Executive Summary
This report presents issues related to intellectual property in Australia for Arco Company. It covers domain names, registration, copyright, and trademarks. For a company engaged in international expansion, the report shows that Arco must consider auDA of Australia and in case of any disputes, it should rely on both auDRP and UDRP for resolution. Also, legal issues may arise from trademarks and copyright usages. It is therefore recommended that Arco should adhere to these laws and use legal provisions in case of any copyright infringement, social media account violation, and user protection issues.
Background
The purpose of this report is to present issues related to intellectual property, specifically copyright and trademarks, the law on domain names based on Australian laws and regulations relevant to the Internet, as well as being compliant with relevant international approaches relevant for the Internet for Arco. It also shows why Arco needs to create the Web site and the possible audience of the Web site. Additionally, the report identifies the type of domain name to be secured and the ‘jurisdiction’ of the company’s Web site. It covers some specific issues on intellectual property rights and finally offers recommendations for Arco.
The Purpose of the Web site
Arco is based in the Kingdom of Saudi Arabia. The company provides labor services and recruitment. The Web site will, therefore, be used to offer professional support services for human resources requirements by matching the right candidate with an organization in a given industry. It will display professional labor services available for both public and private organizations and individuals seeking such related services. Also, the company will state its mediation related roles and obligations during the provision of professional labor services to different clients.
The intended users for Arco Web site, including public and private organizations cutting across various sectors, such as contracting; health; trade and markets; oil & gas; industrial; petrochemical; transportation; communications and information technology; service; tourism and hotels; and agricultural and food industries.
It will have all the relevant information for the intended users. Also, Arco may promote and advertise some services and use social media to reach more target audience. The Web site is intended to be commercial-based, look professional, and highly interactive with different features. That is, users can submit their details by registering at the user portal and explore different features created using various formats, while Arco will also collect personal information about applicants and information related to companies for corporate users.
Issues
This section deals with specific issues concerning the intended Arco Web site based on Australian laws and regulations and any other relevant international laws and regulations governing the usage of the Internet.
Jurisdiction
Arco should recognize that trademarks, copyright, and domain names are protected under different laws and regulations in Australia, and they apply to the Internet that transgresses legal boundaries (Lindsay, 2014).
In Australia, auDA (.au Domain Administration Ltd (auDA)) has authority over.au domain space. The government of Australia endorsed auDA in the year 2000 as the most appropriate organization to administer every.au domain space (auDA 2016). Under the Telecommunications Acts 1997, the Australian government retains the power about domain names.
In the year 2001, the global policy authority for world domain names, which is the Internet Corporation for Assigned Names and Numbers (ICANN), recognized auDA under its Sponsorship Agreement in which auDA was considered the most appropriate domain operator for.au. Based on the Sponsorship Agreement, auDA is responsible for the management of the.au region file, ensuring it is correct, current, and uninterruptedly available. auDA attains this by the technical management of the main and other secondary name servers that constitute a part of the.au Domain Name System infrastructure (auDA 2016).
Arco will only register the name under the second-level domains (2LDs) based on its purpose in Australia. It cannot use ‘Closed’ 2LDs and Community Geographic Domain Names (CGDNs). Under the ‘Open’ 2LDs, the company will choose from au.com or au.net, but it must contact an auDA-accredited registrar for registration.
Domain Registration
Australia applies the rule of ‘first-come, first-served basis’ for domain registration (Leif Gamertsfelder & Joanne Worrad 2016). Arco must ensure that its domain name is unique. However, this approach is different from trademarks.
Organizations with legitimate rights to a similar trademark registered in distinct classes usually have the same rights to register the trademark as a domain name. However, the company that registers first will eventually have the domain name irrespective of the brand or trademark visibility in Australia.
As previously noted, Arco will choose from the global domain names or specific domain names that have.com.au or.au.net extension. Only an accredited registrar should perform this procedure for the company. The registrar must ensure the availability of the preferred domain name for the company. ‘WHOIS’ service is the easiest way in Australia to determine domain availability. It can be easily done at www.ausregistry.com.au. Before the registration, it is also recommended to review the databases for a trademark to ensure that copyright infringement issues on any registered trademark will not arise later.
Once the registrar has completed the first domain name availability search, the registration should proceed. The registration takes place on the Internet, but there are applicable fees based on the registrar used and the type of the domain name selected for the company.
