Infotech and the Law

Just when you thought you had a command of trademark law, the Digital Millennium Copyright Act, the role of the Internet Corporation for Assigned Names and Numbers, and the resolution of claims to domain names vs. claims to similar trademarks, here comes the World Intellectual Property Organization (WIPO) in search of a new raison d'etre.Happy in Geneva and in need of work, the WIPO staff concluded a three-day conference Sept. 16 by publishing a nine-point "Digital Agenda." The document "reflects WIPO's desire to take practical steps to ensure that all countries participate in the process of defining policy and addressing the issues in order to adapt intellectual property law for the digital age."The agenda was presented to the WIPO governing body the following week for adoption as the task order for WIPO workers for the next several years. WIPO's activities bear watching because, as was made apparent over the last two years, Congress is amenable to ratifying IP treaties that contain provisions it would reject if presented as domestic legislation. Major software publishers and recording and entertainment companies have strongly supported earlier WIPO projects. Their more diverse customers typically are not well represented in WIPO proceedings.In addition to continued promotion of the WIPO copyright treaty (already ratified by the United States) and further work on a database protection treaty, WIPO said it will encourage members to implement steps to extend traditional trademark protection to the Internet. To do so will require more treaties, because trademark protection is territorially limited, and efforts to implement it through constraints on domain name registration have been highly controversial. Domain name registrars have been sued successfully for both granting and refusing names that allegedly infringe another's trademark. WIPO's agenda offers no suggestion of its approach around the dilemma.One clue, however, may be found in another of the agenda's nine points. WIPO said it intends to develop an "institutional framework for facilitating the exploitation of intellectual property in the public interest in a global economy and on a global medium through administrative coordination" provided by WIPO. WIPO suggests a separate, digital, legal system, which it would administer, to govern intellectual property rights in international e-commerce. It believes a new system is necessary for copyright management, online licensing of information and resolution of international e-commerce disputes. WIPO also intends to enter into the debate concerning circumstances under which Internet service providers would be liable for copyright and trademark infringement by third parties using the ISP's network. The Digital Millennium Copyright Act, which provides exemptions from copyright infringement claims to ISPs, set the United States and the European Union at odds on Internet-based copyright infringement. The Europeans are interested in establishing a series of industry specific liability rules for ISPs, while the U.S. approach is to carve out limited exceptions from general Internet protocol and contract liability law.One area where WIPO actually may assist global Internet business is developing forms and procedures for international licensing of digital IP. The ability of private parties to create master licenses in digital properties that would be recognized throughout the world, without concern that a specific term would be unenforceable under the law of a particular foreign state, would simplify and reduce the cost of creating and policing global licensing schemes. Properties that now must be licensed for worldwide distribution using dozens of separate agreements could be licensed under the terms of a single agreement. Another major expense in international licensing, performing the due diligence of rights clearance, also could be simplified greatly under an ambitious WIPO project. The Digital Agenda includes a project to develop online procedures for the filing and administering international copyright and trademark registration applications, and for sharing that information electronically with all member states. The ability to quickly perform a global rights clearance for trademarks and copyrights would be an invaluable service to global commerce in information products. Finally, WIPO expects to enter the business of regulating Web sites through a certification program. According to its agenda, WIPO will introduce "a procedure for the certification of Web sites for compliance with appropriate intellectual property standards and procedures." It is not clear what will befall a Web site that fails to obtain WIPO's seal of approval, but given the regulatory demeanor of WIPO staff, it would not be surprising to see an attempt made to tie WIPO Web-site approval to the right to register or renew a site. Jonathan Cain chairs the Technology Practice Group of Mays & Valentine LLP, McLean, Va. His e-mail address is jcain@maysval.com