reserving to the owner the sole right to rent out a computer program.section 14(1). it is doubtful that the employee is working within her contract of service. B. If an author creates a work on her own time. would have one believe that the right is broader than it is. This paper does not deal with the complicated issue of what is copyrightable and what is not. without direction from the employer. 2. 1.Copyright protection bestows on the owner the exclusive right to make copies.section 13(1). Working for the Crown A provision of the Copyright Act provides that copyright in works prepared for Her Majesty belong to the Crown section 12. The leading Canadian case dealing with infringement was recently decided in British Columbia.section . but the right is very limited .

It remains to be seen if this result can be avoided through legal artifice such as a will limited to the transfer of ownership in the code. the solution for the client is based at least in part on prior work . Moral rights Whether an owner or licensee. Custom software is also often built on portions of software previously developed for others.1(2). This can have a significant negative impact on the right of the developer and client to use and exploit the software. Current case law in Canada is not entirely adequate when inferring these licenses. rights can only be waived. the developer and client alike can end up not owning the copyright in the software they paid to create. Conventional wisdom in North American property based society is that ownership belongs to the party paying for the goods. these rights have been viewed as relevant more to literature and other art forms than to software. to and these not transferred rights are section that the developer intends to use the routines and other components in future projects. These rights prohibit the use or modification of the copyrighted work by the owner in a way that would damage the reputation of the author. An author of software possesses "moral rights" section 14. which states that the incorporation of a copyright into a micro chip might offend moral rights. it is in everyone's interest to ensure that agreements are in place with the original authors of the software. Prudence suggests that waivers of these rights now be obtained in all cases particularly in respect of the creation of multi-media.2(2). See section 64. if it turns out they do not have the rights to do what they want. Such licenses are based on the inference of consent. Implied license to use In the absence of adequate contractual provisions regarding ownership and use. In other words. These No 5. Summary The primary significance of these rules is that the ownership of copyright does not follow the rules that people are used to. These licenses are not necessary for other . C. given the frequency with which software is developed by independent contractors. Until recently.composer Gilbert of Gilbert & Sullivan found out to their chagrin. licenses to copy may be implied by the courts. As the rules illustrate. instead of relying on employees. This is particularly true for the developer. More than one software developer has also unwittingly transferred part of its library of software when agreeing without clarification that the copyright in custom software belongs to the client. for example. 4. significant changes contemplated.1(1).

A. assignments and licenses must be in writing section 13(4). but recommended While it is recommended that the creation of a copyright be registered. Client and software developer alike want a product that has been effectively created with regard to quality. and often off shore. IV. it is not mandatory section 54. An awareness of the relevant issues and how they impact on each other can make the development process more productive and profitable for everyone. D. This is consistent with the treatment that equity would afford other types of property rights. an Alberta Queen's Bench case decided in 1989 permitted the defendant "licensee" to copy the software onto several office computers. it is likely that the right to adapt. Software development issues Background Trends point to a continuing increase in the development of custom software applications . Notwithstanding that registration is not required. Where an owner is granting a license in a significant piece of software. Complicating this is that some forms of protection may be practically non-existent in the country where the software is being developed. and serves to defeat the subsequent grant even if made without notice . maintain and enhance will be included.from stand alone applications to object oriented modules which either interact with widely available business applications or that can be incorporated into other applications or solutions. Registration not required.section 57(3). it is advisable to register the license pursuant to the relevant Personal Property Security legislation. Reference to issues of intellectual property protection. to a subsequent assignee of the same interest. By way of example. The license implied in this case went far beyond what is commercially reasonable. and the proper law of contracts for the jurisdiction where the developers are located is recommended. on the basis that the "licensee" required the right to make multiple copies in order to use the software. More and more software is being developed through independent contractors. ownership. however. Who owns the resulting intellectual property? . This paper raises some of the key issues which will arise during the negotiation of a contract for custom software development. While the case law makes it clear that the terms of such licenses will be implied as required by each situation. time and cost. Those issues are: 1. It is also not necessary to register the transfer or assignment of an interest in a copyright.forms of literary works such as books because it is not necessary to copy the copyrighted work to make use of it. Registration of the transfer or license of an interest in a copyright acts as actual notice.

