INTELLECTUAL PROPERTY RIGHTS IN CYBERSPACE [609410]

Chapter 5

INTELLECTUAL PROPERTY RIGHTS IN CYBERSPACE

"If nature has made any one thing less susc eptible than all others of exclusive
property, it is the action of the thi nking power called an idea, which an
individual may exclusively possess as long as he keeps it to himself; but the
moment it is divulged, it forces itself into the possession of everyone, and the
receiver cannot dispossess himself of it. Its peculiar character, too, is that no
one possesses the less, because every other possesses the whole of it. He, who receives an idea from me, receives instru ction himself without lessening mine;
as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral
and mutual instruction of man, and im provement of his condition, seems to
have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density at any
point, and like the air in which we brea the, move, and have our physical being,
incapable of confinement or exclusive appr opriation. Inventions then cannot, in
nature, be a subject of property."
Thomas Jefferson
(Third President of US, 1801-1809)

5.1 Introduction

Thomas Jefferson view of invention or cr eation cannot be a subject matter of
property was rarely acknowledged in the civilized world and US Constitution itself made a provision to empower the invent ors and creators by conferring exclusive
rights on them
664.Intellectual Property (IP) can be loosely defined as creations of
human mind665. The impetus for the development of intellectual property law, at its
inception, was to ensure that sufficient incen tives exist to lead to innovation and the
creation of new and original works a nd products. The physical world has been
relatively successful at erecting barriers to prevent acts that would limit this

664 Art.1 Sec.8 of US Constitution states that “C ongress has power ………..To promote the Progress
of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries;”
665 See definition given by WTO, available at http://www.wto.org , visited 2 Feb 2004
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innovation, in the form of copyright, tradem ark and patent regulations. This enabled
Intellectual Property Rights (IPR) owners to use or disclose their creations without
fear of loss of control over their use, thus helping their dissemination. It is generally
assumed that IPR help encourage creativ e and inventive activity and make for
orderly marketing of proprietary goods and services666. But with the advent of
internet, copying has become so simple and easy that rampant violation of
intellectual property is taking place affecting the rights of IPR owners.
When intellectual property laws were fi rst drafted, computer technology did not
exist. At that time, it was not foreseen that it would be necessary to protect
information stored by digital means, nor was it foreseen that information would
become such a sought after commodity667. The Internet, Software, Business
methods for e-commerce applications & electronic databases are relatively new
territories where innovators have created an environment in which information
exists in plentiful quantities a nd available to many people.
Human rights and intellectual property, two bodies of law that were once strangers,
are now becoming increasingly intimate bedfellows. For decades the two subjects
developed in virtual isolation from each other. But in the last few years, an
explosion of international standard setting activities that beginning to map previously uncharted intersections betw een intellectual property law on the one
hand and human rights law on the other
668.
Human rights concerns have been asse rted in a number of contexts as
counterweights to the expansion of intell ectual property rights. Human rights issues
are relevant in a range of i ssues that intersect with inte llectual proper ty protection,
including: freedom of expression; public health; education and literacy; privacy;

666 Watal Jayashree, Intellectual Property Right s in the WTO and Developing Countries, Oxford
University Press, New Delhi, 2001 at p 1
667 The Hindu, Technical know-how essentia l to check cyber crime, available at
http://www.thehindu.com/2005/02/06/stories/2005020603910300.htm , visited on 17 May 2005
668 Professor Laurence Helfer, Human Rights and Intellectual Property: Conflict or Coexistence? s
Research Paper No. 2003-27 and Program in Law an d Public Affairs Princeton University, available
at http://ssrn.com/abstract=459120 , visited on 25 Sep 2005

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agriculture; technology transfer ; rights of indigenous peoples. At the same time,
creators of intellectual property are asse rting human rights bases for the protection
and expansion of intellectual property rights669.
International Covenant on Economic, Social and Cultural Ri ghts (ICESCR) and
UDHR670 guarantees everyone the right to bene fit from the protection of the moral
and material interests resulting from any scie ntific, literary or artistic production of
which he is the author671. With the advent of Information Communication
Technologies (ICTs), the relationship between human rights and intellectual
property assumes greater significance as the traditional balance between intellectual
property holders and users is slightly imbalanced in favour of users.
What distinguishes digital media672 from conventional media are six characteristics
that will make it difficult for existing categories of intellectual property law to
adjust to the protection of works in digital form. They are673:
1) the ease with which works in digi tal form can be replicated,
2) the ease with which they can be transmitted,
3) the ease with which they can be modified and manipulated,
4) the equivalence of works in digital form,
5) the compactness of works in digital form, and
6) the capacity they have for creating ne w methods of searching digital space
and linking works together.

669 ibid
670 Art.27(2), Universal D eclaration of Human Rights
671 Art.15(1)(c), International Covenant on Economic, Social and Cultural Rights
672 "digital media," means intellectual products made available in digital/electronic form, whether
operational in computers or other machines capable of "reading" works in digital form.

673 Samuelson ,Pamela, “Digital Media and Changing Face of Intellectual Property Law”, available at
http://www.law.berkeley.edu/f aculty/profiles/facultyPubsPDF.php?facID=346&pubID=152 , visited
on 2 Oct, 2005
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5.2 Philosophy of Intellectual Property

The theory of intellectual property ha s not, until recently, attracted much
philosophical interest or been the subject of deep controversy. Utilitarian theorists
generally endorsed the creation of intellec tual property rights as an appropriate
means to foster innovation, subject to th e caveat that such rights are limited in
duration so as to balance the social we lfare loss of monopoly exploitation. Non-
utilitarian theorists emphasi zed creators’ moral rights to control their work. With the
increasing importance of intellectual prope rty in society and the development of
particular new technologies, most notably digital technology and the decoding of
genetic structure, the theory of intellectual property has attracted huge interest. Economists and policy analysts have greatly enriched our understanding of the complex relationship between intellectua l property protection and innovation and
diffusion of technological advances. Non-utilitarian theories of inte llectual property
have proliferated in recent years, as philosophers and legal scholars have applied
traditional and novel philosophical persp ectives to the realm of intellectual
property
674.

5.2.1 Locke’s Theorem: Labour + Nature = Property675

For Locke, property was a foundation for an elaborate visi on that opposed an
absolute and irresponsible monarchy. Locke's theory676 of property is itself subject
to slightly different interpretations. One interpretation is that society rewards labor
with property purely on the instrumental grounds that we must provide rewards to

674 See generally for theories of Intellectual property , Chisum S Donald et., al , Cases and Materials-
Principles of Patent Law, Foundation Press, New York, 1998
675 Expression suggested by Peter Drahos in his Book'a Philosophy Of Intellectual Property',
Applied Legal Philosophy Series, Dartmouth, 1996,

676 Although Locke was concerned with the notion of property and paid scant attention to intellectual
property, his general theory has been of such ov erwhelming importance that it is an appropriate
starting point for any of us for the analysis of modern theories of property and intellectual property.
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get labor. In contrast, a normative interpretatio n of this labor theory says that labor
should be rewarded677.
Locke describes a state of nature in which goods are held in common through a
grant from God678. God grants this bount y to humanity for its enjoyment but these
goods cannot be enjoyed in thei r natural state. The individual must convert these
goods into private property by exerting labor upon them. This la bor adds value to
the goods, if in no other way than by allowing them to be enjoyed by a human
being679.
Locke proposes that in this primitive state there are enough unclaimed goods so that
everyone can appropriate the objects of his labors without infringing upon goods
that have been appropriated by someone el se. The nature also imposes a limitation
on human capacities on how much each in dividual may appropriate through
labor680.
A society that believes ideas come to people as manna (something of value a person receives unexpectedly) from heaven mu st look somewhere other than Locke to
justify the establishment of intellectual pr operty. The labor theory of property does
not work if one subscribes to a pure "eurek a" theory of ideas. Therefore, the initial
question might be framed in two different ways. First, one would want to determine
if society believes that the production of ideas requires labor. Second, one might want to know whether or not, regardless of society's beliefs, the production of ideas
actually does require labor. This second question is th e metaphysical one; in its
shadow, society's belief may appear superfic ial. It is not. We are concerned with a

677 Hughes ,Justin, The Philosophy of Intellectual Property, 77 Geo. L.J. 287 (1988), available at
http://www.law.harvard .edu/faculty/tfisher/music/Hughes1988.html , visited 3 Feb 2005

678 Loke, John , Two Treatise of Government (edt by Macpherson), Hackett Publishing,US, 1980
679 ibid
680 Hughes ,Justin, The Philosophy of Intellectual Property, 77 Geo. L.J. 287 (1988), available at
http://www.law.harvard .edu/faculty/tfisher/music/Hughes1988.html , visited 3 Feb 2005
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justification of intellectual property, and so cial attitudes -"understandings" as Justice
Stewart said may be th e only place to start681.
Some writers begin with the assumption that ideas always or usually are the product
of labor. For example, Professor Douglas Baird assumes that although one cannot
physically possess or occupy ideas, property in ideas is justified because people
"have the right to enjoy the fruits of their labor, even when the labors are
intellectual." He believes the great weakness in this justification is that others also
need free access to our ideas . In Lockean terms, this is an "enough and as good"
problem. Baird, however, never considers th e prospect that idea making may not
involve labor682.
One commentator has observed that this co ncept of labor is mo re likely the product
of experience than logical rigor:
Comparing labor and proper ty is complicated by an equivocation about the
idea of labor, which is dominated by the metaphor of sweat on the brow.
Hence it is that the least imaginative work counts most securely as labor.
The squires and merchants of the seve nteenth century were far from idle
men, but administration and entrepreneurship do not so obviously qualify for
the title of labor as the felling of trees and the planting of corn683.
We can justify propertizing ideas under Locke's approach with three propositions: first, that the production of ideas require s a person's labor; second, that these ideas
are appropriated from a "common" which is not significantly devalued by the idea's
removal; and third, that ideas can be made propert y without breaching the non-
waste condition
684. Many people implicitly accept these propositions. Indeed, the

681 ibid
682 ibid
683 ibid
684 According to Locke this condition prohibits the accumulation of so much property that some is
destroyed without being used. Limited by this cond ition, Locke suggests that even after the primitive
state there sometimes can be enough and as good left in the common to give those without property
the opportunity to gain it. Spain and America, he says, illustrate the continuing applicability of this
justification of property.
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Lockean explanation of intellectual prope rty has immediate, intuitive appeal: it
seems as though people do work to produce idea s and that the value of these ideas –
especially since there is no physical component -depends solely upon the
individual's mental "work."685
5.2.2 Utilitarian/Economic Theories of Intellectual Property

Not surprisingly, the principal philosophica l theory applied to the protection of
utilitarian works – that is, technological inventions – has been utilitarianism. The
social value of utilitarian wo rks lies principally if not excl usively in their ability to
perform tasks or satisfy desires more effec tively or at lower costs. It is logical,
therefore, that society woul d seek to protect such works within a governance regime
that itself is based upon utilitarian precepts. Furthermore inventions, new processes,
machines, manufactures, or compositions of matter – unlike artistic or literary expression do not generally implicate personal interests of the creator
686.
The United States Constitution expressly c onditions the grant of power to Congress
to create patent and copyright laws upon a utilitarian foundation under Art.1 Sec(8):
‘to Promote the Progress of Sc ience and useful Arts’.
Economic theory, a particular instantiatio n of utilitarianism, has provided the
principal framework for anal yzing intellectual pr operty. In additi on, the utilitarian
perspective has relevance to other forms of intellectual property. Trade secret law
often protects utilitarian works. Tradem ark law is principa lly concerned with
ensuring that consumers are not misled in the marketplace and hence is particularly
amenable to economic analysis. Even copyright law, which implicates a broader array of personal interests of the creator than patent law, may benefit from the

685 Hughes,Justin, The Philosophy of Intellectual Property, 77 Geo. L.J. 287 (1988), available at
http://www.law.harvard .edu/faculty/tfisher/music/Hughes1988.html , visited 3 Feb 2005

686 Peter S. Menell, Professor of Law and Co-Director,Berkeley Center for Law and Technology
University of California at Berkeley, Intellectual Property: General Theories at p 23, available at
http://www.dklevine.com/archive/ittheory.pdf , visited 23 Dec 2005

216

application of the utilitarian framework to the extent that society seeks the
production and diffusion of literary and artistic works.
The utilitarian framework has been particularly central to the development of copyright law in the United States. The Congressional Committee reporting on the 1909 Copyright Act stated: ‘the enactment of copyright legislation by Congress
under the terms of the Constitution is not based upon any natural right that the author has in his writings, …
but upon the ground that the welfare of the pu blic will be served … by securing to
authors for limited periods the ex clusive rights to their writings
687.
5.2.3 Personhood Theory
The personhood justification for property derives from Kant’s Philosophy of Law
and Hegel’s Philosophy of Right and has been elaborated in modern legal discourse
in the work of Radin
688.The premise underlying the pe rsonhood perspec tive is that
to achieve proper development an individua l needs some control over resources in
the external environment. The necessary a ssurances of control take the form of
property rights689. The personhood justification for property emphasizes the extent
to which property is personal as opposed to fungible: the justif ication is strongest
where an object or idea is closely intertwi ned with an individual ’s personal identity
and weakest where the ‘thing’ is valued by the individual at its market worth690.

Netanel691 traces the rich heritage of Continen tal copyright law and its moral rights
tradition to the personality theory developed by Kant and Hegel, pointing out nuances distinguishing the va rious strains within the th eory. For example, Kant
viewed literary work as part of the author’s person and hence is not alienable.

687 ibid
688 Radin, Margaret J. ‘Market Inalienability’, 100 Harvard Law Review, 1987, at p1849-1937.

689 ibid
690 ibid
691 Netanel, Neil W. ‘Copyright and a Democratic Civil Society’, 106 Yale Law Journal, 1996 ,283-
287.

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Hegel, by contrast, distinguished between ment al ability as an inalienable part of the
self, but not the act of expression. Netanel presents a multifaceted argument for
alienability restrictions upon copyright interests692.
Personhood theory has been part icularly central to the emerging debate, brought to
the fore by advances in biotechnology, over property rights in body parts, cell lines
and other body products
693.
5.2.4 Libertarian Theories
Palmer
694 constructs a libertarian argument against intellectual property rights by
critiquing the dominant philosophical perspectives used to justify intellectual
property protection. Coming from a different intellectual tradition, but reaching a
similar conclusion, Barlow695 argues that intellectual property rights threaten to
undermine free exchange of ideas over the In ternet and enable co rporate interests to
exercise substantial control over cultu ral and political expression. Netanel696
suggests that these concerns can be addre ssed better through reworking rather than
discarding copyright law. More generally, Waldron697 points out that autonomy as
ideal cuts both for and against intellectual property rights. Authors may claim that
the integrity of their self-expression require s that they control the use and adaptation
of their works. Social commentators may argue, however, that they are denied the

692 ibid
693 Munzer, Stephen R., ‘An Uneasy Case Against Property Rights in Body Parts’, 11 Social
Philosophy and Policy, 1994, at p259-286.

