Categories
patents

Software Patents in Canada – The Position of the Courts (1)

Software Patents in Canada

The position of the software patents in Canada is not a straightforward one. There is no explicit prohibitions on the patentability of software patents (or business methods) in the Canadian Patent Act, but the only software patent case that ever reached the court decided that software inventions are not patentable. This case was decided in 1981 and the computer and internet revolution has changed the face of Earth since then and there seems to be a general preference for having patents for software in the Canadian Intellectual Property Office  – which indicates in its Manual of Patent Office Practice that a qualify software may be granted a patent. The CIPO did not stop there as it has already allowed the successful application of a number of software patents. CIPO decisions and MOPOP has no legal authority, so the fact that they are granting software patents does not mean that the court will hold them valid if ever challenged.

I will examine in this post the position of the courts and various grounds for which a software patent may be rejected and then will follow that with how CIPO has changed its position over time.

Requirements Under the Patent Act

For a patent application to succeed in Canada it must satisfy the invention subject matter requirements (Section 2), novelty (s28(2)), non-obviousness (s28(3)) and utility (s2).

For application to satisfy the subject matter requirements it must fall within the definition of “invention” in Section 2 of the Act which states that it must be an “art, process, machine or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. This definition is subject to sub-section 27(8) which prohibits the grant of a patent for “any mere scientific principle or abstract theorem”.

Novelty is a quantitative criteria of “newness” that requires the invention not to be part of the state of the art at the of filling.  (MOPOP S15.01.01) This basically means that the invention must not have been built, or described in a single document that contained sufficient information to allow another person to make the invention, before the application for the invention was filed.

Non-obviousness is a qualitative criteria of “inventiveness” that requires the invention not to have been obvious to a person of skill in the art at the time of filling. The test of obviousness is whether or not an unimaginative skilled technician would, in the light of the state of the art and common general knowledge at the time of filling date, be led directly and without difficulty to the invention covered by the claim. (MOPOP S15.01.02)

Utility is a requirement for the invention to be “useful” for the purpose for which it was designed. (MOPOP S15 + Progressive Games v COP)

Software patents are usually rejected on subject matter grounds and not on novelty, non-obviousness, or utility, which do not create any software specific problems to the patent application.

General Position of Software Patents – The Schlumberger Case

The only software patent case that reached the courts in Canada is the Schlumberger case (Schlumberger Canada Ltd. v. Commissioner of Patents (1981) 56 C.P.R. (2d) 204 (FCA)). The application in this case involved a computer system for the analysis of soil characteristics data for the purpose oil and gas exploration. CIPO rejected the application on the grounds that it was merely a computer program which did not fall under the definition of invention under section 2 of the Patent Act.

The application reached the Federal Court of Appeal which used a two step test to decide whether or not the application should be allowed:

  1. What has been discovered according to the patent application?
  2. Is that discovery patentable regardless of whether a computer is or should be used to implement discovery?

In applying this test the court held that “[w]has is new here is the discovery of the various calculations to be made and of the mathematical formulae to be used in making those calculations. If those calculations were not to be effected by computers but by men, the subject-matter of the application would clearly be mathematical formulae and a series of purely mental operations; as such, in my view, it would not be patentable,” and consequently rejected the application on the grounds of Section 28(3) against the patentability of a “mere scientific principle or abstract theorem”. 

This court decision made it clear that the mere addition of a computer in a patent application will not change the subject matter of the discovery so as to rescue what is originally unpatentable. A mathematical formula was not allowed to be patentable just because it is processed by a computer.

Though Schlumberger is the only case involving software patents and it was clearly not in favour of allowing software patents, the decision did not prohibit patenting ANY software related invention, but merely one in which “what was discovered” would not be considered as a qualifying subject matter if a computer is or should be used to implement it.

CIPO interpreted this a consequent decision (Application No. 96284) to mean the following:

  1. Claims to a computer program per se are not patentable;
  2. Claims o a new method of programming a computer are not patentable;
  3. Claims to a computer program in a novel manner where the novelty lies solely in the program or algorithm are not patentable;
  4. Claims to a computing apparatus programmed in a novel manner, where the patentable advance in the apparatus itself, are patentable; and
  5. Claims to a method or process carries out with a specific novel apparatus devised to implement newly discovered idea are patentable. 

This summary corresponds with the Schlumberger case as a pure computer program or an invention in which the novelty is in the program are not patentable, while an invention that uses a computer program and has its novel aspect outside the computer program would be patentable.

This position was justified at its time as the software industry was still in its early days and computer hardware was a bigger industry in which innovation was rapidly changing. Research and Development could have been easily protected by the patent system with the Schlumberger decision as the decision allows computer related inventions to be patentable where the innovation is in the apparatus (the hardware) and that adequately protects and promotes this industry.

However, this position is changed now as software is clearly one of the most important industries in world economy and there is a great need to protect and promote the investment in this field. This change in important in software is reflected in more recet CIPO decisions, which are not binding and can be overturned by any court if ever challenged.

But before we turn to the CIPO decision, we should talk in the second post about other more recent additional obstacles that face software patent application as became apparent from business method patent applications, which face a very similar objects at CIPO.