with potentially disastrous results. Any agreement with respect to ownership must recognize that there may be components of the software that did not originally belong to the developer. This paper is confined to the copyright in the software code. Additionally. The astute developer will recognize and discuss with the client the extent to which ownership of the copyright will accomplish the client's goals.2. Ownership of the intellectual property The intellectual property created can go beyond the copyright in the software. This is usually expressed by the client as a desire to own the copyright. To what extent will the developer agree not to compete with the client in the future? This paper is not intended to be an in-depth discussion of a software development contract. Clients are usually more interested in preventing others from using the software . which is a subject which merits separate treatment on its own. engines. and copyright in any written materials. One of the most common mistakes made is the unwitting transfer of property rights from the developer to the client. and can include the other kinds of property rights referred to above. How will the risk of whether the project succeeds or fails be allocated? 3. In that case. the property rights involved might include trademarks created as a result of the contract or those belonging to the developer (or another third party) and intended to be used in conjunction with the finished the belief that it makes them more competitive. A developer might also agree not to assist a competitor of the client in developing a similar solution -. An examination of the client's business may also indicate that the competitive advantage assumed to flow from the ownership of the software is not as significant . In most cases. the developer may have priced the project on the basis that it would be create reusable modules which it could reuse. the developer has no intention of transferring ownership of this code. the developer would be precluded from using them. and other object oriented modules in their products. If the client becomes the owner of the copyright. a software developer will prefer to license rather than transfer copyright to the client. Usually. If the developer agrees that the ownership of the software belongs to the client. Developers often include library routines. Additionally. One strategy that can be used to bridge the gap between developer and client is to include an agreement that the custom software will not be sold to others in substantially the form delivered to the client. the necessary licenses from third parties will be required. B. leaving the devloper free to use the modules for other works.a variation of a restrictive covenant. the effect of this will be to transfer ownership of the modules to the client.

Warranties implied by Sale of Goods legislation A sale of goods is distinguished from other arrangements. If the parties have not adequately provided for how the risk of the success or failure of the project will be allocated. Failing to do so will not only promote dissent and increase the likelihood of litigation. legislation will imply terms into the software development contract.. One solution may be that the client is asked to pay a premium for the additional property rights that are being ask for. Regardless of who owns the copyright. . Few developers include in their quotes compensation for giving up various property the client believes. including those that may result in the other party receiving the benefit of a right that was overlooked or inadequately dealt with. the end user and to the developer. Each project is different. references in agreements to testing and acceptance are noticeable by their absence. where the client then retains some form of interest with respect to commercializing all or part of the software developed. such as agency relationships and contracts for services and materials. and the client may then be persuaded that ownership is unnecessary. Almost all contracts fail to adequately describe how the satisfactory completion of the deliverables will be measured. but will not serve to create a relationship that the developer and client can build on. The client is usually in the position of being least able to ascertain whether what is delivered is acceptable. This is true in part because of the continuing trend to use the joint development of software with a client as a financing tool. 1. On an editorial note. and to provide a solution which would universally work is impossible. Currently. The ownership of the resulting intellectual property will continue to be an issue in the future. Experience suggests that by defining bench marks and combining performance testing with these bench marks. The extent to which the license permits use of the copyrighted portions of the software can be very important. the parties will enjoy a more productive development process. This approach also has the advantage of expressing the issue in a way that permits a cost to benefit analysis. Allocation By of risk agreement A significant number of software development contracts fail to adequately describe the deliverables. C. lawyers do not adequately serve their clients when negotiating software development contracts unless they raise all relevant issues. one party is likely to end up with a license to use some or all of the software developed.

