Pharma industry examples

National Rights, Global Internet New ways to defend trade marks online

90th PTMG conference Jonas Kölle, Merck

Agenda

2

1.

Introduction

2.

Online exploitation of territorial rights?

3.

Targeted websites in the pharmaceutical industry

4.

Influence of geo IP solutions to jurisdiction

5.

Effect on WIPO Joint Recommendations

6.

Conclusion

1.

Introduction

2.

Online exploitation of territorial rights?

3.

Targeted websites in the pharmaceutical industry

4.

Influence of geo IP solutions to jurisdiction

5.

Effect on WIPO Joint Recommendations

6.

Conclusion

Digitalization of pharmaceutical market •

Digitalization follows globalization, even highly regulated businesses like the pharmaceutical industry becomes more and more digital

© strategy& 2013

Territorial TM rights in world wide web – a conflict? •

Trademark rights are territorial rights - internet content is usually published globally

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Conflicts arise between trademarks and domain names or website content

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The issue is not new:

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On July 1, 1997, as part of the Clinton Administration's Framework for Global Electronic Commerce, the President directed the Secretary of Commerce to privatize the domain name system:

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“8. The Trademark Dilemma. When a trademark is used as a domain name without the trademark owner's consent, consumers may be misled about the source of the product or service offered on the Internet, and trademark owners may not be able to protect their rights without very expensive litigation.

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For cyberspace to function as an effective commercial market, businesses must have confidence that their trademarks can be protected.”

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US Government with international support called WIPO to initiate a balanced and transparent process to develop a uniform approach •

to solve domain name disputes,

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to ensure protection of famous and well-known trademarks and

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to evaluate the effects of adding new gTLDs on trademark and IP holders

WIPO Domain Name Process Results WIPO activities

UDRP (1999)

Joint Recommendations on the Protection of IP-Rights on the Internet (2001)

Purpose

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Arbitration Proceeding for cases of bad faith, abusive registration of domain names that violate trademark rights (“cybersquatting”)

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Remedies

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Transfer or deletion of affected domain name

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Benefit for Trademark Owners

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Effective measure to fight cybersquatting in domain name space 50.000 domain name disputes in more than 30.000 cases resolved

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Recognizing that a sign used on the Internet is simultaneously and immediately accessible irrespective of territorial location… the JR aim at Providing a clear legal framework for trademark owners who wish to use their marks on the Internet and to participate in the development of electronic commerce Facilitating application of existing laws relating to marks in online conflicts

criterion of „commerial effect“ to determine trademark infringement in certain jurisdiction: Use of Disclaimers, reference to 3rd party right holder, gateway web pages, etc… to reduce commercial effect

Clear framework & orientation for online trademark use Defense of trademark rights depends on implementation of Joint Recommendation into national jurisdictions

1.

Introduction

2.

Online exploitation of territorial rights?

3.

Targeted websites in the pharmaceutical industry

4.

Influence of geo IP solutions to jurisdiction

5.

Effect on WIPO Joint Recommendations

6.

Conclusion

Exploitation of territorial rights online •

Owners of broadcasting rights, copyrights and other territorial rights use geo ip solutions for the online exploitation of such rights.

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Licenses for protected content are usually granted for a territory and they include the duty to limit online uses to the respective territory.

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From the right owners‘ perspective there seems to be no conflict between territorial rights and their exploitating in the world wide web as today‘s technical solutions allow territorial allocation of contents depending on license situation

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Users sometimes complain about the effects:

How do geo IP solutions work • IP addresses are geographically allocated. Based on IP addresses an internet user‘s location can be identified on country, state and city level • Geo IP technologies are crucial to run effective online businesses in different territories • Geo IP technology is used for the following purposes: • Online Advertisement • Content localization

• Enhance online analysis • Mobile tagging • Digital rights management • Fight online fraud

Industry examples: “It is imperative that the BBC ensures compliance with licensing agreements,” explained Matthew Wood, Head of Software Engineering for BBC Future Media, Online Technology Group. “By using accurate IP geolocation technology, we are able to ensure we abide by geographic licensing rights agreements.”

Geolocation technology helps badoo.com members build local social dating networks across the globe

“We may have promotions and events specific to a certain geographic location, so we have zones on the page that actually tie into the IP intelligence data and will display the appropriate messaging,” Schionning from American Apparel says. “For example, we may be running a specific type of promotional event only in Honolulu, so only customers that come to our web site from Honolulu are going to see that.”

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© digitalelement.com customers

Agenda 1.

Introduction

2.

Online exploitation of territorial rights?

3.

Targeted websites in the pharmaceutical industry

4.

Influence of geo IP solutions to jurisdiction

5.

Effect on WIPO Joint Recommendations

6.

