Silicon Dale

IP protection - copyright, patents, trademarks, company names, and dot.coms

I am writing this as a lay user - a geologist - and not an IP lawyer, and therefore no-one should take this too seriously. I am certainly not qualified to give advice on these matters. If you want advice or legal facts, go to a patent and trademark attorney or buy a book. I shall be airing a few thoughts on what is, and what I think should be, as it affects the mining IT business.

The first, and thorniest, question is over copyright. I think it is true to say that the issue of copyright on computer software still remains open, in the USA, the UK, and elsewhere. It is difficult to protect intellectual property within computer code. In the USA it has become common in recent years to patent software solutions (for example Amazon.com's 'one-click' technology) and this is the strongest protection possible because it relates directly to the idea or the algorithm and not just a particular representation in source code. However, such patents are generally not possible to obtain in countries outside the USA, and many people in the USA argue that the USA patent law has too broad a scope. Thus copyright is generally the only protection available. Unortunately for the IP owners, this is a very weak protection. Apart from the argument that copyright is intended to protect literary works, and most software products are not literary works, there is the much stronger problem that a trivial global edit or a trivial re-formatting of a program can leave it completely unchanged in terms of its functionality, but would change the text sufficiently to escape any copyright protection.

Other forms of protection, such as trademarks, Internet domain names, and company names, have no direct connection with the IP but protect trading rights of a business. The rules vary from one country to another, but essentially any of these three types of name must be unique within each jurisdiction. Thus there cannot be two companies called 'Acme Software' within England and Wales. However, there could be other 'Acme Software' companies in other jurisdictions, such as in France, and in Germany, and in the USA, and they need have no relationship to each other. If you wish to protect a company name, you must register a company of that name in every country where you are planning to do business.

You may, however, not wish to go to the expense of maintaining a huge international network of subsidiary companies (many of which may themselves transact no business at all). It may be important to you simply to protect your product name. This can be done through trademarking. The name is entered on a register, and applies within a particular jurisdiction for a particular class of products. In other words you can register 'Acme' as a software product in Australia. Someone else may register 'Acme' for a different class of products, say kitchen equipment, also in Australia, or may register 'Acme' software in Canada. In order to protect your product worldwide, you therefore need to register trademarks everywhere you expect to do business. There is one problem (well, actually, it's just one of many). You cannot register as a trademark a word which is in common use within the chosen product scope. Thus no-one can register the trademark 'Soap' for a cleaning product (though you might be allowed to do so for a mining software product !). Another problem is that you must establish that your mark is actually being used - and by you. Now this is a chicken-and-egg situation. You cannot protect your product name until you have started to use it. But you shouldn't really use it until you have protected it. The way out of this impasse is that you should be able to establish 'prior use' if someone else were to try to register it. Be careful to keep documentation of your entry into each new market - for example, copies of advertisements with evidence of publication dates.

Finally, Internet domain names. The situation here is much newer than with other types of IP protection, and is governed not by law but by administrative procedures established by ICANN, (the Internet Corporation for Assigned Names and Numbers). Until 1999, although anyone could register domain names (other than anything.mil reserved for the US military or anything.gov for the US government), this was quite expensive as Network Solutions Inc, the registrar in the USA, had a monopoly, and their charges were high. Now however, the registration procedure has been partially deregulated and opened up to competition. The result is much reduced charges and a deluge of new domain name registrations. Many companies have found that their names are no longer available for them to register. Names with the standard international top-level domain ".com" are guaranteed unique worldwide - not merely within one country. The result is that there is now a scramble for the few remaining short and catchy names. Earlier this year all possible combinations of three letters and numbers had been taken up, and most four-letter words too.

Growth in national domain name registration (.de, .fr, .co.uk, etc) has also accelerated dramatically, and it is widely expected that a range of new top-level domains will be introduced later this year. Meanwhile some smaller countries are earning a windfall from selling their own domains (Tuvalu, .tv, Western Samoa, .ws, Tonga, .to and others).

There is now an active after-market in domain names. There is also the seamier side of the business. Cyber-squatters register the names of well-known companies or personalities in the hope of re-selling them for astronomical profits. However, ICANN's rules - which apply to .com, .org, and .net names under its control - now give trademark owners the right to take back their own domains without compensation. In most cases which have so far been ruled, the trademark owners have received their domain names. A big problem which is already becoming apparent is that couirts of law - mostly in the USA and Canada - are being asked to rule on competing claims to ownership of domain names. Recent celebrated cases include Madonna.com, used as a pornographic site, and claimed by the singer, and which may ultimately be awarded to a Californian hospital which already owns Madonna.org. There is no guarantee that ICANN's rather strict (and some believe inconsistent) rules will be upheld in all cases. There is a trend for the domain name business to become concentrated on names which are either generic (and not therefore registrable as trademarks) - like ‘geosciences.com' or at least do not match any existing trademark and therefore can themselves be trademarked.

Stephen Henley
Matlock, England
steve@silicondale.co.uk
www.SiliconDale.com

Copyright © 2000 Stephen Henley
IP protection - copyright, patents, trademarks, company names, and dot.coms: Earth Science Computer Applications, v.16, no.3, p.1-2