Dreyfus

Acme Billing, the US-based online retailer, faces a burgeoning phenomenon, namely, the theft of domain names. Last August, the company found out that 35 of its domain names had been stolen by an anonymous person located in China, who transferred the domain names to acquire them.

On October 21, the company filed suit in the US District court of the Eastern District of Virginia against an anonymous hacker based in China for “knowingly and intentionally access Acme Billing’s domain name management (…) without authorization.”  Acme also accused the hacker of having acted in “bad faith.” To date, Acme Billing has successfully retrieved only 21 of the 35 domain names. For the other 14 domain names, it seems that the hacker has put them for sale.

Domain name theft can be particularly harmful to business, especially for an online sales company, such as Acme Billing. Clearly, by stealing domain names from an online platform, the company is deprived of the principal asset required to conduct its business. The theft of domain names can thus have grievous financial consequences for the turnover of the company, which will be directly and severely impacted. In light of this, Acme Billing’s CEO, Greg Stranahan, stated that “the theft of domain names is a growing form of intellectual property rights violation, with potentially devastating consequences for American businesses.” The decision is highly anticipated.

While the French Supreme Court (Court of Cassation) has still not ruled on the issue in France, the demands of the town of Laguiole seem to have arrived to the Court of the European Union. The town wishes to regain the use of its name. In a recent judgment[1], the European Court of Justice annulled the trademark “Laguiole” registered for cutlery by the entrepreneur Gilbert Szajner in favour of the company Forge de Laguiole.

In 2001, Szajner successfully sought registration of the Community Trademark at the Office for Harmonization in the Internal Market (OHIM).  Forge de Laguiole, which markets the famous knife, subsequently obtained cancellation of the trademark by an OHIM decision on the 1^st June 2011. Szajner, a businessman from Val-de-Marne without any connection to the village, brought an action against this decision before the European Court of Justice. This latter recognized “the anteriority of Forge de Laguiole which relaunched this product in 1987 and its specificity” and partially annulled the Laguiole brand.

However, the decision of the OHIM was overruled regarding the nullity of the Laguiole brand for products other than “tools and instruments hand operated”, comprising cutlery. The Court noted that even if “Forge de Laguiole was solely engaged in the cutlery industry,” he stated that Szajner could also continue to use the trademark “for products and services in other sectors.” Consequently, except for the “tools and instruments hand operated“, the entrepreneur is entitled to sell other products under the Laguiole brand.

However, for the EU the brand was partially annulled, the same cannot be said for France as the town [still] awaits the judgment of the French Supreme Court. The town of Laguiole, which alleges despoilment of its name, has waged a fierce battle against the entrepreneur for several years. The town alleged in front of the Court of Appeal of Paris that there were a deceptive commercial practice and a violation of its name, image and reputation. It was unsuccessful as the Court dismissed the case in a judgment delivered on 4^th April, 2014. The town appealed. The recent decision from the European Court should rekindle the hope of the Mayor of Laguiole, Vincent Alazard.

While the Laguiole knives won their name back, the Aveyron village, renowned worldwide for cutlery, waits impatiently. The mayor seeks to recognize commercial deception, since he believes that the businessman is using the name of his town for products manufactured in Asia. Under the current law, local authorities do not have an exclusive right for the sign and can only preventively protect their names by filing a trademark registration with the National Institute of Industrial Property (INPI). Deauville, which protected its name in 1998, is a prime example.

Nonetheless, with the advent of the Hamon consumer protection law on 17^th March 2014, local authorities can now request INPI to inform them in the event of a third party’s trademark application containing their name. They can also contest it within two months with the Director of the INPI. A town can thus exercise this application under Article L711-4-d and -h of the Code de la Propriété Intellectuelle, in respect of an infringement of its name, image or reputation or in respect of a breach of a geographical indication including its name. But the decree setting out the essentials for implementation of this law is still in the works.

However, the protection offered by the novel law appears to be limited to the goals of regional communities carrying out public service as the TGI of Paris had previously held that a town “cannot, through its interest in its name, forbid companies to operate their business on its territory by using its name, unless it is shown that such use causes a likelihood of confusion with its own competences or is likely to cause prejudice to it or to its citizens.” It only remains to be seen whether the Cour de Cassation will steer towards this direction or make its decision in light of the recent European case law. This judgment is expected to defend the names of local authorities.

[1] Court of the European Union, 21 October 2014, Gilbert Szajner c/ OHMI, aff. T-453/11.

The state of Rhode Island recently passed a new law on the protection of employee privacy on social networks. The new law prohibits employers from requiring employees, during job interviews or working hours, as the case may be, to disclose the password of their social networks accounts.