694 Palmer, Tom G. ‘Are Patents and Copyrights Mo rally Justified? The Philosophy of Property
Rights and Ideal Objects’, 13 Harvard Journal of Law and Public Policy, 1990, at p 817-865.

695 Barlow, John Perry (1994), ‘The Framework for Economy of Ideas: Rethinking Patents and
Copyrights in the Digital Age’, 1994 WIRED , 83-97

696 Netanel, Neil W. , ‘Copyright and a Democratic Civil Society’, 106 Yale Law Journal, 1996
at p 365-385.
697 Waldron, Jeremy , ‘From Authors to Copiers: Individual Rights and Social Values in
Intellectual Property’, 68 Chicago-Kent Law Review, 1993, 841-887.

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ability to express themselves if they cannot parody the works of others or for fair
use purposes.

5.2.5 Democratic Theories

Copyright law promotes political expre ssion by encouraging expression, but it also
potentially inhibits dissemination of works by prohibiting, subject to some
limitations, the copying of expression. In its early history, copyright was used by the
English Crown to regulate the press (and censor seditious expression) through
bestowing selective roya l grants of privilege698 . Although copyright no longer
functions directly to censor political expr ession, it nonetheless has the potential to
inhibit the free flow of information. Go ldstein discusses how the principles of
copyright law – including the idea-expression dichotomy, the fair use doctrine and a misuse doctrine – harmonize th is body of law with cons titutional protections of
freedom of speech and the press
699. Coombe700 offers a post-modernist critique of
intellectual property law, arguing that the expanding domain of intellectual property
protection limits the ability of individuals to express themselves. Netanel (1996) suggests that copyright plays an increasingl y important role in modern democratic
societies because of the ease with which expression can be disseminated through the use of digital technology. He ar gues that exisiting theories of intellectual property
rights may undermine larger democratic prin ciples and articulates a new model for
the interpretation of copyright in the digital age which seeks to promote a
democratic civil society
701.

698 Goldstein, Paul , ‘Copyright and the First Amendment’, 70 Columbia Law Review , 1970
983-1057

699 ibid
700 Coombe, Rosemary J. ‘Objects of Property and Subjects of Politics: Intellectual Property
Laws and Democratic Dialogue’, 69 Texas Law Review, 1991, 1853-1880.

701 Netanel, Neil W. ‘Copyright and a Democratic Civil Society’, 106 Yale Law Journal , 1996
283-287.

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5.2.6 Radical/Socialist Theories

A radical critique of some basic assumpti ons underlying intellectual property – most
notably, the romantic concepts of ‘the aut hor’ and ‘the inventor’ – has developed in
recent years, building upon the work of d econstructists in the field of literary
criticism. These scholars suggest that the c oncept of authorship and inventorship is
so malleable, contingent and ‘socially cons tructed’ that we should be wary about
identifying a creative work too closely with a particular person or entity702.
According to this view, al l creations are the product of communal forces to some
extent. Dividing the stream of intellectual discourse into discre te units, each owned
by and closely associated with a particular author or inventor, is therefore an
incoherent exercise subject more to the political force of asserted authors’ or
inventors’ groups than to recognition of inherent claims of natural right,
personhood, or other justifications.

5.2.7 Relevance of Theories – Future of IPR
Intellectual property is rare ly justified on one theory, although patents’ grounding in
utilitarianism comes to the closest. C onsensus about philosophical perspective,
however, has not produced consensus abou t what that perspective prescribes.
Economic theorists have produced multiple plausible models for which empirical
distillation will remain elusive and unlikely to be of much general predictive value
due to the heterogeneity of inventive activity, the diversity of research environments, the complexity of technol ogical diffusion, the richness and changing
nature of real world institutions and the obvious measurement problems in conducting empirical research of this type
703.

702 Aoki, Keith (1993-1994), ‘Authors, Inventors and Trademark Owners: Private Intellectual
Property
and the Public Domain (parts 1 and 2)’, 18 Columbia – VLA Journal of Law and the Arts ,
197-267.

703 Peter S. Menell, Professor of Law and Co-Director,Berkeley Center for Law and Technology
220

As technology advances, the system continues to evolve, sometimes by new legislation, more often by the stretching and bending of existing rules. New technology commercialized in the past two decades, most notably the advent and
diffusion of digital technol ogy and new advances in the life sciences, portend
deepening interest in the intellectual property system and scrutiny, reconsideration and re-conceptualization of the theories ju stifying intellectual property. Even within
the existing theories of intellectual pr operty, these technologies pose significant
analytical challenges as a result of the ways in which they change key factors on which existing institutional rules and structur es are based – for example, the nature
of personal and liberty interests of cr eators and users, network dimensions,
transaction costs etc. As intellectu al property and technology have gained
importance over the past two decades, the philosophical debates have melded with
broader social and political discourse b earing upon the very foundation of modern
society. One can expect that intellectual property will continue to press these frontiers as the information age progresses.
5.3 Impact of the Internet on Intellectual Property

The internet has driven many changes in the intellectual property community. As a
data and resource access tool, it has expa nded the reach of every user localized,
regional resources, to true global information access.
Today the largest segment of business-to-consumer e-commerce involves intangible
products that can be deliv ered directly over the ne twork to the consumer’s
computer
704. While these intangible products, by their very nature, are difficult to
measure, an increasing amount of the conten t that is being offered is subject to

University of California at Berkeley, Intellectual Pr operty: General Theories at p 163, available at
http://www.dklevine.com/archive/ittheory.pdf , visited 23 Dec 2005

704 OECD (1999), The Economic an d Social impacts of e-commer ce: Preliminary Findings and
Research Agenda, available at http://www.oecd.org/subject/e_commerce/summary.htm
221

intellectual property rights705. This commerce in intangible products raises a number
of issues for intellectual property in additi on to those that would arise in respect of
physical goods. There is a growing need to adopt technologi cal measures in
protecting the rights of intellectual property owners. In addition to this, questions of
the scope of rights and how existing law applies , jurisdiction, applicable law,
validity of contract and enforcement have become more complex and needs to be
addressed in an appropriate way.
Some of the positive impacts of internet on intellectual property community are
(a) It has increased affordable access to intellectual property resources
globally706;
(b) It has enhanced the ability of patent prior art search707;
(c) It has increased business , political and society aw areness of the growing
importance of all types of intellectual property708;
(d) It has shortened the data access time, that is, days or weeks have been
shortened to minutes or hours709;
(e) There has been a geometric increase in the amount of accessible data and
collections relative to intellectual property710;
(f) It has provided access to an expanding number of web-based software and intellectual property management tools
711;
(g) It has provided a path for developi ng countries to catch up with world
developments with regard to intellect ual property data access , management
etc712;

705 William Daley, WIPO Conference on Electronic Commerce and Intellectual Property , Sep 1999,
available at http://ecommerce.wipo.int/con ference/papers/daley.html , visited 10 Dec 2005
706 Ryder, Rodney, Intellectual Property and the In ternet, LexisNexis, New Delhi, 2002, at p 13

707 ibid
708 ibid
709 ibid
710 ibid
711 ibid
712 ibid
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Notwithstanding the positive impact the inte rnet has had on the intellectual property
community, it has simultaneously created an alarming list of shortcomings.
Although we can accept the benefits with complacency, we can not allow
detrimental impacts to continue unchecked. Some of the negative impacts of the internet on intellectual property community are
(a) It has exacerbated the ‘poor patent quality’ and provided means to discover
invalidating art. This negatively imp acts share holder value, intellectual
property value and the overall economy
713;
(b) Further, it has increased demands on patent office examiners to expand prior
art search. The examiners must sear ch not only the field in which the
invention classified, but also analogous arts. This results in increasing
pendency, decreases time available to prosecute any particular patent and
decreases overall intellectual property validity714.
(c) It has spawned new intellectual property problems, infringement possibilities and enforcement challenges, such as cybersquatting, trademark
infringement etc
715;
(d) It has failed to bridge the chasm between industry and intellectual property
creators and has not significantly increased the adaptation of intellectual
property by companies716.

5.4 Copyright Protection in Cyberspace
The observation of Peterson J., in Univer sity of London Press V University of
Tutorial Press
717 that ‘ What is worth copying is prima facie worth protecting ' is
probably the best saying in relation to copyr ight protection in all ages industrial or
information.

713 Ryder, Rodney, “Intellectual Property and the Internet”, LexisNexis, New Delhi, (2002)
at p 5

714 ibid
715 ibid
716 ibid
717 Cited from Cornish & Llewelyn, Intellectual Prop erty: Patents, Copyright Trademarks and Allied
Rights, 5th edition, Sweet & Maxwell, London, 2003
223

The purpose of copyright law is to improve society through advancement of
knowledge. The philosophy underlying Copyright law is to encourage the creators and innovators by granting monopoly right s to them to exploit their works
commercially for a definite period and in retu rn it requires the work to be disclosed
to the public. . The copyright law aims at balancing the rights of copyright owners with the rights of the public for access to and use of creative works .It provides incentive to authors or creators and limits the author’s rights to control and exploit works. If society wants to induce creativity an d entrepreneurship, it must provide
financial protection for intellectual propert y so that inventions and the fruits of
artistic creativity are forthcoming
718.
Sec.14 of the Copyright Act, 1957 empowers au thors of original literary, dramatic,
musical, artistic works, computer programmer s etc with various rights in relation to
their works. They have exclusive right to reproduce their work, make copies,
perform their work in public or display, ma ke translation of th eir work, adaptation
of work etc.
History demonstrates that the Copyright law is the most affected one with the
introduction of new technologies. Advan ces in printing and telecommunication
technologies have promoted the process of reproduction, distri bution and use of
copyrighted material for the betterment of the society but at the same time they
have posed several problems for the right holders. While the shape of copyright law
has always been drawn by the developm ents in the technological world , the
emergence of digital technologies towa rds the concluding decades of the 20th
century as the defining paradigms of new age communications have raised a whole
new set of challenges to copyright regi mes. All works can now be digitalized
whether they comprise texts, images , sound, animation , photograph and once
digitalized the various elements are all equal and can be merged, transformed,
manipulated or mixed to create an endless variety of new works. Earlier rights of
reproduction and distribution affected only tangible physical copies of a work.

718 Bowie E Norman, Digital Rights and Wrongs: Intellectual Property in Information Age, Business
and Society Review 110:1 77–96

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The ease with which works in digital form can be replicated a nd transmitted poses a
difficult problem for the law to handle. In the existing copyright regime, there is a
general perception that making copies for pe rsonal or private use is considered fair
use719 and lawful. While the technology of reprography has improved dramatically,
in digital domain, “perfect” multiple copies can be generated by the same
technology which is employed for the use of digital product. Hence it has become
more difficult for the copyright owners to ex ercise control over replication of their
works and to obtain compensation for unauthorized replication. Although the
copyright system in the print world has generally focused on sales of copies of copyrighted works, in the digital world the trend is to reap the financial rewards for creating and disseminating intellectual pr oducts by charging for access to and use of
digital works and limiting rights to use and copy these products. The older technologies of photocopying and taping allowed only mechanical copying by
individual consumers, but in limited quantit ies, requiring considerable time, and of a
lower quality than the original. Moreover, the copies were physic ally located in the
same place as the person making the copy. On the internet, in contrast, one can make an unlimited number of copies, vi rtually instantaneously, without any
degradation in quality. The result could be the disruption of traditional markets for
the sale of copies of computer soft ware, music, art, books, movies etc.
5. 5 Computer Mediated phenomenon – Software Patents
Modern society relies heavily on com puter technology. W ithout software, a
computer cannot operate. Software and hardware work in tandem in today’s
information society. So it is no wonder th at intellectual property protection of
software is crucial not only for the software industry, but for other businesses as
well
720. While software has been specifically identified by the Parliament and the
courts as deserving of copyright prot ection, the scope of copyright protection
afforded to software has been in flux in recent years. The Copyright Act, 1957

719 A concept in copyright law that allows limited use of copyright material without requiring
permission from the rights holders, eg, for schol arship or review, education, research etc
720 WIPO, Patenting Software, SMEs, available at
http://www.wipo.int/sme/en/docum ents/software_patents.htm , visited 13 Mar 2003
225

specifically state that copyri ght protection does not "exte nd to any idea, procedure,
process, system, method of operation, concept, principle, or discovery” . Copyright
protection extends only to specific expre ssion, and not to the ideas behind this
expression – commonly referred to as the “idea-expression” dichotomy.

5.5.1 Understanding Computer Software
Sec.2(i) of the Information Technology Act, 2000 defines ‘Computer’ as any
electronic , magnetic, optical or other high speed data processing device or system
which performs logical , arithmetic a nd memory functions by manipulation of
electronic , magnetic or optical impulses and includes all input, output, processing ,
storage, computer software or communi cation facilities whic h are connected or
related to the computer in a com puter system or computer network.
According to Sec.2(ffb) of Copyright Act ,1957 ‘Computer’ includ es any electronic
or similar device having inform ation processing capabilities.
A computer basically consists of elect ronic components which are supported by
electrical devices and mechanical system s. All these electronic, electrical and
mechanical components used in a com puter are called Co mputer Hardware.
Computer Hardware components are actua ted and controlled with the help of
computer programs called Computer Software
721.
Computer software is classi fied into two categories:
1) Application Software – programs used to solve specific problems (tasks) like
railway reservation , banking etc722;
2) System Software – programs used to handle the computer hardware and to
execute the application programs. Examples include operating systems
(Windows, Linux etc) , compilers, assemblers etc723;

721 Computer Concepts & C Programming, Vikas Publications, Chennai, 2002, at p20
722 ibid at p23
723 ibid at p23
226

5.5.2 Computer Languages

To communicate with the computer following three languages are used;
1) Machine Language : writing instructions to computer using 0’s and 1’s (binary numbers) is referred as machine language programming
724.
2) Assembly Language : writing instruc tions using mnemonics like ADD, SUB
etc is referred as Assembly Language programming725.
3) High Level Language : here, instructi ons are written using English like
language with symbols or digits. Co mmonly used high level languages are
FORTRAN, BASIC, COBOL, PASCAL, C, C++ etc726.
The complete instruction se t written in one of these languages is called Computer
Program or Source Code. In order to execute instructions, ( as com puter can understand 0’ s and 1’s only) , the
source code is translated in to binary form by a compiler or interpreter. A compiler is
also used to translate source code writ ten in High Level Language into an object
program.