Categories
defamation

The Booz Allen Defamation Trial in Progress

The Booz Allen Hamilton Case
(Baby photo credits: utpal)

An anonymous member called “Boozallen” published a post on Omania2.net defaming the CEO and CTO of Oman Mobile. The CEO complained to the Public Prosecution which took action under Section 61 of the Telecom Law to prosecute the administration of the website.

There are many interesting points in this case, but it is necessary to talk about the facts. On the 20th of August 2008, the offending post was written in English on Omania2.net, but as An Arabic forum, the moderator named Ali Al Zuwaidy temporarily deleted this post on the grounds that it was written in a foreign language, however, after receiving some messages from other members, he unlocked it and made the following post:

 
أخي الكريم..
قمت في المرة الأولى بغلق الموضوع بسبب الكتابة باللغة الانجليزية، لكن بعد مراجعة الأمر مع احد الأخوة قررت فتح الموضوع وابقائه مع دعوة أي شخص لترجمة الموضوع ليتسنى للجميع الاطلاع عليه…
 

Translation: Generous Brother, I initially locked the topic because the writing was in the English langauge, but after reviewing the issue with one of hte brothers I decided to open it and keep it while inviting any other person to translate the topic so that everyone can view it.

On the 21st of August, the administration of the website decided to remove the thread from the public because of their fear that it offended a website policy on not posting anything that might violate the ruling system of the country. 

The complaint by Oman Mobile was made after the thread was removed from the forum.

This case is interesting because it probably is the first one to be about a post written in the English language. All previous major cases were written in Arabic, the case is also intereseting because the identity of the original post author was not discovered, and because the action is made against a specific moderator and not the owner or main administrator of the website. The court made the decision to take an action again Ali Al Zuwaidi specifically because he responded to the thread and actively unlocked it after it he locked it before.

The case is currently in progress and the next hearing will be held on the 17th of March. 

I think that this is a classical case for which Section 61(4) was specifically introduced. Webmasters should be responsible for content published on their website, it is illogical to think that people could simply argue that the post was written by someone else one a  website when they actively maintain as commercial platform for people to post messages for which they have direct control over.  However, the law is unfair because it does not provide a defence for webmasters who take reasonable diligent action to remove defamatory content from their website, which you can argue was the case here as the post was allegedly removed within 24 hours – even though the moderator previously did make an active choice to allow that post on the forum.

If Ali Al Zuwaidi is found guilty he could be prisoned for a period up to a year and fined up to a 1000 Omani Rials. 

It is worth noting that the Public Prosecution issued a press release today reminding people that sending messages that offen the public order could lead to criminal sanctions. 

Will be looking forward to see how this case progresses.

Categories
Copyright

The Problem with DRM

Digital Rights Management or DRM are tools used by distributors of digital media to ensure to control the way in which their music, video, and other digital goods are used and distributed. The majority of countries, including Oman, make it a criminal offense to disable DRM, to manufacture or import tools that disable DRM, or to share information to enable others to disable DRM.

Though not strictly speaking an actual substance of copyright, DRM offences are placed in copyright legislation due to their usage in that field. Content distributors use DRM to enforce their copyright by locking down their digital goods. For example, when you download a ringtone from your mobile operator service directly, that ringtone will be equipped with DRM that will not allow you to forward this ringtone to anybody else. If you purchase a DVD, you will not be able to create a copy of it using any legal software in the market. If you rent a video from iTunes, you will not be able to copy that video onto any other machine and you will have a very limited time to watch it after which the video will stop working.

Due to the ease at which copyright work can be copied and distributed over the Internet, one of the industry’s responses to enforce their copyright was the introduction of newer and newer DRM technologies. By using DRM content owners can have almost complete control over the use of the copyright work and will ensure that it is not copied or duplicated easy.

DRM has also contributed to the creation of new business models and services that would not have existed otherwise, for example, it would be impossible to have a legally cheap music rental services such as Napster if it wasn’t for DRM.

The available of DRM also helps the regulation of content through different territories for the protection of children and society when moral values and tolerance of sexual and violent content varies from one distinction to the other as DRM makes it difficult to play American movies in Europe).

However, for the greatest part, most people think that DRM is a bad thing. Starting from the top, there is no evidence that using DRM actually reduces piracy. Steve Jobs himself said in 2007 and DRM does not work. The nature of digital goods makes it impossible to lock down the ability to copy a work because by definition that data must be unlocked to be used and therefore it will always be possible to record and copy that data, whether it digital or analogue format, and then redistribute it. DRM targets the wrong people, people who will pay for it are not the pirates. It is demeaning because it makes every single one of us a suspect of copyright infringement.

A more problematic area of DRM is that it does not only stop illegal copying, but legal copying as well. Copyright is not an absolute right, but one which is supposed to balance the interests of society against those of the author. The collection of these legal copying instances are called in the US “Fair Use” and in Europe “Fair Dealing”. In Oman, these are called “Free Uses” and are specified in Article 20 of the Copyright Law 65/2008. A simple example of these rights are the right to make a single backup copy under Article 20(5). When DRM is used to protect a copyright work, then breaking the protection to create a copy would constitute a criminal offense regardless of whether the DRM was removed to create a legitimate backup copy.

