Dreyfus

The Member States of the European Union are particularly committed to copyright protection. However, the European Union based on free market principles, has lately relaxed its protective stance. In this regard, the Order of the Court of Justice of the European Union (CJEU) of October 21, 2014 addressed the issue of the framing. This technique involves incorporating a web page of a site within another site through a frame. The purpose of framing is to increase the number of connections automatically.

In Germany, the company BestWater had produced a commercial which was later uploaded on YouTube without its authorization. The video was taken up by two independent commercial agents to promote the products of a competitor. BestWater filed infringement proceedings, demanding the termination of the broadcast. Its claims were rejected by the German lower courts on the grounds that the work, i.e the video, was already disclosed to the public as a result of its first broadcast on YouTube. Consequently, a new communication to the public, using the same technical medium, cannot be described as a communication to a new public. BestWater appealed to the Federal Court of Justice (Bundesgerichtshof), which encountered a difficulty with the interpretation of Directive 2001/29 on copyright and related rights. Indeed, Article 3§1 of the Directive requires, in principle, permission of the copyright holder, from the time that there has been communication to the public.

The German Federal Court then referred the following preliminary question to the CJEU: “Can the fact that the work of another person made available to the public on a website is inserted in another web site under conditions such as those of the main proceedings be described as ‘communication to the public’ within the meaning of Article 3, paragraph 1, of Directive 2001/29, even where the work in question is not transmitted to a new audience or communicated through specific technical means different from that of the original communication.” In other words, what happens when the said video is embedded in a third party site? Is the criterion of the “new public” met and is a new authorization of the right holder required?

To determine the issue, the ECJ drew inspiration from the Svensson case dated February 13, 2014 concerning Internet links. The Court held that embedded videos cannot be described as “communication to the public (…) to the extent that the work in question is not transmitted to a new public or communicated through a specific technical means different from that of the original communication.” Thus, if the right holder initially allowed the video to be uploaded on YouTube, they cannot prevent the “embedding” on third party sites. Otherwise, all Facebook users who share videos with their “friends” would have incurred liability, with potentially chaotic proceedings as a result. Moreover, from another point of view, the framing would thus enable appropriating the work of another person while avoiding the scope of provisions regarding reproduction rights. One can raise the question of how fair this technique really is, too.

This decision regarding framing has reinforced the case law of the Court of Justice which is already well settled with respect to hyperlinks.

As from July 2015, cybersquatters will not be able to “fly” towards another registrar when they are targeted by an UDRP Complaint!

ICANN (Internet Corporation for Assigned Names and Numbers), the organization responsible for naming the Internet, announced recently the approval of new URDP (Uniform Domain-Name Dispute-Resolution Policy) rules. The main amendment aims to fight against “Cyberflight”.

This change has its origins in the GNSO’s (Generic Names Supporting Organization, the body representing the States within ICANN) recommendations which are stated in the Report on blocking domain names covered by UDRP complaints, dated July 5, 2013.

Cyberflight is a relatively common practice used by cybersquatters who, upon receipt of an UDRP complaint, transfer the domain to another registrar. GNSO observes in its report that most of the registrars were blocking the domain names following a notification relative to the lodging of an UDRP complaint. However, it is not a regular practice as there were no UDRP rules regarding such blocking. Thus, where the domain name was not blocked, the cybersquatter could change registrar and avoid the UDRP dispute.

According to the new rules, any accredited registrar must, within 2 business days, block the domain name upon notification of an UDRP procedure (rule 4(b)). This technical measure prevents the transfer but affects neither the resolution of the domain, nor its renewal. Thus, the holder of the disputed domain name will not be able to change the registrant or registrar. Blocking the domain name will not have an impact on the registrar’s obligation to provide the real identity of the registrant.

Another change which aims to restrict cyberflight consists in the removal of the complainant’s obligation to send a copy of the complaint to the respondent (rule 3(b)(xii)). Thus, the holder of the disputed domain name is not informed as from the start of the UDRP proceedings and before the domain name is blocked by the registrar. He is also prohibited from notifying the holder of the domain name.

In situations where the complaint is either withdrawn or dismissed, the registrar must withdraw the blockage within one business day.

We can only applaud these new rules which will come into effect on July 31, 2015 and shall apply to all registrars accredited by ICANN.

Abu Dhabi, an Emirate state in the United Arab Emirates, recently enacted a new directive to regulate trade names, in particular to prevent the development of conflicts with trademarks.

This law is applicable locally and is in line UAE trademark laws. It applies to companies operating in Abu Dhabi and using trade names. This law regulates which trade names can or cannot be registered.

