Rodney D. Ryder Intellectual Property and the Internet – Legal Issues and Web 2.0 Rodney D. Ryder

Introduction - Structure Rodney D. Ryder Part I - <The New Media and Intellectual Property> Nature of Internet and Intellectual Property Part II - <Strategies>: Legal procedure and IP enforcement John Doe Orders and the ‘Skylarov Example’ Part III: Copyright Law, Anti-Circumvention and International Treaties Practice Notes and Illustrations

Part I - <The New Media and Intellectual Property>

Nature of Internet and Intellectual Property

Part II - <Strategies>: Legal procedure and IP enforcement

John Doe Orders and the ‘Skylarov Example’

Part III: Copyright Law, Anti-Circumvention and International Treaties

Practice Notes and Illustrations

The New Media and Intellectual Property Rodney D. Ryder Nature of the Internet and Intellectual Property Law

The Rise [and Fall?] of Cyberspace- Law and the Architecture of the Internet The Internet – ‘decentralised routing system’ – designed to carry messages from point to point even if intermediate communication exchanges are blocked, damaged or destroyed. <the dumb network> ‘ The net interprets censorship as damage, and routes around it’. John Gilmore, Lawless, The Economist, July 1995. <Cyberspace>; <Neuromancer> and the “Network” [A place governed by its own laws - as introduced by William Gibson ] “ Law and Borders”: the ‘independent’ theory of cyberspace law [David Post and David Johnson, Stanford Law Review] Benkler’s layers – the physical, the code and content [in communications theory] Lessig <Code and other laws of Cyberspace> Goldsmith and Wu <Who Controls the Internet? The Illusions of a Borderless World> Rodney D. Ryder

The Internet – ‘decentralised routing system’ – designed to carry messages from point to point even if intermediate communication exchanges are blocked, damaged or destroyed. <the dumb network>

‘ The net interprets censorship as damage, and routes around it’. John Gilmore, Lawless, The Economist, July 1995.

<Cyberspace>; <Neuromancer> and the “Network” [A place governed by its own laws - as introduced by William Gibson ]

“ Law and Borders”: the ‘independent’ theory of cyberspace law [David Post and David Johnson, Stanford Law Review]

Benkler’s layers – the physical, the code and content [in communications theory]

Lessig <Code and other laws of Cyberspace>

Goldsmith and Wu <Who Controls the Internet? The Illusions of a Borderless World>

The creative process, innovation and intellectual property Understanding Knowledge and the Creative Process: the collection, use and attribution The ‘discovery’ of DNA: “…instead victory fell to a quartet of scientists in England who didn’t work as a team, often weren’t on speaking terms and were for the most part novices in the field” <Bill Bryson, A Short History of Nearly Everything> <The Double Helix> by James Watson. The team: Maurice Wilkins, James Watson, Francis Crick and Rosalind Franklin Fermenting a culture of ‘creation’: the Japanese Model What can be protected? Brands: a ‘hundred monkeys’ and the naming process Rodney D. Ryder

Understanding Knowledge and the Creative Process: the collection, use and attribution

The ‘discovery’ of DNA: “…instead victory fell to a quartet of scientists in England who didn’t work as a team, often weren’t on speaking terms and were for the most part novices in the field” <Bill Bryson, A Short History of Nearly Everything>

<The Double Helix> by James Watson. The team: Maurice Wilkins, James Watson, Francis Crick and Rosalind Franklin

Fermenting a culture of ‘creation’: the Japanese Model

What can be protected?