This example could also be illustrated in the case of DVD playback on the Linux OS, no Linux OS has the license to play DVD movies on it, but Article 20(5) allows the modification of a copyright work in order to make a work compatible with another operating system, however, due to the fact that DVD movies are protected by CSS DRM, it will not be possible to make use the format shifting exception to play the DVD on Linux and any attempt to create a tool to play DVDs on Linux, or use one, would constitute a criminal offense under Article 40 of the Copyright Law.

That basically renders all the exceptions of copyright protection pointless as the majority of copyright works can now be DRMed, whether there was or wasn’t a point for using this protection. That obviously cannot be right, as copyright was never meant to grant such a power to content makers to control the way we use content we legally purchased. No legislator anywhere made the conscious decision to introduce such stringent rules, but this change in the way copyright operates was a result in the change of technology, for which copyright law was modified in the WRONG way “adapt” to it.

Not only does DRM not allow for free use exceptions, but it does not take regard of even works in the public domain for which no copyright subsists at all as a protection for DRM is granted whether or not the content it actually protects is in copyright or not.

DRM also poses a number of privacy issues, as at some instances personal data, such as names and credit card details, might be required to be submitted before the digital product is consumed. DRM can also be used to track the way and frequency at which the product is used. DRM proved to also be a possible cause of serious security risk to user computers as was the case in the Sony rootkit music CD fiasco.

The complex structure of today’s market and the way different tools and required to consume media, all make it possible for DRM to be used to affect the secondary market, as content providers may control the way products are played (e.g. DVDs). This could have an impact on competition and may stifle innovation as new technologies cannot be introduced if all current media is locked down to a specific DRM that cannot be legally broken or adapted without the permission of the owner.

The problems with DRM are international, the majority of modern copyright legislation including the US, Japan, and UK all have similar provisions against the circumvention of DRM. The laws in Oman are just as bad, especially as the DRM provisions were introduced in response to comply with the requirements of Article 15.4 of the Free Trade Agreement with the US. Any attempt to remove or amend the bad DRM provisions in Oman could render us in breach of our obligations under the FTA. Our only solace is that the situation in the US (and all other countries that signed an FTA with the US) is just as bad, but that does not really solve the problem.

Luckily, more and more companies seem to know that DRM is not the solution to the problem, iTunes announced a couple of months ago that it will make its entire music catalog without DRM, Amazon has always been so since the day it launched its online music store.

But now having DRM free content seems like a privilege and not a right. An international movement would have take place for the law to change that position.

Categories
defamation

Omani Forum Member Imprisoned for Defaming Policeman

Policeman Defamed by Forum Member
(Photo credits: Geff Rossi)

Omani Arabic newspaper “Azzamn” reported today a recent online defamation decision by the Elementary Court to imprison a person for posting on an  online discussion forum claiming that the victim, a policeman, tortured to death a theft suspect.

Medical evidence was used in the case to prove that the death of the deceased theft suspect was natural. It was also noted that the defendant had previous arguments with the victim as the brother of the defendant was held in the same centre for the same theft case for which the deceased theft suspect was being held. Azzamn says that the defendant wrote what he did to get back to the policeman who refused one of the visits to his brother.

The court held that the defendant was guilty for two offences, the first under section 173 of the Criminal Law for insulting an employee while carrying out his employment duties or insulting him on the basis of the performance of his employment duties. The second offence was made under section 182(2) for claiming that another person is guilty of a crime for which he knows he is innocent or for which he fabricated evidence for the creation of such crime. 

The court decided to sentence the defendant to a one-month imprisonment for the crime of false-incrimination under section 182(2) and 15-days for the crime of insult under section 173.

This is an interesting case because it shows us that there is more than one ground for establishing defamation, if what you post constitutes a false-incrimination under section 182 then you would be liable for an additional  penalty that is greater than the penalty for a regular insult.

Link to Azzamn Article (Half way through the page – Arabic only).
Link to another recent Omani online defamation case.

Categories
Copyright Creative Commons

Al Jazeera Publishes Videos Under Creative Commons License

Al Jazeera Goes Creative Commons

Al Jazeera announced last week the launch of a creative commons repository to host videos of the Gaza crises  under a Creative Commons Attribution License. This is a big win for the Creative Commons movement as Al Jazeera is the first major broadcaster to license any of its content under Creative Commons.

This announcement means that bloggers, competing broadcasters and anybody else can use the videos of Al Jazeera for free as long as they simply mention that original video was made by Al Jazeera. This would have not been possible otherwise due to copyright protection of the work. By using the CC Attribution License Al Jazeera explicitly permits all to use the licensed copyright work in any way they please, whether commercial or not, as long as they simply attribute the source.

I will hopefully write more about Creative Commons in the future. This is a nonprofit corporation that aims to create the a legal framework for individuals to share the creative work of each other and build upon it.

Categories
defamation

Recent Omani Web/Press Defamation Judgement

Newspaper Defamation
(Photo credits: birdfarm)

The Supreme Court in Oman recently confirmed the reversal of a judgement holding a newspaper reporter guilty of defamation for referring in an article he wrote on the newspaper to a website containing defamatory statements of a person. The decision of the Supreme Court was reported two days ago by Al Shabiba Newspaper here (available in Arabic only).