The purpose of the law is to prevent the continuing conflicts between trademarks and trade names in the country, which are currently a genuine issue because the two databases were never cross-checked. Many trademark owners have long suffered from their trademarks being registered and used as trade names. Indeed, trade names are not published as it is the case for trademarks, and therefore, it is not possible to object to their adoption. Thus, the new directive will help to prohibit the registration of trade names which are identical or similar to locally or internationally registered trademarks. In the absence of the trademark owner’s authorization, it will thus be impossible to register an identical or similar trade name.

In the future, this new law should minimise conflicts between trade names and registered trademarks.

Events with significant media coverage, whatever their nature, often provide self-seekers with a golden opportunity to exploit the situation for commercial ends. Thus, unscrupulously some have sought to take advantage of the tragic attacks which occurred in Paris. Barely a few hours after the attack against the editorial team of the satirical newspaper, Charlie Hebdo in the morning of January 7, 2015, the INPI, the National Institute of Industrial Property, received about fifty filing applications for the “Je suis Charlie” trademark and derivatives thereof.

The broadcast of this slogan, created by Joachim Roncin, artistic director of Stylist magazine, half an hour after the attack, was beyond measure. The whole world, with social networks in the front line, took over and almost instantly popularized the visual. Faced with such magnitude, the creator of the visual formally opposed any commercial use of the message and the image. The INPI responded on the same day by issuing a press release announcing the dismissal of such filing applications on the grounds that “this slogan cannot be picked up by an economic actor due to its wide use by the community.” Thus, a few hours sufficed to render “Je suis Charlie” world famous and inalienable. Beyond the ethical aspect, would the widespread use of this visual have therefore rendered it devoid of any distinctive character?

This rejection is not so obvious and may be legally questionable. In accordance with Article L711-2 of the Code of Intellectual Property, “are devoid of any distinctive character: signs or names which in everyday or technical language simply constitute the necessary, generic or usual product or service; signs or names which may serve to designate a characteristic of the product or service (…); signs which consist exclusively of the shape imposed by the nature or function of the product.” However, at the time of filing, the slogan had not yet become part of common parlance or professional language to describe a product or service, nor any of its characteristics and could not necessarily be considered as being a sign constituting a product. Consequently, the slogan could have been treated as distinctive. The argument of the INPI for rejecting the distinctive character is therefore questionable. The INPI should have instead chosen a contention based on public policy to oppose trademark applications to the extent that a monopoly on the slogan could restrict freedom of expression.

Nevertheless, the intention of the INPI is commendable. An extreme state of affairs begets an extreme remedy and the informed position adopted by the INPI can only be saluted. Indeed, the INPI’s role is to examine trademark applications and it may reject them if they do not meet the substantive requirements for registration as required by law. Once the trademark is filed, the INPI publishes the registration of the trademark within a period of six weeks. After this period, the examiner scrutinizes the merits of the application and may raise objections. Third parties also have the opportunity to submit comments or to object to the registration of the trademark, when it published. In this case, the INPI issued a provisional refusal objection to these registrations. The applicants concerned can respond to this objection. Indeed, they can react and respond to this objection within two months, should they so wish to do so. However in view of the exceptional situation, their responses will have little chance of success.

Thus, the shady affair surrounding Charlie should not take place, at least legally in France. It is rather different in practice and the INPI could not, over the last few days, hinder the surge of multiple products bearing the image of the famous visual on eBay, such as stickers or T-shirts. Moreover, due to the international media buzz around the attacks, other foreign offices, such as the Benelux Office or the United States, have received similar requests. As concerns Benelux, the process is ongoing and the decision should be taken within two months. In the United States, Steven Stanwyck and Kelly Ashton also filed the trademark with the USPTO (the US Patent and Trademark Office) for communication and advertising services falling within class 35. In addition, during the registration [procedure], they specified that they wished to use this brand for non-profitable purposes. The USPTO (United States Patent and Trademark Office) has not responded yet.

More recently, the Community Trademark Office (OHIM) received a community trademark application for the same mark, that is, to be protected throughout the entire territory of the 28 countries across the European Union. The application for registration will, in all probability, be rejected because it is likely to prejudice the public interest. In fact, this trademark should be considered contrary to public order and morality. The INPI has no power to contest such registrations outside French territory and therefore cannot prevent foreign companies from disseminating the “Je suis Charlie” mark in the future.

Furthermore, in parallel to these filing applications, domain names such as “charliehebdomassacre.com” or “je-suischarlie.com” were put on sale. The latter, for instance, is on sale display for 349 euros on the domain name sales platform Sedo, the market leader. When confronted with such dishonest business, registrars do little, if anything at all and hide behind the first-come, first-served principle and allege that they must remain neutral and passive. However, in case of a dispute over the registration or use of a domain name, it is nonetheless feasible to initiate actions, particularly in cases of fraud like the UDRP procedure.