Brands: a ‘hundred monkeys’ and the naming process

The Uses of Intellectual Property - I Defensive: Creation and protection of Intellectual Property to improve market position Income creating: With the need to increase profits, most large companies have come to realize that a defensive posture, while important, is not always sufficient. To obtain the maximum value from their assets, they need to develop licensing strategies that provide additional income Strategic: Truly creative companies use IP as a business tool to leverage their entrance into a new product and geographic areas and as a bargaining chip in business deals Rodney D. Ryder

Defensive: Creation and protection of Intellectual Property to improve market position

Income creating: With the need to increase profits, most large companies have come to realize that a defensive posture, while important, is not always sufficient. To obtain the maximum value from their assets, they need to develop licensing strategies that provide additional income

Strategic: Truly creative companies use IP as a business tool to leverage their entrance into a new product and geographic areas and as a bargaining chip in business deals

The Uses of Intellectual Property - II Defensive Cost Control Profit Centre Integrated Visionary Rodney D. Ryder

Defensive

Cost Control

Profit Centre

Integrated

Visionary

Secure IP [I] Confirm Ownership [Employee Contracts; Intellectual Property Assignments; License Agreements (In-Licensing and Out-Licensing); Cooperative Research Agreements; Financing Agreements; Security Interests; Public Filings; Outside Contractor Agreements; Work-for-Hire Doctrine] Register / File for protection [Patent and Trademark Office; Foreign patent and trademark office; Copyright Office; Domain name registrar; No filing requirements for trade secrets] Maintain IP [ Pay maintenance and renewal fees; Safeguard [your] trade secrets; Internal Measures (inside your business); External Measures - dealing with 3 rd parties] Rodney D. Ryder

Confirm Ownership [Employee Contracts; Intellectual Property Assignments; License Agreements (In-Licensing and Out-Licensing); Cooperative Research Agreements; Financing Agreements; Security Interests; Public Filings; Outside Contractor Agreements; Work-for-Hire Doctrine]

Register / File for protection [Patent and Trademark Office; Foreign patent and trademark office; Copyright Office; Domain name registrar; No filing requirements for trade secrets]

Maintain IP [ Pay maintenance and renewal fees; Safeguard [your] trade secrets; Internal Measures (inside your business); External Measures - dealing with 3 rd parties]

Secure IP [II] Conduct IP Review of Transaction: Identify the IP Verify Ownership/Proper Chain of Title Review Underlying Documents (e.g. assignments, licenses, registrations, applications, financing agreements) Assess the 3 rd Party Lawsuits/Threatened Claims Rodney D. Ryder

Conduct IP Review of Transaction:

Identify the IP

Verify Ownership/Proper Chain of Title

Review Underlying Documents

(e.g. assignments, licenses, registrations, applications, financing agreements)

Assess the 3 rd Party

Lawsuits/Threatened Claims

Secure IP [III] – Agreements, Disclosures,… Confidentiality/Non-Disclosure Agreement[s] Exclusivity Territoriality Inspections/Audits Indemnification Review market - Monitor competitor’s filings Risk assessment Maintain internal controls Audit licensees Private investigators Take action to enforce when necessary Rodney D. Ryder

Confidentiality/Non-Disclosure Agreement[s]

Exclusivity

Territoriality

Inspections/Audits

Indemnification

Review market - Monitor competitor’s filings

Risk assessment

Maintain internal controls

Audit licensees

Private investigators

Take action to enforce when necessary

Intellectual Property and Commercial Strategy Strategic Integration – Do trademarks and patents go together? They must – the context of the pharmaceutical sector – Prozac and other brands Patents as a source of revenue – IBM and Texas Instruments Improve, Innovate and Commercialise - improve blockbuster drugs patented by others - basically by removing side effects obtain patent on improvement license the improvement to owner of original drug patent and earn royalties Prozac, Claritin and Seldane - some of the “blockbuster drugs” improved Rodney D. Ryder

Strategic Integration – Do trademarks and patents go together? They must – the context of the pharmaceutical sector – Prozac and other brands

Patents as a source of revenue – IBM and Texas Instruments

Improve, Innovate and Commercialise -

improve blockbuster drugs patented by others - basically by removing side effects

obtain patent on improvement

license the improvement to owner of original drug patent and earn royalties

Prozac, Claritin and Seldane - some of the “blockbuster drugs” improved

Patents: Best Practices [Dow Chemicals] Developed Intellectual Asset Management Model (IAM) Mapped its existing patents : “weeded out” old technology Studied Competitors’ patents Built “Knowledge Tree” Build a ‘fortress of patents’ – new molecule, process, derivatives, use of derivatives, treatment, new use Key words: Assessment, Classification, Valuation, Investment & Portfolio Management Rodney D. Ryder