This law was made necessary by increasing abuses by employers. Many require the passwords of job seekers’ social network accounts and even exert pressure to access e.g. their Facebook profile. While it is now common for employers to conduct research on candidates and gather all kind of information, they can only access so-called “public” content. By seeking passwords from candidates, employers really wished to have full access to so-called “private” content configured to be shielded from everyone’s view, and thus to more interesting information as though they were close to the individual concerned. Such private content may be e.g. pictures, messages and other personal exchanges with other members of the social network. Likewise, the new law prohibits employers from compelling employees to add them as contacts, i.e as a “friend” on Facebook, so that the latter can indirectly access the account.

However, there is an exception that allows employers to access one or more social networks account (s) of their employee in their presence provided certain conditions are met. An employee may be required to provide their username and password only when an investigation is required, i.e. where there has been an infringement of employment law rules. But the law does not specify the circumstances in which the employer can reasonably rely on this exception. Harassment, which is prohibited under employment law, comes to mind, as it can materialize through exchanges on social networks.

To date, seven states have already enacted similar laws in the United States, particularly in Illinois and Louisiana, and the trend looks set to continue. Indeed, such laws are being enacted in 28 other states. Should we expect such provisions in Europe?

The impact of Google on our society in the recent years has been a remarkable one. Indeed, the term “googling” someone or something has now carved a niche for itself in common parlance, and as such has been included in the latest edition of the Petit Larousse in France. Nonetheless, “google” is and will always be a trademark in the first place, as recently emphasized by a Court of Justice in the US.[1] Although “google” is commonly used as a verb in the US, the District Court for the State of Arizona drew attention to the fact that its primary purpose is for commercial use.

In March 2012, David Elliot and Chris Gillespie registered nearly 760 domain names, including all the term “google”, such as googledisney.com, googlebarackobama.net and googlemexicocity.com. Google Inc. first initiated private arbitration under the UDRP rules (Uniform Domain-Name Dispute-Resolution Policy) where it was ordered that the domain names be transferred unto Google Inc.  The appellants, David Elliot and Chris Gillespie, argued that the term “google” referred to a verb rather than to services offered by the Californian Company. As a result, they filed suit seeking no less than the annulment of the Google trademark. The latter entered a counter claim alleging trademark dilution, cybersquatting and unjust enrichment.

The Court dismissed the appellants’ contentions and found that the primary meaning of “google” cannot be a verb. The use of “google” as a verb does not remove the rights conferred upon the company of its globally known trademark. Moreover, to justify its stance, the court stated that Google primarily refers to an Internet search engine for most people. In this respect, Google is the first search engine in the United States and France. Accordingly, the District Court held that “google” could not be a generic term.

[1] Court for the District of Arizona, Elliot v. Google Inc, 10 September 2014.

The admissibility of Internet content as evidence has been at the heart of a lively debate in the legal landscape. We will discuss here the weight to be attributed to evidence obtained through the archive.org website managed by Internet Archive, a non-profit organization, which claims to have saved 450 billion web pages by means of its wayback machine. Indeed, this system provides snapshots of web page contents in a fairly reliable manner. Even though the contents of an URL address may have changed, the risk of changes may be avoided by the archive.org system, which allows for visiting a web page as it appeared years earlier.

At the domestic level, as already recounted on April 28, 2011, judges have displayed a marked reluctance vis-à-vis this type of evidence. Courts in France[1], the United States[2], as well as Germany [3] have rejected such evidence due to the lack of legality of the mechanism issuing archived material or the unreliability of the dates obtained. Conversely, supranational legal bodies (WIPO Arbitration center, European Patent Office) have oft been more flexible on this point.[4]

While no evolution has been noted on the domestic front, the case-law of the European Patent Office has accommodated a recent change in this arena. On May 21, the Board of Appeal of the EPO (T 0286/10) delivered a judgment regarding wayback machine archives in an objection to a patent case. In the case at hand, the applicant challenged the decision of the Board in that the latter maintained the patent as granted.

The Board of Appeal explicitly demarcated its stance from the T1134/06 judgment which required produce an authentication result issued by the archive issuer. It is henceforth no longer required, “there is no legal basis for a regime different from that governing the disclosure of the prior art in general.” In the judgment of May 21, the Court, in support of its stance, cited judgments T 2339/09 and T 990/09 which also depart from the T1134/06 decision.

The Board of Appeal deemed that the dates provided by the Internet Archive need not be considered inaccurate, leaving it to the defendant to prove “new evidence to shift the burden and provide evidence to the contrary to rebut the presumption.”