5.5.3 Developing Software

For developing software the given task is divided into sub-tasks and algorithms and
flow charts are used draw up the blue prin t ( to design the software) for developing
the actual source code. Algorithm is a step-by-step procedure for so lving a problem or accomplishing some
end especially by a computer
727.
Flowchart is a graphic representation of a pr ogram in which symbols represent
logical steps and flow lines define the sequence of those steps. These are used to
design new programs, and to document existing programs728.

724 Subramanian N, Introduction to computer Funda mentals, Tata McGraw-Hill, New Delhi, 1993
725 ibid
726 ibid
727 Rajaraman V, Fundamentals of Computer, Prentice Hall of India, New Delhi, 1997
728 ibid
227

5.5.4 Legal Definition of Computer Program (Software)

WIPO Model provisions on the protecti on of computer software ,Geneva ,1978
defines ‘Computer Program’ as follows ;
“A set of instructions capable, when incor porated in a machine readable medium of
causing a machine having information proces sing capabilities to indicate, perform
or achieve a particular function, task or result.”
The US Copyright Law
at Section 101 defines a comput er program as ‘ a set of
statements or instructions to be used direct ly or indirectly in a computer in order to
bring about a certain result.’
Sec.2(ffc) of Indian Copyright Act, 1957 defines ‘Computer Program’ as a set of
instructions expressed in wo rds, codes, schemes or in any other form, including a
machine readable medium , capable of cau sing a computer to perform a particular
task or achieve a particular result. Th is definition seems to be based on WIPO
definition. Computer Program and Computer databases ar e considered as literary
works under Sec.2(o) of Copyright Act, 1957.
Explanation (b) to Section 80 HHE of the Income Tax Act, 1961 defines “computer
software” to mean any computer programm e recorded on any disc, tape, perforated
media or other information storage device and includes any such programme or any
customised electronic data which is transmitted from India to a place outside India
by any means. From the above it can be concluded that a computer program should be considered
as a set of statements or instructions which is capable of causing a machine having information processing capabilities (a com puter) to perform a set of functions to
achieve a result.

228

5.5.5 Copyright Protection for Computer Programs

Computer programs or software plays a vital role in the arch itecture of Internet. It is
the software that determines variou s functional aspects of Internet.
Early in the development of the art of software writing, the originators thereof
feared that traditi onal forms of protection such as patents and copyrights would not
give them sufficient protection and reli ed upon trade secret law. It soon became
clear, however, that this wa s not the best solution to the problem since to establish
trade secret protection, one must take some steps to impose a confidential
relationship on those who have access to the secret. In a free fl owing industry such
as the computer software business, this is difficult729.
Attention has, therefore, returned to the traditional protection of patents and
copyrights. However, patent protection cannot be obtained for inventions in this
field that do not meet the current test for patentable subject matter. Furthermore, to
be patentable the program must be "not obvious". This can be a difficult
requirement to fulfill. Furthermore, pate nt protection requires a fairly prolonged
examination by the Patent Office before any rights arise and is thus not the ideal way of dealing with copyists who may be extremely quick off the mark
730.
When a computer program is written out on a piece of paper, it is quite clear that
copyright exists in this work in the same way as it w ould in respect of any other
literary work. The first problem with whic h the courts had to grapple was whether
copyright law could be extended to cover computer programs which exist merely in
magnetic or electric form or as specif ic circuits etched on to a silicon chip731.
In Sega Enterprises V Richards732, it was held that under the provisions relating to
literary works in the Copyright Act, copy right subsisted in the assembly program
code of a video game and that the mach ine code derived from it was either a
reproduction or adaptation of the copyright work.

729 Ladas & Parry Guide to Statutory Protection for Computer Software in the United States,
available at
http://www.ladas.com/Patents/Computer/Copyright.USA.html , visited on 25 Dec 2005
730 ibid
731 ibid
732 English case reported in Copyright & Industrial Designs by P.Naryanan, 3rd edition, Eastern Law
House, 2002
229

In Apple computer Inc. V Computer Edge Pvt Ltd733, it was held that a computer
program consisting of source code is origin al literary work. A source code is a
program written in any of the prog ramming languages employed by computer
programmers. An object code is the versi on of a program in which the source code
language converted or translated into th e machine language of the computer with
which it is used. It was further held th at an object code is an adaptation or
mechanical translation of the source code within the meaning of the copyright law
and copying of the object code was an infr ingement of the copyright in the source
code.
In United States also it has been held that an object code is entitled to copyright
protection in Apple Com puter V Fraklin Computer734.
In India, the words ‘schemes or in any ot her forms’ used in Sec.2(ffc) would seem
to indicate that the source code and object code of a computer program are entitled
to copyright protection. Copyright Act, 1957 of India provided copy right protection for original works of
authorship in literary works . It was th e amendment made in 1994 that inserted
Sec.2(o), making Computer Programs expressly recognized for copyright
protection.

5.5.6 Rise of Software Patents

US was the first country to establish the practice of granting patents to computer
programs. The first decision by the Supr eme Court on the ques tion of software
patenting was called Gottschalk V Benson
735, decided in 1972. Benson developed a
method of converting binary coded d ecimals with which a number can be
represented by one or more groups of four zeros and one s, to pure binary notation,
which allows any number to be written by a single collection of zeros and ones. The

733 Austrlian case reported in Copyright & Industrial Designs by P.Naryanan, 3rd edition, Eastern
Law House, 2002.
734 714 F.2d 1240 (3d Cir. 1983), available at http://www.internetlegal.com/impactof.htm, visited 30
Dec 2005
735 409 US 63 (1972),
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=409&invol=63 , visited 10 Jan 2006
230

court noted that any existing computer coul d carry out Benson’s procedures and that
they could be performed without a com puter. Looking back on cases it had decided
decades earlier, the Court concluded that Benson’s program involved only
mathematical calculations and mental steps, and that it did not constitute a patentable process
736.
Six years later, the Court looked at anot her software program in Parker V Flook737.
Flook had devised a mathemati cal algorithm that allowed equipment monitoring of
an industrial process to determine whethe r the temperature and pressure indicated
some problem had arisen, that is, whet her an “alarm limit” had been reached.
Because acceptable temperature and pressure varied depending on the stage of the
process, Flook’s algorithm varied the al arm limit. The Court refused to grant the
patent, determining that Fl ook’s program was an abstract or phenomenon of nature,
outside the patent domain. Not until its third software patent case, Diamond V Diehr
738 in 1981, would the
Supreme Court move toward the patenti ng of computer programs. The patent
application in Diehr involved a process fo r curing rubber within a molding process.
Diehr created a system that would constant ly measure the temperature inside. This
data was sent to a computer that us ed a well-known mathematical equation to
recalculate the time necessary for the rubber to cure base d on the temperature
readings. When calculated optimum curing time equaled the actual time elapsed, the
computer would open the press. This time th e Court did not dismiss the invention as
a mathematical algorithm. Instead, the Cour t concluded that Diehr had developed a
patentable process739. The fact that the process utilized a mathematical algorithm
was only part of the relevant inquiry740. The similarity betwee n the inventions in
Flook and Diehr, and the different results, illustrate the complexity involved in
interpreting software patent questions.

736 ibid
737 434 US 584 (1978), available at http://caselaw.lp.findlaw.com/cgi-
bin/getcase.pl?court=US&vol=437&invol=584 , visited on 10 Jan 2005
738 Diamond v. Diehr, 450 U.S. 175 (1981), available at
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=450&invol=175 , visited on 10 Jan
2005
739 ibid
740 ibid
231

5.5.7 Computer Program : Copyright V Patents Debate

The dichotomy and the debate in relation to the protection of co mputer program by
patent or copyright regime seems to neve r ending. In US, the decision of the US
court in Diamond V Diehr741 set the stage for granting patents to computer
programs. European Council has relaxed its initial position by granting patents to
computer software by issuing directiv e on computer-implemented inventions.

5.5.8 Arguments for inclusion of Computer Program under Patents

a) One of the main arguments is that a good idea behind software is not
protected as it is in a copyright regi me and hence it is easy to create new
software with altering the expressi on part of it. Hence there is no
incentive in creating a ‘big id ea’, which is left unprotected742.
b) The period of software under copyr ight is around 60 years (now 70
years) and the author’s lifetime in mo st regimes is anachronistic with the
productive life of softwa re ranging from couple of years to additional
couple of year. It would be prudent to give a shorter but stricter
monopoly, which will benefit the creators743.
c) On the enforcement of the IP regime , copyright regime allows criminal
proceedings, which would not be in cas e of the classification as patent
regime where there are only civil proceedings.
d) The copyright of any work is inst ant and there is no professional or
inventive proof needed makes it easy for many to do reverse engineering

741 Diamond v. Diehr 450 U.S. 175 (1981), available at,
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=450&invol=175 , visited 10 Jan
2005

742 Stokes, Simon, Digital Copyright : Law and Practice, Butterworths, UK, 2002
743 Brett N. Dorny and Michael K. Friedland , Copyrighting "Look And Feel":
Manufacturers Technologies V. Cams, Harvard Law Technology Journal,Vol.3 Spring Issue, 1990

232

of a source code and keep flooding the market with products and may
not be a viable proposition of a sustained business model for the
industry744.
e) Many a software in the high-end applic ation in the sectors of satellite
communication, aviation, nuclear physic s are done at huge costs with no
commercial returns per se in the short run. These programmes if not
protected by Patents may end up ex ploited by commercial programmers
who can create programmes with altern ate expressions without investing
in the ‘idea’745.
f) Physical invention has been replaced with digital mode of software and
hence one need to revamp the ex isting patent jurisprudence to
accommodate software in the patent regime.
5.5.9 Arguments against Computer Program patenting
a) Patenting of software will lead to a monopoly of ‘few ideas’ which will not
allow the new software to come in as it is happening under the ‘copyright
regime.’
746
b) Patenting of software will lead to defensive portfolios of patents, which will block new entrepreneurship and applications and creativity.
c) Placing software in patenting will resu lt in inordinate delay for products to
come to the market as the procedural hurdles and other issues will block
products.
d) With the software life very short it any way will not benefit by a patents regime giving monopoly for 14 or twenty years. In fact by the time patent is
granted the utility of the product may be outdated
747.
e) With the rapid application of software in hitherto unknown fields, speed and
adaptations is the key to sustain the industry and hence copyright is more

744 ibid
745 ibid
746 Mergers P, Robert, As Many as Six Impossible Patents Before Breakfast: Property rights for
Business Concepts and patent System Reform, Berkeley Technology Law Journal, Vol.14:577, 1999
747 ibid
233

suited as it allows products to be in the market than waiting for patents to be
granted.
f) Mathematical algorithms are not inven tions and cannot be considered as
inventions but rather a creative use of a subject and hence copyright regime
is best-suited one for software748.
g) As a product which is intangible and can be copied with ease by even a computer illiterate, civil remedies will only throw the baby out of the bath water and hence copyright regime and criminal remedy could only be the deterrent.
h) Software has assumed a mass movement with the advent of open source
code model like Linux, which allows more creative minds to be part of the
movement, and this will be stopped by the quagmire of patent portfolios and
litigations.
5.5.10 Software Patents V Freedom of Speech and Expression
Anyone who has ever written both a program and an essay knows how similar these
complex endeavors are. Both require us e of all one's skill and knowledge. Both
involve continual invention and creativity. Both require constant revision. Both
evolve with time, as one's knowledge grow s. Both are written in a language which
has a vocabulary that can be used in an in finite variety of wa ys. Although software
is often a less direct method of communication than prose, in that there may be many intermediaries between a particul ar programmer and the end-user of an
application which uses a piece of his or her code, the same is true for other forms of
expression. Theater goers, for example, don't directly read theater scripts, but see
and hear them acted by intermediaries (actors); nonetheless, the scripts are
writings
749.

748 ibid
749 Phil, Salin, Freedom of Speech in Software, http://www.philsalin.com/patents.html visited on 2
Mar 05

234

Although a program has to be run to be us ed, before it can be run it has to be
written. There are now millions of indivi duals all over the wo rld who know how to
write a computer program. It is an absurd ity to expect those millions of individuals
to perform patent searches or any other ki nd of search prior to the act of writing a
program to solve a specific problem. If ot hers wish to purchase a program, as with
the sale of written prose a nd written music, absolutely no patent restri ctions should
be placed on the ability of authors to sell or publish their own writings. Suppression
of free thought and speech in software (wri ting, or publishing) is an evil, even when
only a small number of individuals recognize that speech is being restricted, or what
the costs will be if this harmful censorshi p-by-another-name, viz "patent licensure",
is now allowed to expand unchecked750.
In the case of Universal City Studios v.Reimerdes751 the US court has held that source
code of the computer program constitutes Free speech and would be protected under first amendment
752.
5.6 Digital Music: Problems and Prospects
Almost all music is distributed today in digital, rather than analog, form. Until
recently, most digital music was sold in containers called Compact Discs (CD).
Developed and refined between 1965 and 1985, CD technology swept the consumer
market during the late 1980s and the early 1990s, displacing almost completely
long-play vinyl albums. In the past few y ears, a new method of distributing digital
music has become increasingly popular: tran smission of containe r less files via the
internet, followed by storage on home comput ers. Music distribu ted in this manner

750 ibid
751 Universal City Studios, Inc. v. Reimerdes 111 F.Supp.2d 294 (S.D.N.Y. 2000, available at
http://laws.lp.findlaw.com/2nd/009185.html , visited on 12 Mar 2005
752 Halpern E Stevens, Harmonizing The Convergen ce Of Medium, Expression, And Functionality:
A Study Of The Speech Interest In Computer Software, Harvard Journal of Law & Technology ,
Volume 14, Number 1 Fall 2000

235

typically is replayed either through stereo systems attached to the home computers
or through portable devices analogous to the ‘walkman’753.
Widespread adoption of the te chniques of distributing digital music via the internet
either in MP3 format or in some other form would give rise to five important social
and economic advantages. They are
(1) Cost saving associated with disintermedia tion- currently , most of the retail price
paid by a consumer for a compact discs goes to the manufacturer of the disc itself,
the distributor of the disc, the retail st ore where she purchased it, or the record
company that produced the recording. The co mposer and the record ing artist rarely
receive more than 16% of the purchase pri ce. If the music were distributed over the
internet by the artist himself, almost all of costs associated with making and
distributing discs could be eliminated. The result is that the musicians could earn
more or consumers could pay less or both754.
(2) Elimination of overproduction and unde rproduction- Under th e current system,
the record companies must guess how ma ny copies of each CD consumers will
demand. Distribution of container less digita l files over the internet would eliminate
this problem755.
(3) Convenience and Precision- The many annoyances associated with buying music
in retail stores ( travel time, the disappoint ment when the CDs are out of stock etc)
would all be eliminated by internet dist ribution. The less substantial annoyances
associated with mail-order purchases of CDs (waiting for delivery, being forced to
purchase an entire CD when one is only interested in a few tracks) would also be
eliminated. Consumers would get exactly the music they wanted instantly756.
(4) Increase in the number and variety of musicians- The set of musicians who
would like to make their music available to the public and the set that significant numbers of consumers would like to hear are both much larger than the set hired by
the recording companies. Th e opportunities available to new artists and to bands

753 Fisher ,Williams, Digital Music: Problems and Possibilities, Harvard Law School Publications,
available at http://www.law.harvard.edu/f aculty/tfisher/Music.html , visited on 10 Dec 2005.
754 ibid
755 ibid
756 ibid
236

that appeal to niche markets would incr ease rapidly through widespread adoption of
the new technology757.
(5) Semiotic democracy- In most modern capitalist countries, the power to make
meaning, to shape culture, has been concentr ated in relatively few hands. One of the
great cultural benefits of the internet in general lies in its tendency to decentralize
this semiotic power. In two respects, inte rnet distribution of digital music would
contribute to that decentraliz ation. The first consists of the expansion of the set of
musicians who can reach wide audiences and the associated diminution of the
cultural power of the reco rd companies. The second of the ease with which
consumers of digital music manipulate it, reco mbine pieces of it, blend it with their
own material can become producers758.