Developed Intellectual Asset Management Model (IAM)

Mapped its existing patents : “weeded out” old technology

Studied Competitors’ patents

Built “Knowledge Tree”

Build a ‘fortress of patents’ – new molecule, process, derivatives, use of derivatives, treatment, new use

Key words: Assessment, Classification, Valuation, Investment & Portfolio Management

Emerging Technology Patents [I] – Reverse Auction Patent A method comprising the steps of: viewing, using a computer, special fare listing information for air travel to a specified destination location from a specified departure location within a specified time range, said special fare listing information excluding a specified departure time; transmitting, using a computer, a request to purchase a commitment for carriage corresponding to said special fare listing information; receiving a commitment for carriage, including an obligation by an airline to provide a seat on a flight, that satisfies said request but does not specify a departure time; accepting said commitment for carriage; and receiving at a time subsequent to said accepting an identification of said departure time. Rodney D. Ryder

A method comprising the steps of: viewing, using a computer, special fare listing information for air travel to a specified destination location from a specified departure location within a specified time range, said special fare listing information excluding a specified departure time; transmitting, using a computer, a request to purchase a commitment for carriage corresponding to said special fare listing information; receiving a commitment for carriage, including an obligation by an airline to provide a seat on a flight, that satisfies said request but does not specify a departure time; accepting said commitment for carriage; and receiving at a time subsequent to said accepting an identification of said departure time.

Emerging Technology Patents [I] – One Click Ordering Patent [US Patent No. 5960411] One Click Ordering: A client system for ordering an item comprising: an identifier that identifies a customer; a display component for displaying information identifying the item; a single-action ordering component that in response to performance of only a single action, sends a request to a server system to order the identified item, the request including the identifier so that the server system can locate additional information needed to complete the order and so that the server system can fulfill the generated order to complete purchase of the item; and a shopping cart ordering component that in response to performance of an add-to-shopping-cart action, sends a request to the server system to add the item to a shopping cart. Rodney D. Ryder

One Click Ordering:

A client system for ordering an item comprising: an identifier that identifies a customer;

a display component for displaying information identifying the item; a single-action ordering component that in response to performance of only a single action, sends a request to a server system to order the identified item, the request including the identifier so that the server system can locate additional information needed to complete the order and so that the server system can fulfill the generated order to complete purchase of the item;

and a shopping cart ordering component that in response to performance of an add-to-shopping-cart action, sends a request to the server system to add the item to a shopping cart.

What is ‘trademarkable’? The function of [the] mark as an indicator of source/origin – must be distinctive Generic [The BookStore for a retail store selling books!] Descriptive [Washbright for soaps describing a characteristic, function or attribute] Suggestive [a simile – Lux for soap or Whirlpool for washing machines] Arbitrary [ Apple for Computers; Orange for telecommunications service network] Invented [Coined] – Kodak; George Eastman and the letter ‘K’ Rodney D. Ryder

The function of [the] mark as an indicator of source/origin – must be distinctive

Generic [The BookStore for a retail store selling books!]

Descriptive [Washbright for soaps describing a characteristic, function or attribute]

Suggestive [a simile – Lux for soap or Whirlpool for washing machines]

Arbitrary [ Apple for Computers; Orange for telecommunications service network]

Invented [Coined] – Kodak; George Eastman and the letter ‘K’

Trademarks, Domain Names and the Internet: The Dispute Resolution Service Rodney D. Ryder

Cybersquatting in India: the Yahoo! Case [ Yahoo! Inc. v. Akash Arora & Anr ,; 78 (1999) DLT 285] Rodney D. Ryder

