Intellectual Property and the Internet: Who Owns the Information? 

 

We are not yet at the stage of being able to articulate adequately what exactly the Internet is as a social phenomenon and how it is changing us.1

Over the past twenty years the Internet has introduced a new element into international society. With its multijurisdictional and multifunctional character, it has begun another revolution in communications which encompasses the full range of human activity, including research, education, social communications, politics, entertainment and commerce. The Internet has placed vast sources of information within the reach of average people and businesses.

The international connectivity offered by the Internet presents both promises and threats. The online delivery of information, publications, music, films and software opens the resources of the world to anyone with access to a computer and a phone line. At the same time it allows easy access to and reproduction of content which threatens the ownership of information and service/trade marks. In the rush to develop and provide content, copyright and trademark are often ignored. While this might prove uncomfortable in some countries for the individuals caught with copyrighted material on their web page, a company caught providing access to information owned by others can suffer severe legal consequences. And what happens if a company finds its information or trademark on the web site of another?

The Internet is, in practice, unregulated. There are no international legislative agreements designed to govern the Internet. Up until now, most countries based their intellectual property laws upon those developed at the Berne Convention of 1886 and the treaties administered by the World Intellectual Property Organization (WIPO) of the United Nations. But the degree to which intellectual property is protected differs from country to country. In the past, when intellectual property was exported in physical formats such as books and cassettes, the risk of wide-scale infringement outside the country of publication was minimal. Now, with much intellectual property translated into digital form and available for immediate access through CDROMs, e-mail or the world wide web, the risk has increased dramatically.

In this global world of the Internet, many debate what constitutes copyright or trademark infringement. WIPO, other international organizations and national governments are struggling to research and answer that dilemna. Court cases currently provide uncertain answers. People are struggling to interpret and apply copyright and trademark laws whose roots are over a century old in forums they were not designed to consider. Although these laws are changing quickly, technology continues to enable the introduction of new ideas which further challenge their relevance.

In this unsettled climate, an enterprise's responsibility is two-fold. First, the enterprise must protect itself from global litigation. This requires the attention of lawyers who help interpret the laws of many nations and the employees on the front line who must understand those laws. The web site developer might have thought that a particular image portrayed the spirit of the enterprise. Did the developer gain permission from the copyright owner before it was copied? A member of upper management reads an article in the online version of a trade magazine and suggests its inclusion on an informational web page. Can linking directly to an article located on another site or in another country bring unforeseen consequences?

Second, the decision makers in the enterprise need to be aware of the ease with which information on the Internet can be copied, saved and distributed. They need to decide if the technical papers written by the company's engineers and software developers should be published on the web. Information provided on the World Wide Web might be used by competitors to damage the enterprise. Sensitive material should not be published on a publicly accessible Internet web page or FTP site because it can be downloaded by anyone. Web robots and search engines will link to and record information about the page. Even "private" web sites which require usernames or passwords can be cracked, or their contents sniffed when downloaded by a legitimate user over an unencrypted connection. Unencrypted information placed on the Internet is freely available and enterprises need to carefully evaluate what information is appropriate for display, and what should be excluded.

To carry out these responsibilities, both management and web site developers need to know the fundamentals of copyright and trademark laws in countries throughout the world, and how the protections granted to these forms of intellectual property apply to the Internet. The information here is intended to act as a guide -- to alert people to problems they may not have considered. For further information on these issues and how they might affect an enterprise, contact lawyers who specialize in global intellectual property law and know your business.

Basics of Copyright

Copyright protects original creations and intellectual works expressed in some form. The original intent of copyright was to protect the rights of creators of literary and artistic works, but what is protected in a variety of ways in different countries extends far beyond that limited definition. According to WIPO, in most of its member countries2 these works are protected:

  • Literary works: fictional or non-fiction writing, regardless of content, length, purpose, form or publication status
  • Musical works
  • Choreographic works
  • Artistic works
  • Maps and technical drawings
  • Photographic works
  • Audiovisual works

A number of countries has extended national copyright laws in the past several decades to include computer programs in the category of literary works. Some also provide protection for the creation of derivative works such as translations and adaptations, and for collections or compilations of works and/or data (databases), where the selection and arrangement of the contents constitute an intellectual creation.