5.6.1 MP3 Music- Delight for Music Consumers, Nightmare for Music Producers
The technology that has made distribution of music over internet convenient and
simple is MP3
759, an audio compression file format. Musical files compressed using
MP3 occupy approximately 1/12 of the disk space occupied by uncompressed files,
enabling them to be transmitted faster and stored more easily. Two groups have
embraced MP3 technology especially enthus iastically. First, musicians unable to
obtain recording contracts w ith the major record companies have found that, at
modest cost, they can record their mate rial in MP3 format and then make it
available over the internet. Second, the net users have discovered that they can
obtain on the internet MP3 copies of most of the songs of their favorite musicians. A
high percentage of the MP3 recordings av ailable in this manner were prepared
without the permission of the owners of the copyrights in the music760.

757 ibid
758 ibid
759 An abbreviation of MPEG Audio-Layer 3. This is a compression algorithm developed by the
Fraunhofer Institute in Germany and later standa rdised by the MPEG (Motion Picture Experts
Group) that permits audio files to be highly co mpressed and yet retain excellent levels of quality.
available at www.futuremark.com/comm unity/hardwarevocabulary/ , visited on 10 Jan 2006
760 ibid
237

The music and recording industry in US has waged war against unauthorized
copying on four fronts; against the manufactur ers of the machines used to play MP3
files; against the operators of pirate websites; and against the growing group of
intermediaries that assist us ers in locating and obtaining MP3 files. To date, none of
these struggles has been decisively resolved. On the first two fronts, the forces
embracing the new technology are currently winning; on the third and fourth, the
forces seeking to limit uses of the new technology are currently winning. But the outcomes of all four campaigns remain in doubt
761.
One of the earliest cases to be decided by US courts in relation to distribution of
illegal MP3 files is A&M Records, Inc., et al. v. Napster, Inc762. The court denied
Napster Inc.'s ("Napster") motion for pa rtial summary judgment, in which motion
Napster sought to limit the da mages and other relief that could be awarded against it
for alleged direct or contri butory copyright infringement by application of the safe
harbor provisions of 17 U.S. C. Section 512(a) of the Di gital Millennium Copyright
Act ("DMCA"). Section 512(a) limits a service provider's liability for copyright
infringement by reason of the service pr ovider's "transmitting, routing or providing
connections for material through a system or network controlled or operated by or
for the service provider …"763.
The court held that Napster's role in the transmission of MP3 files by and among the various users of its system was not en titled to protection under Section 512(a)
because such transmission does not occur through Napster's system. Rather, although Napster informs the user's com puter of the location of a computer on
which MP3 files the user seeks are stored, and its willingness to permit the user to download such files, all files transfer directly from the co mputer of one Napster user
through the Internet to the co mputer of the requesting user . Similarly, any role that
Napster plays in providing or facilitating a connection between these two computers

761 Fisher Williams, Digital Music: Problems and Possibilities, Harvard Law School Publications,
available at http://www.law.harvard.edu/f aculty/tfisher/Music.html , visited on 10 Dec 2005.

762 A&M Records, Inc., et al. v. Napster, Inc. , 239 F.3d 1004 (9th Cir. 2001), available at United
States Court for the Ninth Circuit, http://lvalue.com/nap.html , visited 22 Dec 2005
763 ibid
238

does not occur through its system. "Alt hough the Napster server conveys address
information to establish a connection between the reque sting and host users, the
connection itself occurs through the Internet."764
The court also held that issues of fact ex isted as to whether Napster was entitled to
any protection under the DMCA at all. To be entitled to such protection, a service
provider must meet the requirements of s ection 512(i) of the DMCA, which, among
other things, obligates the service provide r to "adopt and reasonably implement and
inform subscribers and account holders of th e service provider's system or network
of a policy that provides for the termin ation in appropriate circumstances of
subscribers and account holders of the service provider's system or network who are
repeat infringers …". The cour t held that issues of fact existed as to whether Napster
had appropriately adopted and informed its users of such an effective policy which
precluded at this time any re lief to Napster under the DMCA765.
5.6.2 Peer-to-Peer Networking (P2P)

Commentators and courts have universally hailed the Internet as an abundantly
fertile field for self-expression and debate. But this acclamation masks sharp
disagreement over whether certain Internet activity should be la uded or deplored. A
prime example is the unlicensed use of copyright protected material. The explosion of sharing and remixing of popular songs a nd movies over Intern et based peer-to-
peer (“P2P”) networks like Napster, Ka ZaA, and Morpheus has evoked sharply
discordant reactions. Some commentator s embrace the collection, exchange, and
transformation of existing works as part a nd parcel of the indi vidual autonomy, self-
expression, and creative collaboration for wh ich we celebrate the Internet. Others
denounce those activities as massive piracy of intellect ual property. They fear that
P2P file swapping poses a mortal threat to the copyright syst em that sustains

764 ibid
765 ibid
239

authors, artists, and a multi-billion- dollar industry in the production and
dissemination of creative expression766.
The P2P controversy has degenerated into a steadily intensifying war of words and
legal action. The copyright industries have successfully shut dow n a number of P2P
networks — most famously, Napster — an d continue to bring lawsuits against
others. They have also sought to co mpel telecommunications and consumer
electronics companies to disable unlicen sed P2P sharing of copyright protected
works. The industries are now targeting indi viduals who trade large numbers of files
as well. Yet, despite this three pronge d attack, unlicensed P2P file swapping
continues apace767.
P2P networks are those networks wher e communication between computers takes
place directly without help of the central server768. In MGM V Grokster769, the
question before the court was under what circumstances the distributor of a product
capable of both lawful and unlawful use is liable for acts of copyright infringement
by third parties using the product. Res pondents, Grokster Ltd and StreamCast
Networks Inc. used to distribute a piece of software which enabled computer users
to share electronic files through peer-to-peer networks. The advantage of peer-to-peer networks over information networks of other types shows up in their
substantial and growing popular ity. Because they need no central computer server to
mediate the exchange of information or files among users, the high bandwidth
communications capacity for a server may be dispensed with, and the need for costly server storage space is eliminated. Since copies of a f ile (particularly a
popular one) are availabl e on many users' computers, file requests and retrievals
may be faster than on other types of networ ks, and since file exchanges do not travel
through a server, communications can ta ke place between any computers that

766 Netanel Weinstock Neil, Impose A Noncommercia l Use Levy to Allow Free Peer-To-Peer File
Sharing, Harvard Journal of Law & Technology, Vol.17, Number 1 Fall 2003, available at
http://jolt.law.harvard.edu/articles/pdf/v17/17HarvJLTech001.pdf , visited on 13 Dec 2005
767 ibid
768 Metro-Goldwyn-Mayer Studios Inc., et al. v. Grokster, Ltd., et al. 545 U.S. 913 (2005), available
at http://www.law.cornell.edu/supct/html/04-480.ZS.html , visited on 14 June 2006

769 ibid
240

remain connected to the network without risk that a glitch in the server will disable
the network in its entirety. Given these be nefits in security, cost, and efficiency,
peer-to-peer networks are em ployed to store and distri bute electronic files by
universities, government agencies, co rporations, and libraries, among others770.
MGM argued that Respondent s are liable for copyright infringement – direct
infringement, contributory infringement and vicarious infringement. Respondents
pleaded their actions does not amount to copyright infr ingement and relied on the
principle laid down in Sony Corp. v. Universal City Studios771. Further MGM
contended that holding of Ninth Circuit Court, which held that Respondents are not
vicariously liable, would upset a sound balance between the respective values of
supporting creative pursuits through copyri ght protection and promoting innovation
in new communication technologies by limiting the incidence of liability for
copyright infringement. The more arti stic protection is favored, the more
technological innovation may be discouraged; the administration of copyright law is
an exercise in managing the trade-off772.
The tension between the two values is the s ubject of this case, with its claim that
digital distribution of copyr ighted material threatens copyright holders as never
before, because every copy is identical to the original, copying is easy, and many
people (especially the young) use file-sharing software to download copyrighted
works. This very breadth of the software 's use may well draw the public directly
into the debate over copyr ight policy, and th e indications are that the ease of
copying songs or movies using software li ke Grokster's and Napster's is fostering
disdain for copyright protection. As the cas e has been presented to us, these fears
are said to be offset by the different concern that imposing liability, not only on

770 ibid
771 464 US 417 (1984) available at http://www.law.cornell.edu/c opyright/cases/464_US_417.htm ,
visited on 2 Feb 2006
772 Metro-Goldwyn-Mayer Studios Inc., et al. v. Grokster, Ltd., et al. 545 U.S. 913 (2005), available
at http://www.law.cornell.edu/supct/html/04-480.ZS.html , visited on 14 June 2006

241

infringers but on distributors of software based on its potential for unlawful use,
could limit further development of beneficial technologies773.
The Court referring to In re Aimster Copyright Litigation774, 334 F. 3d 643, 645-
646 (CA7 2003) observed that the argument fo r imposing indirect liability in this
case is, however, a powerful one, given the number of infringing downloads that
occur every day using StreamCast's and Grokster's software. When a widely shared
service or product is used to commit infr ingement, it may be impossible to enforce
rights in the protected work effectively against all direct infringers, the only
practical alternative being to go against the distributor of the copying device for
secondary liability on a theory of cont ributory or vicarious infringement. One
infringes contributorily by intentiona lly inducing or en couraging direct
infringement, and infringes vicariously by pr ofiting from direct infringement while
declining to exercise a right to stop or limit it. Although "the Copyright Act does not
expressly render anyone liable for infringement committed by another, as laid down in Sony Corp. v. Universal City Studios
775, these doctrines of secondary liability
emerged from common law principles and are well established in the law.
In Sony Corp. v. Universal City Studios776, the Court addressed a claim that
secondary liability for infringement can arise from the very distribution of a
commercial product. There, the product, nove l at the time, was what we know today
as the videocassette recorder or VCR. Copyright holders sued Sony as the
manufacturer, claiming it was contributorily liable for infringement that occurred
when VCR owners taped copyrighted progr ams because it supplied the means used
to infringe, and it had constructive knowledge that infringement would occur. At the
trial on the merits, the evidence showed that the principal use of the VCR was for " time-shifting" or taping a program for la ter viewing at a more convenient time,

773 ibid
774 334 F. 3d 643, 645-646 (CA7 2003), available at
http://homepages.law.asu.edu/~dkarjala/ cyberlaw/InReAimst er(9C6-30-03).htm , visited on 14 Jan
2006
775 464 US 417 (1984) available at http://www.law.cornell.edu/c opyright/cases/464_US_417.htm ,
visited on 2 Feb 2006
776 ibid
242

which the Court found to be a fair, not an infringing, use777. There was no evidence
that Sony had expressed an object of bringing about taping in viol ation of copyright
or had taken active steps to increa se its profits from unlawful taping778. Although
Sony's advertisements urged consumers to buy the VCR to " 'record favorite shows'
" or " 'build a library' " of recorded programs779, court found that neither of these
uses was necessarily infringing780.
On those facts, with no evidence of stated or indicated intent to promote infringing
uses, the only conceivable basis for imposing liability was on a theory of
contributory infringement ar ising from its sale of VCRs to consumers with
knowledge that some would use them to infringe. But because the VCR was "capable of commercially significan t non-infringing uses,” court held the
manufacturer could not be faulted so lely on the basis of its distribution
781.
This analysis reflected patent law's tradi tional staple article of commerce doctrine,
now codified, that distribution of a component of a patented devi ce will not violate
the patent if it is suitable for use in othe r ways. The doctrine was devised to identify
instances in which it may be presumed fr om distribution of an article in commerce
that the distributor intended the article to be used to infringe a nother's patent, and so
may justly be held liable for that infr ingement. "One who makes and sells articles
which are only adapted to be used in a patented combination will be presumed to intend the natural consequences of his acts ; he will be presumed to intend that they
shall be used in the combination of the patent.
782"
In sum, where an article is "good for nothi ng else" but infringement, the Court held
there is no legitimate public interest in it s unlicensed availabili ty, and there is no
injustice in presuming or imputing intent to infringe. Conversely, the doctrine
absolves the equivocal conduct of selling an it em with substantial lawful as well as
unlawful uses, and limits liability to inst ances of more acute fault than the mere

777 ibid
778 ibid, at p 438
779 Ibid at, p at 459 ( Blackmun, J., dissenting)
780 ibid
781 ibid
782 ibid
243

understanding that some of one's products wi ll be misused. It leaves breathing room
for innovation and a vigorous commerce.
The Court did draw the distinction between direct infringement, indirect or induced
infringement and vicarious infringement but decided to determine the matter only
on induced infringement. The classic case of direct evidence of unlawful purpose
occurs when one induces commission of in fringement by another, or "entices or
persuades another" to infringe, as by adve rtising (Black's Law Dictionary 790 (8th
ed. 2004)). Thus at common la w a copyright or patent defendant who "not only
expected but invoked infringing use by adve rtisement" was liable for infringement
"on principles recognized in every part of the law.
The rule on inducement of infringement as developed in the early cases is no
different today. Evidence of "active steps … taken to encourage direct
infringement," Oak Industries, Inc. v. Zenith Electronics Corp., 697 F. Supp. 988,
992 (ND Ill. 1988)783, such as advertising an infringing use or instructing how to
engage in an infringing use, show an affirmative intent that the product be used to
infringe, and a showing that infringement was encouraged overcomes the law's
reluctance to find liability when a defe ndant merely sells a commercial product
suitable for some lawful use.
Based on the above analysis the Court held that one w ho distributes a device with
the object of promoting its us e to infringe copyright, as shown by clea r expression
or other affirmative steps taken to foster infringement, going beyond mere
distribution with knowledge of third-party ac tion, is liable for the resulting acts of
infringement by third parties using the devi ce, regardless of th e device’s lawful
uses.

