(Copyright © 1998 T Bruce Tober)
There has never been a time when people didn't infringe the Intellectual Properties (IP) (Trademarks, Patents, Copyrights) of others. But the Internet means the problems have reached epidemic proportions, much to the cost of the true owners of those IPs.
David Flint at MacRoberts Solicitors (IP & Technology Law Group), Glasgow, says, "The [IT infringements] issue isn't going away. I don't think that the Net is causing any of this crime. It's only making the practice of it much easier...."
Flint is the key author of his firm's white paper, "Proposal for a Cybermark".
Arguably the most costly trademark infringement to companies is the registering of company trademarks as Internet domain names by third parties.
"The expansion of the Internet has brought with it grey areas and questions regarding the suitability and enforceability of existing legal rules. Legal predictability and certainty are being challenged by the new virtual environment. Businesses that are keen to take advantage of the digital single market are wary as a result."
As Flint explains it, "the trademark/domain name issue is probably the trademark issue people think of up front simply because if people are looking for your site, for example, the first thing they're going to try is tober-dot-com or tober-dot-co-uk. They're not going to immediately think of octobersdad-dot-com. So the trademark in the domain name is the most important issue because people can't remember 16-digit IP addresses."
Asked if the issue could be resolved by having the UK set up its own cyber trademark laws and the US its own and the various other countries their own, he answers with a definite, "No. It has to be international because the problem is that trademarks are national or regional by their definition. A US trademark in a particular class in the US or the UK or wherever is purely territorial. But, because the Net is not territorial, where is the tort being committed, if one is being committed at all?"
Flint sees a possible solution in some form of international agreement. Said agreement would be in the form of what he calls a Cybermark (Trademark application pending). A Cybermark would "recognize that if a person had a legitimate right to a name in the territory in which he operated, he would be able to use that name on the Net on his domain in the knowledge that it would not be per se infringing anyone else's rights." An infringement would occur if the Cybermark registration was aimed specifically at someone else's trademark or deliberately for some other non-acceptable practice.
"But, providing you were registering it for legitimate business reasons, which are acceptable by community standards as a whole, then you would not be infringing any other rights anywhere in the world." This would mean that mark&spencer-dot-co-dot-dk could be registered by Jerry Marks and Reginald Spencer in Denmark for their 60-year-old restaurant's website and it would not infringe on marks&spencer-dot-co-uk registered by the owners of the Marks & Spencer Department Stores in the UK.
The agreement would also stipulate that "a particular usage of the Cybermark is not a new class of right, but that it effectively expands upon existing rights, providing those existing rights comply with a number of criteria which we indicated." Applicants, Flint explained, "should get protection on an international basis for the right to use it in their local jurisdiction as long as they weren't using it solely for the purpose of going out to some little island somewhere and setting up a shop called Marks and Spencer and then flooding everyone with something pretending to be the real M&S."
Another issue in trademarks which has proven problematic on the Net is that not only are they territorial but they are class-orientated. "For example," Flint says, "if you have a trademark 'widget' in relationship to engineering tools and I decide I've got a really good idea to use that as the name for a soft drink. Now you make engineering tools and want people to think of a widget tool and I make softdrinks and people aren't going to be confused into thinking softdrinks are the same as a machine tool. So trademarks are divided into different classes."
This means several people/companies could each have a trademark on the term 'widgets'. The problem is only one of them can have widget-dot-com or widget-dot-co-uk. Who should it be?
Flint's solution is first come, first served. "I think it has to be addressed," he says, "the same way it's been addressed in such few cases where the court said effectively the first person who got there and registered it, got it. That was definitely acceptable. And I think that is right and the person is legitimately registering it because he is using the name widget and not simply because he's pulled out the FT and gone through every name on the FT's Top 500 Companies and registered them as names."