If the company, however, realizes that the preferred domain name has been taken, then it can use abbreviations or acronyms. Alternatively, the company would use numbers or hyphens in its business name to ensure that it is different for domain name registration.
Arco will have to ensure that renewal is done promptly. On this note, the company is expected to provide current contact details for a renewal notice. In Australia, an expired domain name is made available for any eligible party to register.
Trademark Law and Domain Names as Trademarks
Arco should recognize complexities associated with trademark laws and regulations in the international markets. That is, there is no single universal registration model for companies expanding beyond their domestic borders (Terry & Forrest 2008). As such, intellectual property rights may differ significantly.
Australia has laws under the Trade Marks Acts 1995 for trademark protection. Under the Act, a trademark is recognized as any sign used or planned for use to identify and differentiate products or services of a company or offered by an individual during trading activities from other goods and services offered by different entities (Bradfield, 2001). Also, a sign, under Section 6, is any letter, name, word, number, heading, brand, or signature. Further, Section 20 only recognizes registered owners of trademarks as the only entities with exclusive rights to use their marks.
It is however possible for other entities to infringe on a trademark of Arco, for instance. As per Section 120, any infringement on a trademark occurs when a sign is similar, deviously the same, or closely resembles another registered trademark. However, if no confusion arises, then there is no infringement. Based on ICANN and auDA increasing recognitions, domain names are significantly becoming the most important mode of identifying an entity or individual and, thus, they are gradually taking the role of trademarks (Bradfield 2001). Therefore, the company will have to ensure that its sign and trademark do not infringe on any other registered trademark in Australia.
Nevertheless, if Arco has a similar trademark as another company, the Australian law holds the domain name on a first-in-time basis (the first entity to take possession of a trademark owns it) (Leif Gamertsfelder & Joanne Worrad 2016; Bradfield 2001).
Under the provisions of Section 20 of the Trade Marks Acts, the owner of the domain name should only use the registered domain name in line with their trademark, and not about a trademark of another company. In the UK, for instance, the case of Prince PLC v Prince Sports Group PLC involving an IT firm – Prince PLC and the Sports Group, the ruling favored the IT firm. The IT firm registered its domain name as ‘prince.com’ before the sports company, which specialized in the manufacturing of tennis racquets.
The Courts argued that information technology was in no way linked to the sale of sports products. As a result, the Prince PLC was able to retain its domain name – prince.com because it was most improbable that the distinct companies would confuse any potential clients. It is generally noted that the UK Trade Marks Act 1994 and Section 20 of the Australian Trade Marks Act are almost the same. They all have provisions for infringement on trademarks for misleading similar signs. Arco can use this provision to argue its case if there is an infringement.
Cybersquatting and the Domain Name
Arco may encounter cybersquatting. Several cases have illustrated that competition to register a domain name in the cyberspace goes beyond competition between organizations. The major intention of a cybersquatter is to earn some cash by exploiting the principle of the ‘first come, first served’. As such, Arco may find out that its intended domain name for Australia has already been registered by a cybersquatter. In Australia and any other geographical regions, cybersquatting is noted as an act of registering a domain name using a similar organization’s name but with no relation to the business on which the domain name has been registered.
While Australia has not noted any critical verdict in connection to cybersquatting, individuals who use a domain name to promote a different service of a different trademark owner could be violating the trademark Acts of Australia, specifically in a situation in which the trademark is generally recognized, and it, therefore, could lead to confusion. In Australia, for instance, Melbourne IT declared that it had to deal with cyber squatters who had registered some domain names, including melbourne-it.com and it – melbourne.com.
Based on the Victorian District Court findings, cyber squatters who were providing these domain names for hire or sale were infringing on the trademark rights of other companies. Also, this action was seen as passing off and/or outright confusing and dishonest action according to the Trade Practices Act 1974. Melbourne IT did not pursue these claims in court. Nevertheless, through a consent, it got an order restraining cyber squatters from using these domain names or any other similar names, and they were ordered to grant ownership of the domain names to Melbourne IT (Forder 1999).