Given the current context, it is advisable that registrars, at least the French ones, align themselves with the stance adopted by the INPI in refusing to register such domain names for reasons of public order.

Just like Donuts, a company that introduced the “Domains Protected Marks List” (DPML), private registries increasingly try to offer rights holders similar protection tools in addition to the Trademark Clearinghouse (TMCH).

As a reminder, DPML is a rights protection mechanism for all TLDs operated by several registries, including Donuts, in order to block the registration of domain names containing trademarks previously validated by the TMCH. Thus, all trademarks registered and maintained in the TMCH are eligible, provided they comprise at least three letters. Once this condition is met, blocking a trademark can be achieved either for identical or contained terms therein. Thus, when a term is protected in DPML, without even registering corresponding domain names, it will not be available for purchase, in relation to hundreds of extensions. Furthermore, blocking is active only if the trademark remains registered with the TMCH.

But whilst DPML can be an effective tool against cybersquatting, rights holders wishing to register domain names will nevertheless have to conduct an unblocking for each registered domain name. Also, rights holders will have to renew the registration of the related trademark in the TMCH to preserve the blocking in DPML. Thus registering a trademark in DPML requires a preliminary study to identify risks and develop a protection strategy.

The MPML “Mind + Machines’ Protected Marks List”, set up by the registry Minds + Machines, operates in a way similar to DPML. As with DPML, only trademarks which comprise at least three letters, registered and maintained in the TMCH may be blocked if identical or contained terms therein. Moreover, as with DPML, some domain names were excluded from the mechanism, including names blocked by ICANN. However, the TLDs operated by Minds + Machines are logically different and relate e.g. to .fashion or .law. Similarly, the blocking period may vary depending on the registry.

Finally, the various blocking mechanisms offered by private registries are not really different because they have the same goal to fight against cybersquatting, except that each of them operates different TLDs. It is not impossible that in the future, these mechanisms grow and extend to other private registries.

It is therefore necessary to examine on a case by case basis whether to use such mechanisms which may be useful to protect a trademark on the Internet. Dreyfus has expertise on these issues and can advise you on the best strategy.

We are pleased to inform you that the book “L’élu(e) face au numérique” by Pascale Luciani-Boyer (publisher: Berger Levrault) is now available. The book aims at defining the roles of elected representatives dealing with issues in relation to digital technology as well as suggesting relevant organisational models.

Nathalie Dreyfus contributed to the book and thus analysed the difficult issue of the protection of names of local authorities as trademarks. The book is available as from January 2015.

Luciani-Boyer, Pascale,  L’élu(e) face au numérique, De la puissance publique à la puissance citoyenne, un défi majeur des territoires, Paris, Berger Levrault ed., 2015, 200 pages
http://boutique.berger-levrault.fr/ouvrages/collectivites-locales/missions-et-pouvoirs-de-l-elu-local/l-elu-face-au-numerique.html

Labels and packaging recently became some of the most counterfeited items. In 2013, they accounted for more than one million of counterfeit goods seized by French customs authorities.

With customs services on the frontline in ensuring observance of intellectual property rights, it now seems vital for trademark holders to protect their rights at customs.

Customs will only act if the right holder previously filed a request for intervention with a view to withholding the suspected counterfeit goods at customs.

It is incumbent upon the person alleging that there has been infringement to show evidence to the customs authorities of the existence of an intellectual property right protected under French law.

As concerns trademarks, the registration certificate must be provided. The list of products for which the trademark is protected must also be specified.

Where counterfeiting of labels or packaging is concerned, the request for intervention to the customs authorities is be admissible only if the infringing mark is covered by Class 16 (stationery; adhesives; adhesive materials, plastic materials for packaging; printing blocks).

It is thus useful to protect trademarks under Class 16 in order to be able to initiate action against counterfeit labels and packaging at customs.

The French Hamon Act of March 17, 2014 on consumer law aims at increasing consumer protection by compelling businesses to provide information on every purchase through a “sustainable medium”. In one of our previous articles, we outlined that that law also aims at extending the withdrawal period from 7 to 14 days and at establishing a number of obligations in relation to the pre-contractual information provided on an e-commerce website.

