IP Infringements on the Internet - Some Legal Considerations

• Author: Heike Wollgast
• Position: WIPO Enforcement and Special Projects Division

Some 14 percent of counterfeit and piracy investigations now involve transactions carried out over the Internet, according to the Gieschen Consultancy's 2006 Mid-Year Report, based on statistics compiled by the Business Action to Stop Counterfeiting and Piracy (BASCAP).

The absence of territorial limits on the Internet, along with the scope it offers for anonymity, has opened the door to infringements of intellectual property (IP) rights that are new in both nature and scale. Tangible counterfeit or pirated goods of almost every category are traded or exploited online, be it through legitimate business platforms such as online auction-houses, or through websites which trumpet their illicit character. Massive amounts of copyright-protected content in digital form, including software, music, films, electronic games and text, are also distributed online without the copyright owners' consent via dedicated websites or file-sharing networks.

The enforcement of IP rights with regard to such activities raises a number of legal questions. From an international perspective, the most comprehensive set of rules relating to the enforcement of IP rights is contained in the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). While a number of standards set out by this instrument apply equally to the offline and the online dimension of IP enforcement, infringements carried out over the Internet pose some very specific obstacles to effective enforcement which are not addressed in the TRIPS Agreement or in any other global treaty. The remarks below highlight a few such questions.

Whom to sue? - Identifying the infringer

The level of anonymity which the Internet affords to its users creates an immediate enforcement problem for IP rights holders, since identifying the infringer has to be the first step in any enforcement action.

The information required to identify an online infringer can often only be obtained from the respective Internet Service Provider (ISP), which is able to match the relevant Internet Protocol address of a computer used on a network with the individual subscriber. But there are no harmonized rules at the international level as to whether or not an ISP is obliged to disclose a subscriber's identity or other related information. The...