Dreyfus, Author at dreyfus

The EU cybersecurity certification Framework

Written by Dreyfus30/08/2019

Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.

This situation has made European authorities aware of the need to deal with these threats in an effective and coordinated way, relying their actions on policies dealing specifically with cybersecurity within the European Union. By means, the aim is thus to improve cooperation, exchange of information and coordination between the Member States and the institutions, bodies, offices and agencies of the Union.

The European Commission, as part of the Digital Single Market Strategy, has approved Regulation No. (EU) 2019/881, on ENISA (the European Union Agency for Cybersecurity) and on certification of information and communications technology cybersecurity, which came into force on June 27, 2019.

This new regulation has two main objectives. On the one hand, to give ENISA (the European Agency for Cybersecurity, now named the European Union Agency for Cybersecurity) a greater role in the field of cybersecurity, establishing a series of objectives and tasks. On the other hand, the creation of a common certification framework at European level, with the aim of guaranteeing an adequate level of cybersecurity of ICT products, services and processes in the EU, avoiding the fragmentation of the internal market.

Concerning the first objective, the first substantive point of the Regulation is to give more powers to the European Union Agency for Cybersecurity (ENISA). It will now have a permanent mandate facilitating the exercise of the new functions assumed, one of which is to increase cooperation on cybersecurity within the Union, for example in cases of large-scale cyberattacks or cross-border crises. This strengthening is also reflected in the economic resources for ENISA, increasing from 11 to 23 million euros over a period of five years.

It is noteworthy that European regulation focuses on users by addressing concepts such as users’ awareness, and the application of good practices online. Both public bodies and private stakeholders will receive recommendations on safe configurations and maintenance of their devices, and the availability and duration of updates, as well as the perceived risks.

With regard to the second objective, the regulation creates a framework for European Cybersecurity Certificates for products, processes and services that will be valid throughout the EU. It is the first EU legislation on the internal market to take up the challenge of enhancing the security of connected products, Internet of Things devices and critical infrastructure through such certificates.

The creation of the cybersecurity certification framework incorporates security features in the early stages of their technical design and development (security by design). It also enables their users to ascertain the level of security assurance, and ensures that these security features are independently verified.

As to the second objective of the regulation, the certification framework will provide EU-wide certification schemes as a comprehensive set of rules, technical requirements, standards and procedures. This will be based on agreement at EU level for the evaluation of the security properties of a specific ICT-based product or service, for instance, smart cards. This will certify that ICT products and services which have been certified in accordance with such a scheme comply with specified requirements. In particular, each European scheme should specify: a) the categories of products and services covered, b) the cybersecurity requirements, for example by reference to standards or technical specifications, c) the type of evaluation such as self-assessment or third party evaluation, and d) the intended level of assurance for instance, basic, substantial and/or high.

ENISA’s mandate is immediate from the entry into force of the Regulation, whereas the cybersecurity certification framework will have to be developed. In this respect, the Commission’s agenda has already included the submission of proposals to ENISA for the preparation of certification projects, as well as the creation of expert groups on cybersecurity.

Finally, this European regulation not only seeks to increase users’ confidence in the use of connected devices, but also to strengthen the European cybersecurity industry and the European Single Market, positioning it as a global benchmark, in line with other markets such as the United States or China.

With significant expertise in protecting innovative products and designs, and in defending intellectual property rights on the Internet, Dreyfus is well positioned to assist you in enhancing your assets on the web.

Written by Dreyfus28/08/2019

Protecting authors’ rights is a necessity in the digital age, as information flows more and more easily. That is why the European Commission reported in September 2017 that it was necessary to tackle illegal online content, while the French legislature has already transposed several European directives and has modified its literary and artistic property law.

In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.

New exceptions to copyright

There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:

– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);

– The use of works in digital learning activities including distance learning. States may, however, provide a fair compensation for rightholders (Article 5);

– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).

French law already provides similar exceptions in the article L. 122-53°) e) 8°) and 10°) of the French Intellectual Property Code, but this is not necessarily the case for all member States.

Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfully published.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..

Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which are retained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.

Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management

The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.

According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”

Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).

Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.

In France, article L. 134-4 of the French Intellectual Property Code already gives authors of out-of-commerce books the right to oppose to their exploitation.

Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.

Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.

Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.

The related right of press publishers

Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :

– Private and non-commercial uses;

– Hyperlinks;

– Use of isolated words or very short extracts of a press publication;

– Works published for the first time before the Directive’s entry into force.

Moreover, this right is only granted for two years from January 1st of the year following the date on which that press publication is published.

This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.

Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.

Online content-sharing service are fully responsible (Article 17)

In France, platform operators enjoy the protective status of article 6-I-2 of the law “for confidence in the digital economy” n° 2004-575 of 21 June 2004. They are not

liable if they “promptly” remove the content at stake.

Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exempt from liability if they have:

– “Made best efforts to obtain an authorization” from rightholders;

– “Made best efforts” to ensure the unavailability of the work and

– Acted “ expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.

Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.

Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.

Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.

Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.

The next step is the transposition of these provisions, which must be done by 21 June 2021 at the latest. France, which supports this text, should proceed with this transposition next summer. A proposal for a law on related rights with regard to press articles is already under consideration.

These developments are to be monitored…

Written by Dreyfus23/08/2019

On March 29, 2019, the registry in charge of <.eu> domain names (EURid) announced the extension of its contract with the European Commission until October 12, 2022 under the Regulation (EU) 2019/517 of March 19, 2019 (“the 2019 Regulation”).

With one exception, the provisions of the 2019 Regulation will apply starting October 13, 2022, and repeal the Regulations (CE) 733/2002 and (CE) 874/2004. The exception is that the provision concerning eligibility criteria under Article 20 of the 2019 Regulation will apply from October 19, 2019. This provision allows any person holding European Union citizenship, regardless of country of residence, to register a <.eu> domain name.

The purpose of this new regulation is to adapt the rules governing the <.eu> ccTLD to the expansion of the domain names sector. In this regard, the EURid’s annual report shows a steady increase in registrations in six countries including Portugal, Ireland and Norway. Nevertheless, the uncertainty caused by Brexit led to a loss of 130,000 domain names for the 2018 period. This decrease is mainly due to the anticipation of registrants who face the impossibility of registering or renewing their <.eu> domain names in the near future.

This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.

Written by Dreyfus22/08/2019

WIPO, Arbitration and Mediation Centre, March 15, 2019, No. D2018-2944, Théâtre du Gymnase Marie Bell SAS versus Mr. Erol Topal.

This case illustrates the need for any company to define a clear policy for managing its domain names to ensure that these domain names are registered in the company’s name and remain under its control. If this is not done the company may lose some of its rights. Moreover, if an employee registers domain names in his or her own name it could be difficult to recover these domain names.

The Théâtre du Gymnase Marie Bell, commonly known as the “Théâtre du Gymnase”, was registered in 1958. It is a Parisian performance hall which was classified as a historical monument in 1994.

In 2004, one of its employees registered the domain name <theatredugymnase.com> in his own name, but allegedly on behalf of the company. In addition, in 2018, he registered four other domain names that include all or part of the company’s name: <theatre-du-gymnase.com>, <theatredugymnasemariebell.com>, <gymnasemariebell.com> and <letheatredugymnase.com>.

The day after these domain names were registered, the Théâtre du Gymnase noticed malfunctions on its official website located at www.theatredugymnase.com. No information was being displayed, not even the performances scheduled.

On October 25, 2018, the theatre fired the employee, on the grounds of his refusal to provide the codes to manage the official website. Subsequently, formal letters were sent but there was no response to these.

The Théâtre du Gymnase then filed a UDRP complaint seeking the transfer of the domain names.

The respondent, (now a former employee of the company) said that he retained the names because proceedings before the Labour Court were pending. He also claimed to have registered and managed a number of domain names for the complainant, without ever getting paid. He stated that in August 2018 an invoice of 36,000 euros was sent to the Théâtre, which acknowledged the due amount and indicated its intention to pay. However, the respondent has not received any payment because proceedings before the Labour Court were subsequently initiated.

Initially, the expert had to consider whether the complainant had trademark rights in its name, because ownership of a trademark is necessary to bring a successful complaint under UDRP. Although the name “Théâtre du Gymnase Marie Bell” is not registered as a trademark, the company claimed to have rights in it, particularly due to its use as a company name, trade name and brand. The Expert therefore considered that the use of this name is such that the complainant enjoys unregistered trademark rights, (on which a complaint may be based). Therefore, the likelihood of confusion between the disputed domain names and the complainant’s prior rights could be recognised.