In another case. As it turned out. and in a good and workmanlike manner. the store owner ran a substantial jewellery manufacturing business. They have been chosen more for their fact patterns than anything else. the developer's obligation will be limited to having to perform the work with reasonable skill and care. the system was not fit for the purpose the business wanted to use it for. Damages were awarded sufficient to put the business in the position it would have been if the contract had not been entered into. When goods are sold based on their description. This responsibility is in addition to that which may be imposed under the law of torts in the event that the software was negligently developed. an implied condition that the goods will be of merchantable quality might also apply. and accounts receivable system. also involving inventory control and point of sale equipment. after examination and knowing of the defects in the goods. The common reason for this is that the limitation is not available at the time of the purchase (for example. point of sale. the system as designed could not handle the complexity or amount of inventory.To the extent that all or a portion of a development contract is characterized only as a contract for services. the court reminded us that the burden of proof is on the store owner to prove that it made its purpose known. In some jurisdictions these limitations of liability are also not enforceable on the basis that they are contrary to public policy. sealed inside the package with the license). The court went on to say that the store owner knew all about the requirements of its business. it can lose the protection of some of these implied warranties. a reasonable person would still purchase them. In other words. A building supply business contracted for the design of an inventory control. It turned out that in addition to requiring a system that could handle the functions of a retail store. the store owner claimed that the system sold to it was not fit for the intended purpose. The defendant was also accused of not providing the necessary assistance. The action was dismissed because of the failure of . it is likely that the transaction is also a sale of goods. If the purchaser does inspect the goods. In other words. if the purchaser can show that it relied on the skill and knowledge of the vendor. Three representative examples from the last few years follow. an implied warranty that they will meet the description arises. The limitations of warranty commonly found in shrink wrap licenses are usually unenforceable. Additionally. the purchaser was not given notice of the clause. Lastly. and then accepts them. and was under an obligation to communicate this information. The most common sale of goods warranties arise when software is sold based on description. In this case. or if the purchaser relies on the skill and knowledge of the vendor. This means that the goods will pass the test if. an implied warranty that the goods will be fit for the purpose they were purchased will also apply. The customer must be made aware of the limitations before the contract is made. If the contract requires the developer to provide a solution. The same can apply to any other warranty limitations that a vendor may wish to rely on. It is this latter implied warranty that is most important.

Developers are lobbying that the degree of protection should be reduced. are also currently examining the UCC with respect to the degree of protection that a purchaser of "shrink wrapped" software should get. The same considerations apply when drafting these restrictive covenants as when drafting other restrictive covenants of general application.0. and was prepared to do the work for a significantly discounted price. disputes of this nature will continue to happen. From the developer's point of view. each limitation placed on its market will have a potentially negative effect on its business potential. Again. One indication of how far this might go is the lawsuit filed against Corel in Pennsylvania in June of 1995 with respect to last years release of CorelDraw 6. D.A. Often if this solution is used. The plaintiff is claiming that Corel inadequately tested and prematurely released the upgrade. the defendant was commissioned to design and install a system for use in a retail cookware store business. There is no doubt that as the release of mass distributed software continues to be driven by marketing considerations.S. the time period will not start to run until the parties have ceased working together on the particular project. and it remains to be seen how this will be resolved. It is unlikely that the developer will have priced this cost in to the development proposal. The owner of the business was awarded all of its expenses flowing directly from the basic agreement between the parties. the court decided that the defendant failed to supply goods reasonably fit for the purpose intended. The defendant gave strong assurances that it would be able to accomplish the task. The court went on to say that the owner of the business never agreed to participate in an experiment that would disrupt its business. Restrictive covenants The developer's client will usually try and obtain the agreement of the developer not to compete both in the market that the software is specfically developed for and also in related markets that the software could be adapted to. The owner of the business knew that the defendant had never designed a retail computer software system before. The system never did work. In summary. Legislators in the U. Sometimes the gap in the parties expectations can be bridged if the developer agrees to restrict itself from certain limited markets for a limited period time. for many reasons.the store owner to provide this information and make the defendant aware of the particular purpose the software was being purchased for. . the client must specify in detail the purpose for which the software is being produced and the reliance being put on the developer. The defendant wanted to get into this part of the software business. In a third case.

