Dreyfus

In a ruling of June 21, 2013 (1), the Paris Court of Appeal rejected a counterfeiting action filed by the SPPF (the French collecting society for record labels’ neighboring rights in sound recordings) against Youtube for allowing internet users to post counterfeit videos.

In 2008 Youtube had withdrawn over 200 contentious videos from its platform following a cease-and-desist letter from the SPPF specifying that the rights holders had not given their consent. Since a large number of these videos were subsequently posted several months later, the SPPF filed for an action against Youtube and Google.

The Paris Court of Appeal ruled that only the judicial authority has the power to impose on hosting service providers a duty to temporary and targeted surveillance in accordance with article 6-I-7 paragraph 2 of the law to generate confidence in the digital economy (LCEN).

It is worth recalling that as a result of combining sections of articles 6-I-2 and 6-I-5 of the LCEN legislation, hosting service providers are not subject to any general obligation to monitor the data stored or any general obligation to research the facts or circumstances arising from illicit activities, . Besides, the withdrawing of content by a host site cannot be undertaken without prior notice.

The Paris Court of Appeal confirmed the lack of obligation on the part of hosting service providers to make a permanent removal, and restated the requirement for a further notification when withdrawn contents are re-posted. In other words, every new posting containing illicit content requires   a new withdrawal notification.

This ruling follows the precedent set by the High Court (Cour de Cassation) in three decisions of July 12, 2012 (2), in which it refused to enforce an obligation for permanent withdrawal, considered to be a duty of general surveillance not covered by the terms of the LCEN legislation. When illicit content is posted once again by a different internet user, it should be considered as a new case requiring a further notification in line with the requirements of article L6-5 LCEN. To support the duty to permanent withdrawal would imply the modification of LCEN article 6 and would require an overhaul of e-commerce guidelines.

As a result, it is even more important today to monitor social networks in order to respond appropriately.

                                                                    
(1) Paris Court of Appeal, pole 5 Chamber 2, decision of June 21 3013, SPPF versus American company YOUTUBE LLC, GOOGLE France and GOOGLE Ireland ltd.
(2) Decisions of July 12 2012, no 11-13-666; no 11-15.165 and 11-15.188; no 11-13.669

On April 2013, the British Virgin Islands (BVI) passed a new Trade Marks Act in order to bring to date the 19th century country’s trademark.

Among the features of the new law:

–    the classification system will be based on the Nice Classification unless the Financial Services Commission decides to use another one,

–    only a registered trademark agent can apply for the registration of a trademark,

–    it will be possible to claim priority for a trademark already registered in a Paris Convention country or a World Trade Organization member,

–    once a trademark is registered, the renewal period will be 10 years. However, if a trademark has been registered before commencement of the Act, its 7-year renewal period will be unchanged until expiration, and

–    for marks not registered in the BVI, use of ® or the word “registered” without being able to show a valid registered certificate from another jurisdiction is subject to a fine.

The report published by European Commission for the year 2012 presents statistical information on the number of detentions and other customs actions over the past year(1).

The number of individual articles detained are down over 65%. Indeed 114,772,812 articles have been detained in 2001 to 39,917,445 in 2012. However, regarding instances of imports, the results have remained quite stable (91,245 detentions in 2011 to 90,473 in 2012).

This shift is due to the availability of goods online which infringe intellectual property rights. The goods arrive to Europe generally through post and couriers.

The articles come for the most part from China for CD, DVD and tobacco, Marocco for foodstuffs and Bulgaria for packaging materials.

In 90% of the cases, detained goods were destroyed either after the owner of the goods and the right holder agreed on destruction or after the right holder initiated a court action. The report says also that 8% of detentions have been released because the right owner didn’t react to a notification or because the goods were genuine.

It is important to set up a customs surveillance and seizures. Our law firm can advice and assist you to set up a monitoring of your company trademark at customs level in France, as well as in the European Union.