Conclusion

Pharma industry examples: Disclaimers

Pharma industry examples: Disclaimers & Gateway Webpages:

Pharma industry examples: Disclaimers & Gateway Webpages

Pharma industry examples: • Pharma industry uses measures described in WIPO’s 2001 Joint Recommendations (mainly disclaimers, gateway pages) to • ensure compliance with different national regulatory framework • adapt to nationally differing possibilities for online advertisement

• reflect territorial limitations based on license agreements • Despite good reasons for technical improvement of online presences pharma industry seems to be reluctant in adopting new technical solutions available

Pharma industry examples: Joint Websites:

Pharma industry examples: Geo IP solutions:

Merckgroup.com as displayed for users outside of US and Canada •

Merckgroup.com as displayed for US and Canadian users

Geo IP solutions allow Merck to use online services respecting the balance achieved with territorial co-existence agreement with third party right holder for MERCK name and trademark

Need for geo intelligence in pharma industry? •

Digitalization of further industries will lead to greater demand for brand owners to implement geo IP solutions as

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Global brands will struggle with maintaining and establishing a solid, worldwide presence

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Brands have the opportunity to create a new type of consumer relationship to help transfer the brand equity they have built offline to the online world

Potential restrictions for trademark use online: 1

Regulatory framework

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National rules for drug advertising

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Limited territorial licenses

1.

Introduction

2.

Online exploitation of territorial rights?

3.

Targeted websites in the pharmaceutical industry

4.

Influence of geo IP solutions to jurisdiction

5.

Effect on WIPO Joint Recommendations

6.

Conclusion

Copyright: Kino.to

Copyright: Kino.to – Liability of ISP? • Film industry tried to obtain blocking order against Austrian Internet Service Providers (ISP) from courts in Austria • ECJ decided that where a protected copyright work is made available to the public on a website without authorization - i.e. the infringement is by the website operator - the ISP is a relevant intermediary against whom a website blocking order can be sought. However the measures imposed on the ISP need to be proportionate.

• An injunction against an ISP that does not specify the measures that it is required to take are legitimate but the national court must ensure that the implementation and enforcement of the injunction strikes a fair balance between competing fundamental interests of right owner, ISPs, users and website operators • This will require an assessment of whether (1) the measures taken by the ISP do not unnecessarily deprive internet users of the possibility of lawfully accessing the information available and (2) those measures have the effect of preventing unauthorized access to the protected subject-matter or at least of making access difficult; they must also seriously discourage internet users from accessing the relevant material

Copyright: h33t.com

Copyright: h33t.com – Liability of Domain Name Registrar? • LG Saarbrücken holds domain registrar liable for copyright infringements users of h33t.com commited. • For case domain name registrar is informed about a clear copyright infringment provider has obligation to investigate and implement blocking measures if necessary

• Right holders profit from effective leverage on ISPs in case of online infringements • Operator of h33t.com switched to h33t.eu which had been blocked shortly thereafter by interim injunction as well • Today the service uses h33t.to, i.e. a domain name registered in Tonga with help of an American Domain Name Registrar • Based on kino.to judgement right owners might consider blocking measures against ISPs to prevent use of h33t.to for European users

Trademark: cartierlove2u.com

Trademark: cartierlove2u.com – Liability of ISP • London High Court granted blocking injunction for the website as claimants had a legitimate interest in curtailing trade mark infringement and that there was also a public interest in preventing trade mark infringement, especially where counterfeit goods were involved • Court acknowledged that costs to the ISPs were justified by the likely efficacy of the blocking measures and the benefit to the Claimants having regard to the other measures available to them • UK decision provides a new option for trade mark holders seeking to limit the online sale of counterfeit goods • Judge’s comments about the effectiveness of alternative measures and the proportionality of imposing the obligation on ISPs may well encourage rights holders to seek site-blocking injunctions.

1.

Introduction

2.

Online exploitation of territorial rights?

3.

Targeted websites in the pharmaceutical industry

4.

Influence of geo IP solutions to jurisdiction

5.

Effect on WIPO Joint Recommendations

6.

Conclusion

Adaption of WIPO’s Joint Recommendation needed? •

2001 Joint Recommendations preamble states as follows: •

“Recognizing that a sign used on the Internet is simultaneously and immediately accessible irrespective of territorial location…”

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Due to the technical development such assumption is no longer true!

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However, Joint Recommendations allow additional measures to be imposed on infringers as long as those take into account limitations of use:

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(i) to avoid a commercial effect in the Member State, or

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(ii) to avoid infringement of the right or to avoid the act of unfair competition

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Inclusion of blocking measures against ISPs and Domain Name registrars show adjustment of measures with technical progress

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Users of protected rights possess effective tools to avoid territorial infringements which leads to alignment for determination of “commercial effect” by national jurisdictions

1.

Introduction

2.

Online exploitation of territorial rights?

3.

Targeted websites in the pharmaceutical industry

4.

Influence of geo IP solutions to jurisdictione

5.

Effect on WIPO Joint Recommendations

6.

Conclusion

Online Brand Use •

Ensure online compliance with third party’s rights and regulatory environment by •

Regulating access according to license situation

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Ensuring users in prohibited or highly regulated areas are restricted from accessing your digital contents

Online Brand Infringements •

Effective Defense of your brands online needs to take into consideration: 1

Measures against Infringer

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2

3

Measures against ISP

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Measures against Domain Name Registrar

QUESTIONS