Author Archives: Geeta Dalal

Risks And Benefits Analysis Of ICANN’s New GTLDs Registrations

The Internet Corporation for Assigned Names and Numbers (ICANN) is presently handling a very crucial development in the field of domain registrations. Till now various stakeholders are well aware that ICANN’s new generic top level domain names (new GTLDs) registration has begun. In fact, as per media reports, more than 100 applicants have already applied for new GTLDs to ICANN.

There would be many more applicants that would apply to ICANN in this regard. However, before applying the applicants must undertake a risks and benefits analysis of ICANN’s new GTLDs registrations. This is more so for small companies and organisations that may find it troublesome if the US $ 1, 85,000 application money is lost due to defective, premature or haste filing of an application.

Thus, not only a risk and benefit analysis is required but the new GTLD applicants must undertake due diligence before applying as well. The applicants must analyse the benefits of investing huge amount in getting a GTLD and how far they can commercialise it. A cost benefit analysis must be preformed beforehand that may justify the capital investment in new GTLDs.

However, of all the homework, the most important one is to make a proper application as an improper application may result in its rejection and wasting of large amount of money. Further, improper application, without background research and due diligence, can also result in subsequent filing of legal objections by other individuals and organisations claiming violation of various rights and intellectual property rights (IPRs), including trademark infringements.

The applicants must make a techno legal analysis, new GTLDs due diligence, anticipate possible legal rights objections under ICANN’s new GTLD program, etc. The legal issues of new GTLDs application, their registration and subsequent litigations would surface and a sound strategy in this regard can help in minimising the legal risks associated with the same.

Google’s AdWords And AdSense Trademark Policy And Trademark Violations

A dominant portion of Google Incorporation’s revenue is generated through online advertisements. However, online advertisement is a complicated process that requires sound dealing of both technical and legal issues.

For instance, online advertisements frequently appear on blogs and websites that steal contents of others. At times these advertisements also appear upon spam blogs and content farming blogs who openly violate copyright of others.

Of course, Internet intermediaries like Google cannot be expected to pre screen such contents or keep a close watch upon such contents. However, Internet intermediaries’ liability in India, like other places, requires companies like Google to take down offending contents once Google is sufficiently notified in this regard.

For instance, if Google fails to comply with legally sustainable Indian demands, it would amount to non exercise of cyber law due diligence in India. This would result in the denial of “safe harbour” provisions to Google. Cyber due diligence for Indian companies is now well established and companies, both foreign and Indian, must comply with the same. In this light we have to analyse the trademark violation cases arising in India.

Perry4Law and Perry4Law Techno Legal Base (PTLB) believe that Google must address trademarks violations in India more seriously. Similarly, online advertisements of Google placed on copyright violating contents further raises additions legal obligations upon Google.

Google Incorporation’s Indian strategy to counter legal disputes in India should be formulated that must cover various legal issues. Intellectual property rights (IPRs) violation issues as well as cyber law compliances must be essential part of such strategy. Internet intermediary liability and Indian safe harbour provisions must also be part of the same.

Recently a case has been filed to the competition commission of India against Google citing discriminatory trade practices related to its AdWords program. It has been alleged by the complainant that Google has abused its dominance by engaging in discriminatory and retaliatory practices relating to AdWords.

It is important to analyse Google’s AdWords and AdSense trademark policy in this regard. Google claims to understand the importance of and respect the trademarks of others. Google’s AdWords Terms and Conditions prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements.

Google claims that it takes allegations of trademark infringement very seriously and, as a courtesy, it investigates matters raised by trademark owners. Trademarks are territorial and apply only to certain goods or services. Therefore, different parties can own the same mark in different countries or different industries. Of course, exceptions to this rule are also there and a single person or company may have a trademark in multiple jurisdictions. If you are filing a trademark violation complaint with Google, kindly provide adequate information as to where the mark is valid and for what goods or services it has been registered.

This would help Google in processing complaint in a more effective manner. If you are providing information in a proper manner, chances are great that your trademark violation complaint would be entertained by Google.

Before making a complaint to Google, kindly keep the following in mind:

(1) The trademark owner doesn’t need to be a Google AdWords advertiser in order to send a complaint.

