The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.
Like WHOIS, the RDAP provides registration data, although its implementation is different since it allows standardization, security data access and enquire response formats. As a result, it will be possible to search all the registration data available from various registrars, unlike WHOIS that is limited to the database being searched. It also takes into account the internationalisation of domain names.
The possibility of granting different accesses to the registration data is being considered. For instance, access for anonymous users could be limited whereas authenticated users could have full access to all data.
While some elements still have to be worked out, registrars are required to implement the RDAP service prior to August 26, 2019.
Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.
The advantages of trademark protection
First, the term of protection of a title by trademark law. Trademark law initially grants protection for 10 years, but this term is renewable indefinitely (Art L712-1 CPI). Thus, provided the owner submits a renewal application within the time limit, the trademark can be protected indefinitely. Copyright, on the other hand, can grant protection up to 70 years after the death of the author of the work, but the ‘guarantees’ of protection may be less obvious than trademark law because there is no register of copyright.
On the other hand, while copyright imposes a condition of originality (Art.L711-2 CPI), trademark law requires a distinctive character (Art L711-2 CPI). Thus, if the title of TV show or audiovisual program is distinctive and acts as an indicator of origin, it may be protected. In contrast, for copyright, it is necessary to prove originality, which is more difficult to prove. Since copyright is not subject to registration, the condition of originality must always be demonstrated in the course of a dispute. Thus, copyright protection is never certain.
A title may be protected by trademark law if it does not directly designate the goods and services for which registration is sought. Thus, if the title is arbitrary, there is nothing to prevent the title from benefiting from this protection. Finally, it should be borne in mind that trademark protection is not an impediment to copyright protection; it is thus possible to combine both protections.
The limits of trademark protection
Some limitations to the protection of audiovisual programs’ titles by trademark law should nevertheless be noted. The protection conferred by trademark law grants a monopoly on the use of the registered terms (Art L-713-1 CPI) and therefore the right to oppose use by third parties. However, in order to do so, it is necessary to prove :
The use of the sign by a third party “as a trademark”
First, it must be proven that the use of the title by a third party was “as a trademark”. To illustrate this concept, we can refer to the judgment rendered about the series “Le Bureau des Légendes”. In this case, the Paris Court of First Instance (TGI) dismissed the infringement action brought against a book, using the title, devoted to the study of the series. The purpose here was not to offer goods and services designated in the registration, but simply to refer to the series as such (TGI Paris, réf., April 16, 2018, n°18/53176). Use as a trademark would have been in the context of the sale of derivative products in connection with the series.
A commercial use of the sign
Secondly, in order to oppose the use of a sign, the owner must provide proof of commercial use. This means that it is not sufficient to prove merely a reference to the title. The use must take place in the course of business and not only for illustrative purposes. There must be a genuine commercial link between the sign and the use made by a third party.
A risk of confusion in the mind of the public
Finally, the risk of confusion in the public mind must be shown. The use of the sign must raise doubts as to the origin of the goods and services offered. A trademark is intended to guarantee in particular the origin of the goods and service. Thus, the use of the sign by a third party must infringe this guarantee of origin, severing the direct link between the sign and its owner.
For instance, the judges considered that there was no likelihood of confusion between Canal+’s trademark “LE ZAPPING” and the trademark “LE Z#PPING DE LA TELE”. In view of the evidence provided, and the overall impression, there was no likelihood of confusion. The phonetic and visual differences of the two signs were sufficient to eliminate this risk (CA Versailles, 12th ch., July 3, 2018, n°18/02091).
However, the principle of speciality of the trademark may be used against the owner of a trademark. Since a trademark is registered for specific categories of goods or services, the owner can only oppose the use of the sign for identical or similar goods or services. Thus, if a sign is used for a completely different area of activities, the owner will not be able to oppose this use of the sign. This was the case for Canal +, concerning its mark “LE ZAPPING”. The notoriety of this brand was certainly recognized by the Court, but only in the field of television broadcasts. Thus, it was not possible for Canal + to oppose the filing of a similar trademark for other categories of goods and services than those designated in registration of the trademark “LE ZAPPING”.
Conclusion
Trademark law grants additional protection to a title of an audiovisual program. It complements the protection that copyright can grant, in a more certain way through the requirement of registration. The point of filing a sign representing the title of an audiovisual work is therefore to acquire double protection, on both grounds. Admittedly, the conditions to be met in order to be able to bring an infringement action under trademark law may be difficult to achieve. Nevertheless, trademark law offers more means of action, and therefore of compensation for damage in the event of unjustified use by third parties.
Dreyfus law firm, expert in trademark law, will assist you in the management of your trademark portfolio.