It is hard to know what the exact facts of the case are from the decision as the case was tried before the Elementary Court and the Court of Appeal before getting the Supreme Court. Apparently what happened was that a women was defamed on a website, then the reporter wrote an article on the newspaper criticising some websites that defame people. The reporter had to go to court because it was claimed that what he wrote also amounted to defamation.

I am not sure what the article exactly said, but the article mentioned (1) the name of the defamatory website and (2) that it was published on the website that an “unnamed” female chairman of a company reached her position because she had a sexual relationship with an ambassador. This story was cited in the article as an example of defamation going online.

The prosecution argued saying:

فقد قام المتهم خلال شبكة المعلومات في الجريدة تحت غطاء النقد لما ينشر من خلال شبكة المعلومات إلا أنه في حقيقة الأم قد قصد الإساءة إلى المجني عليها وليس أدل على ذلك من قيامه بالإفصاح عن اسم وبيانات الموقع الذي يسيء إلى المجني عليها ويطعن في سمعتها وشرفها وأنها قد وصلت على منصبها كرئيس لمجلس ……………. لارتباطها بعلاقة غير أخلاقية بالسفير الأمر الذي فتح الباب أمام الكافة وأثار فضولهم للدخول على الموقع المشار إليه والاطلاع على ما يمس شرف وكرامة المجني عليها وحياتها الخاصة

What the first defendant published under the cloak of criticism was intended to attack the victim. The proof of this was the fact that he disclosed the name and the details of the defamatory website and that she reached her position because of her sexual relationship with the ambassador. This made the public curious to go to the website to learn about the violation of the honour of the victim and her private life.

The court said that for the crime of defamation to take place two elements must be established, (1) statements of defamation, and (2) making these statements in public.

ما يتعين إثباته في حكم الإدانة بجريمة إهانة الكرامة أمران : أولهما عبارات الإهانة، وثانيهما علانية الإسناد

The court held that the article was not defamatory because it did not mention the name of the victim, it did contain anything insulting of her or anything descriptive of her personal life. It also said that the arguments provided by the prosecution were “unsavory, unacceptable, and without any legal basis” as the article “criticised these websites and demanded they stop defaming people”. The court concluded that the original judgement is to be reversed as no defamation took place.

While this might now seem obvious, it was not obvious to the Elementary Court as it held the newspaper reporter guilty of defamation. The Supreme Court only held that defamation did not take place because the article did not mention the name of the victim.

We can learn from this case that defamation can occur throughout a chain. The fact that you are reporting (or blogging) about an incident of defamation can easily make you liable for it as well if what you write can be considered as defamatory statements even if these statements did not necessarily originate from you and you are merely reporting current events.

Categories
patents

Software Patents (EU, US, and Japan)

Software Patents
(Photo Credits: Leonard Low)

A patent is a powerful tool that grants monopoly over an invention you make. The scope of its protection differs from copyright. In the context of software, copyright will only protect literal copying of the code, but it will not protect against the recreation of the same program using original code – even if the new application has program or even identical functions to your program. A patent on the other hand grants protection for the application of the ideas of the program regardless of how that application happened, so even if your program was written using a new completely different code, if that program carries out a process or creates a product similar to what you have your patent application, then you would have the right to stop them from using that program or you can claim damages for their infringing use.

The problem with computer programs (and business methods as well) is that they are generally considered as subject matter which is unprotectable by patents. Each jurisdiction has a different reason behind this ban of software patents and also provides a way to go patent your software “around” the allowed subject matter.

In Europe, patents are granted by the European Patent Office which governs its patent grant procedure through the European Patent Convention 2000.  According to Article 52(2) of the EPC computer “programs for comoputers” are not to be regarded as inventions as such. The keyword here is “as such”. The EPC has been interpreted by the EPO in a way that excludes only computer programs when they are claimed to be “the invention” itself as that would be a claim to an excluded subject matter “as such”.

EPO decisions were inconsistent and unclear as to their legal grounds for granting this protection and it suggests that a computer program will not be excluded if the program includes a ‘technical character’, but there is not definition as to what ‘technical character’ means. In mid 80s decision of Viacom (T-208/84), the EPO held that the invention in question made a “technical contribution to the known art” and was therefore patentable. This decision was followed by that of IBM (T-22/85) in which the patent application was refused on the ground that it the invention lacked a “technical character” as it did not “provide a technical contribution to the art”.

The principle shifted for a “contribution” of this vague “technical contribution” element to the need for the presence of this “technical character” element in the invention itself. In the decision of Hitachi (T/258/03) it was stated that “What matters having regard to the concept of invention within the meaning of Art.52(1) EPC is the presence of technical character which may be implied by the physical features of an entity or the nature of an activity, or may be conferred to a non-technical activity by the use of technical means”. No definition was given as to what “technical effect” meant, and instead the EPO admitted in PBS Partnership (T-931/95) that “the meaning of the term “technical” or
technical character” is not particularly clear.”

Although the EPO has granted many patents for computer programs, the grounds for doing so do not seem to be clear at all at the term “technical character” was never defined. However, the key to getting a European patent from the EPO for a computer program would be not to claim the invention as a computer program and instead attempt to claim it as invention for doing something using a computer program. Claims in the patent application must also be carefully drafted to make sure that they do not fall under any other exceptions under 52(2) for abstract ideas or business methods.