(2) Any such investigation will only affect ads served on or by Google.

(3) Google’s trademark policy does not apply to search results. Google’s investigations only apply to sponsored links. For trademark concerns about websites that appear in Google search results, the trademark owner should contact the site owner directly.

(4) In the case of an AdSense for Domains trademark complaint, an investigation will affect only the participation of the domain name in question in Google’s AdSense for Domains program.

(5) Because Google is not a third-party arbiter, it encourages trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running via other advertising programs.

If you wish to file a trademark violation complaint with Google, you can file the same here. Kindly avoid sending direct mail to Google staff as you would be redirected to the form segment in such cases. It would only cost you time, money and efforts and duplication of labour. We hope stakeholders would find this work useful.

US OSPs Are Imposing SOPA And PIPA Like Laws Upon Themselves

The tussle between intellectual property (IP) owners and online service providers (OSPs) in US is a continuous one. The IP owners are always looking forward for more stringent online IP protection laws whereas OSPs are more anxious to have a level playing field with no unreasonable liabilities.

Laws like Digital Millennium Copyright Act (DMCA) 1998 were enacted to maintain a balance between these conflicting interests. Online Copyright Infringement Liability Limitation Act (OCILLA) was also passed as a part of the 1998 DMCA. In fact, new laws like Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (PIPA) and the “Stop Online Piracy Act (SOPA) have also been proposed.

Obviously, both SOPA and PIPA would have far reaching consequences for OSPs in US. Those supporting laws like SOPA and PIPA believe that the DMCA doesn’t work against websites that just ignore the requests. This is a truth as we also have been facing such problems from US websites operators who are openly and repeatedly violating our copyright.

Surprisingly, a majority of such US sites are not entitled to “safe harbour protection” at all as they themselves are not complying with the requirements of the DMCA. They do not understand that they are engaging in serious criminal offences by refusing to take down copyright violating posts, especially once the matter has been brought to their knowledge and they are not in compliance with DMCA requirements.

Naturally, US need to change its policy towards foreign IPRs violations. Either US must implement DMCA in a manner that prevents copyright violations of foreign nationals and organisations or it must devise some other method for foreign IP enforcements. Initially it seemed US has decided to adopt the latter approach by proposing laws like SOPA and PIPA but now it appears to be a national IP protection mechanism of US citizens and corporations and not foreign IP holders. Other countries can also follow this option and this situation has been imposed by US OSPs upon themselves as they are flouting copyright laws across the world with great disregard.

According to proposed laws, foreign websites that are indulging in unethical behaviours like cyber crimes, intellectual property rights (IPRs) violations, etc can be forced to be taken down or blocked in US by US government as the US webhost company would be aiding criminal activities if it refuses to remove copyright violating or offending posts. However, as per the proposed laws, US would not take down domestic websites. This seems to be the real problem and India must analyse this situation from its own perspective and interests.

The foreign websites may be hosted at a server that resides in a foreign territory hence such websites cannot be taken down and blocking of such foreign websites in US remains the only option. There are many US sites that are hosted upon US servers and they openly violate copyrights of others, including India. Can India take down such sites? Obviously India cannot do so and blocking of such websites in India seems to be only other option. By not taking down copyright violating materials of foreign jurisdictions, US OSPs are inviting big troubles and draconian laws for themselves. Of course, Google seems to have a good system at place that forces such unscrupulous online advertisement revenue generators to comply with laws.

However, a question arises what should India do to protect copyright of its citizens and Indian organisations when the DMCA system of US collapses or OSPs do not comply with the same? Here are some options in this regard:

(1) Blocking of copyright violating websites in India by Indian government or its agencies may be the first method .This seems to be a actions worst than DNS redirection but if the attitude of US OSPs do not change, this may be the preferred option in India and other countries. However, blocking of IP violating websites/platforms is definitely better than using distributed denial of service attacks (DDOS) to take down the offending websites/OSPs platform or using DNS cache poisoning attacks to manipulate DNS services.

(2) Blocking of offending websites with the help of judicial orders. This may be a good option provided blocking of offending websites is done in a reasonable manner.