Regarding the question of the respondent’s rights or legitimate interest or bad faith use of the domain names, four of the disputed domain names were registered on the eve of the malfunctions of the complainant’s web site, after which it was discovered that only the respondent had access to site management and refused to provide the complainant with the codes that would allow such access.

In addition, these four domain names pointed to what appeared to be the site of a Turkish specialty restaurant, and the other pointed to what appeared to be the official website of the Théâtre du Gymnase, but which indicated that there would be no performance whereas the new official website accessible at the address “www.theatredugymnase.paris” showed performances were ongoing.

Thus, the expert noted that the use made of the disputed domain names disrupted the claimant’s activities.

For these reasons, the transfer of the names to the Théâtre du Gymnase, was ordered without prejudice to the decision that will be made by the Labour Court.

Although this is a case of “all’s well that ends well” for the Théâtre du Gymnase matters might have gone differently. If for example the expert had taken the view that this was a dispute over payment of an invoice legitimately incurred by the respondent in compliance with the complainant’s express wishes, the decision could have gone differently. The existence of a clear, unambiguous domain name policy should leave no room for doubt whether an employee is acting within defined guidelines or is acting contrary to an employer’s guidelines – and therefore is clearly in bad faith. Consequently, this case reflects the importance of establishing a naming policy internally, setting clear rules and best practices for the registration and management of trademarks and domain names, in order to avoid disruption and potential asset loss.

Written by Dreyfus20/08/2019

As an Alias adopted to preserve anonymity, the pseudonym is frequently used in the public sphere for commercial purposes. This can be, for example, the pen name of an author, the identity under which a painter is known, etc.

French law does not provide any legal status for the pseudonym. However, it is recognized as a right of personality. As such, it enjoys an existence and legal protection.

When the pseudonym is intended for public use, the choice requires particular attention. Therefore there are limits established by law which must be respected. Thus, the pseudonym chosen must not violate public order or morality. The existence of prior rights, such as a registered trademark or prior use of the same pseudonym by another individual, is also a limiting factor.

In addition, Article L. 711-4 of the French Intellectual Property Code states that a sign may not be adopted as a trademark if it infringes an earlier right. These earlier rights include the personality rights of another person, particularly his surname, pseudonym or likeness.

The pseudonym may not only constitute an earlier blocking right for a trademark but may also be registered as a trademark. This has two consequences:

– the need to check whether the pseudonym infringes apreviously existing pseudonym used commercially

A pseudonym used in the private sphere raises few problems in practice. The same applies if it is used for a limited period of time. If it is not intended for commercial use, it is not necessary to check the existence of any previous use by a third party.

– the protection of a pseudonym may be increased if it is registered as a trademark

Registering a pseudonym as a trademark provides better protection. This registration also leads to its becoming an intellectual property asset in its own right and therefore increases its value. This provides security for the user of the pseudonym as well as for his business partners. It is then easier to carry out commercial operations using this pseudonym (assignment contracts, licensing, marketing operations, etc.)

Dreyfus can assist you in the registering of your trademarks in all countries of the world. Do not hesitate to contact us.

Written by Dreyfus13/08/2019

Like many digital players, Fashion ID inserted a Facebook “Like” button on its website. This plug-in automatically collects and transmits to Facebook the personal data of the website users, whether or not they click on the button, and whether or not they have a Facebook account. This process takes place without any control by the website operator. Arguing that users’ rights are being infringed, a consumer association brought an action before the German court in order to stop this infringement. On 20 January 2017, the competent trial court referred several questions for a preliminary ruling to the Court of Justice of the European Union (CJEU). The main question is whether the integration of this “Like” button is sufficient to make Fashion ID a ‘data controller’ (jointly with Facebook), for the purpose of Directive 95/46/EC of 24 October 1995, which has now been replaced by the General Data Protection Regulation of 27 April 2016 (GDPR).