One view of copyright holds that it becomes the property of the author of the work immediately upon creation of the work. But some nations have decided that when a work is made for hire -- prepared by an employee within the scope of his or her employment -- the employer instead of the employee is considered the copyright owner. In other countries, legal ownership of copyright is unclear or under dispute.

Copyright protection generally means that particular uses of the work are only lawful with the permission of the copyright owner. Copying or reproducing the work, distributing the work, performing or broadcasting the work are uses that are limited by copyright protection in various countries. In some countries, portions of copyrighted works can be used under limited circumstances -- such as in education -- without the authorization of or remuneration for the copyright owner. Copyright protection is usually limited in duration, typically starting at the time of the creation of the work and extending about 50 to 70 years after the death of the author.3

International Copyright

Internationally, the 171 member countries of the World Intellectual Property Organization claim to treat copyright in similar ways and aim to respect the copyrights granted by other member countries. These countries have agreed to the treaties concerning intellectual property rights that WIPO administers, which means that the rights of an author from one country will be respected in a second country as if the author were a citizen of that second country. These treaties set out agreed rights concerning intellectual property and common standards for their protection. The Berne Convention for the Protection of Literary and Artistic Works of 1886, with the amendments of the Paris Act of July 24, 19714 remains the cornerstone of the WIPO copyright treaties, and subsequent treaties have furthered and deepened the protection offered to take into account technological advances and new areas of concern.

WIPO is actively engaged in studying the evolution of copyright issues and adapting the copyright to technological advances. In 1996, the WIPO Copyright Treaty (WCT)5 extended the copyright protections offered by the Berne Convention to computer programs and databases. The treaty states that "authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them."

The WIPO Performances and Phonograms Treaty (WPPT)6 of the same year, reinforces the internationally exclusive rights of performers to authorize the making of their work available. By declaring through these "Internet Treaties" that copyright applies to distribution using the new technologies of interactive networks, WIPO strengthens copyright in the digital age.

Nine countries -- Belarus, Burkina Faso, El Salvador, Hungary, Indonesia, Kyrgyzstan, Panama, the Republic of Moldova and the United States of America -- have currently ratified the WCT, while seven have ratified the WPPT, out of the over 170 member countries who participate in WIPO. Although 30 ratifications are required before these treaties enter into force, they indicate the future development of copyright law in regards to the Internet.

Basics of Trademark

Trademarks and service marks protect marks used by businesses to distinguish a specific product from another in the marketplace. It can be any word, name, symbol, device, slogan or combination of these elements that identifies a unique product. Under some circumstances, even a sound or color combination can be a trademark.7

Trademark rights typically arise from:

  • Actual use of the mark
  • Registration of the mark

In most countries, organizations register their trademarks with the government to effectively protect them. After an organization registers a mark, nobody other than its owner can use it to promote goods or services identical to, or similar to, those for which the mark is registered in that country. Registration defends against the use of a symbol similar to the registered trademark, if the use of the other symbol might confuse consumers. It also offers further legal protection and can be applied for in any country in which the organization participates in the marketplace. As long as the owner does not abandon the mark or allow the mark to lose its significance as a unique identifier by becoming a generic term, trademark rights may continue indefinitely. But, in most countries, the registration of marks must be renewed periodically for these rights to continue.

International Trademark

Internationally, WIPO offers treaties and guidelines to govern trademark. Its trademark treaties are based upon the Madrid Agreement8 with modifications from the Hague Convention.9 These treaties grant that "Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all other countries of the Union the advantages that their respective laws now grant, or may hereafter grant..." Once an individual or organization applies for a trademark in one country, it is allowed a right of priority in other countries for a period of time. Any acts that occur during that time, such as the filing of a trademark by a person unrelated to whomever filed the original trademark application, will not invalidate the possible filing of trademark in another country. The Trademark Law Treaty,10 which defines what information nationals of one member nation must supply and what procedures they must follow to register their trademarks in another member nation, and the Madrid system are attempts to create an international system to register and protect marks. But the national attitudes towards the registration and protection of trademarks has made this system less than successful.

As the world economy expands, the number of trademarks is multiplying quickly, while some trademarks are becoming more prominent internationally. The Internet offers many opportunities for trademark infringement across the globe, from the use of symbols and names to promote products, to the registration of domain names that correspond to the trademark owned by another. But with no globally applicable system for protecting trademarks, trademark protection has fallen behind the pace of technology. Trademark laws have yet to move beyond the national jurisdiction that governed them before the global economy created global companies and organizations. Because of the lack of protection, global organizations need to act on their own initiative to protect themselves from the lost revenue and consumer confusion that trademark infringement can cause.