The Yahoo! Case – Copyright Issues Rodney D. Ryder

Trademarks and Parody on the Internet Rodney D. Ryder

Trademarks and Parody on the Internet Rodney D. Ryder

Second Generation Trademark Issues: Metatags [ Tata Sons v. D and V Enterprises; WIPO Case No: D2000 – 0479] Rodney D. Ryder

Second Generation Trademark Issues: Metatags Rodney D. Ryder

Linking Rodney D. Ryder

Hyperlinking and Framing National Geographic Society v. Mulla Yaffe and Ors. [MANU/DE/2073/2002 (Delhi High Court)] Rodney D. Ryder

A brief history of Copyright Law Technology and the Law – the stages of copyright law The ‘monastic’ or ‘gurukul’ [oral tradition] The birth of copyright [Gutenberg and the Printing Press] The era of promiscuity: the Internet and Technology [the WIPO Copyright Treaty and the ‘DMCA’] The ‘World’s Biggest Copying Machine’ [PC Week; January 27, 1997] Rodney D. Ryder

Technology and the Law – the stages of copyright law

The ‘monastic’ or ‘gurukul’ [oral tradition]

The birth of copyright [Gutenberg and the Printing Press]

The era of promiscuity: the Internet and Technology [the WIPO Copyright Treaty and the ‘DMCA’]

The ‘World’s Biggest Copying Machine’ [PC Week; January 27, 1997]

The nature of copyright – Baigent and Leigh v. Random House [2006] EWHC 719 (Ch) The fundamental dichotomy – ‘idea’ versus ‘expression’ No copyright infringement either by textual or non-textual copying [failure to establish that four to five ‘themes’ were copied] Themes are too ‘general’ and too low a level of ‘abstraction’ Language copying claims found not to be a textual infringement Rodney D. Ryder

The fundamental dichotomy – ‘idea’ versus ‘expression’

No copyright infringement either by textual or non-textual copying [failure to establish that four to five ‘themes’ were copied]

Themes are too ‘general’ and too low a level of ‘abstraction’

Language copying claims found not to be a textual infringement

Copyright and the Internet [Technological Developments and the Law] Digitisation [unlike analogue copies, which degrade with each copy; digital media allows perfect copies to be made indefinitely] Digital Compression Technologies [MP3 for music – large media files can be compressed without a loss in quality] Bandwidth [increased availability of high-speed internet connectivity further aids distribution of high quality digital files] Rodney D. Ryder

Digitisation [unlike analogue copies, which degrade with each copy; digital media allows perfect copies to be made indefinitely]

Digital Compression Technologies [MP3 for music – large media files can be compressed without a loss in quality]

Bandwidth [increased availability of high-speed internet connectivity further aids distribution of high quality digital files]

Technological ‘Advancements’ File Copying and Sharing – anyone with a home computer can access and distribute Peer-to-Peer file sharing programmes – Napster Decentralised sharing programmes Rodney D. Ryder

File Copying and Sharing – anyone with a home computer can access and distribute

Peer-to-Peer file sharing programmes – Napster

Decentralised sharing programmes

Napster – the file sharing mechanism [A & M Records, Inc. v. Napster, Inc.; 239 F. 3d 1004; 9 th Cir. 2001] Rodney D. Ryder

Bit Torrent – the tracker device Rodney D. Ryder

Copyright, Journalism and the ‘new medium’: The New York Times. Co. v. Tasini; (00-201) 206 F. 3d 161 Freelance authors agreed to write for print publications like TIME Their articles placed in electronic databases by publishers (e.g. in LEXIS NEXIS) Publisher could use article as part of the ‘original work’ but not as stand alone article or in new collective work Rights in New Medium would vest with author, unless assigned [reiterated in National Geographic v. Greenberg; 2001 U.S. LEXIS 9493] Rodney D. Ryder

Freelance authors agreed to write for print publications like TIME

Their articles placed in electronic databases by publishers (e.g. in LEXIS NEXIS)

Publisher could use article as part of the ‘original work’ but not as stand alone article or in new collective work

Rights in New Medium would vest with author, unless assigned [reiterated in National Geographic v. Greenberg; 2001 U.S. LEXIS 9493]