Although the Court must rule on the notion of joint liability and the consequences of such liability in the light of Directive 95/46/EC, which has now been replaced by the GDPR. Both texts define the data controller in the same way. As a result, the scope of the CJEU decision will most likely go beyond the present case. Aware of the stakes involved in this future decision, Advocate General Michel Bobek, in his Opinion of 19 December 2018, expressed his support for joint liability between Fashion ID and Facebook.

In the past, the CJEU has already recognised the administrator of a Facebook page as a data controller who had freely chosen to host the page on Facebook and therefore could set up the statistical processing carried out by the social network (CJEU, “Wirtschaftsakademie”, 5 June 2018, C-210/16). The Court also said that this liability might be retained even if no direct processing is carried out by the page administrator (CJEU, 10 July 2018, “Jehovan”, C-25/17). The CJEU has therefore adopted a broad understanding of the notion of joint liability.

In his Opinion, Advocate General Bobek has invited the Court to reduce the scope of joint liability in order to better identify the liability of each involved. He considers that extending the notion of data controller to any third party allowing the processing in any way would actually dilute the liability, making the protection of individuals less effective. For this reason, he proposes to link the definition of data controller with the purpose of the processing operation, which must be unique in its means and purpose.

This approach requires splitting the processing into as many subprocesses as there are purposes to get to the part in which the website operator exercises effective control. This approach would limit the website operator’s liability to the processing phase for which he is actually responsible and would not include subsequent processing operations beyond his control. In this instance, Facebook and Fashion ID pursue a commercial and advertising purpose. Therefore, Facebook should be solely liable for processing operations carried out after the data collection, while Fashion ID’s liability would be limited to the collection and transmission of such data. However, this solution proposed by the Advocate General has several disadvantages.

Thus, reducing the notion of purpose to the functions of the processing, (i.e. the technical operations of collection), conceals the advertising purpose. However, users should be able to anticipate this. The processing cannot be examined as a whole and an analysis of its compliance with regard to the consequences for the persons concerned is not possible. In the end, adopting this narrow approach would exempt website operators from requiring the disclosure of information from their operating partners that would effectively inform users, because the different data controllers involved would not be required to know the processing operations carried out by their partners.

Indeed, a data controller could try to evade responsibility by arguing his actions did not cause damage and try to put blame on all others who have beeen held to be joint data controllers. Such presumption of solidarity could be considered if the provisions of Article 26 GDPR (requiring joint controllers to transparently determine responsibilities) are not met.

Moreover, the Advocate General does not address the question of cascading responsibilities. Indeed, in the case of multiple data controllers, a new division of the processing operation would have to be carried out under this solution. For example, if Facebook provides data to a partner, the company will have limited liability and it would be up to its partner to enforce the GDPR.

An extensive interpretation of joint liability in cascade would force operators to identify the relevant mechanisms for ensuring respect for the rights of individuals.

The choice of an extensive or restricted interpretation of joint liability now rests with the CJEU. Its decision is therefore highly anticipated since it will have a direct impact on website publishers and the protection of private individuals’ personal data.

Dreyfus assists its clients worldwide in their strategies to protect and defend their rights on the Internet. Do not hesitate to contact us!

Written by Dreyfus09/08/2019

To the delight of our taste buds, flavors and gourmet creations are part of our daily lives, but from a legal perspective, the situation is more delicate and the flavor more bitter. Indeed, there is a consensus on the need to protect culinary creations but intellectual property law currently offers only peripheral protection.

As we saw in a previous article, cooking recipes can be protected by author rights, the aesthetics or visual appearance of the creation is covered by designs, innovative techniques used in the creation may give rise to patent protection and the name can be registered as a trademark. None of these solutions protect the actual creations themselves. In addition, certain conditions must be met, which may not reflect practice. Under these circumstances, the most appropriate solution is usually author rights protection, which is intended to protect an original creation regardless of its form of expression (Article L. 112-1 of the French Intellectual Property Code). Nevertheless, the Court of justice of the European Union (ECJ, 13 November 2018, “Levola”, C 310/17) has refused to protect flavors in this way. The French Cour de Cassation has adopted a similar position on fragrances (Cass. Com., 10 December 2013, n°19872). In short, when it comes to culinary creations, the law remains speechless.

In order to fill this legal void, several deputies have submitted to the National Assembly a bill about the protection of recipes and culinary creations, on April 30, 2019.