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.
This decree modifies the rules of protection of confidentiality for seized documents. From now on a provisional sequestration will include protection of documents that may contain information related to trade secrets.
Prior to the entry into force of the French act on the protection of trade secrets judges actively used the sequestration to protect confidentiality of seized documents. This decree legalizes the jurisprudential practice by introducing the provisional sequestration of seized documents.
The decree amends articles R. 521-2, R. 615-2, R. 623-51, R. 716-2 and R. 722-2 of the Intellectual Property Code in the same way in order to give the same powers to the judges who authorize infringement seizures.
However, it is only a temporary sequestration of seized documents. For a period of one month, the party or third party claiming that documents contain trade secrets may ask the judge to amend or withdraw his order.
According to Article R. 153-3 of the French Commercial Code, it is the responsibility of the party or third party claiming trade secrets to ask the judge to withdraw his order before a deadline set by the judge. It is up to the party to provide the following:
– The full confidential version of the document
– A non-confidential version or a summary of the document
– A statement specifying the reason why the document or a portion of the document is considered a trade secret
The judge may also hear separately the holder of the document, assisted or represented by an authorized person, and the party that appeals the order.
In case the party claiming that the document contains trade secrets has not sent an application to withdraw or amend the order within one month, the judge may rule on the total or partial lifting of the sequestration. If it is lifted, the documents can then be sent to the applicant.[/vc_column_text][/vc_column][/vc_row]
In this case, Fourth Estate Public Benefit Corporation, an online news producer, had granted copyright licenses on some of its content to Wall-Street.com, a news website. The license agreement required that the licensee delete any item produced by Fourth Estate after the license had expired, which Wall-Street.com refused to do. Therefore, Fourth Estate filed a copyright infringement suit against Wall-Street.com., which in response requested dismissal of the action, claiming that Fourth Estate could not take legal action before the Copyright Office had followed up on its application for registration. The district court granted this motion and the Court of appeals for the Eleventh Circuit affirmed. Fourth Estate asked the United States Supreme Court to review the case, and its petition for certiorari was granted.
The debate focused on the interpretation of section 411 (a) of the Copyright Act (1976). This article states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”.
The question was whether, in order to bring an infringement action, it was sufficient to have filed an application for registration, payed the fee, and provided copies of the work, or if the Copyright Office had to have already granted the application for registration. The Supreme Court held that the fact that registration “has been made” means that the Copyright Office has registered the copyright or has definitively refused to register it, after having examined the duly filed application. This judgment therefore highlights the importance of the registration procedure before the Copyright Office.
In this respect, we recommend applying for copyright registration as soon as possible. Indeed, an earlier registration offers important advantages for right’s owners. Indeed, if the registration is made within five years of the publication of the work, it has probative value. If the registration is made within three monthsof the publication of the work, a right’s holder may be granted statutory damages and attorney’s fees, not merely damages. In addition, once registration has been completed, the copyright owner may object to the importation of counterfeit works into the United States.
Therefore, the right to file an infringement suit to protect rights is only one of the advantages granted by the Copyright Act to copyrights holders. Following the Supreme Court’s decision, copyright owners must now pay close attention to the Copyright Office’s examination delays. It takes approximately seven months to examine an application. Exceptionally, an accelerated procedure, called “special handling”, allows the Office to rule within five working days. However, this accelerated procedure carries higher fees. Therefore, it is in the holder’s interest to anticipate having to defend his rights. The earlier the application for registration is filed, the more likely the applicant will be able to defend his rights by filing a copyright infringement suit.
Under section 411 of the Copyright Act, if registration is refused, the applicant may nevertheless file an infringement action if a notice to that effect is sent to the Copyright Office, along with a copy of the complaint. The Office can choose within sixty days to become a party to the action with respect to the issue of registrability of the copyright claim. . A right’s holder can thus take legal action even if the absence of registration makes his situation more precarious.
In conclusion, we note that it is in the best interests of rights holders in the U.S. to register their copyrights. Furthermore, despite the United States’ accession to the 1886 Berne Conventionin 1989, this text is not directly applicable in U.S. law, under the Berne Convention Implementation Act of 1988. As a result, rights holders from a country party to the BerneConvention, such as France, have to register their rights with the Copyright Office in order to be able to invoke all the rights conferred by American copyright law. This registration is particularly recommended if the owner wishes to exploit his work through licensing agreements (e.g. software), or if the work is to be distributed online (e.g. music).[/vc_column_text][/vc_column][/vc_row]
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Written by Dreyfus11/09/2019 
The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.
Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.
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.
The U.S. Supreme Court held on March 4, 2019 on a long-debated question.