                                                                     
(1) http://ec.europa.eu/taxation_customs/resources/documents/customs/customs_controls/counterfeit_piracy/statistics/2013_ipr_statistics_en.pdf

In a recent decision (1), the Trademark Trial and Appeal Board (TTAB) sustained an opposition requesting the rejection of the trademark EPI-KEY based on a likelihood of confusion with the trademark EPIPEN.

The TTAB is a body within the United States Patent and Trademark Office (USPTO) responsible for hearing and deciding certain kinds of cases involving trademarks. More specifically, the Trademark Trial and Appeal Board decides adversary proceedings involving notably oppositions to the registration of trademarks and petitions to cancel trademark registrations.

The main point to emphasize in this decision is the rejection of the applicant’s argument that any risk of confusion can be avoided by the need that the medicines be prescribed by a doctor.
Both marks were used for medical treatment of allergies with epinephrine. The Board found plausible that the patient requests the wrong device to his doctor thinking it was the other one. Patients and even physicians can also have the mistaken belief that both medicines are manufactured by the same company.

So, even if the products are prescribed by professional intermediaries there may still be a risk of confusion between two marks.

                                                                    
(1)    Mylan, Inc. v. Beaufort County Allergy, opposition No. 91195868 (USPTO TTAB June 19, 2013)

Product placement is defined as all forms of commercial, audiovisual communication that include a product, a service or brand, or make reference to it by inserting it into a program, in exchange for payment or other benefit in kind (1). This communication method is termed hybrid whenever it integrates a brand into a non-commercial context in order to influence the spectator. The greater the program’s popularity, the greater the brand exposure, and sales of branded products will increase correspondingly.

Nevertheless, as regards product placement, there is a significant gap between France and the United States. In France, product placement does not account for more than 5% of total film budgets, against 30% in the United States. As an example, the Apple brand alone financed 16% of the total budget of the film “Mission Impossible: Phantom Protocol” in 2011, representing an investment of $23.5 million.

The success of product placement in the US is essentially due to the absence of regulations or legislative structures in this domain.

In France, product placement has been prohibited for a long time (2). The French Higher Audiovisual Council (CSA) allowed a certain tolerance for the cinema without specific guidelines. Then a 2007 European directive (3) reaffirmed the principle of the prohibition of product placement across all audiovisual media, but left to the discretion of Member States, however, the possibility of allowing it within a given framework. France transposed the directive in 2009 (4) and granted the CSA the authority to determine the conditions under which audiovisual communication programs can feature product placement (5). The CSA defined the conditions as follows:

• Product placement is only authorized in films, audiovisual fictions and music videos unless the production is for children. It is banned in all other programs.
• Product placement must exclude alcoholic drinks, tobacco and related products, medicines (with or without prescription), fire-arms and baby-foods.
• The spectator must be informed of the existence of product placement notably by the use of a pictogram appearing as follows on the screen.

As well as being lucrative and providing an increasing number of product sales, product placement in films also has an impact on the brand’s reputation itself. Placement can be extremely beneficial in cases where the trademark holder is responsible for the placement, but equally it can harm the brand’s reputation where this is not the case. It may be that the holder is not satisfied by a placement, either because it hadn’t been requested or his opinion had not been sought, or because the placement did not respect the terms of the contract. In certain cases, unsolicited placements can devalue the brand or product. In this type of case, lawsuits could be filed for abusive, unauthorized use of a trademark or for tarnishing the image or reputation of the brand.

Product placements must therefore be chosen with care. Need advice? Dreyfus, specialists in trademark protection, are here to assist you.

                                                                         
(1)    Article 1(m) in directive 2007/65/CE.
(2)    1989 Directive n°89/552/CEE and 1992 transposition law prohibiting product placement with the exception of cinematographic productions.
(3)    Directive 2007/65/CE of the European Parliament and the Council of December 11 2007 modifying Council directive 89/552/CEE.
(4)    Law n° 2009-258 of March 5 2009.
(5)    Deliberation n° 2010-4 of February 16 2010 concerning product placement in television programs, published in the Official Journal on March 5 2010, modified by deliberation on July 24 2012, published in the Official Journal on August 7 2012.