Naked Law

It's MY Space

Nominet has ordered that the domain name myspace.co.uk be transferred to MySpace (the social networking site) under the Dispute Resolution Service Procedure. This is in spite of the fact that the original registrant, Total Web Solutions, registered the domain name some six years before the creation of the social networking site! The myspace.co.uk address led to a parked page containing adverts for social networking sites and the Nominet expert held that the income received by Total Web Solutions through its use of the domain name derived "in part as a consequence of it being able to trade off the reputation of the Complainant."

Total Web Solutions relied on the case concerning the name verbatim.co.uk and tried to argue that it had not been aware of the complainant at the time of registration or at the time that it first used the domain name and therefore that the registration could not be abusive. However, the Dispute Resolution Policy ("DRP") states that an Abusive Registration occurs where a domain name, either "at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or has been used in a manner which took unfair advantage of or was unfairly detrimental to your [the Complainant's] Rights...or both." Total Web Solutions had originally tried to sell the domain name to MySpace for around £220,000, although this was found not to be evidence of abuse.

The decision might add fuel to the argument that Nominet and the DRP tend to favour corporate giants, though it also serves as a reminder that a registration that was initially legitimate may become abusive if the registrant subsequently changes its usage of the domain name.

M&R in da (Library) House

The new management team at Library House last night hosted a hip-hop themed* "Meet the CXOs" event in Cambridge. A few of us from Mills & Reeve went along. I had a few observations and learnt a few things:

• despite some pessimism at the back end of last year, investors are still looking for opportunities - even among the web businesses, a sector where there had been mutterings about bubbles in the wake of the Web 2.0 media storm;
• Cambridge has a great history of creating successful IT, software and electronics businesses - but the new web and mobile businesses have more of a focus on content/media, and a lot of the talent is in London; and
• Games Eden, founded last year to give computer games developers in the Eastern region a forum to network, is an exciting innovation - Cambridge in particular hosts a number of significant games development businesses (we're hoping to get involved).

I also chatted about some perennial lawyers' issues, such as copyright and brand infringement by linking to content on other websites, and getting the contract right. On the latter, I exchanged stories with some other guests about IT outsourcings that go wrong, and about the importance of investing in getting service level schedules and statements of work right at the outset.

* There wasn't actually a hip-hop theme - it was more wine and canapes, which was nonetheless very welcome. This was just an excuse for a bad post title.

SCL meeting: IPR - are they good or bad?

Along with Mark (see here) I went last Wednesday to the Society for Computer and Law’s surprisingly not very animated debate on whether IPR was good or bad in the software industry. Unanimated because there seemed to be a fair measure of agreement from all sectors.  Distilled down these were:

• The question is wrong;
• IPR is just a game;
• In a free world, we would junk much of it. Pleased to see the back of look and feel, and much of the rest of it just gets in the way of the real competitive drivers: providing a good service.

Having got IPR, suppliers and customers have to live and work (and play) with it. If other suppliers accumulate patents, everyone does in order to be able to play the game. Negotiating ownership and exploitation rights in contracts is part of dance which has to be undertaken.

But really quite a lot of it does not seem to benefit the market. Everyone seemed pleased to see the back of look and feel in copyright protection. Many confirmed that patents were of doubtful strength or commercial value and an impediment to competition; and the advent of patent trolls in the software sector meant that the dynamics of the game had changed, and exposed suppliers to unjustified, but nevertheless, expensive challenges. And nobody really had an answer to a questioner’s challenge that the Gowers Review had suggested that there was no evidence that intellectual property had promoted innovation in the software sector.

At a time when we see the use of IPR related rights as a way of protecting from competition in the digital field should we be seriously worried that they are not providing any real benefit to innovation?

IP = ID?

I've been mulling over the news Lilian broke on Pangloss about the Article 29 Working Party's view that IP addresses amount to personal data - the point being that if an IP address is a personal data, then anyone collecting or otherwise using IP addresses will be subject to the Data Protection Act (or equivalent legislation in other European jurisdictions).