(3) Mutual protection mechanisms at the government department’s level between US and India. This seems to be the best option.

Perry4Law and Perry4Law Techno Legal Base (PTLB) suggest use of a “prima facie violation test” using an “informal communication method”. A majority of OSPs in US are not aware of the requirements of DMCA still they insist upon filing of a DMCA complaint. They do not realise that they are not fulfilling the prerequisites of “safe harbour protection” at all and insisting upon filing a DMCA complaint to remove clear copyright violating contents would not save them from various civil, criminal and financial sanctions.

Under the “prima facie violation test”, the copyright owner or his agent/authorised complainant need not to file a DMCA complaint and a written complaint through e-mail should be sufficient. All that is required is providing of copyright violating links and links of copyrighted materials. This is also sufficient otherwise as well because as per DMCA an OSP that is not complying with the safe harbour requirements is not entitled to its protection and an e-mail mentioning copyright violation is sufficient to impose various liabilities upon it.

We hope US would consider these suggestions of Perry4Law and PTLB while formulating any new legislation or policy for enforcement of foreign IP rights.

Legal Issues Of Entertainment And Media Industry In India

Media and entertainment industry of India is heading towards a big growth rate. Entertainment and media industry growth and challenges in India are also well known. Legal frameworks in this regard are in the process of improvement and modification in India.

Legal issues of media and entertainment industry of India are too diverse and wide to be discussed in a single article. This piece is covering some of the basic level legal issues of media and entertainment industry of India.

Indian media and entertainment industry may face the legal challenges of Intellectual Property rights (IPRs) laws and cyber law of India. IPRs laws like copyright, trademark, etc may be frequently violated and occasionally invoked to redress IPRs violations of media and entertainment industry in India. Similarly, online IPRs issues like domain name disputes may also be agitated in the future. Similarly, media and entertainment industry must keep in mind the mandates like “cyber due diligence” and other provisions of Information Technology Act, 2000.

Media and entertainment industry will also face technological challenges in future. For instance, the issues pertaining to digital preservation of entertainment industry products may assume significance in future.

Dispute resolution of media and entertainment industry is of paramount importance in India. With the growth of media and entertainment industry in India there are also increasing cases of disputes as well. A majority of these disputes pertain to intellectual property rights (IPRs) issues.

Disputes prevention and resolutions in the film and media industry of India is still evolving. We have to device methods like Alternative Dispute Resolution (ADR) and Online Dispute Resolution (ODR) in this regard.

Surprisingly, Asian Film and Media Industry are not considering utilising the Services of WIPO in this regard. Asian companies prefer to utilise tradition litigations methods instead of alternative dispute resolution (ADR) or online dispute resolution (ODR).

Perry4Law Techno Legal Base (PTLB) has opened a techno legal ODR platform where ADR and ODR is used for resolving all sorts of commercial and civil disputes that can be resolved using ADR and ODR. PTLB would cover this issue subsequently in its other posts.

Is DNS Redirection A Viable Solution For Preventing IP Violations?

Of late, use of information and communication technology (ICT) for protection and strengthening of intellectual property rights (IPRs) has come into picture. ICT is used not only in a preventive manner but also in a curative and retaliatory manner.

Few months before it was reported in media that an Indian company was paid by the film industry to get copyrighted works removed from the Internet. The company openly admitted launching of Denial of Service (DoS) attacks against torrent sites that refuse to comply with takedown notices.

However, the use of ICT for protection of IPRs must be done in a legal manner and that also to the extent justified by the situation. The adopted measures must produce legitimate and legalised disabling and reasonably destructive effects and they should never exceed the limits prescribed by various laws across the world.

Domain name system (DNS) is the latest battle field for IP protection seekers. Malware writers are using the DNS cache poisoning attacks to manipulate DNS services. On the other hand, IP holders are contemplating using DNS redirection for protecting their IP rights.

For instance, US government is planning to use DNS redirection by acting at the behest of a coalition of interests looking for ways to defeat online piracy of music, movies, and other intellectual property. The US government is taking this drastic step as a part of the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (PROTECT IP Act) in the Senate, and it’s House counterpart, the “Stop Online Piracy Act (SOPA).”

