Issue 49 July 2003
TECHLAW BRIEFLY
In this issue:
Complaint Web Sites - Domain Names Involving
Trade Marks
An interesting case was recently decided under the Uniform Domain
Name Dispute Resolution Policy, involving a challenge by the global
insurance firm Legal & General to use an unrelated organisation
of the domain name “legal-and-general.com”.
Image Plus was a small organisation based in the United States,
and established the web site as a forum for posting and discussion
of complaints about Legal & General. Legal & General itself
had a UK and several other web sites, but did not have a “.com”
site.
The web site quite clearly was a complaint site as it opened
with the words “Welcome to L & G Companies Complaints
Club”. The decision of the three member panel is significant
as it sets out guidelines for how far a third party can go in
using another’s trade mark as part of a domain name.
For a complaint type of web site to be able to use another’s
trade mark as part of the domain name and not infringe that trade
mark, it must:
- Include a disclaimer that the site is not the official corporate
site of the trade mark owner.
- Correct any postings which indicate confusion between the
complaints site and the official site, and
- Using distinguishing words such as “complaints”,
“discuss” and others in the domain name may be of
assistance though
is not mandatory.
Such a website should not:
- Commercialise the site through the use of advertising, product
placement or commercial links
- Attempt to sell the domain name to the trade mark owner for
a price higher than reasonable out of pocket expenses
- “Tarnish” the trade mark, as distinct from exercising
free speech through discussion of customer services or other
similar issues
provided by the trade mark owner.
For further information about issues covered
in this article, please contact Guy Betar on +61 2 9023 0118 or
e-mail gbetar@normans.com.au.
Copyright Amendment (Parallel Importation)
Act 2003
This legislation came into force in March 2003 and effected
important amendments to the Copyright Act 1968 by allowing parallel
importation of computer software and electronic form books, periodicals
and sheet music.
Parallel importation is the act of importing and commercially
dealing with bona fide articles, and circumventing the principal
producer’s distribution
network. An example would be importing quantities of an authentically
named software product, which was distributed in Australia by
a third party authorised by the copyright owner of the software,
and selling that software in competition with the authorised distributor.
Under the new S.44E, the copyright in a computer software program
is not infringed by the importation of, and commercial dealing
in, a “non-infringing copy” of the program. A non-infringing
copy is a copy of the program that was made in a “qualifying
country” where its making did not constitute an infringement
of any copyright in that country. A qualifying country is one
that is a party to the Berne Convention for the Protection of
Literary and Artistic Works, or is a member of the World Trade
Organisation and has copyright laws consistent with the TRIPS
agreement.
The amending Act also passed similar provisions relating to
electronic versions of literary or musical items (as distinct
from hard copies). Another significant amendment is the presumption
of ownership in favour of a party who displays copyright notices
on the product or its packaging, or evidence from a foreign country,
an example being US copyright registration certificates.
A similar presumption can be drawn from a document that sets
out a chain of ownership of title. The significance of these presumptions
lies in placing the burden on a challenging party to disprove
ownership, rather than a burden on the party claiming ownership
to prove that ownership.
For further information about issues covered
in this article, please contact Guy Betar on +61 2 9023 0118 or
e-mail gbetar@normans.com.au
From Cost Centre to Profit Centre
On the subject of Intellectual Property (IP) David Kline and
Kevin Rivette, in their book “Rembrandts in the Attic”
demonstrated that “you may neglect your IP – like
a painting in the attic, but once discovered, it can become extremely
valuable.”
Not so long ago (5, 10 years perhaps) IP was a regime of defensive
registration and protection: a collection of methods for “icing
out” your competitors. Today it offers a real opportunity
to move from cost to profit. One of the most flexible and attainable
means of doing this is through licensing. IP is merely a part
of the whole picture, a segment of Intellectual Capital (IC) and
both require careful monitoring and management. IC is a collection
of intangible assets – information, skill and knowledge.
The collection exists because it is created within an organisation
by the skill and activity of the people within the organisation.
The value is created from the collection if the value can be extracted
from the business and exploited for commercial gain. How can it
be extracted unless you know about it? Unlike the “old world”
where assets depreciated with use, information increases in value
the more it is used.
Often though the fact or existence of the information is not
recorded on balance sheets and in the absence of an Intellectual
Property/Capital Manager (IPM or ICM), it tends to float in the
ether, at worst ignored and at best, “recorded”. Shifts
in the economic paradigm have changed that and compel forward
thinking companies and individuals to consider IP and IC in a
strategic way.
Strategic thinking can’t be undertaken in a vacuum and
requires significant investment in understanding what the market
is expecting, how competitors are working and operating, and by
looking at other available data by which one might measure “where
the puck is going”.
Our lawyers are experienced in helping you work through the various
disciplines from defensive protection, to portfolio management
and IP audits, and ultimately to helping you get from being a
cost centre to a profit centre. That means moving your IP “from
the attic” to the boardroom and then to the market.
For further information about issues covered
in this article, please contact Celine McInerney on +61 8 8210
1206 or cmcinerney@normans.com.au.
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