783 Cornell University Law School, Supr eme Court Collection, available at
http://www.law.cornell.edu/ , visited on 1 March 2006.
244

5.7 Linking, Framing and Caching

Some of the copyright issues involved in cyberspace are related to the interaction
between websites, service pr oviders and consumers for the purpose of e-business.
These include Linking, Framing and caching. In this section how these internet
specific activities would infr inge copyright are discussed.
In the past several years, the World Wide Web has seen two significant changes:
(1) its popularity and use have exploded, and
(2) it has become a place of substantial commercial activity.
These two characteristics have made the Web a place of increasing legal turmoil.
Certain practices by authors of Web sites a nd pages have been attacked as violative
of others' intellectual propert y rights or other entitlement s. These practices include
“linking,” “framing” and “caching”.
5.7.1 Linking
Internet links may create legal liability. Desp ite the internet’s initial ‘free linking’
ethos, links can be unlawful when they are designed to confuse viewers, to evade
court orders or clear statutory prohib ition, or promote illegal conduct by others.
Linking law, which began with Shetland Times head-line linking case in Scotland in
late 1996, now includes several precedents as well as developing worldwide body of
opinions on various subjects784.
"Linking" allows a Web site user to visit another location on the Internet. By simply
clicking on a "live" word or image in one Web page, the user can view another Web
page elsewhere in the world, or simply elsewhere on the same server as the original
page. This technique is what gives the Web its unique communicative power. At the
same time, however, linking may undermine th e rights or interests of the owner of

784 Sableman, Mark, Linking law Revisited : Inte rnet Linking Law At Five Years, Berkely
Technology Law Journal , Volume 16 (2001), Issue 16:3 (Fall 2001)

245

the page that is linked to785. A website consists of several pages. By linking it is
possible to transfer the cont rol of browser to the web page of another website.
Suppose, for example, that X sets up a homepage for her site. On the homepage she
places some advertisements, from which she hopes to make some money. The homepage also contains links to various subordinate pages, wh ich contain content
that X believes consumers wish to see. Y then creates his own Web site, which
contains links to X's subordinate pages. The net result is that visitors to Y's site will be able to gain access to X's material, w ithout ever seeing X's advertisements which
are placed on the Home page. This type of activity is called " deep linking
." Other
problems arise when one site contains links to copyrighted mate rials contained in
another site against the wishes of the copyright owner. Though the person who
provides the link may not be making copies himself or herself, judicial view has
been that the link provider partially responsible for ensuing copyright
infringement786.
Section 51 of the Copyright Act, 1957 lis ts the circumstances under which a
copyright is said to be violated787. Sec.51 (b) (iii) provide s that if any person
exhibits copyrighted work without aut horization in public by way of trade has
violated the rights of the owner. This provi sion of the law would affect deep linking.

785 ibid
786 Berkmen Center for Internet and Society, Harvard Law School, Intellectual Property in
Cyberspace (2000), available at http://cyber.law.harvard.edu/property00/metatags/main.html , visited
22 Jan 2006
787 Sec.51. When copyright infringed- Copyright in a work shall be deemed to be infringed- (a) when
any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights
under this Act or in contravention of the conditions of a licence so granted or of any condition
imposed by a competent authority under this Act-
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the
copyright; or (ii) permits for profit any place to be used for the communicati on of the work to the
public where such communication constitutes an infrin gement of the copyright in the work, unless he
was not aware and had no reasonable ground for believing that such communication to the public
would be an infringement of copyright; or
(b) when any person- (i) makes for sale or hire, or sells or lets for hire, or by way of trade displays
or offers for sale or hire, or (ii) distributes either for the purpose of trade or to such an extent as
to affect prejudicially the owner of the copyright, or (iii) by way of trade exhib its in public, or (iv)
imports into India, any infringing copies of the work:
246

Deep linking definitely involves communica tion to the public of unauthorized work
as provided under Sec.2 (ff) of the Copyright Act, 1957. According to Sec.2(ff)
Communication to the public means making a ny work available for being seen or
heard or otherwise directly or by any m eans of display or diffusion other than by
issuing copies of such work regardless of whether any member actually sees , hears
or otherwise enjoys the work so made avai lable. Thus, we can see an act of deep
linking constitutes infringement of copyright . But without deep linking, the internet
as we know it today would collapse. One could not have a search engine, for
example788. Hence these grey areas do need to be addressed.
5.7.2. Legal Issues involved in Linking
It is no surprise that the absolute “free linking” ethos of Berners-Lee789 and other
Internet pioneers have not been adopted by the law. The real business world
operates differently than the world of academics, technology enthusiasts, and
information-loving individuals. Businesses ca re about what information is shared,
with whom, and in what context—especi ally when the communications involved
interfere with their sales or marketing. Th ey also care about how they are portrayed
in relationship to others, especially comp etitors. Hence, in the context of business
and advertising, Internet links may rais e issues of, among other things, unfair
competition, trademark or copyright infringement, tarnishment, and misappropriation
790.
The laws of unfair competition and intell ectual property provide the backdrop for
most hyperlink disputes. In particular, the law of unfair competition an umbrella

788 Sableman Mark, Linking law Revisited : Internet Linking Law At Five Years, Berkely
Technology Law Journal , Volume 16 (2001), Issue 16:3 (Fall 2001).See also US Ninth Circuit court
of appeals decision in Leslie A V Arriba Soft corporation for the significance of search engine for
internet. Available at http://www.philipsnizer.com/inter netlib_subject.cfm?TopicID=36 visited on
20 Mar 2006
789 Sir Timothy John Berners-Lee is an English developer and inventor of the World Wide Web in
March 1989. With the help of Mike Sendall, Robert Cailliau, and a young student staff at CERN, he
implemented his invention in 1990, with the fi rst successful communication between a client and
server via the Internet on December 25, 1990. He is also the director of the World Wide Web
Consortium (which oversees its continued development), and a senior researcher and holder of the 3 com Founders Chair at the MIT Computer Science and Artificial Intelligence Laboratory
(CSAIL).
790 Sableman, Mark, Linking law Revisited : In ternet Linking Law At Five Years, Berkely
Technology Law Journal , Volume 16 (2001), Issue 16:3 (Fall 2001) at p 18
247

term that embraces trademark infringement and dilution, passing off, and false or
deceptive advertising provides the legal context for many linking disputes. Several
other legal areas ― copyright, data protection, and misappropriation have figured in
several important Internet li nking disputes. This section briefly describes the basic
principles of the legal fields on whic h most unauthorized linking claims are
based791.
5.7.3 Direct Linking
Link law began with a hyperlinked headlin e on an electronic newspaper in the
Shetland Islands of Scotland.
The ensuing copyright lawsuit between rival
newspapers brought little enlightenment to the concept of links as copyright
infringement. A few years later, a parallel lawsuit in California792,
concerning
thumbnail photographs as links, brought the copyright theory of link law into
sharper focus.

In Shetland Times Ltd., V Dr.Jonathan Wills and another793, the plaintiff, the
Shetland Times operated a web site through which it made available many of the
items in the printed version of its newspaper. The defendant also owned a website
and operated a web site on which they published a news reporting service.
Defendants reproduced verbatim a number of headlines appeari ng in the Shetland
Times. These headlines were hyperlinked to the plaintiff’s site. Clicking on the headline took the reader to the internal pa ges in the plaintiff’s site on which related
story was found. The Judge agreed that the plaintiff had presented at least a prima
facie case of copyright infringement based upon the United Kingdom’s law
governing cable television progr am providers. He found that the articles were being
sent by the Shetland Times but through the web site maintained by the defendants.

791 ibid at 19
792 Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116 (C.D. Cal. 1999), available at
http://pub.bna.com/ptcj/99-560.htm , visited on 24 Jan 2006

793 Cited in Legal Dimensions of Cyberspace (edt by S K Verma and Ram Mittal) , Indian Law
Institute, New Delhi, (2004 ) at p 119

248

In the process, the home page of the She tland Times site was bypassed, significantly
diminishing the value of the site to potentia l advertisers. The court issued an interim
interdict barring defendants, without the plaintiff cons ent, from copying headlines
from the plaintiff’s news paper on to th eir website, and crea ting hyperlinks from
those headlines to the location on the plaintiff’s site on which the article described
in the headline appears.
A much different approach and answer to a similar question came with the decision
of a California federal district c ourt in Kelly v. Arriba Soft Corp794
This case
presented essentially the picture equivalent of the Shetland Times headline as
hyperlink claim. The defendant, Arriba Soft , offered a specialized Internet search
engine for photography on its website. On that site,
Arriba Soft provided a
traditional search engine with a photographic twist. As the court explained, like
other Internet search engines, Arriba Soft’s search engine: “allows a user to obtain a
list of related Web content in response to a search query . . . . Unlike other Internet
search engines, Defendant’s retrieves images instead of descript ive text. It produces
a list of reduced, ‘thumbnail’ pictures related to the user’s query”.795
Leslie Kelly, a professional photographer, offered his photographs for sale through
an Internet website, and Arriba Soft indexed his site along with other professional photographers’ sites.

That meant that when searchers used Arriba Soft’s “visual
search engine” and the sear ch results included Kelly’s photographs, the images of
those photos would be made available in t humbnail form on the search results page.
The thumbnail images in turn linked to Kelly’s own website, and hence potentially increased Kelly’s business traffic.

Kelly claimed in a similar way as the Shetland
Times had claimed about use of its headlines—t hat use of his work in the thumbnail
link constituted copyright infringement. The thumbnail images in question were,
admittedly, copies of Kelly’s photographs. The issue was thus posed: Did use of

794 Kelly v. Arriba Soft Corp., 77 F. Supp . 2d 1116 (C.D. Cal. 1999). available at
http://pub.bna.com/ptcj/99-560.htm , visited on 24 Jan 2006

795 ibid
249

Kelly’s photographs as thumbnail markers of links to Kelly’s website constitute
copyright infringement?796
The thumbnails presented a credible case of infringement. While a few words of a
headline do not qualify alone as copyrightable material in United States law, the
photo thumbnails were simply reduced versions of Kelly’s copyrighted photographs.
As such, the thumbnails contained all (or at least most) of the creative elements of
the photos, such as subject, composition, lighting, and so forth. The only question
was whether Arriba Soft’s use of the photographs in its visual search engine
constituted fair use under secti on 107 of the Copyright Act of US.
Judge Gary
Taylor analyzed each of the statutory fair use factors, as well as the “transformative
use” factor, and found Arriba Soft’s use to be fair797.

Initially, Judge Taylor found that while Arriba Soft’s search engine was
commercial, the search engine’s commer cial purpose was “of a somewhat more
incidental and less exploita tive nature” than normal.
Arriba Soft’s website did not
exist to exploit the visual impression of the indexed phot ographs; rather, it served a
library like function, as it “cataloged and improved access to images on the
Internet.”
Thus, the first fair use factor—f ocusing on the commercial or
noncommercial use of the copyrighted work favored Arriba Soft.
The second
factor— the nature of the work favored Kelly, because photographs are artistic
works at the core of copyright protection.
On the third factor focusing on the amount
and substantiality of the copyrighted work used— the court found the use of
indexing thumbnails generally fair, because thumbnails are necessary on a visual
search engine, and the size reduction mitigates any damage.
Because Arriba Soft’s
search engine had also disp layed a larger version of the indexed photographs (a
practice it had eliminated by the time of the court’s decision), however, the court
found the “amount and substantiality” factor to favor Kelly somewhat.
Finally, in
considering the fourth fair use factor—t he effect on the market for plaintiff’s
products the court found no ev idence of harm, and a logi cal conclusion that the

796 ibid
797 ibid
250

search engine would increase traffic to the websites of professional photographers
such as Kelly. Thus, the court found th at this factor favored fair use798.
With the fair use score a two-two tie, th e Court relied on the “transformative use”
analysis of Campbell v. Acuff-Rose Music, Inc799,
to make its final conclusion that
Arriba Soft’s use was fair. Essentially, the court recognized the us efulness of search
engines and their contribution to users an d web publishers (like Kelly) alike, and
found that Arriba Soft’s “vis ual search engine” had transf ormed Kelly’s images into
something new. The court held that the photo cataloging and thumbnail displaying
functions of Arriba Soft’s visual search engine, which “swept up” plaintiff’s images
along with two million other photographs in its ordinary operation, fulfilled an
“inherently transformative” function. This tran sformative aspect of the visual search
engine—“a new use and a new technology” weighed more heavily with the court
than the fact that Arriba Soft copied the photographs.
In essence, the usefulness of
Internet search engines was th e determinative factor in the fair use analysis in Kelly,
leading to the court’s conclusion that Arriba Soft could use thumbnail images of
copyrighted works in its search results display800.
Although the Kelly analysis could be questioned or confined to the unique facts of
that case, the decision provides guidance for other copy-right linking cases. The
decision wisely permits use of the content indexes and links that are typically used
and needed in Internet searching and naviga tion. This result seems consistent with
fair use principles, since the indexing ma terial does not replace the full copyrighted
works and it usually facilitates navigation to the owners of those works. It also
accords with precedent, such as long esta blished acceptance of catalogs, summaries,
and reviews as fair use. If Kelly is followed when future linking claims based on
copyright are asserted, the fair use doctrine is likely to protect normal indexing and
summarizing use of Intern et content as hyper-links801.

798 ibid
799 510 US 569 (1994), available at http://supct.law.cornell.edu/supct/html/92-1292.ZS.html , visited
on 23 Jan 2006
800 Supra Note 794
801 Supra Note 794
251

5.7.4 Deep Linking

Perhaps the most curious of all anti-linki ng theories is the one that holds “deep
linking” unlawful. While this theory seems to loom larg e in popular discussions, it
does not yet have legal support in the Unite d States, and courts have addressed the
theory with skepticism802.