The reality of the local multi-media market is that the majority of the participants are developing product based on their own content. while striking a balance with the property rights of the developer who owns the copyright. and to ensure that these rights are preserved. Not unlike the shareholders' agreement which provides for annual valuations of the company's value. Developers are increasingly using their own content because of the difficulty of obtaining rights to other forms of content. For example. Caution is advised to ensure that the ownership of trade secrets is adequately protected by the escrow agreement. This has required lawyers to be more aware of the potential rights that the owners of copyright may wish to exercise in future. the number of copyright clearances that must be obtained for one production can be overwhelming. Source code escrows are the main tool used to provide the necessary information to the client in the event that it has to do its own maintenance. books. and include the development documentation. the client will want to ensure that there are adequate provisions in the agreement for support and maintenance. Source code escrows usually go beyond the mere deposit of the source code. these provisions are usually observed more in the breach. The complexities raised by including multiple sources of media. Multi-media issues Multi-media for this paper means computer based software programs which contain an interactive component and are composed of more than one source of copyrighted content . This is often because of the unwillingness of content owners to license .such as movies. etc. photographs. Several firms are now providing escrow services. The main concern is usually that the developer will be unwilling or unable to perform the services. the composer of the music. F. Maintenance/the "source code escrow" When software has been developed for a custom application. articles. leaving the client to fend for itself. music. Walt Disney Studios was involved in a dispute over whether it could release the picture "Fantasia" on video cassette. For example. The issues faced by the lawyer acting for multi-media developers involve little in the way of new legal theory. and the new forms of storage medium and delivery platforms that are being used. make developing multi-media an expensive prospect from a legal point of view. and tools that allow for more interactivity (splicing tools) or more digital compression (to allow more information to be passed through existing bandwidth). The challenge for the client is to ensure that the escrow contains the necessary information. The estate of Stravinsky.E. disputed the right of Disney to use the musical score outside of the one film that it released with. The efficacy of these agreements depends on the regular deposit of code and supporting materials. however.

schools. Subject to the exemptions contained in section 21 of the Act. universities and colleges (commonly referred to as Tier Two) and the self-governing professions (commonly referred to as Tier Three). The Office of the Information and Privacy Commissioner. Caution is advised when contracting with public bodies to ensure that your client is entitled to the privacy exemptions included in section 21 of the Act. the industry is faced with technological issues relating to production and delivery. V. the inability of content owners to license because they find they do not own the rights to license for the method of delivery contemplated. and relate to the protection of the public body as opposed to the contracting party. The information need only be in the "custody or under the control" of a public body. than the use of the content with a particular piece of hardware. The reason why the public body has possession is not relevant.200 bodies are covered by the legislation. With the changes in educational funding. the public may have a right of access to information about or belonging to your clients and their a way that reflects the way business is done in the mass distribution software market. and significant practical issues in obtaining the copyright clearances needed to obtain content. your client may be faced with the decision as to whether to do business with the public . British Columbia. These issues can be compounded by the fact that in video and film there are often many other parties who have residual rights . hospitals. and provides for limited exceptions to this right of access. This includes government ministries. The other exemptions to disclosure are discretionary. police forces. Why it affects commercial transactions The Freedom of Information and Privacy Act (the "Act") provides the public in Part 1 with access to records". and the fact that some rights require payment whether or not a profit is generated (for example. An easy. In summary. boards. If the exemptions do not appear to apply. The scope of possible business transactions with public bodies which might give rise to information being disclosed to the public body is not limited by the Act. and the fact that more contract research and development is being done by educational bodies. consistent way of making this content available to the computer multi-media industry has yet to be arrived at.and whose agreement may be needed. owners of content often think more in terms of performance rights. The scope of the Act goes beyond the usual supply of goods or services. to the Screen Actors Guild and the Directors' Guild).C. crown listed corporations. In particular. commissions and agencies (commonly referred to as Tier One public bodies).) A. as that term is defined by the Act. Victoria. estimates that over 2. it is much more likely that a developer could find itself in a business relationship that could involve intellectual property or other confidential information being disclosed to a public body. Freedom of information and Protection of Privacy Act (B. local and regional governments.