The Board further specified that,although incomplete, the archive library, by virtue of its popularity and reputation, “provides enough safeguards to benefit from a presumption of [being a] reliable and trusted source of information”. The burden of proving any contrary evidence is thus shifted unto the opponent.

This judgment takes a leap further as far as accepting evidence from an archive system and the legitimacy accorded to the website archive.org.is concerned. Nevertheless, the views of domestic courts will take a (much) longer time to change, particularly in France, given that they still view the snapshot issuer as broadly illegitimate.

[1]  CA Paris, 2^ème Ch., 2 July 2010, « Saval, Établissements Laval c/ Home Shopping Service (HSS) »

[2] « Novak v. Tucows », No. 04-CV-1909, 2007 U.S. Dist. Lexis 21269 (E.D.N.Y. March 26, 2007) ;  « Telewizja Polska USA, Inc. v. Echostar Satellite », Memorandum Opinion and Order, Case No. 02C3293 (N.D. III. Oct. 14,2004)

[3]  BPatG 17W (pat) 1/02

[4]  http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1768.html and judgment of EPO T 1134/06

Under the previous IP regime in Burundi, registered trademarks were indefinitely protected without the need for any possible renewal.

With the new IP law which came into force on July 28, 2009, trademarks registered in Burundi must now be renewed once every 10 years.

The question then arose as to whether the novel requirement to renew was applicable to trademarks registered prior to July 28, 2009, when the current law was enacted.

According to the transitional provisions in the law, trademarks registered prior to the new law were not subject to mandatory renewal and remained valid indefinitely, except in instances of cancellation or expiry of the trademark.

The entry into force of the new law has clarified matters: all trademarks, including those registered under the former law shall need to be renewed for 10-year period before July 28, 2019.

It is yet to be determined as of which date it will be allowed to file application for the renewal of these old trademarks.

To be followed…

Under the prevalent Canadian law, a trademark can only be registered if it is currently used or if the applicant plans to use it. Applications based on the use of a trademark in Canada have to mention the date of first use in respect of the designated goods and services. The holder of a trademark registered and used abroad can also file an application in Canada without ever having used that mark there.

Once the new law, presently under discussions, becomes effective, the requirement for a declaration of use in Canada prior to the issuance of the certificate of registration will be removed. It will not be necessary to specify whether the claim is based on an existing or intended local use of the trademark.

The new law is expected to enter into force by end of 2015 or early 2016. Removal of the declaration of use requirement will prove beneficial to all pending registrations. However, anyone who applies for registration of a trademark in Canada must still intend to use it for all designated goods and services.

On the one hand, this change is a good thing because all issues surrounding dates of use will disappear at the application stage. In addition, the applicant will no longer have to require lengthy time extensions to start using the trademark for all the goods and services listed in the application.

On the other hand, since the registry will no longer provide information concerning the use of trademarks, it will be more difficult to determine whether a new trademark is available. This is an important consideration as it will still be feasible to claim acquired rights through use. In the event of a dispute between two applicants, an investigation will be required to determine who is genuinely the first user of the trademark and in respect of which goods and services.

The prospective amendment to Trademark Law relaxes the registration procedures of trademarks. The concept of use of the trademark is not ruled out yet. Instead, it remains critical as far as trademark rights are concerned. The principle remains unchanged: the first user, not necessarily the first applicant, retains rights over the trademark. It is actually the filing strategy which requires revamping: it is imperative to file a registration application for all potential goods and services at the soonest available opportunity.

To be continued…

The real world and the Internet have long been segregated. Today however, these two worlds tend to overlap and as paradoxical as this may sound, registering your trademark can prove to be quite a useful protection on the Internet.

The reasons for the importance of trademark registration are increasing with the rise of cybersquatting. This has led to registered trademark owners enjoying new benefits in relation to the protection of their rights over the Internet.

Firstly, it has become increasingly important to protect trademarks on social networking sites. Since 2009, Facebook allows its members to create user names which are easily accessible and which can include trademarks. Before 2009, Facebook allowed a short period of time for registered trademark owners to identify their trademarks and to prevent their use by other members.

Most social media platforms secure usernames on a “first come, first served” basis. As far as rights enforcement is concerned, it is easier to be the owner of a registered trademark to be able to notify a breach of trademarks rights in accordance with the platforms’ terms of use.

Secondly, all trademarks on the Internet must be protected on search engines and particularly in sponsored links. Through its AdWords system, Google allows advertisers to select keywords so that their advertisements become visible to web surfers when they enter these words in the search engine. Conflicts arise when advertisers buy keywords containing trademarks whilst having no rights to them.

Holding trademark rights thus becomes an important factor in countering unfair competition practices.