These Acts/Bills would require DNS server operators in the US to replace the correct IP address for a website with an alternate address provided by the Attorney General’s office, if the website was “infringing”. The definition of infringing is distributing illegal copies, counterfeit goods or anti-DRM technology.

While the views of ICANN are still not available yet regulating and manipulating DNS redirection in this manner is not a viable option. There are better techno legal methods to achieve the task where a balance between IP holders and Internet users can be achieved. Let us see how developments take place in this regard.

Online Brand And Reputation Protection Got Nasty

What is common between online brand and reputation protection, intellectual property rights (IPRs) protection in an online environment and cyber attacks? For a dominant majority of people there is none. However, if you are a keen observer of recent trend of online brand and reputation management and protection, you would immediately realise there is a strong and direct relationship between them.In an old case, E2-Labs filed a case against zone-h and zone-h was blocked in India. Arguments against and in favour of such blocking were given from time to time but the site is blocked in India till now.

Not very late it was reported in media that an Indian company was paid by the film industry to get copyrighted works removed from the Internet. The company openly admitted launching of Denial of Service (DoS) attacks against torrent sites that refuse to comply with takedown notices.

Recently, Reliance Entertainment, as a pre-emptive measure for movie Singham, obtained a John Doe order from the Delhi High Court, restraining the screening/distribution of the film on various platforms, including Internet. The court order was served upon various internet service providers (ISPs) in India who blocked access to such file sharing/torrent sites. This affected genuine torrent sites and torrent users as well.

Now there is a new trend in this regard. Industry players are now hiring crackers as brand protectors and reputation managers. None can doubt that a good review boosts the image of a brand of a company and a bad review can hurt its goodwill and brand. The companies are trying to suppress the bad and critical reviews by hiring the services of such crackers.

The modus operendi is very simple. The crackers have to make it sure that the critical online review is not available and accessible to the existing and prospective customers. Earlier this year, a cracker, promising his customers “reputation management” services, had embedded code into the website to prevent search engines from recognising certain postings. In some cases, website visitors were misdirected to a false message stating that the posting had been redacted.

The cracker was hired by reputation management companies that accepted thousands of dollars in monthly fees from their clients, promising that critical reviews about their businesses could be removed from search engine results or deleted from the Internet altogether.

Till now the “legality” of these online brand protection and reputation management activities is not free from blemish. It is high time to formulate norms, standards and regulatory framework for these brand protection and management services in India.

To Whom Radio Stations Must Pay Music Royalty?

Radio stations around the globe are using songs for their broadcasts and are willing to pay reasonable royalties in this regard. But the crucial question is when radio stations play copyrighted songs in India, to whom they are liable to pay royalties?

Is it the music company, the music composers and lyricists, Indian Performing Right Society Limited (IPRS) or Phonographic Performances Limited? This question recently came for determination before the Bombay High Court.

The Bombay High Court upheld the right of the music companies over a song recording. The order by Justice S J Vazifdar is a welcome relief for the radio stations, hotels and discotheques, etc of India that are playing copyrighted songs. Music composers and lyricists were demanding a separate royalty every time their music was played by these entities.

The Bombay High Court also ruled that IPRS is not entitled to claim or demand royalty or licence fees from a private FM channel for the recorded song and music it plays on its radio station. This means that the FM stations would now have to only deal with Phonographic Performances Limited for obtaining a licence to play the music.

The judge, however, clarified that the owners of the copyright-composers and lyricists-do not lose all their rights when they allow it to be recorded. “It does not prevent the owners of the copyright in the underlying musical and literary works from making any other sound recording embodying the same underlying work,” said Justice Vazifdar.

The HC has stayed the judgment till October 31, 2011 and an appeal against the decision is very likely.

Effective Brand Enforcement Policy Is Needed In India

Recently I was engaged in a very informative discussion about brand protection laws in India and brand enforcement laws in India at a networking group. The discussion focused on the nature, scope, brand enforcement policy, brand risk management strategy and legal framework of brand protection and enforcement in India.

