The reality around us is moving more and more to the virtual
world. The Internet has become a space in which we share our
experience and meet, but also offer goods and services or even
carry out comprehensive business activities. In this context, it
seems that our activities in the virtual area are slowly beginning
to catch up with the ones which take place in our everyday reality.
Along with this trend, there appear new legal challenges faced by
the representatives of the e-commerce industry or other
sectors.
As is well known, business is based on competition between
entities that rival each other by offering their goods and
services. These are identified by various markings which consumers
often associate with a particular quality or the origin of the
product. These markings are also present in the virtual world. They
are of the same nature although in slightly more varied forms.
Number one among these is the domain name, which is a unique
network address that identifies the website run by the subscription
owner under that address.
As is the case in the real world, the Internet is also the place
where disputes arise between traders over the distinctive markings
they use. When talking about battles taking place in the virtual
space, let us start with those concerning infringements of rights
by using a domain name.
Disputes over domain name registration
In order to illustrate the most typical situations in which
someone else’s right is infringed, it is necessary to start by
referring to the structure of a domain name. It is made up of
distinctive and non-distinctive elements, the latter being those
which can be used by all traders. A classic structure of an
Internet domain address using the Polish country code top-level
domain is as follows: www.name.pl. The distinguishing element, i.e.
the one that makes it possible to localise the content presented
under a given domain name, is the name of the second-level
domain. It is more often the case that it takes the form of a
registered trademark, a company name, but also an unregistered
marking, a first or last name, a pseudonym, etc. The name of the
second-level domain is what is at issue in disputes over Internet
addresses.
Disputes in this area are most often about infringement of
someone else’s subjective rights, e.g. by using someone
else’s registered trademark in the name of the second-level
domain, if the goods or services offered within the contents of the
website operated under that domain name are reserved for that
trademark. In this case, the website plays the same role as the
shop window you pass while walking down the street or in a shopping
mall. This position was taken by the Supreme Court, which in its
judgment of 11 December 2013 (ref. IV CSK 191/13) stated that the
use of a protected marking on the Internet should be evaluated
according to general rules provided for in this respect in the
provisions of Article 296 of the Act of 30 June 2000 – Industrial
Property Law (Journal of Laws 2021, item 324).
Infringement of a right – yet in a completely different aspect -
may consist in registration of a domain name in bad faith, such as
in the phenomenon referred to as ‘domain name piracy’.
Under the current legislation, in relation to the virtual space,
this type of charge may be raised where a domain name is registered
or acquired primarily with a view to its subsequent sale to an
entity that holds legal title to the name used in the second-level
domain, where a domain name is registered in order to prevent the
holder of said name from using it in the domain name, or where a
domain name is registered in order to disrupt the activities of a
business competitor. All the indicated actions may, in certain
circumstances, fulfil the criteria of an act of unfair competition,
whether specified or unspecified by the law.
A fairly common form of domain name infringement is
cybersquatting, which consists in ‘squatting’ domain names
before an entity with a legal title to a given name of the
second-level domain has had time to conclude a contract for the
registration of the domain name. This is followed by an offer to
resell such a domain name at an inflated price, being completely
unreasonable given what is on the market. The term
‘cybersquatting’ has in fact already found its way into the
legal language and as such appears in the judicial decisions of
common courts as one of the unspecified acts of unfair competition
(cf. judgment of the Court of Appeal in Poznan – I Civil Division
of 24 May 2019, ref. I ACa 989/18). This confirms that these types
of cases are occurring more and more frequently in the environment
of virtual business trading.
A related act of unfair competition is typosquatting, which in
turn consists in ‘monopolising’ a domain name with a name
of the second-level domain similar to e.g. another
entrepreneur’s company name or trademark. The name differs
slightly from the original, e.g. by a duplicated or omitted single
letter, which is intended to mislead virtual consumers. By
‘visiting’ such an address they are convinced that they are
purchasing goods from another trader.
How to deal with such infringements of intangible property
rights on the Internet? The simplest, quickest and certainly least
costly way to resolve a dispute over the registration of an
Internet domain – other than of course settling the
dispute amicably – is to submit it to the courts of
arbitration. This possibility is generally provided for in the
service provision regulations governing the maintenance of names of
the second-level domain in domain names. The Court of Arbitration
at the Polish Chamber of Information Technology and
Telecommunications shall be competent for disputes concerning (.pl)
domains, the Court of Arbitration in Prague (Czech Republic) for
(.eu) domains and the Court of Arbitration at the World
Intellectual Property Organisation (WIPO) in Geneva (Switzerland)
for (.com) domains.
By referring cases to these arbitration courts, in the event of
infringement of subjective rights under national law, we may demand
that the service provider terminate the contract with the
subscription owner of the domain name at issue or transfer it to
us.
Other online infringements of intangible property
Infringements of intellectual property rights on the Internet,
which have recently been becoming more frequent, are not limited to
disputes relating to the registration of an Internet domain name.
They may also occur with respect to the contents of the website
hosted under a particular domain name.
This is most often the case when an entrepreneur distributes
another person’s work without proper authorisation. Quite often
on the web, we come across situations where photographs of original
products from their manufacturer’s catalogues are used on the
websites of distributors of goods. In many such cases, it comes as
quite a surprise that copyright in such photographs has been
infringed. It should be remembered, however, that a catalogue photo
is usually subject to copyright and its legal use requires the
permission of its creator or other right holder.
Economic copyrights may also be infringed by using in the
content of the website original product descriptions prepared by
the manufacturer (cf. judgment of the District Court in
Rzeszów of 26 April 2019, ref. no. VI GC 297/18). In
this case, however, it should be noted that a product description
will not always enjoy copyright protection, especially if it only
refers to the technical features of the goods or is simply not of a
creative nature.
How to avoid a contentious situation here? It is best to
conclude a licence agreement specifying the use of the images or to
include provisions to this effect in the contract under which the
original products are distributed. The situation is similar with
the product descriptions. If they have been given an original,
imaginative form in the catalogue, which does not merely amount to
simple information, then it is better to also ensure that you have
permission to distribute them.
Of the types of infringements mentioned, which may be
encountered in the content of the website, it is also worth
pointing to linking. In this case, generally speaking, infringement
may occur by placing a reference (link) on the website to another
Internet address, where someone else’s work is unlawfully
distributed. It must then be additionally verified whether, for
example, such action was done consciously and for profit-making
purposes (cf. CJEU judgment of 8 September 2016, ref.
C-160/15).
How to deal with such cases? Firstly, you should request the
entity which commits the aforementioned actions on their website to
voluntarily cease the infringements, and if such a request does not
result in any response, you can consider taking the matter to
court. Competence for such cases is currently vested in the
‘intellectual property courts’, which are specialised
divisions of district courts.
With reference to the ‘virtual battles’ of the title, it
is impossible to ignore the ones that take place within sales
platforms when the goods offered through them or the user account
names created there infringe the rights of others. Pursuant to the
applicable provision of Article 14 of the Act of 18 July 2002 on
the provision of electronic services (Journal of Laws of 2020, item
344), hosting providers are obliged to react when they receive
reliable information on the unlawful nature of data submitted by
users. In such cases, auctions are blocked, and if the user grossly
violates the rules of the site (e.g. repeatedly places auctions
that infringe the rights of others), their account may be
suspended.
The current legal regulations in this area cause many doubts and
debates as to whether they are effective and what form they should
ultimately take in order to ensure reasonable protection of
intangible assets. This will be discussed with representatives of
online platform owners already in December 2021 during an expert
panel organised as a side event of the UN Digital Summit – IFG ,
which will take place in Katowice.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