Considering cybersquatting cases in other regions, Arco should understand its complications. In the US, for example, the case of Panavision International v Toeppen brought another perspective. A cyber squatter registered the domain name, panavision.com, and proceeded to offer it for sale to the company, Panavision. The court argued that this case reflected a scenario of infringement of relevance of the Panavision trademark notwithstanding no real confusion could emerge when Toeppen’s used the registered domain name.
Similarly, the company may also face a case of typosquatting or the so-called domain mimicry. In typosquatting, a cybersquatter registers a domain name with altered letters or numbers, resulting in a possible mistyping and thus confusing for the same trademark.
For example, a cybersquatter may opt to register a domain name, ‘arc0.au’, which users can confuse for arco.au. While Australia encourages domain names to be unique by adding letters, numbers, and/or hyphens, a company may still challenge this domain name under the provision of Section 120(3) because it is significantly similar or outright deception to Arco trademark. Also, the Australian law under Section 20 considers such action as unauthorized use of trademarks of other entities, or the law may consider it a deceitful representation under Section 151.
Thus, it would seem, at first glance, that the company that owns a trademark has the right to safeguard itself against unauthorized uses or claims or registration of its domain name in Australia. Arco can, therefore, rely on the law to protect itself from cyber squatters in Australia.
Domain Names Dispute Resolution
In case of any conflicts on the domain name and trademark, Arco will depend on the Uniform Domain Name Dispute Resolution Policy (UDRP) to resolve the conflict (Shyamala 2010; Roy 2012). The UDRP or related contents have been applied globally in domain names and trademark conflicts, which some claim that were not sufficiently arbitrated in the past (Roy 2014).
The UDRP is used to enhance efficiency and swift resolution for cases involving domain names and trademarks. The UDRP will provide relief for the company against infringement, procedural challenges, and related costs that could hinder access to justice and fairness. However, Arco must understand the limitations of the UDRP, which may include either revocation of the registered domain name or transfer of the disputed domain name to the complaint (Bradfield 2001).
The domain name registrar must adhere to panelists’ decisions because it is guided by ICANN, which reviews and approves such decisions. As such, the UDRP decisions are considered enforceable. Although the UDRP is not technically binding, no party can opt-out of it once the process has started.
In the case of Target Australia against CPL, Australia used UDRP to alter the registration of Catchoftheday.com.au. This domain name aimed to imitate the name TAR-JAY because Target Australia had a significant reputation to protect, but CPL adoption of the name on its marks was most likely to confuse, deceive, or mislead consumers into believing that CPL and Target Australia had a relation (Roy 2014).
In addition to UDRP, Australia also has auDRP. It is generally acknowledged that one cannot obtain a domain name with.com,.net, or.org without prior consent to the UDRP. Persons who registered their domain names before Australia introduced auDRP will however be exempted from the auDRP unless they opt to join the system. Also, once they join auDRP, it will not bind them. In this regard, the auDRP also fails to protect parties just like the UDRP.
Overall, the UDRP and auDRP will assist Arco, but they focus on unilateral expenses, protect against limited claims, curtail procedural rights, weaken the issue under review, and only offer two alternatives to the domain system while reaching parties that voluntary register. Given these limitations, the UDRP may fail to protect the company adequately because the decisions may not be enforceable and fail to account for domain names that bear no trademark relations. Once a person acquires a trademark, then they have the right to use it, but others may not. Further, other persons may not use a trademark extremely the same as an available trademark that the new one may confuse. In this case, the determination process could be subjective and challenging to make.
As such, the UDRP may fail to deliver justice but promotes eminent interests. On this note, the auDRP makes some relatively minimal changes, but largely fail to go beyond the international domain name rules. Therefore, its adjustments could be insignificant. Nevertheless, Arco will rely on both provisions as alternatives for enforceable decisions if any dispute will arise in the cyberspace.
Copyright Law, Digital Materials, and the Use of Social Media
Australia has copyright laws to protect creative works, but many assert that it is still behind and advocate for the Fair Use copyright (Page & Cartwright 2014). Nevertheless, Arco must recognize that copyright protection in Australia is free and automatically enforceable once the material has been created. It protects entities and individuals who invest their resources, including cash, time, and talent among others to benefit the public. Any material is protected in Australia even if it is not registered there (Davison, Monnotti & Wiseman 2008).