Now this is a question that I've always thought has a typically lawyery sort of answer: an IP address can amount to personal data, but whether it does will depend on the facts.  The Act says (essentially) that personal data means data by which a living individual can be identified (either from those data or with other available information).  So if I live alone and have a PC, there's a pretty good chance that I can be identified from my IP address.  But if I use a PC in an internet cafe, there's a pretty good chance that I can't be identified from that PC's IP address.  In fact, I think that this is rather close to what the Working Party has said (ie an IP address will be personal data if it can be used to identify someone).

Website operators have tended to address the issue by sticking some standard wording about the collection of IP addresses in their privacy policies (see references in the Beeb's here or Mills & Reeve's here, for instance).  As long as the use of IP address data doesn't go beyond the obvious, it's unlikely that collecting the information will require consent; the website operators will argue that their have complied with their "fair processing" obligation by notifying users about website logging.

As Pangloss points out, though, this could have interesting implications for the likes of Google.  The Working Party's report is due out later this year.

Bowled over by data protection reform?

In the aftermath of the catalogue of high-profile data protection breaches that have hit the headlines recently, we saw a number of new initiatives announced by the Government (including the review now being conducted by Richard Thomas, with a consultation period ending next month).

I must admit that my initial reaction was a mixture of enthusiasm (at last people are taking data protection seriously!) and cynicism.  It's very easy to announce a review; implementing substantive change is more challenging.  After the England cricket team's dismal performances in Australia and at the World Cup, the "Schofield Review" was announced, which made a number of recommendations ... but appears to have resulted in very little happening: a few administrative tweaks and David Graveney losing his job.  Will the same be true for data protection, particularly when the public's attention has shifted elsewhere?

The situation is complicated for data protection in that the law derives from a European directive ... so any changes are likely to consist mostly of tinkering around the edges.  In the light of this, I thought Rosemary Jay's opinion piece on Out-law was persuasive:

"No doubt [the measures being taken] ... will result in recommendations on practice or interpretation, but no major change seems likely .... their effect is likely to be muted, and few changes in the law can be expected any time soon."

Still, the Information Commissioner's powers to investigate and take action for breach remain in the spotlight, and he has capitalised on this by setting out his proposals for change in a new document here.

Gemstar v. Virgin

Gemstar a US TV listings company part owned by Rupert Murdoch's News Corporation is suing Virgin Media over 3 alleged European patent infringements. Gemstar, whose prolific past litigation record has apparently led to its former chief executive being branded a "patent terrorist" alleges infringement of three European Patents by Virgin for its use of certain Interactive Programme Guide (IPG) technology. The action comes after negotiations over patent licensing broke down.  The executive Vice-President of Gemstar is quoted in the Guardian as saying:

"We have worked diligently to license Virgin Media for their distribution of various set-top boxes that contain IPGs covered by our patents, but negotiations did not lead to a resolution... While we would have preferred to reach a commercial solution with Virgin Media, we ultimately have a responsibility to our shareholders, licensees, and other stakeholders to protect the value of our intellectual property."

IPKat points out that the broad claims of the patents do seem to match what a Virgin Media set top box does and that Virgin Media's dismissal of the action as 'flagrant opportunism' and 'without merit' may be a little premature. However, IPKat also notes that "the English courts are notoriously difficult to please with infringement actions, and will certainly take a long hard look at the validity of the patents (if the proceedings ever get to that stage). As always, the devil will be in the details of what the patents can validly claim, and of course how far each side is willing to go in defending its position".

But don't hold your breath. With much of Gemstar's previous US litigation ending in settlements (eg. here and here), it's just as likely that the court may not get a chance to pick apart the patent claims.

Is IP any good?

I was at a Society for Computers and Law event this week entitled IPR - is it good or bad for business? The speakers were a good mix of lawyers, commercial managers and patent attorneys. Most of the audience were lawyers or patent attorneys, keen to discuss some of the issues, with a particular focus on the approaches to managing IP.

A variety of speakers managed to fit in a range of topics as broad as open source software, managing IP dispute risks and dealing with IP in a public procurement context. The floor was then open to any questions, which allowed people to pose questions about the potential impact of the Gower's review, the demise of 'look and feel' and how businesses manage the risks in practical terms.

Personally I rather enjoyed Stephen Bennett's talk on IP dispute management. He started the talk in dramatic fashion with 'nearly 80% of US murders are committed by someone the victim knows'. Not the sort of thing you expect from a talk on IP! How would he go on, the audience were wondering. His point was that the majority of patent disputes are between parties who are already aware of each other. Whether licensor or licensee or simply participants in the same market, patent owners know who their principle threat is. Simply considering this at the outset had the potential to seriously reduce the risks for a business.