Intellectual Property and the Internet

With the growing dependence upon the Internet as a marketing tool, an enterprise's web site has become a vital aspect of its public image. Competition for visitors is fierce and web developers use every technique in their power to make their web site more attractive. In their rush to develop a web site that attracts a wide variety of users, many developers fail to consider the legal and ethical concerns that arise from some of these techniques, including deep hyperlinking, framing, meta-tagging and domain name pirating. Enterprises may forget to watch and validate the work of these web site developers, exposing both themselves and the site developers to copyright and trademark legal challenges.

Web Site Design

One domain enterprises often forget to confirm is who owns the design and content of the enterprise's web site. With the trends towards outsourcing business technology, ranging from information systems development to web development, the ownership of various sections of an outsourced web site can depend upon the language of the contract. External developers can reserve their rights to material developed independently, such as cgi scripts. However the contract needs to grant the enterprise perpetual and royalty-free license to use such materials11 to ensure that the web site can remain fully functional without risking future legal action. The same questions about intellectual property ownership can arise within the enterprise as well. In some organizations, employees not typically involved in creative endeavors might find their skills called upon to help develop content or design for the enterprise's web site. If their job description does not include the possibility of such creative endeavors, an employee can argue that his or her web site development falls outside of the scope of employment and is not subject to the copyright laws of those countries that govern work created within the scope of employment. When considering the implementation and continuing development of a web site, enterprises must first make sure that they will retain all the rights needed to allow their sites to continue to operate even without the continuing support or permission of the original developers.

Whether using internal or external web site developers, an enterprise should make sure that the developer has obtained the proper permission and licenses for any material not personally created. Copying designs, images or logos from other web sites is illegal under copyright law in most countries, and can result in stiff legal penalties if an enterprise displays the illegally copied material. Due to the public nature of the web, tracking copyright and trademark infringement has become easier. Web sites are not internal company documents circulated amongst employees and rarely seen by the public. They are the enterprise's public face on the Internet, and anyone can access the pages to look at the information, including the web robots which some companies specifically create to search for cases of copyright infringement. This means that the developer needs to keep track of where each piece of non-original content came from, the name of the copyright holder and the uses for which the copyright holder has granted permission.

Linking

The ability to connect multiple documents through the use of hypertext links distinguishes the web from most other sources of information and media. These links allow users to jump from one location on the web to another. Links can allow users to jump from document to document within a particular web site, or to a document on another web site. When a user follows the link, the URL, if listed by their browser, will change to indicate the change in sites. This "linking out" is the basic method of navigation on the web. The concept allows the development and operation of search engines and the compilations of resources that are scattered across the web - the connectivity that gives the web such strength as an information resource.

Images involve another form of linking known as inline linking. The image is "pulled" into the displayed web page, whether from the same server as the web page or from another site. This form of linking makes the web site appear to be a seamless whole, although certain elements of the site might not be stored locally. The user cannot tell whether the web browser retrieved the image from a local file or from another site on the web unless he or she looks at the html code, because the URL of the local site remains the current URL. This can give the impression that the site which displays the image is the authorized provider of the image, which can create copyright issues if a web site developer links to a copyrighted image file located on another site.

Deep hyperlinking, or directly linking to any type of file located deep within the structure of another site, is often used to bypass the home page of another site and provide access directly to information provided by that site. Typically, the home page of a site contains the identification and ownership information about the site. In the case of commercial sites, the home page may contain advertising the organization does not want bypassed. Because these connections to information deep within another site can appear seamless unless the user has the experience with their browser to identify the change in sites, this type of linking can give the impression that the linking site owns the information provided on the linked page.12

Although web site developers who provide deep links to other sites excuse their actions by claiming they are only helping the other site attract visitors, creating a link that bypasses a home page, especially in the commercial marketplace, can create claims of copyright and trademark infringement. In July 1999, a US-based web site--Movie-List--that contained links to movie trailers deep within the web sites of several studios, received a letter from Universal Studios representatives requesting that the webmaster cease linking to their copyrighted material without authorization. The links to the trailers provided by the Movie-List web site were only identified as studio content by the URL, increasing the chance of users believing that the trailers were part of Movie-List's own pages. This possibility of user confusion brings up the issue of copyright infringement due to misrepresentation.