Most websites have a central “home” page to which all subsidiary pages are linked.
Website publishers probably expect users to visit their site through this home page
“front door,” and to move around the webs ite using the website’s own links to
subsidiary pages. With this expectation, many website publishe rs post introductory
material—possibly including third party pa id banner advertisements, and special
teasers and highlights relating to thei r own site on that home page. Website
publishers expect that most website visitors will encounter those advertisements or
special highlights before going further into the website’s subsidiary pages803.
In practice, however, anyone who reaches a subsidiary page may record the URL of
that page and use it as a hype rlink, thus enabling others to bypass the website’s front
door and go to the subsidiary page of interest. Such links are known as “deep
linking” because they link directly to a subs idiary page “deep” within a website. Is
such linking unlawful? The Ticketmaster ticket selling agency asserted that such
linking was unlawful in two highly publicized cases804.

In Ticketmaster Corp V Microsoft Corp805, the plaintiff, Tick etmaster Corporation
sued Microsoft’s practice of linking, without permission, deep within its site rather
to the home page, and claimed, inter alia , that Microsoft effectively diverted
advertising revenue that otherwise would ha ve gone to the plaintiff. Ticketmaster
Corporation had also entered into contract with other firms whereby those firms had
agreed to pay link to the Ticketmaster site. Free linking by Microsoft to the

802 Sableman Mark, Linking law Revisited : Internet Linking Law At Five Years, Berkely
Technology Law Journal , Volume 16 (2001), Issue 16:3 (Fall 2001) at p 20

803 ibid at p 21
804 ibid
805 Legal Dimensions of Cy berspace (edt by S K Verma and Ram Mittal) , Indian Law Institute, New
Delhi, (2004 ) at p 119
252

plaintiff’s site could have de valued those contractual relationships. Ticketmaster had
also contracted to give MasterCard prom inence at its site. Microsoft’s bypassing of
the home page threatened the ability of Tick etmaster to comply with that contract.
Allowing such a free link undercut Ticketma ster’s flexibility both in designing its
site and in its marketing efforts and a rrangements with other sites. During the
pendency of the court proceedings the part ies entered into a settlement agreement
whereby Microsoft agreed not to link to page s deep within the Ticketmaster site and
agreed that the links will point visitors interested in purchasing tickets to the
ticketing service’s home page806.
Ticketmaster was back in court a few years la ter, when it learned that a rival agency,
Tickets.Com, Inc., was also linking to Ticketmaster’s subsidiary pages. In
Ticketmaster Corp. v. Tickets.Com, Inc807.,
Ticketmaster claimed that deep linking
constituted both copyright infringement (because the information derived from
Ticketmaster’s website) and unfair competition (because customers would associate
Tickets.com with Ticketmaster).
In a preliminary decision, the court explained that
Tickets.com simply linked to Ticketmaster (or some other exclusive ticket broker) for events for which Tickets.com could not itself sell tickets
808.
Tickets.com
provided its customers with a “Buy this ticket from another on-line ticketing
company” link, which automatically transferre d the customer to the relevant interior
webpage of Ticketmaster, bypassing the hom e page. Since this interior page
contained the Ticketmaster logo, the court concluded that a customer must know he or she was dealing with Ti cketmaster, not Tickets.com.

In granting, in part,
Tickets.com’s motion to dismiss the co mplaint, the court expressed strong
skepticism about the deep linking theory809.

First, the court expressly rejected the c opyright theory. Ticket master alleged that
Tickets.com copied facts and used a deep linking hyperlink.
Facts are not protected

806 ibid
807 54 U.S.P.Q.2d (BNA) 1344 (C.D. Cal. Mar. 27, 2000), available at
http://pub.bna.com/ptcj/ticketmaster.htm , visited on 24 Apr 2006

808 ibid
809 ibid
253

by copyright, and the hyperlink simply transf erred the user to the plaintiff’s page.
Next, although the court did not dismiss the unfair competition claims, it brushed
off the possibility that merely posting a deep link could itself constitute unfair competition: “The court concludes that deep linking by itself (i.e., without confusion of source) does not necessarily involve unfair competition.”

Perhaps most
significantly, in dicta the court analogized hyperlinks to traditional indexing techniques, thus suggesting that they are be nign and indeed helpful, and thus hardly
tortious.

The court stated: “The customer is automatically transferred to the
particular genuine webpage of the original author. There is no deception in what is
happening. This is analogous to using a libra ry’s card index to get reference to
particular items, albeit fa ster and more efficiently.”810
From the above two cases the law of linking ma y seem to be confusing, but I am
of the opinion that to protect the interest of cyberspace entitie s , especially their
rights in copyright and trademark, deep linking should be prohibited and it should
amount to circumvention when web sites deep link into others.
5.7.5 Framing & In-lining
Framing is a way of constructing a web pa ge. The related practi ce of "framing" may
also serve to undermine the righ ts of Web site owners. Th e use of "frames" allows a
Web page creator to divide the Web brow ser window into seve ral separate areas.
The programmer of the Web page can di ctate what goes into each frame.
Commonly, a Web site designer creates a page that at all times displays one frame
containing the name of the Web site and other identifying information. The other
frames are then controlled by the user. For example, a Web site employing frames
might always show the original Web site's graphic logo on the top of the page while allowing the user to view the other Web site in a different frame. The legal implications of this are complex. In th e example just given, a Web surfer might
easily be confused concerning the relations hip between the actual site (victim) and

810 ibid
254

the framing site. Moreover, the framing site might be unfairly de riving traffic from
the actual site (victim) legally protected work811.
In Washington Post Co., V Total News Inc812., the Washington Post filed a
complaint against an online news site, Total News, the publisher of the web site
www.totalnews.com . Total News, an aggregator of web news sources, employed
frame technology to display news site s from around the web. Total News had
created pages with frames that contained hype rlinks to other news web sites, such as
Washington Post, CNN, US A Today etc. Web users, therefore, could use
www.totalnews.com to access articles from various sources. The Total news web
site generated its reve nue from advertising, which it pla ced in a static border frame.
Clicking hyperlink to ‘Washi ngton Post’ within the Total News Web Page displayed
the content of the Washington Post page within a frame that was surrounded by
Total News’ URL, logo, banner, advertisements and information. Plaintiff claimed that defendants’ action of framing was the internet equivalent of pirating
copyrighted material. They also alle ged that misappropriation, trademark
infringement and trademark dilution. The plaintiff complained that Total News has designed a parasitic web site that republis hes the news and editorial content of
others web sites in order to attract bo th advertisers and users resulting in
infringement of their copyright. But the matter was finally se ttled out of court
between the parties.
Under Indian Copyright Act, 1957, Sec.14 (a) (vi), the right of adaptation is
conferred on the owner of the copyrighted work. The framing site could take some
elements from the framed site’s multimed ia settings and create its own, thereby
affecting the right of making a derivative wo rk of the framed site since taking some
elements from the multimedia setting and combining them with some other could
well fit into the definition of adaptation. Hence, we can say that framing using
internet technology infringes th e rights of the creators.

811 Ryder, Rodney, “Intellectual Property and the Internet”, LexisNexis, New Delhi, (2002), at p 128
812 No. 97 Civ. 1190 (PKL) (SDNY), available at
http://www.issuesininternetla w.com/cases/washington.html , visited 23 Jan 2006
255

5.7.6 Caching
Caching involves the storing of Web page s either in a computer's local RAM
(Random Access Memory), or at the se rver level. Caching web pages on a
computer's local memory allows us to na vigate back and forth through pages we
have visited in the past without having to download the pages each time we return
to them. Caching at the server level, al so known as "proxy caching," is used by
several of the more popular Internet service providers such as AOL (America on
Line), Prodigy, and Compuserve813. This kind of caching may amount to copyright
infringement. But it is impossible to have web page operations without caching and
technically may not be feasib le. Therefore there is a need to declare expressly that
caching of web pages do not constitute copyright infringement814.
5.8 Resolving Link Law Disputes – Some Principles
New technologies always lead to predic tions of dire technological harm, and
corresponding cries for new legal controls. It happened with the telegraph, the so-
called “Victorian Internet” of the late nineteenth century.
It happened with radio and
television.
It happened even quite recently with such benign technologies as the
telephone and the facsimile.
Accordingly, we need focuse on the early Internet link law cases, especially to the
extent that they appear to restrict or prohibit use of Internet linking technologies
without adequate policy justification. If the history of broadcasting is any guide, a
new communications technology is most likely to blossom in the absence of strict
regulation. Just as hard cases make bad law,
cutting-edge cases, decided when a
technology appears new and mysterious , can make questionable precedents.
Moreover, the truism that courts many times reach the right result for the wrong

813 Berkmen Center for Internet and Society, Harvard Law School, Intellectual Property in
Cyberspace (2000), http://cyber.law.harvard.edu/property00/metatags/main.html , visited 23 Dec
2005
814 However, Section 512(b) of DMCA limits the lia bility of service providers for the practice of
retaining copies, for a limited time, of material that has been made available online by a person other
than the provider, and then transmitted to a subscrib er at his or her direction. The service provider
retains the material so that subsequent requests fo r the same material can be fulfilled by transmitting
the retained copy, rather than retrieving the material from the original source on the network .
256

reason is often borne out in novel situations , where judges must proceed to decision
points without the comforting aid of many precedential pointers, or even a firm grip
on the technology and how it may develop. In developing sound link law policies,
we need to heed early link law cases, without being tied to all of their narrow conclusions. Against this background, several principles for Internet linking controversies may
be suggested: (1) Recognize a presumptive ri ght to make reference links: – HREF
815 links seem
presumptively allowable in almost all s ituations. A hyperlink is, in one analyst’s
words, “an automated version of a scholarly footnote or bibliographic reference; it
tells the reader where to fi nd the referenced material.”
While such links were held
actionable in the initial Shetland Times decision, that decision seems wrong as a
matter of United States copyright law. It also appears unnecessary to vindicate the
unfair competition interests that seemed to trouble the trial court. Where there is
concern that a reference link threatens to confuse consumers or appropriate business
opportunities, these perils can usually be avoided by adequate disclosures and non-deceptive practices by the linking party. A fair , adequate disclosure by the Shetland
News that its link will take the reader to the Shetland Times website should have
been sufficient in that case
816. Fair disclosure still may not cover the losses that may
happen due to linking. Sometimes even reference hyperlinks may l ead to liability. One may easily use a
simple hyperlink to libel anot her, or to tarnish a tradem ark, for example, and hence
there can be no immutable rule that hyperlinks are always allowable. The principle
should simply be that a linka ge itself is presumptively all right, and restrictions
should be imposed only when the circumstan ces show a clear a buse that would be
actionable in a non-In ternet situation.
(2) Study actual consumer understandings a nd recognize web user intelligence and
sophistication as appropriate: – Trademark and unfair competition laws focus on

815 A hyperlink (often referred to as simply a link), is a reference or navigation element in a
document to another section of the same document; available at www.en.wikipedia.org/wiki/Href
,visited on 3 Nov 2005
816 Sableman Mark, Linking law Revisited : Internet Linking Law At Five Years, Berkely
Technology Law Journal , Volume 16 (2001), Issue 16:3 (Fall 2001) at p 60
257

consumer understandings. Whether a particular use of a mark constitutes
infringement depends on how consumers will react; specifically, whether they are likely to be confused. Even dilution laws , which protect trademarks beyond the area
of “confusion,” focus essentially on states of mind: whether use of a mark will
“blur” or “tarnish” the image of the mark in the minds of the relevant consumers.
False advertising and unfair competi tion law also depend on how consumers
understand certain information put forth by one competitor about another. In such
cases, consumer surveys are often needed to determine consumer perceptions and how consumers’ overall knowledge and instin cts interact with the advertising or
statements at issue
817.
While the law’s focus should be on actua l consumer understand ings, courts have
become accustomed to assume at times that, at least in the general product marketplace, consumers do not use a terrible amount of thought or intelligence. The
image of unthinking and simplistic consumer behavior is widespread, and goes back
at least to Judge Learned Hand’s observation that buyers tend to quickly glance at
package labels without carefully studying them.

Some of the key link law cases can
be seen as hinging on somewhat paternalistic views of Internet users. The metatag
cases that found infringement, for example, are premised on Internet users as being
easily confused about spons orship and associations.
Courts should not assume a ny particular level of sophist ication of Internet users.
Rather, they need to require litigants to develop specific evidence about the
understandings and behavior of Internet users. Internet us ers may well turn out to be
far more sophisticated and capable of understanding the significance of links than
many courts have thus far credited. After all, they have the ability to turn on a
computer and the daring to attempt to navigate the world’s largest collection of information. Actual evidence of consum er understandings may be especially
important in instances, such as framing and inlined links, where at present one can only speculate as to typical user perceptions.

So far, although some litigants have

817 Ficsor, Mihaly , The Law of Copyright and the Internet, Oxford University Press, New York,
2002, at p 359
258

attempted to survey Internet users, there is a paucity of empirical evidence regarding
the psychology and understand ing of Internet users818.
(3) Recognizing the unique nature and value of inform ation linking technologies:-
Lawyers and judges live by the analytical tools of precedent and analogy, and where
precedents are lacking, as in the case of new technologies, they rely on analogies.
The Internet, for example, has been anal ogized to everything from a New England
town meeting to a dance hall to a da rk alley. So, not surprisingly, linking
technologies have been analogized to va rious kinds of non-technological links and
associations, including the familiar links, endorsements, and associations known to
the law of unfair competition. While the te rm “link” suggests these analogies, they
may not be the proper analogies. If indeed an Internet “link” is no more than an
automated footnote or a digitized Dewe y decimal reference, then the unfair
competition analogy is not valid, and such an analogy inhibits sound analysis819.
Internet linking technologies need to be examined afre sh, without the prejudgment
of forced analogies. In particular, courts need to examine the unique benefits and
possibilities of these new technologies, as well as offenses alleged to have been
committed with them. In such a “big pi cture” examination, perhaps even new
terminology is needed. Professor Dan Burk has aptly characte rized the issue in
many link law disputes as that of “control over information referencing.”
Perhaps
not surprisingly in view of this characte rization of the issue, Professor Burk has
suggested that “intellectual property law should optimally be interpreted so as to
forestall future monopolization of information tagging systems.”
Whatever the
ultimate policy—or, more likely, policies—re lating to linking disputes, we will all
be better served if courts undertake to understand and consider the overall
potentialities and benefits of the technology under examination820.
(4) Recognizing the right to create, use and exploit electronic searching of an open
electronic network :- Just as telephone technology led to the telephone book, the Internet has caused the creati on of search engines. As a practical matter, navigation
of the web would be difficult or impossibl e without search engines. Yet just as