Thirdly, trademark owners must also pay attention to the increasing number of new domain name extensions gTLDs. To date, more than 300 new gTLDs have been delegated, and hundreds more are soon to follow. In view of the potential conflicts with protected trademarks, a new mechanism has been made available to trademark owners: the Trademark Clearinghouse. It is a centralized database for all registered trademarks. Once the trademark is registered there, trademark owners can participate in the Sunrise Periods for newly-launched gTLDs and are informed when third parties register domain names that are identical or similar to their trademark. The person filing for the domain name in question is also informed that he may be infringing on the rights of a trademark owner.

Finally, if a domain name identical to or containing a trademark is registered, specific administrative procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP) can assist trademark owners in taking action against cybersquatters. These specific procedures are only accessible to trademark owners.

Thus, being a trademark owner is now almost a requirement to protect and defend your rights on the Internet, even if your company does not have a strong Internet presence.

Dreyfus is specialized in the protection of rights over the Internet. Please do not hesitate to contact us for any information.

On March 21, 2014, the Crimea was annexed by Russia. Formerly a part of Ukraine, this region now has a dual legal status, particularly as concerns intellectual property rights.

On 22 July 2014, the Ukrainian government met to discuss intellectual property protection in the Crimea. This region was then conferred the legal status of an occupied territory and will remain subject to the Ukrainian regime in intellectual property matters.

On the same date, Russian President Vladimir Putin signed a new law to regulate IP protection in the Crimea. The new law provides for the protection of inventions, utility models, industrial designs, service marks and appellations of origin originally registered in Ukraine by persons who are permanent residents of the Crimea, provided that these rights are revalidated in Russia prior to January 1, 2015. Trademarks rights which are already protected in Russia will be automatically protected in the Crimea. There will be no requirement to register anew.

To ensure a blanket protection of trademarks in the Crimea, it is henceforth imperative to hold a registered trademark in both Ukraine and the Russian Federation.

While the free reproduction of works in the public domain is allowed, e.g. Auguste Rodin’s notable sculpture, The Thinker, it is imperative that any such reproduction respects the moral rights of the author. The latter is indeed “perpetual, inalienable and imprescriptible” in accordance with Article L. 121-1 of the French Code de la Propriété Intellectuelle.

One of the most seminal counterfeit lawsuits witnessed in the French legal landscape in the recent years is being tried in the Criminal court – Tribunal correctionnel de Paris. The action is based on counterfeiting and false advertising in relation to the sale of several copies of Rodin sculptures which have since lapsed into the public domain. The judgment has been reserved for November 20. This decision is particularly awaited in the art world as concerns moral rights. Moral rights may be transferred upon death to the heirs of the author or to a third party under the provisions of a will. August Rodin bequeathed all his works to the French government, more precisely to the Musée Rodin which is now holds the moral rights in these works by a  by decree of February 2, 1993. It is in this capacity that the Musée has exercised its rights and filed suit.

Gary Snell, an American businessman, bought plasters of Rodin’s sculptures from merchants, including the Thinker and The Age of Bronze in various dimensions. He then mass-produced a series of copies. According to a court-appointed expert, more than 1,700 copies were sold, thus warranting the qualification of “quasi-industrial” production by the Prosecutor.

In addition, the right to the author’s name was violated as some reproductions flaunted a Rodin signature and sometimes even the mark of the foundry used by Rodin, the Rudier foundry, in lieu of the mark of the Italian foundry which actually manufactured these copies. Yet, according to Article 8 of the Decree of March 3, 1981 on fraud prevention in art and collectibles, “any facsimile, molding, copy or other reproduction of a work of art or a collectible must be designated as such.” Therefore, while reproduction of Rodin’s works is not prohibited under French law, it is imperative that they are clearly identified as such, for the purchaser to take cognizance of the low value of the work – something that was lacking in the present case. Similarly, some of the reproductions were so poor that they were a violation of Rodin’s moral right in respect of his works, which all the more betrayed the artist’s vision. As a result, the Prosecutor argued that these reproductions should be treated as counterfeits under French law.

The argument put forward by the accused party, namely that French law does not apply because the reproductions, according to the latter’s Counsel “were never offered or sold in France,” is inadmissible since the it was established that the copies were advertised on an site that could be accessed from France at the time.

The Prosecutor requested the Court to levy a fine of 150,000 euros on Gruppo Mondiale, a company incorporated in Liechtenstein headed by Gary Snell, and accused of having displayed or sold, the counterfeit works of Rodin which it manufactured on a “quasi industrial” scale, by presenting them as originals. Moreover, the Prosecutor also prayed the Court for a suspended sentence of eight months and a 30,000 euro fine against the businessman. Stay tuned!