Arco must understand that Austrian copyright law may fail to protect titles, names, ideas, slogans, information, techniques, and styles (Australian Government 2012). Also, not-for-profit organizations are not generally exempted from copyright laws. Any action that occurs within the jurisdiction of Australia is covered under the law even if the material under question originated from another country. The material is protected throughout the lifetime of the creator and another 70 years is added.
The technology however is challenging old practices in Australian copyright law. Social media have recorded a significant number of users. For instance, Facebook boasts of over 1 billion users, Twitter has over 218 million users every month while Linked has surpassed the 300 million mark. It is therefore clear that social media are now critical tools for any organization or business. However, social media have evolved so fast that it is not clear how they relate to existing intellectual property laws. Arco must however comprehend that the sole purpose of copyright laws in Australia is to protect the economic interests of creators against individuals or institutions that infringe on materials either knowingly or unknowingly (Paynter & Foreman 1998).
In social media, users normally post various materials, such as videos, pictures, text, and even artworks. Copyright is the major intellectual property right notably applicable to these materials. It will protect the company’s materials against any form expressions, but not ideas. That is, an article about the company available on the Internet cannot stop another person from writing another piece about the company. In this case, it will only restrict copying or rearrangement of words from the first material (Ryan 2015).
Arco will expect some of its materials to be protected. Letters, advertisements, and labels will be covered in Australia (Australian Government 2012). As such, those materials of the company should not be posted on the Internet without authorization. However, Twitter posts, which could be extremely short – about 140 characters, should be carefully reviewed for copyright violation. To evaluate if copyright could subsist in such posts, it is imperative to assess for copyright subsistence. That is, the work should be original and not copied from other sources, display some elements of literary skills, and is not too small or insubstantial.
For example, in the case of Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd (2010) 88 IPR 11, the court established that a given newspaper headline of 32 characters was too short to be considered as copyrighted material. Nevertheless, the court showed that a longer headline could be protected under copyright laws. As a result, many insubstantial social media tweets and posts may not be subjected to copyright laws in Australia, except some longer tweets or some tweets directly copied from the source. On the other hand, one must observe that LinkedIn and Facebook do not have too limited character limits and, thus, such posts are most likely to be subjected to copyright laws.
Web site Terms and Conditions
Arco Web site is for commercial purposes and information gathering. It also has social media platforms. In every post on the Internet, including Facebook, Twitter, and LinkedIn among other others, authors are expected to retain copyright. However, Web sites have different terms and conditions for users. These are usually broad licenses clearly defining the use of social media without compensation for any posts.
It is imperative to note that Arco currently collects personal and business information of persons or businesses, which register on its Web site in Saudi Arabia. However, the Arco Web site has ‘Terms of Use / Disclaimer link’, but this link does not work. This status of a broken/dead link will not be accepted in Australia if the business will continue to gather personal and company data on its Web site registered in Australia.
Arco can borrow from some best practices among sites that advertise content and collect personal information. For instance, LinkedIn does not share personal information of users with third parties. The company must obtain consent from users before sharing their contact details and any other relevant information. However, the Web site retains some rights to promote advertisements. There are cases in which users have sued Web site owners for sharing or using their photographs and names in some sponsored stories to endorse services or products. User consent, therefore, is extremely important for Web site owners.
The company should clearly state that when it delivers advertisements to visitors on its site, it does not share any personal information that can be used to identify an individual, such as names or contact details without consent. Also, if Arco wishes to promote its human resources services on the Internet, then it must get consent from such users.
Infringing Copyright
The company may wish to upload some materials on social Web sites. However, it must recognize that any possibility of infringing on the copyright of the author depends on the source. That is, if Arco authored and owns the material, then there is no copyright infringement. Conversely, if Arco, for instance, commissioned the material, then it must carefully review the terms of contracts and the use for which the material was intended. Arco must recognize that photographers or artists who created photographs and artwork on them, but not the company that commissioned them unless there is clear consent. Moreover, the company can only use such pieces of materials for the purpose for which they were intended. For videos, however, the company owns the material.
The major role of social media is to share texts. In some instances, there is no copyright infringement when such texts are shared, unless they originate from another source. It is difficult to determine the sources of the attached materials posted on social media. On this note, it is most likely that copyright infringement may occur.