818 ibid at p 361
819 ibid at p 362
820 ibid at p 363
259

telephone directories could conceivably be faulted as invasions of privacy, search
engines and how they are used and explo ited can be, and have been, faulted on
numerous grounds. As we have seen, linking claims can arise from website owners’
use of metatags to attract search engine s, and from search engine operators’ own
sale of banner advertisements821.
These acts of use and exploitation of electr onic searching capabilities should not be
viewed in isolation. The Internet is an electronic network, where electronic
searching—and hence electronic tagging is necessary and expected. Because of the
vastness of the Internet, and its decentra lized openness allowi ng practically anyone
to add new content, effective computer ba sed search tools are needed. No one who
enters into an open computer network ought to be surprised by th e existence,
capabilities or use of el ectronic searching. Nor should anyone, even one who
remains outside the networ k, be shocked that words of trade and commerce,
including trademarks, show up in Internet communications as targets and outputs of
search engines. In other words, a web us er’s utilization of search technology should
be no more suspicious than a sign painter’s use of a paintbrush; what matters is not
the technology but what is done with it. Mere search engine use of the trademarks of
another—as metatag targets or banner advertisement prompts, for example should
not be verboten any more than use of tr ademarks in labels, coupons, or comparative
print advertisements. Abuses, if they occu r, can always be di stinguished and dealt
with appropriately822.
Just as media are treated more deferentially than other speakers, and just as common
carriers like telephone companies are give n immunity from content restrictions,
courts may need to provide special protec tions for search engines. Certainly an
automatically generated search engine lis t of links to illegal content should be
treated differently than a list of links created by a party that deliberately seeks to
direct traffic to the illegal sites. While this problem may be handled in part by the application of the traditional element of contributory infringement that requires
knowledge by the alleged contributory infringer, it may be necessary to create a

821 ibid at p 363
822 ibid at p 364
260

search engine exemption or privilege in some situations. Courts already seem
cognizant of the critical need for search e ngines, indexes, and links associated with
such search tools823.
(5) Use technology rather than law to close doors on any open network:- Where
web publishers desire to control access to their otherwise unrestricted websites such
as by prohibiting deep links legal barrier s should not be the preferred method.
Rather, web publishers should be expected to utilize all pract ical and available
technological tools to achi eve their objectives before they seek innovative legal
rulings, which will inevitably carry broad effects824.
Deep linking, for example, can be addressed with the he lp of technology by various
means, including requiring password access, blocking requests or links except from
certain pre-approved sites, use of dynami c (i.e., frequently changing) URLs for
subsidiary pages. If web publishers use thes e rather than legal methods to control or
restrict deep links, they can satisfy their objectives without causing distortions to the law or hardships or restrictions on the broad Internet community. The same principles ought to apply to problems be-sides deep linking as well
825.

(6) Study issues raised by framing or inlining, and encourage licensing where
websites incorporate off-site materials: – Framing and inlining technologies raise
more concerns than simple reference hyperlinks. Both techniques raise serious
issues of the creation of derivative work s under copyright law. In image inlining,
when A takes B’s copyrighted image and places it on A’s website—perhaps as an integrated element of a composite desi gn such as a collage—A seems to have
adapted B’s work and hence violated B’s ex clusive right to make derivative works.
When A uses framing technology to frame portions of B’s web content on A’s website, the derivative wo rk issue may arise, al though one does not create a
derivative work by putting a frame (e.g., a picture frame) around a copyrighted
work
826.

823 ibid
824 ibid at p 365
825 ibid
826 ibid at p 366
261

The non-copyright issues ar ising from framing and inlin ing need more study. The
Total News complaint artfully highlighted some serious potential legal concerns
with framing, but due to the particular relative sizes of the litigants (major media
companies against a small web pioneer) and the early settlement utilizing a linking license, these innovative theori es never underwent real test ing. In particular with
respect to the unfair competition theories in such a case, the facts regarding
consumer perceptions are all important. Do consumers believe when they view a
framed site that the framed site is asso ciated with the frami ng site? Or do viewers
see a framed site for what it is, and easily navigate directly to the framed site when
they so desire? Similarly the issues of advertising expectations and losses need
factual development before we settle on legal policies for these situations
827.
(7) Consider Internet consequences in analyzing proposed legislation: – Just as the
Shetland Times case foreshadowed linking disputes in the United States, foreign
link law disputes continue to preview the kind of disputes and legal claims that may
develop in the United States. Several recent European cases, for example, warn that we may see future deep linking claims base d on database rights if the United States
enacts database protection legi slation similar to that in the European Union. For that
the possibility of opening up more deep linking claims in conn ection with proposed
legislation like database pr otection. As our society walks down the path of greater
recognition of proprietary rights, it must take care that it does not in so doing unduly
restrict useful tools and techniques like Internet linking
828.
(8) Maintain flexibility to permit adaptation to technological advances:- Laws must
be adaptable to evolving technologies. The Internet is changing and evolving rapidly and consequently courts need to be caref ul not to promulgate doctrines narrowly
tailored to today’s technology, which may be gone tomorrow. HTML, today’s
“language of the web,” may be replaced before long with eXtensible Markup
Language (“XML”), a new computer language that could dramatically affect the
way links operate, and which might empowe r both linker and linkee alike to deal
more directly with the links of concern to them. Courts shoul d be particularly

827 ibid at p 366
828 ibid at p 367
262

cautious about intervening in areas wher e new technology may empower private
problem solving829.
5.9 Digital Millennium Copyright Act (DMCA)
One of the earliest attempts made in the hist ory of cyberspace to protect the interest
of the copyright holders in th e digital era can be traced to the enactment of DMCA
by US. On October 12, 1998, the U.S. Congr ess passed the Digital Millennium
Copyright Act (DMCA), ending many months of turbulent negot iations regarding
its provisions. The Act is designed to implement the treaties signed in December
1996 at the World Intellectual Prope rty Organization (WIPO) Geneva
conference830, but also contains additional provisions addressing related matters831.
Some of the important features of the DMCA are as follows
a) Makes it a crime to circumvent an ti-piracy measures built into most
commercial software832
b) Outlaws the manufacture, sale, or dist ribution of code-cracking devices used
to illegally copy software833.
c) Does permit the cracking of copyright protection devices, however, to
conduct encryption research, assess product interoperability, and test computer security systems
834.

829 ibid at p 368
830 WIPO has made two treaties for the protection of copyright holders – Two treaties were concluded
in 1996 at the World Intellectual Property Organization (WIPO) in Geneva. One, the WIPO
Copyright Treaty (WCT) , deals with protection for authors of literary and artistic works, such as
writings and computer programs; original databases; musical works; audiovisual works; works of
fine art and photographs. The other, the WIPO Performances and Phonograms Treaty (WPPT) ,
protects certain "related rights" (that is, rights related to copyright): in the WPPT, these are rights of
performers and producers of phonograms.
831 The UCLA Online Institu te for Cyberspace Law and Policy, The Digital Millennium Copyright
Act available at http://www.gseis.ucla.edu/iclp/dmca1.htm , visited 10 Jan 2005

832 Sec.1201, Digital Millennium Copyright Act, 1998
833 ibid
834 Sec.1201(c)(1) , Digital Millennium Copyright Act, 1998 (Title I)
263

d) Provides exemptions from anti-ci rcumvention provisions for nonprofit
libraries, archives, and educational institutions under certain
circumstances835.
e) In general, limits Internet service pr oviders from copyright infringement
liability for simply transmitting information over the Internet836.
f) Service providers, however, are expected to remove material from users' web
sites that appears to constitute copyright infringement.
g) Limits liability of nonprof it institutions of higher e ducation, when they serve
as online service providers and under certain circumstances for copyright infringement by faculty memb ers or graduate students
837.
h) Requires that "webcasters" pay licensing fees to record companies838.
i) Requires that the Register of Copyright s, after consultation with relevant
parties, submit to Congress recommendations regarding how to promote distance education throu gh digital technologies while "maintaining an
appropriate balance between the rights of copyright owners and the needs of
users."
839
j) States explicitly that "nothing in this section shall affect rights, remedies,
limitations, or defenses to copyright infringement, including fair use…"
Digital networked environments pose partic ularly severe challenges for owners of
intellectual property rights because digital networks make it so simple for members
of the public to make multiple copies of those works and distribute them to
whomever they choose at virtually no cost. Left unregulated, this activity would
undermine the incentives of authors and publishers to invest in the creation and distribution of creative works, for the first distribution of a digital copy to the public

835 Sec.1201(d), Digital Millennium Copyright Act, 1998 (Title I)

836 Sec.1201(c)(2), Digital Millennium Copyright Act, 1998 (Title I)

837 Sec 512 (e) Title II of Digital Millennium Copyright Act, 1998

838 Title IV, Sec.112, Digital Millennium Copyright Act, 1998

839 Title I, Sec.104, Digital Millennium Copyright Act, 1998

264

would enable those who receive it to set themselves up as alternative publishers of
the work, able to undercut the first publishe r's price because they need not recoup
any development costs840.
5.10 Trademarks and Domain Names in Cyberspace
A trademark is a name, word, symbol, or de vice used by a manufacturer of goods or
a supplier of services to designate products sold and to distin guish them from goods
or services sold by others. In the case of goods, the mark must be affixed to the
goods, or to packaging or point of sales displays. In the case of services, the mark
must be used so as to designate the serv ices, usually in advertising referring to the
services.
The problem with trademarks on the Intern et often is whether trademark use has
occurred or not. In the "real " world, we can slap a label on a product or put a sign on
a building, but in the on-line context, the us e of the trademark may be as ephemeral
as a momentary appearance on a computer screen841.
In Playboy Enterprises v. Frena842,839 F Supp 1552 (MD Fla 1993), the court found
trademark infringement when a subscr iption computer bulletin board owner
distributed Playboy photographs owned by Pl ayboy Enterprises, In c., that contained
the "PLAYBOY" and "PLAYMATE" trad emarks. The court also found unfair
competition and violation of trademark law based upon the bulletin board owner
obliterating some Playboy trademarks a nd putting its advertisement on Playboy
photographs. The court found that these acts of the defendant made it appear that
Playboy had authorized use of th e photographs on the bulletin board843.

840 Samuelson ,Pamela, “Legally Speaking: The NII Intellectual Property Report”, available at
http://www.eff.org/IP/?f=ipwg_nii_ip_report_samuelson.comments.txt , visited on 21 Dec 2005
841 Jere M. Webb ,Trademarks, Cybersp ace, and the Internet, available at
http://www.gseis.ucla.edu/iclp/jmwebb.html , visited on 7 Jul 05.

842 The Internet Law Page, Playboy v Frena available at http://floridalawfirm.com/iplaw/playb2.html
843 ibid
265

Similarly, in Sega Enterprises, Ltd. v. Maphia844, 857 F Supp 679 (ND Cal 1994),
the court enjoined a computer bulletin board owner, based on copyright and
trademark infringement, from uploading a nd downloading unauthorized copies of
Sega's video games. Sega's trademarks appeared on the copied games and on file
descriptions on the bulletin board845.
The expanded usage of the Internet for co mmercial purposes has re sulted in greater
importance and significance of name recognition on the Internet. An identifying
address on the Internet, the "domain name", creates an expectation about who and
what is located at that address. Because a domain name may suggest identity,
quality and content, it may be closely related to or function as a trademark846. A
domain name is the human friendly address of a computer that is usually in a form easy to remember or identify – www.abc.com .
The Internet domain name registration polic y of first come/first served has resulted
in hundreds of controversies surrounding ow nership of a particular name ,
including a number of well-known instances where individuals have registered
names based on a corporation's trademark or where corporations have registered
names based upon a competitor's trademark
847.
Controversy and confusion result especia lly where well-known trademarks have
been registered by unrelated third parties for the purpose of re-selling them to the
rightful owner or using them for their own purposes. This has been come to known
as “Cybersquatting ”. That is, deliberate registration of trade names or trademarks of
another company or individual in bad faith.
Panavision International V Deniss Toeppen848 , a case filed in United States of
America, is a classical case of cybersqua tting. When Panavision , the owner of

844 David Loundy’s E-law, Available at http://www.loundy.com/CASES/Sega_v_MAPHIA.html
845 ibid
846 Rich L Lylod , “Trademark Protection in Cyberspace”, http://www.publaw.com/cyber.html
visited on 9 Jul 2005
847 ibid
848 Cited in Rawell Sanjiv and Kudrolli Shakeel, “Legal Issues in E-commerce”, Management
Review, (Sep 2000) . See also Findlaw, available at http://laws.lp.findlaw.com/9th/9755467.html
266

several federally registered trade mark including ‘Panavision’ attempted to establish
a website under its own name, it discove red that Toeppen had registered
‘panavision.com’ as its domain name. Therefore, the company was unable to register and use its trademark as an in ternet domain. When Panavision notified
Toeppen, he demanded $13,000 to discontinue his use of the domain name. Panavision refused Toeppen’s demand and filed an action for infringement. The
court granted an injunction order restraining Toeppen fr om using ‘panavision’ for
business purposes and furt her directed him to transfer the domain name to
Panavision International.
In India too, there have b een two reported cases of domain name/trademark disputes
so far . In the case of Yahoo Inc V Akash Arora
849 , the Delhi High Court protected
the international reputation of Yahoo and restrained Arora from using
‘Yahooindia.com’. The Mumbai High Court went a step further and in the case of
Rediff Communicati on V Cyber Booth850, held that a domain name is a valuable
corporate asset requiring protection.
In India, we do not have a specific legisl ation which prevents cybersquatting as in
US, where cybersquatting is regulated by Anti-cybersqua tting Consumer Protection
Act, 1999. But the definition of “mark” and “trademark” given by Trademarks Act,
1999 under Sec.2 (1) (m) and Sec.2 (1) (z) ar e wide enough to cover the issues of
domain name. It may be noted that a “mark” is used, rightly or wrongly, if it is used
in printed or other visual representation as per Se.2 (2) (b). It can not be doubted
that a domain name corresponding a mark is de finitely used both in the printed form
(electronic form) and by the visual repr esentation. Thus, the provisions of the
Trademark Act, 1999 can be safely invoked to fix the liability in cases involving
domain names.

849 1999 PTC 201
850 2000 PTC 209
267

5.10.1 Metatags – Use of Indexing Words
Meta tag misuse may generate less obvious but equally serious problems to
trademark holders. Web sites are written in the HTML (Hyper Text Markup Language) language. This languag e is nothing more than a list of "tags" that can be
used to format and arrange text, images, and other multimedia files. "Meta tags" are tags that have no visible effect on the Web page. Instead, they exist in the source
code for a Web page to assist search engi nes (for example Google search engine) in
ascertaining the content of the page. Pr oblems arise when companies include in
their own Web sites Metatags containing the names or descriptions of other
companies. Suppose, for example, that Coca Cola used the keyword "Pepsi" in its Metatags. Web surfers who used search e ngines to obtain information about "Pepsi"
would then be directed to Coca Cola's Web site
851.
5.11 ICANN and UDRP
Internet Corporation on Assigned Names and Numbers (ICANN) has taken up the
responsibility of resolving domain name disputes. The ICANN’s domain name resolution policy has sought to address the issue of cybersquatting through a mechanism of online arbitration. The Wo rld Intellectual Property Organization’s
(WIPO) Arbitration center has passed orders in more than a hundred cases directing
cybersquatters to transfer the disputed domain names to their true owners. Bennet
and coleman was the first in India to have got back its trademarks and the well
known names “thetimesoindia.com” and the “theeconomictimes.com” from the cybersquatters. It may be noted here that the online dispute resolution mechanism is
limited in its scope to cybersquatting.

