Role of Intellectual Property in Cyberspace

Introduction

A person’s property can be in tangible as well as in intangible work. Intellectual property (IP)
refers to creations of the mind, such as inventions; literary and artistic works; designs; and
symbols, names and images used in commerce. 1 The protection of intellectual property is no
less important than that of any other legally recognised property. Its protection is important
to encourage creativity and invention and for economic development. Therefore, exclusive
Intellectual Property Rights are given to the creator of such works for a period of time.

Cyberspace, to define in simple terms, is virtual computer system through which online
activities are connected. The advent of internet has posed many challenges along with the
opportunity it provides. An individual’s intellectual property rights are vulnerable to
violation in cyberspace. The ever increasing use of internet has made it difficult to control
and adjudicate over cyberspace. Protection of data and Jurisdiction are key issues.
Moreover, there is no dedicated legislation for protection of intellectual property rights over
internet.

Types2 of Intellectual Property

Mainly, intellectual property can be divided into two broad categories:

1. Industrial Property- These includes patents which are granted for inventions, trademarks
which protects the distinctive sign, of goods and services, used to identify them,
industrial designs which define ornamental or aesthetic aspect of an article, and
geographical location3 which define the place of origin of the product. The dispute of
trademark and domain names is intensifying ever since. Often trademark owners are
desirous of getting domain names in the name same as that of trademarks. Domain
names can be granted trademark in India, but, there is no law granting an exclusive right
to a trademark owner to own a domain name as the same that of trademark. Rather,
domain names are given on first come first basis. This can lead to cybersquatting.
Cybersquatting is registering domain names in names of famous trade marks in order to
sell them later in a profit.

1
About IP. Wipo.Int, World Intellectual Property Organisation, 2016, www.wipo.int/about-ip/en/. Accessed 21
July 2020.
2
WTO Intellectual Property (TRIPS) - What Are Intellectual Property Rights? Www.Wto.Org, World Trade
Organisation,www.wto.org/english/tratop_e/trips_e/intel1_e.htm#:~:text=Intellectual%20property%20rights
%20are%20the. Accessed 21 July 2020.
3
Geographical Indication is not granted to all products or is not merely a sign of origin. It is granted to products
of special geographical origin whose reputation is associated with that place of origin. Such products are
famous for their place of origin which is also an indicator of specific quality.
2. Copyright- Copyright (or author’s right) is a legal term used to describe the rights that
creators have over their literary and artistic works. Works covered by copyright range
from books, music, paintings, sculpture, and films, to computer programs, databases,
advertisements, maps, and technical drawings. 4 Internet possess a serious threat to
copyrights. It is very easy to copy information or work from the internet and portray it as
one’s own. Unauthorised printing and distribution of copies of work, available in
softcopy through internet, can be easily done. Copyright are most vulnerable to violation
on cyberspace.

World Intellectual Property Organisation (WIPO)5

WIPO, established in 1967, is aimed at leading “the development of a balanced and effective
international IP system that enables innovation and creativity for the benefit of all”. At
present, WIPO has 193 member states. Its treaties, namely, WIPO Copyright Treaty (WCT),
1996 and WIPO Performances and Phonograms Treaty (WPPT), are two major international
treaties which address the issue of cyberspace in protecting Intellectual Property Right.

Legal Framework in India

Various legislations are enacted to protect Intellectual Property Rights in India.

Patent (Amendment) Act, 2005

Patents are granted to invention of product or process for a period of 20 years from the
date of filling of patent application. The act was amended to make it in compliance with
Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement.

Trade Marks (Amendment) Act, 2010

Trademarks protect distinctive sign used to identify the product or service. It may be words,
signature, numbers, packing or symbols. It is very essential to protect trademarks as to
protect consumer and manufacturers. Exclusive trademark guarantees that the same name
or symbol cannot be used by other firm and helps the consumer in identifying products or
services.

Section 2. Definitions and interpretation

(1) (zb) "trade mark" means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours…

4
Copyright. Wipo.Int, World Intellectual Property Organisation, 2013, www.wipo.int/copyright/en/. Accessed
21 July 2020
5
Inside WIPO. Wipo.Int, World Intellectual Property Organisation, 2019, www.wipo.int/about-wipo/en/.
Accessed 21 July 2020.
Design Act, 2000

Industrial design is granted to features of shape, configuration, pattern, ornament or

composition of lines or colours applied to any article. It gives owner the sole right to use,
make and sell the article having protected design.

