WIPO Could Enter Growing Fray Over Internet Domain Takedowns

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An influential private sector trademark defender is proposing to the World Intellectual Property Organization to undertake creation of an international “notice and takedown” system for alleged online trademark infringers.

And he told Intellectual Property Watch that this will be followed in a few months by a separate proposal for a “notice-and-trackdown” article requiring internet service providers to divulge information about online counterfeiters so they can be gone after.

The notice-and-takedown proposal was to be presented this week to WIPO Director General Francis Gurry by Frederick Mostert, former president of the International Trademark Association (INTA) and veteran of international negotiations and enforcement actions.

Mostert publicly presented his argument on 15 February in Geneva at an INTA-sponsored event on famous and well-known marks, which are typically owned by large companies who are seeking to prevent knock-offs of their expensive products.

Notice-and-takedown refers to an approach from the US Digital Millennium Copyright Act (DMCA) that requires internet service providers to take down any content online that is alleged to be infringing a copyright, within a reasonable time after receiving notice from the copyright holder.

Mostert said his argument will appear as an article (co-authored by Martin Schwimmer) in the upcoming 100th anniversary edition of the Trademark Reporter, INTA’s law journal.

WIPO has an established arbitration and mediation centre that rules on internet domain name ownership disputes. The Internet Corporation for Assigned Names and Numbers (ICANN), which oversees technical aspects of the domain name system, also has such procedures.

The concept of famous and well-known marks has been addressed in international agreements for decades, but protections have been climbing since the 1883 Paris Convention for the Protection of Industrial Property.

Under Article 6bis of the Paris Convention there are some steps that can be taken against non-registered well-known marks, which is repeated and further extended in the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

WIPO concluded a “joint recommendation” on the issue in 1999, giving further definition to the term “well-known” and others. Mostert participated in that negotiating process, and said that although the joint recommendation is non-binding, it has legal impact and takes less time to negotiate than a treaty.

An effort was made to include the notice and takedown concept in the Anti-Counterfeiting Trade Agreement (ACTA) completed last year but was taken out before the final version due to resistance from advocates of the free flow of information on the internet, among others. Other venues have been eyed as well.

On what to do about counterfeits, Mostert said there is one word for what rights holders want at this stage in history: enforcement. That’s because the IP laws are already largely in place, he said.

Next Wave: Hacking into IP Vaults?

Mostert shared war stories from the enforcement front, exhibiting his ingenuity in stopping counterfeiters on the ground. Now he is taking the fight to the internet. He is concerned that the “next wave” of work for IP enforcers will come from hacking of company intellectual property. Recently, Richemont had a cyberattack that went straight to its intellectual property and designs, and he later determined that a number of other large western companies had experienced the same attack.

The way to address the problem of counterfeit goods being sold on legitimate auction sites like eBay has been to work together, he said. He gave an example of railroads and farmers, who worked together to solve a mutual problem when steam trains would shoot sparks into adjacent fields and cause fires. They met and came away with a joint plan: railroads would develop new methods to contain sparks, and farmers would clear a buffer zone next to railroads.

Mostert said he does not favour a “three-strikes” policy pursued by some countries that leads to removing internet access for people accused three times of IP infringement online. “A lot of innocent people would have been affected,” he said, also referring to freedom of speech issues that arise when a person’s access is cut off.

United States’ Unilateral Website Takedowns

The United States has let go of most of its control of the internet since its creation there several decades ago, but it retains special access to the Internet Assigned Numbers Authority, which manages the the underlying numbers associated with each internet domain.

In recent months and with increasing frequency, the US government is unilaterally removing domain names from the internet that it deems to be infringing on intellectual property rights. This week, the US Justice Department announced the takedown of 10 websites accused of involvement in child pornography (hosting hundreds of photos among other things).

The actions, like the proposals from Mostert, emphasise speed in addressing the problems. It is unclear whether the United States – or any other government – has the international right to act on its own. But it is also probable that working through international channels would be a slow route to remedying a problem to which industry typically assigns a multibillion price tag, not to mention the attendant social harms.

Mostert told Intellectual Property Watch that he prefers an international solution than actions by individual governments. Notice-and-trackdown, he said, “will only work on an international platform.”

The US Line on Freedom of Speech v. Takedowns

Simultaneously this week, the US State Department went on the offensive to promote its internet freedom campaign, and Secretary of State Hillary Clinton argued against internet takedowns for freedom of speech reasons without referring to internet takedowns for other reasons such as IP rights infractions.

“We have determined as a society that it [freedom of speech] is far more effective than any other alternative approach. Deleting writing, blocking content, arresting speakers – these actions suppress words, but they do not touch the underlying ideas,” she said. “They simply drive people with those ideas to the fringes, where their convictions can deepen, unchallenged.” She referred, among other things, to the Egyptian government’s near-complete shutdown of the nation’s access to the internet, before its fall.

In 15 February remarks, Clinton denied reports that the US government intervened to coerce private companies to deny service to Wikileaks. She made a distinction between the Obama administration and efforts by elected officials in the US Congress, some of whom have suggested blocking action against Wikileaks. This week, a bill was introduced into the US Senate that would make leaks of government information a felony.

“Business decisions that private companies may have taken to enforce their own values or policies regarding WikiLeaks were not at the direction of the Obama Administration,” she said.

“I said that the WikiLeaks incident began with a theft, just as if it had been executed by smuggling papers in a briefcase,” Clinton said. “The fact that WikiLeaks used the internet is not the reason we criticised its actions. WikiLeaks does not challenge our commitment to internet freedom.”

William New may be reached at wnew@ip-watch.ch.

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