papers and any other thing on which information is recorded or stored by graphic. This dual obligation will inevitably place the public body in a difficult position where it is being asked to divulge information arising out of particular commercial transactions where the public body has a financial interest beyond procuring goods and services. act only... to privacy protection under the Act. subject to the rights of the individuals about whom the information relates. including the public body itself. All information contained in a "record" which is in the "custody or under the control of a public body" is covered. mechanical or other means.body and risk disclosure of any information which might be disclosed in the course of the business relationship. but does not include a computer program . For those of us who are called on to advise public bodies. The function of the Information and Privacy Commissioner is to review both the refusal to provide information and the decision of the public body to release the information. The Act does not distinguish between information (including intellectual property) owned by a third party. The handbook does not stress the mandatory nature of the exemption as strongly as it might. the former is intended to be an interpretive guide used by the public bodies. What are "records" "Records" are defined in Schedule 1 of the Act as including ".. An Appendix of Resources is attached to this paper. . together with a pro forma clause for consideration. electronic. Similarly. the public body has a mandatory obligation not to release information covered the exemption contained in section 21. Scope This portion of the paper is intended to highlight the possibility of the disclosure of trade secrets and confidential information. and to suggest a protection strategy. Presumably this also includes data bases. C. The theme of the Act is that the public bodies are self policing. While the latter is a primary source. Copies of orders of the Information and Privacy Commissioner can be obtained from the Crown's printer. It may give insight into the public body's decision if it turns out they relied on it when responding to a request for information. It is not intended to be an definitive work on the Act... Recommended sources include both the Information and Privacy Handbook (the "Handbook") and the Policy and Procedures Manual (the "Manual"). . D. and does not refer to the Federal legislation governing federal institutions.C.".documents.. B. The public body's obligation The public body has an obligation to release any information not covered by section 21 or section 17 (disclosure harmful to the financial or economic interests of a public body. including information to which "intellectual property" protection extends. The paper refers to the B. it may be difficult to balance the interests of the various stake holders.

A note of caution. As evidence will be required if the right to access is adjudicated. it is suggested that they do so. This could also take the form of a nondisclosure agreement. Additionally. There (a) are the three supply conditions must be to in the application confidence of s. (1)(b) The act provides that confidentiality may be explicit or implicit. A recent ruling of the Information and Privacy Commissioner decided that E-mail messages stored on government backup tapes were not subject to disclosure. The Handbook provides good guidance to the public body in this regard. E.As an aside. The Commissioner accepted the government's representations that accessing the messages would unduly interfere with the running of government. will not be treated as sufficient to satisfy this requirement. if there is a possibility . this 21 section. There is no suggestion that advanced rulings could be obtained as to whether information is covered by the exemptions contained in section 21.2-3 contains an extensive list of factors relating to the exercise of discretion for the guidance of the public body. public bodies may take a cautious approach to the release of information and rely on the Information and Privacy Commissioner to adjudicate. 1. whether the purpose for which the information was supplied would have resulted in the disclosure of the information. A copy of this section is attached at the end of this paper. The public body that one is dealing with may have adopted a policy under which information supplied will be implicitly treated as confidential. Because of the onus placed on the public body. without further evidence. and whether the information is not otherwise available from other sources. Stamping a document "Confidential". If you client has failed to do this and intends to rely on an implicit agreement of confidentiality. Section Exemptions 21(1) "harmful from to business disclosure interests" This exemption is mandatory and must be claimed by the public body. the public body will be forced to consider the circumstances surrounding the supply. the Handbook at section 2. some express provisions should be included in your contract reflecting the confidentiality of the supply of information. If one acts for a public body that has not implemented such a policy. Orders of the Commissioners in British Columbia and Ontario have suggested that some of the circumstances that should be considered are whether there has been a previous and regular practise of supplying information in confidence.