In the US, the Patent Law (Title 35 USC) does not include a statutory bar on computer programs or business methods, however, this exception was developed through case law as it was established that “laws of nature, physical phenomena and abstract ideas” are not patentable subject matter (Case:�Diamond v. Diehr (1981)). The application for many computer program patents failed on the grounds that there were mere abstract ideas as all they were constituted of mathematical formulas.

This position changed in the year 1998 where the court held in the case of State Street Bank v. Signature Financial Group (1998) that a business method will not not be considered an abstract idea if it produced “a useful, concrete and tangible result”. The same principle was then applied to many computer applications as, for example, the production of computer data that resembles a real life solution (e.g. stockmarket prices) produces a useful, concret, and tangible result. One of the most famous business method patents granted in the US is Amazon’s 1-click patent.

However, in the very recent case of Re Bilski (2008) the court rejected the principle of the mere need of “a useful, concrete and tangible result” of State Street as the ultimate saviour of business method patents stating that it was “inadequate”. The court held in this case the right to test to use was a “machine or transform” test which requires the business method to be attached to a specific machine for it to qualify as an invention OR for the business method to transform a particular article into a different state or thing.

Re Bilski is a very recent case and the exact impact of it on the scope of computer programs is still unknown, but it has surely reduced its scope significantly as no longer the fact that the program produces ‘a useful, concret and tangible result’ is sufficient for it to qualify as an invention, but it must be attached to a specific machine or must be a transformative process.

In Japan, the law requires an invention to be “a creation of technical ideas utilizing a law of nature”. This has meant for Japan that pure software patents will not qualify as they do not are not ‘technical’ in nature (even Software as a subject matter is explicity considered as patentable subject matter), however, the JPO Guidlines states that this requirement can be satisfied by simply “realising the program using hardware resources” – and that apparently provides the technical element needed for escaping the requirement. (Check JPG Guidelines for Computer Software Related Inventions – Warning PDF).

Software patents will not automatically succeed if they prove that they are not included in any of the exceptions found in various patent laws, each of these jurisdictions require a patent to be novel, non-obvious, and be capable of industrial application (or useful in the US).

Categories
trademarks

Twitter Usename Room214 Infringes Trademark?

Twitter

A twitter user who goes under the username of room214 was recently contacted by a company called Room 214, Inc asking him to give up his twitter account or else they would ‘take it from him’. Can they take any legal action to retrieve the twitter account using trademark law?

First of all, in the US, trademarks law is regulated by the Lanham Act. This act does not only protect registered trademarks, but also unregistered ‘common law’ trademarks. A mark can be protected and will have rights under this act if this mark develops a certain level of ‘distinctiveness’ which makes it qualify for the common law trademark protection. This means that Room 214 can still get protection for its mark regardless of whether it was registered or not, if it can prove that the mark has been associated in the mind of the public with the certain service or product the company sells. This is a question of fact and will depend on the actual reputation the company has.

Now whether the company has a trademark or not, does this protection allow them to stop people from using a twitter account that contains their trademark? It must be noted that a trademark does not grant its own a monopoly over the use of a term, but instead it allows them to stop others from attaching the mark (1) to identical goods services or (2)  similar goods and serives if the public would be confused as to the source of the goods.

It cannot be said that the use of a trademark in a twitter account amounts to the use of a trademark in relation to any goods or services, especially because the user in this case was not using his twitter in the course of a business, and even if he did his will only be infringing if his use was (a) relating to goods and services similar ot those provided by the tradmark owner and (b) the public would be confused as to the source of the goods and services by that use.

Certain trademarks in the US attract special protection against trademark dilution through the Federal Trademark Dilution Act. This protection has a wider scope, but may only be conferred on ‘famous trademarks’ – trademarks which has established a strong connection in the minds of the public between the good or service and the source of that good or service. Examples of such trademarks include Coca Cola and Microsoft. It is extremely unlikely for Room 214, Inc to have such protection as nobody heard about this company.

I would confidently conclude that Room 214 Inc will not have a legal action under trademark law to stop another person from using the term “Room214” as part of their twitter username.

Categories
domain names trademarks

UDRP Local Experience: Bank Sohar/Oman Air

While we are still on the topic of the UDRP, I thought I’ll share with you an example of a local experience with the UDRP, and will show you an example of a classic case where the UDRP could be used.

BankSohar.com

Some of you might remember that when Bank Sohar launched its website it was hosted at a .net TLD and not the current .com TLD. This was obviously because someone registered the domain name before they did.

Late in 2008, Bank Sohar initiated a UDRP action against the website owner. Under the UDRP a domain name will be transferred to a TM owner if

  1. the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.
In the action handled by AlBusaidi, Mansoor Jamal & Co (which was then Al Alawi, Mansoor Jamal & Co) the complaint claims and arguments consisted of the following:

A. Complainant makes the following assertions:

1.Respondent’s <banksohar.com> domain name is identical to Complainant’s BANK SOHAR mark.
2.Respondent does not have any rights or legitimate interests in the <banksohar.com> domain name.
3Respondent registered and used the domain name in bad faith.