Brand protection and enforcement is generally managed by the intellectual property (IP) laws of India, especially Trademarks law of India. However, there is a difference between Trademark and Brand. Though in general practice, Trademark and Brand are often used as interchangeable terms but technically, the term brand is much wider than Trademark. Trademark is one of the pivotal and crucial components of Brand. The other components of Brand vary from country to country and industry to industry.

Trademark registration is one of the steps in creation of brand but such registration in itself is not capable of creating Brand since a registration can be sought and obtained in respect of Trademark proposed to be used in future. Further, one can even develop a brand without getting their Trademark registered.

The Brand signifies existence of some sort of goodwill or reputation between particular goods/services and the owner/entity manufacturing/trading/rendering them. Such goodwill, apart from Trademark can even be associated with any / more of following –

(a) Company slogan,

(b) Products/services themselves,

(c) Unique feature(s) of the Products/services, such as the manufacturing process or the way they are made available to consumer/client, e.g. particular ambience created or a particular dish served by a particular hospitality player in their hotels/restaurants,

(d) Market positioning of the product / services.

The above stated are the features that are taken as a base for determining the financial value of any brand.

Further, a Trademark can be changed/discontinued at any point of time without affecting the brand of particular product/service or of corporate houses as whole. It is one of widely used risk mitigation strategy to check infringement and piracy of goods.

In Brand, it is the goods/services themselves which assume a personality. Thus, through effective Brand Enforcement Policy, the Corporates needs to protect the personality and goodwill of their goods/services, not the trademark (which in most of the cases is just a name or graphical representation) under which they are sold/served.

EU India Would Sign LOU To Protect Off Patent Generic Drug Consignments

Indian off-patent generic drug consignments have been confiscated by some European countries customs authorities in the past for violation of intellectual property rights (IPRs).

Interestingly, these consignments were never intended to be delivered in any of the European country. Rather they were using Europe as a transit alone and the final destination was some other non European country.

Now it has been agreed that European Union (EU) members will not seize Indian medicines passing through Europe on the ground of violation of IPRs. EU has sent a final draft in this regard to India and India has agreed to the changes in their rules. EU has also accepted India’s stand and within two weeks, both the sides will exchange a formal “Letter of Understanding” (LOU) regarding this.

As per the understanding, none of the customs authorities in the 27-nation EU bloc will confiscate any drug dispatch meant for third country destinations like Latin America or Africa. Some of the EU customs authorities, mainly the Netherlands and France, had confiscated several Indian off-patent generic drug consignments going to Brazil via European ports and airports over alleged infringement of EU IPRs. Reacting to confiscation, India and Brazil had filed a case against the EU in the World Trade Organisation (WTO) protesting the action.

India had argued that such seizures were against the multilateral Trade Related Intellectual Property Rights Agreement (TRIPS Agreement), as the medicines were off-patent both in India and the country where they were being exported.

This LOU would bring positive development for IPRs cooperation between EU and India that had been strained in the past. Now EU India trade and IPRs cooperation is improving and this step endorses the same.

Data Exclusivity Laws In India

Data exclusivity is a protection that has been demanded by pharmaceutical companies for long. If data exclusivity protection is extended, others cannot use the data submitted by pharmaceutical companies for manufacturing generic version of the corresponding medicine.

The generic drug manufacturers can do their own research and development and generate their own approved data. However, it can take substantial amount of research, expenditure and time.

Allaying fears against conferring data exclusivity in India through bilateral trade agreements, the Commerce and Industry Minister of India has recently given assurances that India will reject any efforts to include “data exclusivity” clauses in bilateral trade agreements.

India’s insistence upon not extending data exclusivity protection may make the foreign trade agreements like EU India FTA tough and difficult to negotiate. However, despite various differences, including intellectual property rights difference and generalised system of preferences (GSP) scheme differences, positive development between EU and India is expected.

There are also talks in progress to extend utility models protection in India. Further, although we have no data protection laws in India yet India is gearing itself for the same. Further, we have no trade secret laws in India as well and the growing incidences of theft of trade secrets through cyber crimes are a cause of concern world over.

Overall the call to allow or disallow data exclusivity legal framework in India is a tough one and Indian government must consider all the aspects before taking a decision in this regard.