The main purpose of the text is to clarify the situation of traditional recipes on one hand and culinary creations on the other hand.

Thus, the creation of a new institution, the “Fondation pour la gastronomie française”, is envisaged. This private non-profit legal entity would be in charge of listing and protecting traditional recipes in order to identify restaurateurs who respect them. The aim is to promote the knowledge, conservation and enhancement of French gastronomy as well as reassuring consumers.

Moreover, the bill provides for the creation of a public institution, the “Institut national de la création culinaire certifiée” (INCC), to ensure the protection of culinary creations. The INCC would issue a new industrial property title, the certificate of culinary creation, to provide protection for a period of 20 years. A hybrid between author rights and industrial property rights, this title includes economic rights as well as three moral rights (right of disclosure, right to the name, right to respect for culinary creation).

The conditions for granting such a certificate are:

the creation must be new with respect to the state of the culinary art;
the existence of a creative activity, not resulting in an obvious way from the state of the art for a skilled person;
an own gustatory character.

The bill excludes from protection a number of productions such as creations involving elements of the human body, narcotics or creations violating public order. The text also provides a specific regime for employees’ creations, close to the one existing in author rights, as well as an opposition procedure lasting two months from the publication of the application for the grant of a culinary creation certificate. Unsurprisingly, any infringement to this new property right would constitute an act of counterfeiting.

This bill, being a combination of trademark law and author rights, is not convincing. The Chefs themselves do not appear to be asking for such protection and the measure will probably mainly benefit the food industries. The bill has now been referred to the Committee on Cultural Affairs and Education. This is a case to follow.

Specializing in intellectual property, Dreyfus will know how to create the perfect recipe to enhance and protect your rights. Do not hesitate to contact us!

Written by Dreyfus09/08/2019

On April 30, Spain finalized the reform of its trademark law, started in late 2018. From that date, the Royal Decree 306/2019 of 26 April 2019 amending the Regulations under Spanish Trademark Act 17/2001 entered into force.

The possibility to request proof of use in defense in opposition proceedings is one of the main innovations introduced into Spanish law by the 2018 reform. The European Union already provides for such a means of defense in article 47 of the European Union Trademark Regulation (EUTR). Thus, this reform of Spanish law is part of the welcome European harmonization.

The Royal Decree 306/2019, under discussion, establishes how this new defense will be implemented.

Thus, from now on, proof of use may be required for all opposition proceedings filed since May 1, 2019.

This mean of defense can be invoked against Spanish trademarks and trade names and against international trademarks designating Spain. However, not all prior right can be contested. To be challenged, the prior trademark or trade name must have been registered for at least five years. The holder of such prior rights will then have the burden of proof of the actual exploitation of the rights claimed.

If the evidence provided is insufficient, then the opposition request will be rejected. The relevant prior right or the existence of a likelihood of confusion will not be taken into consideration for the resolution of the dispute.

In this respect, the documents provided as evidence must refer to the goods and/or services for which the prior right is registered. If the opposition is based on part of the goods and/or services, then the right holder must provide the proof of a genuine use only for those goods and/or services. The supporting evidences must establish the real and serious exploitation of the prior right. This exploitation is established when products and/or services are offered for sale and put into the market.

The documents communicated must indicate the place, date, extent and nature of the sign’s use. For example, that may be catalogues, brochures, invoices, labels, advertisements, etc. Items provided by third parties constitute concrete and independent evidence. As such, their probative value is higher than the value given by the prior trademark owner’s evidence.

Written by Dreyfus09/08/2019

On March 2017, the new General Civil Chinese Law Rules extended the general limitation period for civil actions from 2 to 3 years.

Since then, many recommendations have been made about the need to change the China Internet Network Information Centre (CNNIC) dispute resolution policy which barred action against a <.cn> domain name which had been registered for more than two years to accord with the one established under the Civil regulation.

The CNNIC developed its first domain name dispute resolution rules in 2000, and following the provisions under the General Civil Law Rules of People’s Republic of China, in force at that time, set a term of 2 years following registration within which action had to be taken.

The CCNIC was established June 3, 1997 who is the registry for domain names in China.