A decree dated 17 September 2014 on pre-contractual and contractual information to consumers and to the right of withdrawal, implementing the Hamon Law, details the nature of the pre-contractual information that businesses shall provide before the parties enter into the agreement. The purpose of these pre-contractual and contractual information is to protect consumers on the Internet. The trader’s name and contact details, methods of payment, delivery, performance and claim settlement, legal and commercial guarantees and finally the features and interoperability of digital content should be stated. With respect to the withdrawal form, the decree requires its compulsory integration in the agreement including explanations on how to exercise the withdrawal right.

The decree was enforceable immediately and thus came into force September 20, 2014. The Direction Générale de la Concurrence, de la Consommation et de la Répression des Fraudes (French Competition, Consumer and Fraud Control Authority) may start implementing controls immediately to ensure compliance with the new rules.

In order to comply, businesses are strongly advised to update their contractual information to include the withdrawal form and the procedures to exercise the withdrawal right amongst others.

For the first time in Europe, a judge ordered Internet Service Providers (ISPs) to block several sites infringing trademark rights[1]. In the European Union, it was previously only feasible to block sites under copyright provisions, or for disruption of public order in other fields such as child pornography. Henceforth, following the initiative of the English judge, it appears that trademark law allows for the possibility to seek an order from a Court to block trademark infringing websites.

The dispute arose between several companies in the luxury sector, including Cartier, Montblanc and Richemont, and five major Internet service providers. These companies filed suit further to trademark infringing acts in order to block access to six sites where counterfeit goods were offered and sold. The Court found that infringement did occur and as a result, the major English ISPs namely BSkyB, BT, TalkTalk and Virgin EE were forced to block access to those sites that illegally reproduced the trademarks of these companies in the luxury industry.

This order of October 17, 2014 was made pursuant to section 97A of the Copyright Act, but the High Court of Justice pointed out that there is no legal equivalent in terms of trademarks. The Judge relied on many recent injunctions cases on copyright law in respect of streaming or downloading sites. This Article, when applied to trademark law, imposes three conditions to allow blocking: Firstly, the ISPs must be technical intermediaries; secondly the trademark infringement should be characterised and thirdly, the intermediaries must be informed of the infringement. In addition, the Order has been rendered in interpreting Article 11 of the Directive on the enforcement of intellectual property rights which is not limited solely to copyright infringements but to all intellectual property rights. Accordingly, the Judge held that the English High Court of Justice had jurisdiction to order an ISP to block one or more sites infringing trademark law.

The Court also expressed its reservations concerning the implementation of site blocking measures by the ISPs to prevent abuse. The latter may ask the judge to annul the order in the event of a change in circumstances. The Court referred in particular to the effectiveness of blocking measures and the costs they might entail. Moreover, blocking measures should not last any longer than necessary, which remains somewhat vague. However, the Court also incorporated a “sunset clause” in this type of order so as to prevent trademark owners from targeting too many sites incessantly. According to this clause, the order shall cease at the end of a defined period, unless ISPs agree to the order being continued or the Court orders that the measures should be continued. This Order marks an inaugural step for trademark law in Europe, will it pave the way for others to follow suit?

[1] High Court of Justice of London, Cartier, Montblanc, Richemont c/ BSkyB, BT, TalkTalk, EE and Virgin,  October 17, 2014.

An important consultation on digital technology was launched on October 4 by the French Prime Minister, Manuel Valls. It is headed by the French Digital Council (CNNum) and is accessible to all on contribuez.cnnumerique.fr until January, 2015.

CNNum invites all French people to submit their opinions and expertise to identify the key issues of digital technology. Therefore, companies, associations and citizens can address questions relating to the impact of digital technologies on the economy and society.  The public can also comment on the practicability of the proposed solutions.

The consultation has been open since October 4 and covers topics such as “Growth, innovation, disruption” or “Loyalty in the digital environment.” As from November 3, two other themes are available: “The digital transformation of public action” and “society faced with digital transformation.” Yet, the schedule is tight, with only a few weeks to gather the proposals of the French public on matters of great significance. Axelle Lamaire, State Secretary for digital economy, cites urgency as a justification for the short timeframe, since “some would wish to acquire the Internet space to make it an object of power.”

For each topic, brainstorming sessions will be organized throughout France. Through this consultation, everyone can evaluate the proposals of CNNum, take a stance for or against them and make new proposals. A summary will be prepared based on a quantitative and qualitative analysis of the contributions made. On this basis, the CNNum members shall craft a global vision for each theme. This appraisal will allow the CNN-um to propose several topics to the government for a draft law.

The program is a comprehensive one … But, according to Manuel Valls and Benoît Thieulin, President of CNNum, the consultation should help to “define the kind of society we want to live in tomorrow.” Achieving these goals will depend on the success of this consultation and on the government subsequently.

To be followed.