851 Berkmen Center for Internet and Society, Harvard Law School, Intellectual Property in
Cyberspace (2000), http://cyber.law.harvard.edu/property00/metatags/main.html , visited 10 Jan 2005
268

Uniform Domain Name Resolution Policy852 (UDRP) has laid down three
substantive conditions which define what the complainant must show in case
cybersquatiing;
(1) The domain name must be identical or confusingly similar to a trade mark in
which the complainant has rights;
(2) The respondent must have rights or le gitimate interest in the domain name; and
(3) The domain name must have been re gistered and be used in bad faith
While these principles are a reflection of a shared approach in most legal systems to
deliberately wrongful misrepre sentation of indications of source, it does not follow
the precise rules of any one legal syst em. Fundamentally that is because the
comparison which has to be made is in esse nce different. In a di spute over the use of
trade marks or names, the claimant is us ually concerned to s how misrepresentation
relating to the defendant’s use of the mark on the same or similar goods or services.
But a domain name is not tied to trade in anything in particular or indeed to any
obligation to use it.
The boldest cyber-squatters offer no apol ogy for acquiring the domain name simply
in order to sell it to the enterprise or person whose name is being taken in vain.
Others may offer an excuse from a range of ingenious justifications. Deciding how
far these must be treated as genuine is a recurrent reason how UDRP adjudication
can be far from straightforward853.
First, the claimant’s right to a mark and confusion with it. It is accepted that the
right may arise through protection of a trad ing reputation as well as by registration.
But a panel may look carefully at claims where the mark is, for instance, descriptive. Evidence for this, which complainant may be unwilling to reveal, may

852 See Internet Corporation for Assigned Names and Numbers for complete document, available at
http://www.icann.org/udrp/udrp.htm , visited 20 Jan 2005
853 Cornish William and Llewelyn David, Intellectual Property: Patents, Copyright, trademarks and
Allied Rights, 5th Edition, Sweet and Maxwell, London, 2003
269

appear from the fact that app lications to register the mark have not been made or not
progressing. The claimant may succeed where a case of unfair competition or
passing off can be shown to exist, for ex ample, from unfair competition or passing
off can be shown to exist, for example, fr om long established or heavily advertised
trade or other activity. It is over such matters that the scheme is at its most eclectic:
the result is supra-national body of precedent which is rapidly burgeoning854.
It is also accepted that such “common law ri ghts” may be those of celebrities, such
as pop stars, authors and sportsmen, since they will at least have rights in the
primary goods or services which they are invo lved in offering. It is sometimes said
that this goes further than, for instance, English law, which has been reluctant to
protect a celebrity’s ability to endorse the goods or services of others. But that is to
forget that a domain name is not tied to the making and marking of particular goods
and services. Most of the celebrities who have succeeded under the UDRP have a “trade” connection with the primary goods (books, records, film s) or services
(signing, modeling, footbal ling) which make them fam ous. Whether the same can
be said of municipal aut horities or other public bodies which claim rights in the
name of their town or region is much more questionable, even if they hold a mark
registration. One issue is who should b allo wed to succeed (particularly in securing
a transfer of the domain name) when there are several potential complainants
855.
As to probability of confusion, the global character of the Internet poses various
problems. Who are the public who are likel y to be confused by a domain name? It
has been held to be any group of substantia l size within a country as well as a region
or language group. The issue has arisen particularly over “gripe sites” for airing
complaints about well-known enterprises and individuals. Any American knows that “walmartsucks.com” is unlikely to lead to an official Walmart site, but will Greeks,
Ethiopians or Phillippinos?
856

854 ibid at p 818
855 ibid at p 819
856 ibid
270

Secondly, a right or legitimate interest of the respondent in the name . The UDRP
states that the respondent can make this out by showing (i) that he has used the
domain name, or made genuine preparations to use it, for a genuine website; (ii) that
he or it is commonly known by the name; or (iii) that he is making a legitimate non-
commercial or fair use of the domain name, without intent, for commercial gain, to
divert Internet users or tarn ish the complainant’s mark. Justifications under one or
other of these heads play pr ominent parts in contested UDRP cases, but they need to
be more than unsupported assertions. Some of the submissions are dismissed as disingenuous or fantastic. This may well be the fate of assertions that the name is
the nickname of the respondent or a family member, or is the name of some event,
individual or character associated so mehow with them. The same may happen
when a claim to be running a business is not shown to have any substance
857.
Where the respondent asserts an intent ion to set up a site commenting on the
complainant by way either of adulation (a fan club) or of criticism (a commercial
gripe site, political opposition), it is particularly important to recognize any genuine claim to freedom of expression, given its st atus as a human right. Claims of that
kind deserve very careful attention. Th ey can scarcely be sustained where a
respondent has collected an array of doma in names, which he is offering to be
targeted enterprises in order to save them from the domain falling into the hands of
someone else that might actually set up a site for spoofs, parodies, complaints,
exposes or denunciations
858.
Thirdly, bad faith both in re gistering and using the name . Here the policy makes
explicit that “use” has a broad meaning. It covers situations where (i) the domain name has been obtained primarily for the pur pose of selling it to the complainant or
a competitor for a sum exceeding out-of-pocket costs; (ii) where the registration is
in order to prevent the complainant from re flecting its mark in that domain name or
to disrupt its business; and (iii) where it wa s registered in order to try to divert

857 ibid at p 820
858 ibid
271

Internet users to the res pondent’s website by creating a likelihood of confusion.
Each of these types of use has in turn b een read inclusively. Under (i) advertising
the domain as being for sale on an aucti on website can satisfy the condition. Under
(ii) it is not necessary to show that the co mplainant has been deprived of all possible
domains. Evidence that it has appropriated many of them merely reinforces the
proof of mala fides859.
Under (iii) there is a diffi cult question: when, in the process of discovering a
website, then clicking on to it and scrol ling its pages, can sufficient probability of
confusion be said to arise? A search engi ne looking for the main word in the gTLD
may produce a great splay of s ites. Internet users soon learn that many of them will
not be an “official” site. Their true natu re will generally be clear from the home
page at the site itself, or sometimes only by moving further into the site. If users are
led by the name to what turns out to be a comment site which is judged to be a
legitimate outlet for opinion, th is cannot be a bad faith holding of the name. On the
other hand, if the site proves to be a sales outlet for other goods than the complainant’s, the temporary uncertainty between finding the site and perusing it is likely to be treated as showing bad faith. Here too there are uncertainties and
inconsistencies at work
860.

UDRP jurisdiction has been heav ily used in its early year s: WIPO alone has handled
some 20,000 cases in just over three years. Across the world established businesses have readily accepted the results. Of a handful of critical analyses, some raise issues of real concern part icularly that some panelist s have been unduly ready,
either to accept the complainant’s account of the situation or to stretch the terms of
the policy beyond any acceptable limits. It is true that the only means of questioning a decision is to bring proceedings in an appropriate national court, and
that has happened only on a handful of o ccasions. The phenomenon of “reverse
high jacking” has been acknowledged as a h azard: inevitably some complaints will

859 ibid at p 821
860 ibid
272

turn out to be illegitimate attempts, ba sed on fabricated evidence or wholly
unjustified assertions, to oblig e domain holders to pay up or suffer transfer. Panels
have been given power to declare against a complainant. Respondents rarely seek to
have them exercise their powers and much more rarely still is a finding against a
complainant successful861.

On balance, however, the confidence which the policy has generated seems justified. The jurisdiction deserves compar ison with the other “internal” solution to
disputes which the Internet is generating: the Notice and Take Down procedures for
controlling improper content on the Internet by requiring site closure or changes
through the intervention of the Host Service Provider. In the US at least this is
proving one method of mass action against c opyright and other infringement which
is affecting the balance of power between right-owners and their opponents. It too
is capable of over-enthusiasti c application: for instance where a site is closed down
even through it makes legitimate material ava ilable as well as mate rial that infringes
copyright (or is defamato ry or pornographic, etc)
862.
The two schemes use the Internet to police its operation, with effects for the system
across the globe. Both open prospects of mass action which cannot be expected of
litigation through national court sy stems. They affect very different sorts of Internet
operator: Notice and Take Down is typica lly aimed at free sharing: the P2P site
which provides access to music, films and the like without having to pay the right-owner’s subscription to an authorized servi ce. The root intention is not to make
money (though that may become an indirect motivation). Many fr ee sharers find it
simplest to submit to the take down and to set up again under a new name. The domain name appropriator, on the other hand, is in the business of selling particular
names and will have no chance of regaining hi s asset if it is transferred away to a
person entitled to object to a bad faith operation. That is why the UDRP and like jurisdictions are in practice so much more contentious and why the need to oversee

861 ibid at p 822
862 ibid
273

the fairness of the adjudicative process will re main important as long as this form of
name squatting persists863.
5.12 Patent Misuse in Cyberspace
Internet is software driven. Software en ables the networking of computers and the
actual transmission of data. Controversy as to whether computer software should be
protected under copyright law or patent la w is not yet resolved and still remains as
an elusive concept for intellectual property lawyer.
Patents are granted to inventions which are new, novel and useful864. Traditionally,
patents have been associated with more i ndustrial or scientific innovations, such as
machinery, manufacturing process, computer chips and pharmaceuticals. A patent
grants its owner the right to exclude othe rs from making, using, selling, or offering
to sell the patented invention. However, as technology changes, so do the patent
laws available to protect it.
Two important issues concerned with pate nts and have created controversy over the
cyberspace are software patents and business method patents. Sec.3 (k) of the Indian
Patent Act, 1970 expressly excludes paten ting of business methods and computer
programs per se from the subject matter of patentability. Hence in India patents are
not available to computer programs per se and business methods either in the real word or in the cyberspace. But countries like United States of America and Japan
have already started granting patents for business methods and granting patents for
computer software has become well es tablished practice in these countries.

863 ibid
864 Art.27.1, WTO Agreement on trade Related Aspects of Intellectual property Rights- patents shall
be available for nay inventions, whether products or processes, in all fields of technology, provided
they are new , involve an inventive step an d are capable of industrial applications.
274

In Amazon.com V Barnesandnoble865, Amazon.com filed a pate nt application with
USPTO (United States Patent and Trad emark Office) for a business method;
“Method and system for placing a purcha se order via a comm unications network”.
In its patent application, Amazon.com claimed as its invention a business
methodology for placing an order, where by in response to only a single action
performed by a consumer (such as click of a mouse), a reque sted item may be
ordered. Additional information necessary to complete the order, such as credit card
number and shipping address, is obtained from information previously received
from the consumer and stored in a data base by the vendor. This patent was dubbed
as “1-click” patent because users of th e invention need click only once with the
mouse on a hyperlink to complete the purch ase of an item. When BarnesandNobel,
followed the same method for its operations , the court granted interim injunction
and restrained the BarnesandNobel from using the “1-click” method of operation866.
Some commentators have criticized the “1-c lick” patent as an example of a patent
system gone astray. These critics contend th at the patent system has been stretched
too far with the allowance of business method867 patents, and that even if business
methods are worthy of patent protection, th e US patent and Trademark Office is not
equipped to handle the examination of patent applications for this type of innovation. At the same time, others herald the patenting of business methods as a
natural progression in an ev er changing technology driv en world. As it so often
happens, the truth probably lies somewhere between
868.
Regardless, few will dispute that business method patents, as well as software patents in general, are having a profound impact on how software and internet
companies are conducting business. Technology companies that just a few years go

865 U.S. Federal Circuit Court of Ap peals, Findlaw, available at
http://laws.findlaw.com/fed/001109.html , visited 21 Jan 2005

866 Isenbourg Doug, “The Giga Law, Guide to Internet Law”, Random House Trade Paperback
Edition, New York,( 2002)
867 Sec.3(k) of the Patent act, 1970 excludes patenting of business methods in India.
868 Isenbourg Doug, “The Giga Law, Guide to Internet Law”, Random House Trade Paperback
Edition, New York, (2002) at p112
275

would not have ever considered the impact of patent protection – either offensively
or defensively- are now devoting many reso urces to ensuring they are protected ,
and minimizing the possibility of in fringing third party patent rights869.
5.13 Conclusion
Information and Communicati on Technologies gives rise to a variety of legal
problems. The problems themselves are not novel in their char acter. But they
deserve special treatment, because of the e nvironment in which they take their birth
and the nature of the machinery used in the environment and the means employed
for recording the info rmation in question.
The digital dilemma is that the information technology that is making more current
information available more quickly and completely also has the potential to
demolish the balancing of public good and pr ivate interest that has emerged from
the evolution of inte llectual property law.
The relationship of copyright to new technol ogies that exploit c opyrighted works is
often perceived to pit copyright against progress. Historically, when copyright
owners seek to eliminate a new kind of dissemination, and when courts do not
deem that dissemination harmful to copyr ight owners, courts decline to find
infringement. However, when owners seek in stead to participate in and be paid for
the new modes of exploitation, the courts , and law making bodies, appear more
favourable to copyright cont rol over that new market. Today, the courts and the
legislatures regard the unlicensed dist ribution of works ove r the internet as
impairing copyright owners; ab ility to avail themselves of new markets for digital
communication of works; they accord c ontrol over those mark ets to copyright
owners in order to prom ote wide dissemination. Copyr ight control by authors,
particularly those excluded by traditiona l intermediary-controlled distribution

869 ibid at p113
276

systems, may offer the public an increa sed quantity and variety of works of
authorship870.
Legal, economic and public policy research should be undertaken to determine the
extent to which intellectual property righ ts have to be protected in cyberspace.
Appropriate modifications in existing intelle ctual property law have to be made and
if necessary new legislations must be enacted to meet the challenges posed by this
new technology. Internet being a borderless medium is responsible for the ‘death of distance’
871 among nations which has created inte rnational jurisdictional problems,
international conventions/treat ies seem to be more appropriate to protect and
promote the interest of the cyberspace entities.

870 Ginsburg c Jane, Copyright and Control over New Technologies of Dissemination, Columbia
Law Review, Vol.101, N0.7 (Nov.2001), p 1613-1647
871 Cairncross Frances, Death Of Distance, Harvard Business Review Publications, 1997
277