Copyright: Linking and ‘Trespassing’ Linking and ‘Deeplinking’ – bypassing the ‘home page’ and site contact information [ Ticketmaster Corp. v. Tickets.com Inc., 54 U.S.P.Q. 2d 1344 (C.D. Cal. 2000) ‘ Deeplinking’ and visual search engines [Kelly v. Arriba Soft Corporation; 280F.3d 934 (9 th Cir. February 6, 2002) Extraction of data, bots and trespass [eBay Inc. v. Bidders Edge Inc.; 100 F. Supp. 2d. 1058] Recognition of new systems of delivery – file sharing networks - <KaZaa; Morpheus and Grokster> Inducement of breach of copyright [MGM Studios Inc. v. Grokster; 545 U.S. 913 (2005)] Rodney D. Ryder

Linking and ‘Deeplinking’ – bypassing the ‘home page’ and site contact information [ Ticketmaster Corp. v. Tickets.com Inc., 54 U.S.P.Q. 2d 1344 (C.D. Cal. 2000)

‘ Deeplinking’ and visual search engines [Kelly v. Arriba Soft Corporation; 280F.3d 934 (9 th Cir. February 6, 2002)

Extraction of data, bots and trespass [eBay Inc. v. Bidders Edge Inc.; 100 F. Supp. 2d. 1058]

Recognition of new systems of delivery – file sharing networks - <KaZaa; Morpheus and Grokster>

Inducement of breach of copyright [MGM Studios Inc. v. Grokster; 545 U.S. 913 (2005)]

<Strategies>: Legal procedure and IP enforcement Rodney D. Ryder Intellectual Property Enforcement in the New Media – Identify, Secure, Enforce

Broadcast Regulation: the ‘Ten Sports’ Case Taj Television v. Rajan Mandal 2003 FSR 407 The case brought to the fore many key issues relating to broadcast regulation. The main features of the decision are: The issuing of ‘Ashok Kumar’ [Indian ‘John Doe’] Orders in addition to orders in the nature of Anton Piller Orders The appointment of a Commissioner by the Court to enter the premises of unnamed defendants and record evidence of infringing materials [photographs and video shots], which could be used in civil or criminal proceedings Seizure of infringing materials in the premises of named defendants Class actions against a group of defendants Rodney D. Ryder

The case brought to the fore many key issues relating to broadcast regulation. The main features of the decision are:

The issuing of ‘Ashok Kumar’ [Indian ‘John Doe’] Orders in addition to orders in the nature of Anton Piller Orders

The appointment of a Commissioner by the Court to enter the premises of unnamed defendants and record evidence of infringing materials [photographs and video shots], which could be used in civil or criminal proceedings

Seizure of infringing materials in the premises of named defendants

Class actions against a group of defendants

“ The Ten Sports Case”: The Technology Rodney D. Ryder

The ‘Ten Sports’ Case The effect on Broadcast regulation No geographical limitations Orders can be passed against an unspecified number of defendants [wider authority than provided for in developed countries like the US and Canada] Provides judiciary with much needed authorisation to crack down on copyright infringement in the film broadcast industry Powers to check piracy with an urgency that is imperative for IP with a short shelf life Rodney D. Ryder

The effect on Broadcast regulation

No geographical limitations

Orders can be passed against an unspecified number of defendants [wider authority than provided for in developed countries like the US and Canada]

Provides judiciary with much needed authorisation to crack down on copyright infringement in the film broadcast industry

Powers to check piracy with an urgency that is imperative for IP with a short shelf life

Digital Millennium Copyright Act and Anti-Circumvention [Technology + Law] Circumvention of Technological Protection prohibited by law Universal City Studios, Inc. v. Reimerdes; 82 F. Supp. 2d 211 [defendant liable for posting DeCSS; a decrypter for the Content Scrambling System – CSS] United States of America v. Elcom Ltd. a/k/a ElcomSoft Co.Ltd. and Dmitry Sklyarov; 203 F. Supp. 2d 1111 [the by-passing of the Adobe E-Book Reader and the subsequent invitation to the United States] Rodney D. Ryder