Geographical Indications Act, 1999

Geographical indication tag is given to goods which help in identifying those goods as
originated or manufactured in certain region. The quality, reputation or other characteristic
of the good is attributable to its place of origin.

Copyright (Amendment) Act, 2012

The act was amended to make it in compliance with WCT and WPPT. Copyright is granted to
creators of literary and artistic work. It grants exclusive right to use and authorise others to
use the work. Now, the right to reproduce any material includes storing it in electronic
medium.

Information Technology Act, 2000 (IT Act)

IT Act is the primary law dedicated to cyberspace. Some of its relevant provisions are:

Section 79. The section provides protection to the intermediary or internet service provider
from any liability until the intermediary does not

(i) initiate the transmission,

(ii) select the receiver of the transmission, and

(iii) select or modify the information contained in the transmission.

Section 75. The section attempts to ascertain jurisdiction

(2) …….this Act shall apply to an offence or contravention committed outside India by any
person if the act or conduct constituting the offence or contravention involves a computer,
computer system or computer network located in India.

The provisions of this act are applicable on any person if the computer system or computer
network used in the offence or contravention is located in India irrespective of the person’s
nationality.

The legislation is dedicated to resolve the issues posed by cyberspace. But, the act fails to
address the threats posed by cyberspace to Intellectual Property Rights.
Determination of Jurisdiction

Cyberspace knows no boundaries. In cases of interstate dispute, it is often difficult to

ascertain laws of which country are applicable, jurisdiction of which court will apply. Over a
period of time, through case laws, judiciary of various countries has evolved certain tests
which are helpful in determining jurisdiction of the courts. These are discussed below.

1. Minimum Contracts Test

The test seeks to determine the validity of subjecting defendant to the forum state, i.e.,
state where the suit has been initiated. The defendant can be subjected to the jurisdiction
to forum state if the defendant has purposefully availed himself of the opportunity to
transact in the forum state. The test was first introduced in International Shoe Co. v.
Washington6 and incorporated in later cases. In this case, the corporation did not had any
office in the forum state arguing which it contented that the forum state does not have
personal jurisdiction. The Supreme Court of Washington held:

“21. Appellant having rendered itself amenable to suit upon obligations arising out of the
activities of its salesmen in Washington, the state may maintain the present suit in
personam to collect the tax laid upon the exercise of the privilege of employing appellant's
salesmen within the state. For Washington has made one of those activities, which taken
together establish appellant's 'presence' there for purposes of suit, the taxable event by
which the state brings appellant within the reach of its taxing power."

2. Sliding Scale Test

The test was introduced in Zippo Manufacturing Co. v. Zippo Dot Com. Inc 7. In this case, the
plaintiff was a corporation in Pennsylvania which operated under the trademark of ZIPPO.
The defendant was a California corporation and has registered domain names as
ZIPPO.COM, ZIPPO.NET, and ZIPPONEWS.COM. The plaintiff claimed violation of Federal
Trademark Act and other intellectual property rights laws. The defendant contended lack of
jurisdiction of the court. The court specified sliding scale to measure interaction of website.
The three categories are:

 Passive, where the viewer can only view the information available but cannot
respond to it.
 Integral, where the website is used actively to transact.
 Interactive falls in middle of the above two. The viewers can communicate through
the website. The jurisdiction is determined by level of interactivity and commercial
nature of the site.

6
International Shoe v. State of Washington, 326 U.S. 310 (1945)
7
Zippo Mfr. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997)
 3. Effect Test

To establish effect jurisdiction, it is to be shown that the website owner intended to cause
effect in the forum state. It can be said that minimum contract needs to be shown. The
requirements of the test are:

 There was an intentional act

 The act was directed to have an effect in the forum state
 The defendant had the knowledge.

Conclusion

Intellectual Property needs to be protected with greater caution due to its very nature.
Advent of cyberspace has created a potential threat to the intellectual property, in
particular, to copyrights. India has a dedicated legislation for cyberspace, named,
Information Technology Act, 2000. There are dedicated legislations for intellectual property
rights too. But, none of these address the issues of intellectual property rights in
cyberspace. There is a need for a legislation to provide resolve these legal issues.