s. This is a public policy driven statute. Reference can be made to the Policy and Procedures Manual (the "Manual") for guidance. (b) (i) the trade records secrets must relate s. labour relations. The Act states that the disclosure "would result in harm or improper benefit". financial. which only requires a reasonable standard of proof. result in similar information no longer being supplied in the future. (c) harm s. The Manual defines "financial" as relating to "money and its use or distribution or to assets with monetary value". scientific or technical information of a third party . (ii) commercial. but falls short of proving beyond a reasonable doubt. The Handbook warns that the evidence must be detailed and convincing. The Handbook is not very helpful on this point. "Commercial information" relates more to acquiring goods and services. result in undue financial loss or hardship. and the Commissioner will be balancing the right to information against the right to privacy and the sanctity of property rights. and show the link between the information to be disclosed and the harm of interference. This suggests a much higher standard of proof than the section as a whole. Scientific and technical information refers to information which exhibits the principals or methods of science. .that the information will be distributed between other Ministries or Agencies. consideration should be given to how this information will be handled and controlled. 21(1)(c) The disclosure of the information must be reasonably expected to harm significantly the competitive or interfere with the negotiating position of the third party. or reveal information relating to a labour relations dispute. Refer to Information Circular 86-4R3 published by Revenue Canada which deals much more extensively with this topic in the context of Scientific Research and Experimental Development tax credits for assistance in interpreting the meaning of these words. The proof required goes beyond a concern. This has been held to cover pricing practices and operational results such as profit and loss. 21(1)(a)(ii) One should not assume that all information found in a record will be covered by this language. or relates to the application of scientific principles. The definition goes beyond the usual definition of trade secrets and introduces a "harm" test. to : 21(1)(a)(I) Trade secrets are defined in Schedule 1 of the Act.

Burden of proof It is up to the third party to prove that the applicant has no right of access to the record containing the third party's information section 57(3)(b). 3. If the public body receives a request for access to information and intends to adjudicate the request. that has or is reasonably likely to have. but for the time being one should assume that the higher standard will be applied. This exemption is other words. "financial. monetary value". and deal with disclosure harmful to the financial or economic interests of a public body. F.section 14. Miscellaneous exemptions There are a variety of other discretionary exemptions that a public body can claim. the public body is obligated to give the applicant access to the remainder of it . the third party will be given twenty days to respond to notice of the public body's intention. 2.The Manual makes the point that harm is relative to each case . The public body is obligated to make a decision within thirty days.could reasonably be expected to result in the undue financial loss or gain to a third party". Solicitor client privilege The public body is not obligated to disclose information which is subject to solicitor client privilege . commercial... section 17 provides a discretionary right to refuse to disclose "trade secrets of a public body". harmful to individual or public safety or law enforcement. and the public body is not obligated to claim it. These exemptions are contained in sections 15 through 19. One might consider obligating the public body to claim these exemptions.. or technical information that belongs to the public body . From the public body's point of view and with a business perspective. Where the information for which the claim of privilege is made can be severed from the record. and harmful to intergovernmental relations or negotiations. Public policy override section 25(1) . G. If the public body is contractually obligated to claim privilege to the extent that it existed.. the enforceability of such a provision may be questioned on the ground of public policy considerations. what is necessary to constitute significant harm to a large company will be different to that of a small company. There is some evidence that the Commissioner is moving away from the stringent test of proving significant harm. scientific. and information which ".section 4(2). The time period that a party has in order to present the evidence that will be required to satisfy the requirements of section 21 is short.