Indeed, the China Dispute Resolution Policy (CNDPR) is the only dispute resolution policy which sets a time limit within which to admit complaints about domain names. This 2 year time-bar has been seen as an effective barrier to challenging any <.cn> registrations, because after the 2 years period, the only possibility was either to negotiate or attempt court action. Fortunately, in order to align the CNDPR time limit for action to the General Civil Law rule, it has been reviewed and extended to 3 years. This was implemented on 18 June 2019, and provides more flexibility to complainants to initiate alternative dispute resolution proceedings against domain names in the <.cn> name space.

Despite this good news there are still some unanswered questions; in particular whether the change to the new term has retroactive effect, or will apply only to those domain names registered after the change in the policy became effective.

To be continued…

Written by Dreyfus07/08/2019

The 65th international meeting of the ICANN took place in Marrakech, from the 24th to the 27th of June 2019. Several topics have been discussed such as the new gTLDs issues, the compliance between ICANN procedures and the GDPR provisions and the review of the rights protection mechanisms.

Future new gTLDs issues

Recently, ICANN faced an increase in the number of applications for top-level domains (gTLDs). In 2012, almost 2000 applications for new gTLDs were submitted to ICANN. At the end of this first round, more than 1000 gTLDs were created, for instance the <.brands>. ICANN awaits similar applications for the next round, which should take place in 2022.

Thus, new strategies have to be implemented to handle with those requests. At first ICANN foresees establishing priorities, based on the new gTLDs applications, to make the process more efficient. This process could be opened every year for a period of 4 months. However, ICANN could seek to limit the number of applications to 1000 per year.

Furthermore, TLDs with 2 characters will be permitted under the new process if these are composed by one letter and one number. Nevertheless, singular and plural versions of the same extensions are likely to be banned as coexisting gTLDs in the future.

On the other hand, ICANN’s Governmental Advisory Committee (GAC), specifically mentioned the <.amazon> issue in its report dated on 27 June 2019.

The ICANN Board had authorized the use of this gTLDs whereas several GAC members had expressed their concerns about the risk of the Amazon case becoming a precedent and expressed concern that a mutually acceptable solution had not been achieved. The GAC has requested ICANN Board to formulate its grounds for its approval. In addition, several South American governments object to its use.

GDPR and EPDP

The Expedited Policy Development Process Working Group (EPDP) implemented a compliance policy in regard to the GDPR, on March 2019. In our article about ICANN 63, we explained that when the GDPR came into force, it would produce several effects on the Whois protocol. For instance, personal data will no longer be accessible to the public. The EPDP has now to develop a unified access system centralizing protected data, based on the legitimate interests of IP owners.

Furthermore, some details about the Registration Data Access Protocol (RDAP) were given in the ICANN 65. This protocol has been created to eventually replace the Whois protocol. In fact, it performs the same functions as Whois, but its aim is to standardize data access. It shall be implemented by Registries and Registrars by the 26^th of August 2019.

Review of protection mechanisms provided by ICANN

The Rights Protection Mechanism (RPM) Working group is reviewing several ICANN procedures concerning gTLDs. It has developed preliminary recommendations about Sunrise and Claims periods. In the same way, some proposals have been developed to allow trademark owners to acquire a priority right to register their trademark as a domain name. In the absence of such a registration, third parties could register terms corresponding to the trademark.

Up to now, the first phase of the working group scheme consists in reviewing Uniform Rapid Suspension (URS) and the Trademark Clearinghouse (TMCH) mechanisms. Similarly, the UDRP procedure remains on the horizon, and the Group is expected to begin work on that in mid-2020. This will be the second phase of its work.

Meantime, as their work is not yet completed, we will have more information once their report is completed, which is expected to be in April 2020.

On the other hand, another working group was also formed to study Subsequent Procedures (SubPro) for new gTLDs. This working group confirmed its support of a User Guide, under the assumption that it becomes more precise, to make it easier to understand what gTLDs are.

Similarly, the SubPro working group expects to better communicate with trademark owners in order to limit the risk of counterfeiting, and to show how those new gTLDs could have a good effect on their activity.

Thus, ICANN 65 provided an opportunity to evaluate the work done thus far by the working groups. However, if clarifications have been made, few concrete changes have been put in place. The projects should take shape at the next meetings organized by ICANN.

The next ICANN meeting will take place in November 2019, in Montreal. We will continue to follow this matter closely.

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