At this point, all cases over the issue of deep linking, including a lawsuit in which Ticketmaster sued Microsoft's Sidewalk.com, have been settled outside of court with the defendant agreeing to link only to the main page of the site, so no precedent has been set in the matter. Links to information contained deep within another site should be considered carefully, and the developer should request permission to link and give proper credit on the referring page. Enterprises should also be concerned about the possibility of other sites linking directly to their internal pages, and implement technical blocks if necessary. Web site developers should include brief ownership descriptions or recognizable symbols on all pages, as well as links back to the site's main page.

Framing

Framing is similar to image inline linking. In both, a site seamlessly pulls in data from another site and displays it as a part of its own site. Frames use a window on the local site to pull in entire web pages from other sites and surround those external pages with other windows containing menus, advertisements or trademarks associated with the framing site13. Problems arise when the framing site hides the advertising or trademark information of the external site and uses other frames to "replace" that information with their own. Frames give very little information about where the displayed pages originate - even when most of what a visitor sees may be content from the external site, the URL displayed by the browser remains the URL of the framing site. Unless the framing site clearly states that their frames are accessing information from external sites, it appears to the visitor that the framing site contains the content of the external site. Framing can cause both copyright and trademark problems. Recent US law suits have been based upon the rights to prepare derivative works, since content owners have alleged that displaying the page in a different context than the original web site design amounts to a derivative work, and false designation of origin, since the frames hide the origin of the content. At this point, all cases have been settled out of court or are still pending. To avoid problems, sites should avoid using frames to link to external sites if at all possible. If the local site consists of frames, the web developer should set the target attribute when creating external hyperlinks to avoid accidentally framing a linked site. Preventing others from framing a site is a bit harder. With direct access to the local web server configuration, the HTTP response can be redefined to send out Window-Target: _top as an additional header and automatically break any request out of a frame.14 There are also several JavaScript workarounds that will break a visitor out of a frame if they are JavaScript enabled.

Meta Tags

Most users of the world wide web depend upon search engines to track down the information they need. With the rapid expansion of the web and the vast numbers of web sites that appear every day, search engines depend upon specially designed web robots to check the validity of the links they database and to search for new informational sources. To speed up the categorization of web pages found by the robots and to increase the odds of a web site being returned in a particular search, the search engines depend upon the keywords or meta data fields that web developers hide within the meta headers of an html page.

Meta tagging can help in the search for information when web developers use them properly. But in some cases, the keywords hidden within the html have nothing to do with the site. Web developers may copy the meta headers of frequently searched-for sites to convince the search engines to return them during searches for those sites. Others use popular terms that are frequently searched for, sometimes entering those terms into the keywords field hundreds of times.

In the United States, several court cases have already been filed over the use of meta tags to influence the behavior of search engines. In one case, Oppedahl & Larson, a law firm which owned the domain patents.com, filed suit against three companies and their ISPs because the companies had inserted the words "Oppedahl" and "Larson" into their meta tags to draw traffic to their sites.15 In another case, Playboy Enterprises v. Calvin Designer Label, a pornographic site contained the words playboy, playboy magazine and playmate repeated several hundred times over, in black text on a black background. The repeated use of these terms throughout the site, which users could not see but web robots could read, caused search engines to return this site before Playboy's official site. After repeated requests asking that the site cease using the trademarked terms, Playboy sued, claiming trademark infringement, dilution and unfair competition. The court issued a preliminary injunction ordering the web site to stop using the registered trademarks of Playboy Enterprises, Inc. and to cancel their domains.

Although it may be tempting to adjust the keywords included in the meta tags to force search engines to return the site more frequently, make sure that the keywords are accurate and do not contain terms trademarked by other enterprises. Proper use of the meta tags will help the search engines database the site into the correct categories and help legitimate users find the site through keyword searches.

Domain Name Registration

WIPO's report The Management of Internet Names and Addresses: Intellectual Property Issues, calls domain names "the human-friendly form of Internet addresses." Originally designed to perform a technical function - to provide easy-to-remember addresses that corresponded to the underlying IP address - domain names have developed further significance as business identifiers since commercial activities have moved online. Domain names have become another form of identification and communication. But unlike the older forms of identification and communication, such as telephone numbers and facsimile numbers, which were only anonymous strings of numbers, these domain names carry an additional significance. Because they are easy to remember and identify, like trademarks, domain names allow people to recognize businesses and to associate the domain name with their knowledge of the company.