The domain name registrant did not respond to UDRP process, yet the panel decided in his favour, because the domain name was registered before the trademark of Bank Sohar was registered. The complaint was denied. But it seems that the Bank Sohar later settled (they paid them) with the domain name registrant to get the domain name which it currently uses.

Though not a clear cut case, because the domain name was registered before the trademark was registered, it is apparent that the complaint was not defended well (I mean, out of the 15 page limit they had, Bank Sohar submitted three lines?!).

First of all, under WIPO UDRP decisions for the purposes of answering element 1, there is no requirement for the trademark to be registered before the domain name for similarity to be established, the registration day is a factor to be considered in the third element. Bank Sohar would have easily satisfied that element by citing this decision Digital Vision, Ltd. v. Advanced Chemill Systems:

“The Complainant has provided the registration documents for its DIGITAL VISION marks, within the USA and the EU. Registration for these marks postdate the domain name registration; however, Paragraph 4.a.(i) does not require that the trade mark be registered prior to the domain name. This may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below. I conclude therefore that the Complainant has satisfied the first requirement of Paragraph 4.a.(i)”.

For the second element, Bank Sohar was required to establish that the registrant did not have any legitimate interests in the domain name, this is established by stating that the registrant does use the domain name in a bona fide business and that the registrant is not known by that name, both of which are easy to establish, he is obviously not known by the name Bank Sohar nor does he use it in a business context.

The third element is the hardest to establish, because Bank Sohar had to establish that the registrant registered the domain name and is using it in bad faith. The problem here is that Bank Sohar registered its trademark and started its business after the domain name was registered, however, in cases where the the registrant knew of the existence of the complainant and it was clear that he registered to take advantage of the domain name later, then bad faith can be established. This was the bases by which a transfer took place in cases such as ExecuJet Holdings Ltd. v. Air Alpha America, Inc. I don’t think that it is hard to establish that many people knew about the Bank Sohar a year before it started doing actual business!

Bank Sohar lost this procedure because it did not argue its right at all. The choice of UDRP provider was also bad as WIPO clearly holds the cases I cited above as the majority view and it have been more likely for Bank Sohar to win this if WIPO was used as a provider instead of the National Arbitration Forum. No idea how much they had to pay for the domain name afterwards!!

You can read the decision text here.

OmanAir.com

Unlike the Bank Sohar case, the second part of this post is not about a case that happened, but about a cybersquatting example which can be easily won through the UDRP.

Again, some of you might remember when Oman Air used to have a website at the .aero TLD, it currently uses the oman-air.com TLD as its web address as well nowadays. The most desirable TLD though, omanair.com, is registered by a Sri Lankan since 2002. The domain is parked.

This is a classic UDRP case at which it is guaranteed that Oman Air can gets its domain back. If Oman Air wants to get the domain it has to establish in a UDRP procedure the following:

  1. the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.

In regard to the first element, the trademark is identical to the trademark owned by Oman Air, the location of the service and place of registration is irrelevant (case Guinness.com), if Oman Air did not have a registered trademark at that time it can establish that it had a common law trademark as Oman Air was commonly known by that name by 2002 (case: IdeaLeage.com).

In regard to the second element, it can be easily established as the registrant is not known by that name, not does not carry out any bona fide business using that domain name.

In regard to the third element, it is clear that the registrant registered the domain name to profit from the Oman Air’s trade mark, lack of usage has been considered an indication of bad faith (recent case example).

All in all, this case is a classic UDRP example which Oman Air can easily win if it uses the procedure.

Oman Air would be stupid to let somebody else take control of their domain name, the costs for using the UDRP are nominal (WIPO it costs $1500 while at NAF its $1300), and there is not to do it!

Other interesting decisions from the region include aljazeera.com and ebay.ae.

Categories
domain names trademarks

Inconsistencies in UDRP Decisions


(Photo credits: Monroe’s Dragonfly)

The deeper you dig into the realm of the UDRP to more you realise that this cheap and fast procedure for fighting cybersquatting is not totally perfect, in fact, the 10 years old procedure is widely believed to be in dire need of a reform.

The most major problem with the UDRP is that its decisions consistently inconsistent. This is unsurprising as the procedure is usually conducted by lawyers from all around the globe who come from different jurisdictions and have a different understanding of the principles of the UDRP. This is combined with the fact that there is no appeal system within the UDRP and there is no strict sense of precedent to be followed by later cases. 

In order for a complainant to initiate a transfer under the UDRP, he must establish the elements of section 4(a) of the UDRP Policy:

  1. your domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and
  2. you have no rights or legitimate interests in respsect of the domain name; and
  3. your domain name has been registered and is being used in bad faith.

Examples of inconsistencies can be seen in relation to the application of ALL these elements:

1- Element(1) Domain name is identical or confusingly similar.

The UDRP does not explain what is meant by confusingly similar and a diversion in opinion was established in the case of ‘sucks’ domain names. These are domain names such as walmartsucks.com where the trademark is obviously present in the domain name, but the domain name as a whole is not identical and most people would not be confused as to its relationship with the trademark owner as walmart will not be using such a domain name

Scott Donahey identified two different tests by UDRP panelists when attempting to examine this element, the first test is an objective test that simply looks at whether or not the trademark is in the domain name or not, if it is, then the domain name is capable of being confusingly similar. This was first used in the case of Britannia Building Society v Britannia Fraud Prevention and most recently applied in the case of Sermo, Inc v CatalystMD, LLC.