Circumvention of Technological Protection prohibited by law

Universal City Studios, Inc. v. Reimerdes; 82 F. Supp. 2d 211 [defendant liable for posting DeCSS; a decrypter for the Content Scrambling System – CSS]

United States of America v. Elcom Ltd. a/k/a ElcomSoft Co.Ltd. and Dmitry Sklyarov; 203 F. Supp. 2d 1111 [the by-passing of the Adobe E-Book Reader and the subsequent invitation to the United States]

Copyright and Anti-Circumvention Devices Rodney D. Ryder

Preventing Piracy [I] – Technical Measures Copy Protection [Encryption – encoding digital content to prevent it from being viewed; Copy Control Flags – digital ‘flags’ inserted as indicators; CD Copy Protection – insertion of an ‘additional’ track to prevent unauthorised recording] Copyright Protection [Digital Watermarking – digital signals embedded to detect or verify originality; Digital fingerprinting – digital signal embedded in the file containing information on the buyer] Cross-industry protection measures [Secure Digital Music Initiative [SDMI] – developed by a consortium of music companies; uses watermarking and copy protection] Rodney D. Ryder

Copy Protection [Encryption – encoding digital content to prevent it from being viewed; Copy Control Flags – digital ‘flags’ inserted as indicators; CD Copy Protection – insertion of an ‘additional’ track to prevent unauthorised recording]

Copyright Protection [Digital Watermarking – digital signals embedded to detect or verify originality; Digital fingerprinting – digital signal embedded in the file containing information on the buyer]

Cross-industry protection measures [Secure Digital Music Initiative [SDMI] – developed by a consortium of music companies; uses watermarking and copy protection]

Preventing Piracy [I] – Circumvention Measures Circumvention Technologies – primarily aimed at bypassing the range of technical measures [described in the previous slide] Software approaches include the decryption and translation of files DeCSS [and similar programmes] that allows users to decrypt DVD files Programme designed to remove protection from Adobe’s e-Book Reader [Dmitry Skylarov] Rodney D. Ryder

Circumvention Technologies – primarily aimed at bypassing the range of technical measures [described in the previous slide]

Software approaches include the decryption and translation of files

DeCSS [and similar programmes] that allows users to decrypt DVD files

Programme designed to remove protection from Adobe’s e-Book Reader [Dmitry Skylarov]

Anti-Circumvention, the DMCA and Dmitry Sklyarov The Digital Millennium Copyright Act [DMCA] - Prohibition on Circumvention: i) Making the technology/device for bypassing ii) Selling the Circumvention technology/devices iii) Publishing information on the circumvention technology/device. Dmitry Skylarov: Russian programmer with ElcomSoft Co. Ltd. Circumvented Adobe e-Book files’ encryption Does the DMCA apply in Russia? ‘ Arrested’ and charged for 25 years imprisonment under the DMCA. Rodney D. Ryder

The Digital Millennium Copyright Act [DMCA] - Prohibition on Circumvention:

i) Making the technology/device for bypassing

ii) Selling the Circumvention technology/devices

iii) Publishing information on the circumvention technology/device.

Dmitry Skylarov: Russian programmer with ElcomSoft Co. Ltd.

Circumvented Adobe e-Book files’ encryption

Does the DMCA apply in Russia?

‘ Arrested’ and charged for 25 years imprisonment under the DMCA.

Electronic Mark Rodney D. Ryder

Electronic Mark – An illustration Rodney D. Ryder

Copyright Protection: an illustration Rodney D. Ryder

Copyright protection: an illustration Rodney D. Ryder

Digital Rights Management: the law and technology partnership Rodney D. Ryder

The Person of the Year - You! [Wikipedia, YouTube and MySpace] Rodney D. Ryder

Any questions? Rodney D. Ryder

Rodney D. Ryder Law Wire™ Communicating the Law™ [email_address] +91-9811013560 Technology, Media and Communications