This dispute is centred offshore primarily. A. with fees linked to software sales.two in Toronto.S. and the organization is a significant lobbying force with respect to the government of the U. There is a battle for jurisdiction with the Business Software Alliance. and permit the SPA to proceed. Its focus is international. and is motivated by the amount of damages recoverable. the threat of blackmail has been added to the reasons for compliance. Members give the organization powers of attorney to perform audits. and membership is essentially closed. 1. Business Software Alliance (BSA) This organization was started in 1988 by the larger members of the SPA such as MicroSoft. Any money recovered goes to the SPA to fund the organization. In large organizations. Software piracy In addition to private actions for enforcement. The SPA does not tend to pursue individuals. Canadian Alliance Against Software Theft (CAAST) This organization received significant media attention beginning in the fall of 1995 when it instigated court ordered raids on companies suspected of being in possession of illegal software. with the growth of industry groups dedicated to reducing software piracy based on tips from third parties. Investigations are usually instigated on the initiative of a tip.Notwithstanding any other provision of the Act. VI. there are now three significant industry groups acting as "software police". 3. There are increasing reasons for large organizations to avoid infringing the rights of copyright owners. Aldus.A. the public body must release information about a risk of significant harm to the environment or the health or safety of the public or a group of people. 2. It is an expensive organization to join. Notice must be first given to the third party. Industry initiatives Over the past few years. it is also becoming increasingly difficult to manage and monitor software licenses. In 1992 it took over the function of fighting software piracy from the SPA. Software Protection Association (SPA) The Software Protection Association is member funded. and one in . WordPerfect and Lotus. They are a broad based organization. Law suits were commenced against three firms following that .

In current usage. 1. The same report recommended that existing copyright protection be extended to reflect the growing electronic distribution of copyrighted material. B. and occasionally where the software performs a dedicated function such as accounting and the number of users is not an issue. By employees Depending on the size of the organization. issues can arise as to the scope of use permitted. C. The final report to Industry Canada entitled Copyright and the Information Highway recommended the introduction of a statutory damages model similar to the U.Calgary. it is advisable to institute a policy of employee education and monitoring with respect to the use and copying of software. Government initiatives In a report released in the fall of 1995 by the Commerce Department of the U. 2. including the previous employer will be utilized by the employee in the course of her new job.S. the department recommended that the import and manufacture of devices aimed at circumventing technology protecting against pirating of copyrighted works be banned.A.A. Some licenses are written as licenses to the individual. At that time. and also warrants that no intellectual property owned by others. Shrink wrap Trends Licensing licenses The enforceability of these licenses continues to remain questionable at the mass distribution level. Often users are permitted to make their own additional copies.S. VII. where the object is to generate the lowest possible user cost. Site licensing versus CPU licensing CPU licensing. it usually works more like a modified pricing plan for CPU licensing. . Depending on the wording of the license. the organization warned that additional lawsuits were contemplated against people pirating software. A.. that is the licensing of a copy for each computer continues to be most popular. Many organizations now include in their employment agreements a provision where the new employee acknowledges the intellectual property rights of her previous employer. Site licensing in its original form (an unlimited number of copies at a physical site) tends to be used only in highly competitive situations. where the copy cost declines as the volume of licenses increases.

as opposed to on one site. The accused received an eighteen month jail sentence. publishers will be looking for metering software or a license server to control access. and license only that number of copies that are running at any one time world wide. C. B.Publishers continue to expand the right of licensees to use software away from the end user's primary PC. . Software publishing Conventional book publishers continue to acquire software product for distribution. Cross platform licensing Expanded cross platform licensing continues to be an alternative for publishers as long as competitive platforms such as OS2 and the Macintosh Powerbook portable continue to be options. Electronic distribution (the Internet) Industry Canada in its report dated March 1995 concluded that no additional categories of works were necessary with respect to distribution over the Information Highway. The committee was of the view that distribution over the Internet was analogous to a performance. To take advantage of this on a large scale. 3. Large corporate users have on occasion negotiated licenses that are organization wide. MicroSoft has recently limited the applicability of its concurrent licensing program so that it does not apply to small businesses. and so within the right of the owner of the copyright. Computer viruses Criminal law was first used in the United Kingdom in 1995 to prosecute a twenty-six year old who copied programs and games and then put them back into bulletin boards. which could change the way that software is marketed. which has raised the predictable storm of protest. Concurrent licensing It is common to license on the basis of the number of copies that will be running at any one time. 4. 5.

Sign up to vote on this title
UsefulNot useful

Master Your Semester with Scribd & The New York Times

Special offer for students: Only $4.99/month.

Master Your Semester with a Special Offer from Scribd & The New York Times

Cancel anytime.