(WIPO says that majority agree with the objective test – for the same reasons used in cases, people who do not speak proper English might not understand the negative term and therefore get confused).

Another test occasionaly used is a subjective test which does not automatically hold a domain name confusingly similar because it contains a TM and instead attempts to look at the state of the mind of the user to see whether he would actually be confused after looking at all relevant factors. This case is similar to that used by US courts for examining TM cases. This test was used in Lockheed Martin Corporation v. Dan Parisi, it was most recently used in a trademarkrip-off.com context where the US TM law and other factors were taken into consideration to deny the success of the case under this element (Case: Citigroup Inc. and Primerica Financial Services, Inc. v. Brian Allman).

Donahey suggests that the subjective test should be abandoned and the objective test is the one to be used as the subjective factors are examined for elements 2 and 3. He also suggests that using the subjective test would allow competing company to benefit from this by using such domains and gives the example of Pepsi using the domiain cokesucks.com as a redirection to its own website.

2 – Element(2) Domain registrant’s rights and legitimate use

The UDRP again does not explain what this element means, but provides a list of non-exhaustive examples of legitimate rights.

This elements created diverging opinions in relation to domain names in criticism or free speech cases

The first opinion suggests that no legitimate criticisms rights can subsist in a domain name that is identical to the trademark of the complainant because the domain name here is used to indicate the identity of the owner and that overrides any legitimate use by the regisrant. This was most recently applied in the case of 1066 Housing Association Ltd. v. Mr. D. Morgan. (Explains the both principlesi in great details!)

The second opinion says that there is legitimate use if the registrant uses the domain name for a criticism website the use is fair and non-commercial. A recent decision here is the case of Covance  

Diverging opinions under regarding this element were also seen in regard of the usage of trademarks in the domain name of a reseller.

The most commonly applied opinion says that if the reseller “makes a bona fide oferring of goods and services” he will have a legitimate interest in the domain name. Establishing this bona-fide offering will only be established if a number of requirements can be established such as clearly identifying the relationship with the mark holder, the actual sale of the relevant goods and services, and  selling only the trademarked goods and services, and that the reseller does not corner the market in all domain names. This was first seen in the case of Oki Data Americas v ASD and was most recently seen in the case of Research in Motion Limited v. Domains by Proxy, Inc. and Kafiint. (Yet, again, these requirements were not followed by everyone, in the case of Weber-Stephen Products Co. v. Armitage Hardware 10% sale of other goods did not bar legitimate interest).

The minority opinion in this matter is a reseller cannot use a TM in his domain without the express permission of the TM owner as the right to sell TM products does not create the right to use the TM as a basis for a domain name. The first case to feature this opinion was Motorola, Inc. vs NewGate Internet, Inc and then also mentioned in The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc. and most recently applied in F. Hoffmann-La Roche AG v. Internet Climate where it was stated that “the collateral trademark use necessary to allow resale of and/or customer support in connection with the Complainant’s pharmaceutical products does not confer the right to use the trademark as a domain name“.

A third subject on which opinions diverge is the existence of legitimate interest in the creation of fan sites. It is natural for a fan site to have the name of the name of the product or person it supports and that name is usually a trade mark. Some panelists have found that a fan site does not have legitimate rights in using the trade mark because that will be a misrepresentation for being the owner of the TM and that will also prevent the TM owner from exercising therights to the mark and managing its presence on the internet.

Early sightings of this opinino were seen in the case of Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross and The Estate of Tupac Shakur vs. R.J. Barranco in which the argument for this was nicely summarised:

The position asserted by the Claimant, if accepted, would effectively prohibit any fan club from being established on the Internet if it mentioned in the site name an artist’s name, where part or all of that name related to a registered mark or even perhaps transgressed claims of common law rights in a name. It would also permit persons in the position of this Claimant to unjustly enrich themselves by confiscating the work of fans and admirers in establishing a web site supporting their favorite artists without any opportunity for compensation.”

The second opinion was supported in the case of Dr. Ing. h.c. F. Porsche v. Georg Kohler in which it was stated that “To hold otherwise may also prevent a trademark owner from validly acquiring an identical domain name which it would otherwise be entitled to in accordance with the Policy’s aim of preventing cybersquatting, minimising confusion with established trademarks and helping to assure bona fide trademark owners’ rights”.

I am more in favour of supporting the first opinion as I believe it would hard to start a fan site without having the name of the product you support in the domain name itself. The reality of these fan sites is that their operation costs can be extremely high as a huge amount of time and effort will be required to build the content and a great amount of money will have to be paid for hosting services and bandwidth. It is funny how companies attempt to sue their fans, who are in fact doing them a favour and helping them spread their message even further for free.

The power and effect of a trademark to block others from using the trademark in the context of fansites also goes beyond the scope of protection granted by most trademark laws as trademark is not a monopoly on the use a term, but the right to stop others from using it on identical goods and services and similar goods and services could be lead to the confusion of the source, that fact that another person is making commercial benefit by the mere use of the trademark on an unrelated service (the digital publication of information) does not by itself infringe another persons trademark. (Only a few famous trademarks have the right not to be diluted, but that protection is not for the majority of trademark owners.)