Network Solutions, Inc, the entity that exclusively assigned domain names for the first several years of the web, assigned domain names on a first-come, first-serve basis without any regard for currently registered trademarks. As in the US case of Kaplan v. the Princeton Review, companies could buy the domain name that corresponded to a widely-recognized trademark of a competitor and use that domain name to direct traffic to their own site and products. Another form of domain name piracy involves buying domain names that correspond to well-known trademarks and organizations, hoping for opportunities to sell them to either the organization that owns the trademark or to the organization's competition.

Is domain name piracy trademark infringement? Since the registration of a domain name that corresponds with a registered trademark to promote a similar product can cause consumer confusion and lost revenue, some legal experts say yes. An enterprise needs to protect itself by registering names of importance to the enterprise - names that can be used by the public to find it. With the possible introduction of a new set of domain suffixes in the near future, the chances for confusion and lost revenue due to similar domain names will continue to grow. Enterprises need to protect their trademarks through their own choices and actions. Although national governments and WIPO are attempting to develop a system of domain name conflict resolution, the fact that a trademark can be registered within two different countries by two different organizations will continue to cause conflicts in the global economy.

Conclusion

Avoiding copyright and trademark infringement on the web is a difficult task that requires the attention of the people designing web sites, those who work in the IS control and governance professions and the lawyers who keep tabs on the changes to intellectual property laws. Enterprises need to be proactive to guard against infringement of their own intellectual property and to avoid accidentally infringing upon intellectual property belonging to another. With the evolving application of intellectual property protection in the digital world, protecting an enterprise from the legal consequences of accidental or deliberate infringement requires diligence from every person involved in the development and maintenance of the enterprise's presence on the Internet.

Hugh Parkes, CISA, FCA
is vice president of ISACA® and is a director with Stanton Consulting Partners, Melbourne, Australia. In 1992 he received ISACA's prestigious Harold Weiss Award for Outstanding Achievement in IS auditing. He was a member of the editorial board for the IS Audit & Control Journal from 1987 to 1997 and served on the Australian Auditing Standards Board.

1 "The Management of Internet Names and Addresses: Intellectual Property Issues." WIPO. wipo2.wipo.int
2 List of member countries: www.wipo.int/eng/infbroch/infbro99.htm#P7_58
3 International Protection of Copyright and Neighboring Rights" WIPO. www.wipo.int/eng/general/copyright/intro.htm.
4 Full text of the Berne Convention: www.wipo.int/eng/iplex/wo_ber0_.htm
5 Full text of the WIPO Copyright Treaty of 1996: www.wipo.int/eng/diplconf/distrib/94dc.htm
6 Full text of the WIPO Performances and Phonograms Treaty: www.wipo.int/eng/diplconf/distrib/95dc.htm
7 International Trademark Association. "INTA's Frequently Asked Questions." www.inta.org/tmfaq.htm.
8 Full text of the Madrid Agreement: www.wipo.int/eng/iplex/wo_maa0_.htm
9 Full text of the Hague Convention: www.wipo.int/eng/iplex/wo_hah0_.htm
10 Full text of the Trademark Law Treaty: www.wipo.int/eng/iplex/wo_tlt0_.htm
11 Williams, Jennifer; Clark, Jeff; Clark, Carol. "What a tangled web: the legal and public relations dangers of operating a web site." Information Strategy. v 15, no 3: Spring 1999.
12 Williams, Jennifer; Clark, Jeff; Clark, Carol. "What a tangled web: the legal and public relations dangers of operating a web site." Information Strategy. v 15, no 3: Spring 1999.
13 Chan, Raymond. "Internet Framing: Complement or Hijack?" 5 Mich. Telecomm. Tech. L. Rev. (1999) www.law.umich.edu/mttlr/volfive/chan.html.
14 Frames FAQ: Avoid Getting Framed: popserver.stack.nl/htmlhelp/design/frames/faq/framed.html
15 Abel, Sally M. "Trademark Issues in Cyberspace: The Brave New Frontier." 5 Mich Telecomm. Tech. L. Rev. (1999). www.law.umich.edu/mttlr/volfive/abel.html


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