Cases of copied materials require permission. For example, in a case, Tylor v Sevin [2014] FCCA 445, involving a travel agent, Ms. Sevin, the photographer sued for copyright infringement. The travel agent had copied a photograph from the Internet and used it to promote her travel agent services without permission from the photographer. The court ordered the travel agent to pay a substantial amount relative to a cost associated with the license fee.
Hyperlinks are also important for consideration. The case of Universal Music Australia v Cooper (2005) 150 FCR 1 showed that hyperlinks were not subjected to copyright infringement. However, if the posted material is already violating the copyright law, then the hyperlink may also contribute toward that infringement. In this case, if a company hyperlinks a photo and assumes that the image is found on a legitimate site, then no copyright violation is assumed. One major challenge is to determine if an image is posted from legitimate Web sites that do not contribute to possibilities of copyright infringement.
Who owns the company’s social media account?
Arco currently operates social media accounts. As such, it must have amassed a large number of followers and users through its social media accounts. These contacts and users represent an important value for an organization. In this case, it is imperative to determine whether an employee who operates an account or the company owns the account is the actual owner of a social media account. This is a critical issue for a court decision. In the US, for instance, the case of Kravitz v Phonedog was such a particular case. Phonedog was the company that hired Kravitz who operated its Twitter account. During Kravitz stint at the company, the employee managed to attract over 17,000 followers. The employee later left the company, but changed the account handle and continued to use the Twitter account. The company sued Kravitz for violations.
Suppose this case took place in Australia, a court would consider two possible points of legal argument and protection. First, the use of confidential information and secondly, the terms of the employment contract. Depending on the company privacy terms, the password used on the account and information (company followers) contained therein is confidential. However, a list available to the public is not confidential. Hence, the courts will consider the confidentiality of the account information.
Alternatively, for employees who handle social media accounts of their organizations, courts normally review terms of their employment and the relation with social media accounts. It is expected that Arco should clearly define usages and ownership of such accounts. It is also recommended that employees should stop using such accounts once they leave the company.
Arco should also expect such cases. While the law may provide a remedy for an organization, in the absence of a clear contract, then an employee may win. As such, the company should consider practical solutions, including changing the password if an employee leaves.
Recommendations
If Arco expands to Australia, then it must consider some important Internet laws on trademarks, copyright, and domain names laws and regulations.
- The company should review and understand all laws and regulations about domain names registration and ownership. This process requires the use of an auDA authorized registrar to conduct the search and determine the availability of the preferred domain name.
- Trademarks are generally protected in Australia, prima facia. Therefore, if any violation occurs, then it should use legal mechanisms to protect its trademarks, which is now closely linked to domain names. It must also acknowledge that the common law tort of passing off is used in the country to protect entities with unregistered trademarks from deceptive domain name registration. In case of any disputes, both UDRP and auDRP provisions should be used to handle conflicts.
- Australia has extensive copyright laws and regulations. Hence, the company will have to adhere to them. Also, it must consider laws on Internet advertisement, social media usages, user information protection, and confidential information ownership. The company should verify all materials it wishes to use on its social media accounts and determine their legitimate sources before posting them. Also, it should not share personal information or corporate information without prior consent.
Reference List
auDA, 2016, About auDA. Web.
Australian Government, 2012, Short Guide to Copyright. Web.
Bradfield, O 2001, ‘Domain Names in Australia – Legal and Contractual Dispute Resolution’, Journal of Law, Information and Science, vol. 12, no. 2, p. 231.
Davison, MJ, Monnotti, AL & Wiseman, L 2008, Australian Intellectual Property Law, Cambridge University Press, Cambridge, UK.
Forder, J 1999 Disputes about Names: Cybersquatting, Cyberstuffing and Banner. Web.
Leif Gamertsfelder & Joanne Worrad, 2016, Registering a domain name – some important considerations for lawyers. Web.
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Page, R & Cartwright, M 2014, What’s legal under Australian copyright law?. Web.
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Ryan, S 2016, ‘Target Australia blocks registration of marks seeking to parody ‘TAR-JAY’—Lessons for brand owners and parodists’, Journal of Intellectual Property Law & Practice, vol. 11, no. 2, pp. 83-85. Web.
Shyamala, D 2010, ‘Domain Name-Trademark Conflict Resolution: An Evaluation of UDRP’, Australian Intellectual Property Journal, vol. 21, no. 1, p. 42.
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