{The section below will be updated soon}

Famous Persons Domain Names

Generally speaking, personal name issues are not covered by the UDRP. The UDRP only covers bad faith cybersquatting in relation to trade marks. WIPO made a report which concluded that the UDRP should be expanded to cover personal name issues because the national laws of the subject matter differ greatly. However, in some cases, example: juliaroberts.com decision, the panel held that the personal name in question qualified as a common law trademark under US law and therefore was covered by the UDRP. A similar approach was used in later cases such as the morganfreeman.com decision. This link to common law trademarks blocked the use of the UDRP for other personal names such as that of Kathleen Kennedy as her poltical fame was insufficient to create a common law trademark which requires commercial use. Though the reasoning is clear, this creates a gap in protection and incosistency for the scope of the UDRP across different jurisidctions as common law trademarks are not present in civil law jurisidctions.

Geographical Names Domain Names

Just like names of famous persons, geographical names are generally not covered by the UDRP, yet in the decision related to the Barcelona.com the UDRP was successfully used to transfer the domain name to a spanish government agency because under Spanish law it was possible for the government agency to acquire a trademark for it, however, other hurders under the UDRP require proving that the respondent had no ligitimate right to use the domain name, which is hard to establish as any business relating to Barcelona might reasonably choose to have the name of the location in its domain name, but the panel decided unreasonably to balance the rights of parties and held in favour of the complainant. However, in the majority of other cases, such as that involving Brisbane.com, it was held that geographical names were not covered by the UDRP and therefore were not to be transfered to the complainant.

Application of Other Laws to the Procedure

The rules of the UDRP permit the panelist to apply the laws of any jurisdiction when making his decision as he sees fit. The application of this rule into the decisions was done in an incosistent manner, for example, in some cases the panel explicity stated that the no jurisidction rules are to be applied to when assessing the case as the domains in question relate to a global matter (example: Shirmax Retail), this statement was made even though both parties are from the same jurisdiction. In some other cases, the panel thought it was appropriate to use laws of a certain jurisidction when both parties are from the same jurisidction (e.g. Madonna Ciccone), and in some other cases, the panel decided to apply principles of the jurisidiction of the respondent (e.g. Harrods Limited). And it does not stop here, in some other cases the panel decided to use the laws of a third jurisidction just because the panel thought it would be helpful to the courts (e.g. Wal-Mart Stores Inc V Walmarket Canada). This unpredictability in the application of other laws greatly impacts all other aspects of the proceeding as the application could be to any part of the UDRP. 

So is there a solution? It is clear that inconsistency is a major problem with the UDRP, this is probably amplified by the fact there is no internal procedure for the challenging a decision by the panel nor there is any appeal system. It is suggested that the introduction of an appeal system into the UDRP will help in building precedent binding on all initial panels and therefor rectifying incosistency issues. 

However, some think that the introduction of an appeal system will diminish the benefits of the UDRP (costs and speed), yet this damange to these benefits could be minimised by restricting the appeal procedure to issues which could affect the development of UDRP and which would be conducted through strict time limits. The costs could be minimised by the introduction of a small fee to all domain name registrations or an appeal fee added to each UDRP case.

The inconsistencies could also be resolved by curing the source of the problem: the UDRP criteria for transferring the domain names. Many terms in the UDRP are not defined. Clarifying the aspects which caused different interpreations (such as “confusingly similar”) will help minimize the opportunities for divergence.

ICANN may also develop a guideline to be used by panelists when interpreting the UDRP. WIPO publishes on its website a number of selected questions for which it provided the answers for on the basis of previous decisions, and though not binding on the panels, the publications by WIPO are regularly cited by the panels and have in fact helped reduce the inconsistency in some of the issues (example, reseller right to use the TM in the domain name most recent case). However, for several questions, WIPO acknowledges the fact that there is more than one opinion and simply provides both view points leaving it up to the panelists to pick the one he likes. The guidelines by ICANN should have definite answers for these issues and should define terms and concepts which proved to be problematice in the UDRP and specify which test are to be used for different elements.

It is widely believed that the UDRP is one of the most successful internet dispute resolution methods ever created and that the problems with it are minor in comparison to the benefit of it. That said, the UDRP is merely an administrative procedure that is not enforceable by any court, so it is not expected to have accurate standards of a judicial system, especially as any part can initiate a court action at any time.

The statement in the last paragraph might be true in theory, but in practice the majority of respondants do not usually have the resouces to litigate after they lose their domain name especially if the registrar resides in another country, that makes the majority of UDRP decisions final.

I think that the decisions of the UDRP are in fact inconsistent to a level that makes it impossible to predict what the out come will be in certain cases. I was just looking at the case of BankSohar.com and the panel held that the registration date was a factor to be taken into consideration in deciding the first element while it was clear in the WIPO publication of selected questions and many previous cases that the date at which the trade mark was registered is irrelevant to the first element and is to be considered when assessing bad faith. That point by itself meant that BankSohar lost its case.

But the fact that the UDRP survived with no changes for the past 10 years, it is very unlikely for it to be updated now, especially as ICANN and WIPO do not acknowledge the existence of the problem or at least make it sound nominal.