The overall theme of the night was that managing IP does not simply involve calling the lawyers when an issue arises. It involves considering the potential for future problems, putting policies in place internally to manage IP, considering how your IP is created and by whom and thinking about whether anyone might object to your conduct in the future based on IP rights. It is an almost universal truth among lawyers that trying to tackle an IP problem long before it occurs is far cheaper and more likely to have a positive result than only taking action once IP becomes an issue. There's no point in shutting the stable door once the horse has bolted.

Stopped right at the border: Greek broadcasts create offence.

Karen Murphy thought that screening a broadcast from a Greek satellite in her pub in England (and paying the Greek broadcasters), showed enterprise in the spirit of the EU’s open borders, and would save her money – and so did her solicitors. But Media Protection Services thought this was not playing the (beautiful) game.

Section 297 of the CDPA 1988 creates an offence of dishonestly receiving a programme included in a broadcasting service provided from a place in the United Kingdom with intent to avoid payment. This section seems to be intended to prevent people circumventing the encryption, for example by using pirate cards to view the original programme. However, the Court said that, although the signal was transmitted from a Greek ground station, and although the Greek broadcaster, Nova, had added other material to the images – specifically its logo, and an optional Greek commentary (and could presumably therefore have stopped or delayed the broadcast if they wished) - the Premiership matches being shown (filmed live by BSkyB) were nevertheless “a broadcasting service provided from a place in the United Kingdom”. A bit of an own goal for Ms Murphy; and another plank in the stockade against free trade in digitally based intellectual property rights across the EU.

This decision is disturbing for another reason. It is difficult enough keeping up with the myriad of offences relating to copyright infringement and neighbouring rights even if they are clear. However, the Court here had to look at several Directives, and the history of amendments to the legislation to reach a conclusion which seems, with all due respect, not to be what the words actually say – the Greek company was not broadcasting from the UK, and neither BSkyB (which was making the programme) nor the Premier League (which was editing the programme) were providing the broadcasting service in any conventional sense. Creating offences in this way does not create respect for intellectual property rights and encourages ill feelings against the scope of intellectual property protection which is something the government is hoping to address. The current position justifies the response of an alleged offender: “It’s all Greek to me”.

Ms Murphy’s defence team will now argue the case under competition law principles and are claiming that in footballing terms the case is only at the half time interval.

International news

The Guardian announced today that 5 of the UK's largest news websites receive more foriegn than UK-based visitors, including The Mail at the top of the list with nearly 70% of users from overseas.  The others were The Telegraph, The Times, Guardian and BBC websites.  Many of these are now actively targetting the overseas market.  A sensible time, then, for websites such as these to review their terms of use and ensure they are appropriate not just for the UK market but also in those relevant foriegn jurisdictions.

As is usual for websites based in the UK, each of these five news websites specify that English law applies to their terms of use (see dailymail.co.uk, telegraph.co.uk, timesonline.co.uk, guardian.co.uk and bbc.co.uk).  However, where websites actively target or have large audiences in other countries, it is possible that local laws in the relevant jurisdiction will also apply either in addition to or instead of English law.  This is particularly the case in relation to infringement of IP rights and defamation.  Website owners should therefore consider seeking local advice where a significant proportion of traffic is from overseas.

Landrush in .ASIA

We are currently in the sunrise period for the new .ASIA domain name. During this sunrise period only governments, trade mark owners, official bodies and certain others with 'prior rights' may apply to have a .ASIA domain name registered. This process is governed by the rules of the .ASIA domain name registry, the dotasia organisation.

Once this period ends, on 20 February 2008, there is what is aptly titled the 'Landrush', after which point domain names are handed out on a first come first serve basis (12 March 2008).

The dotasia organisation was granted its authority to regulate this process by ICANN, the international association responsible for the administration of the internet. The .ASIA implementation has followed a very similar procedure to the .EU domain name introduction, which has resulted in more than 2,500,000 domain name registrations since 2006.

The Register has some links on the .ASIA here as does the rather useful IMPACT here.