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Are trademark payment notices always to be trusted?

Written by Dreyfus14/01/2022

Avis de paiementPrepare and prevent, don’t repair and prevent…This saying also applies to trademarks, since fraudulent payment notices are becoming more and more common nowadays.

 

How is this happening?

 

Dishonest private companies, scammers, approach trademark applicants directly to ask them to pay certain service fees or other payments that are in fact neither necessary nor legally required.

It is therefore crucial to be vigilant.

Since trademark registration and management are already time-consuming and expensive enough, it goes without saying that paying scammers for their so-called trademark services is unnecessary. You should be extra vigilant when enquiries about trademark procedures do not come directly from your usual counsel.

However, fraud is not always easy to detect and the imagination of fraudsters is endless.

For instance, some fraudsters approach trademark owners directly by e-mail and demand payment of certain expenses, fees or additional charges to obtain trademarks’ registration when these expenses are purely fictitious. The payment notices are often for trademark monitoring services, additional registration services or services related to trademark renewal.

The problem is that trademark owners are very often approached by a so-called official agency, company or institution and sometimes even a so-called public authority or government. They use the same official templates, signatures and stamps as these types of entities and they provide the exact data of the trademark application or registration in question. After all, this kind of information is relatively easy to find online.

 

Another issue is the cross-border nature of these scams.

It may happen that trademark owners receive a notice from a Russian, Indian or Chinese company. While it is perfectly possible that payment notices from foreign countries are made in good faith, it is always beneficial to carefully check the accuracy and legitimacy of such notices.

 

Here are our advices.

 

Firstly, we invite you to check the stage of the proceedings in which your trademark is located. Isn’t it strange to pay fees for the registration or renewal of a trademark if the time limit has not even started or has already expired?

We encourage you to be vigilant. Do not hesitate to ask us questions when you receive documents that do not come from Dreyfus. Indeed, it is always wise to contact your legal adviser before making a payment. Dreyfus is specialised in these matters and is fully aware of the applicable time limits, procedural steps and expenses.

There are also official offices and agencies that can be contacted in the event of a suspicious or misleading trademark notice. For instance, the United States Patent and Trademark Office (USPTO) can be contacted. Although this office does not have the legal authority to prevent companies from engaging in these types of fraudulent practices, the USPTO does assist in the fight against fraudulent trademark notices. The USPTO issues reports and works with the Department of Justice and the Federal Trade Commission. Trademark owners can always file complaints with the Federal Trade Commission. This commission has the power to investigate and even prosecute if, for example, a particular company commits fraudulent business practices on a large scale. Dreyfus can assist you in filing such complaints and prevent you from being entrapped.

Fraudulent trade mark notices are becoming increasingly common. It is important to be very vigilant, to check the applicable time limits, to contact your Trademark Attorney before making any payments. At Dreyfus, we work with trademark offices and official agencies, such as the USPTO, in case of trademark notices that are suspicious or appear to be misleading.

 

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ICANN Summit: the fight against DNS abuse, a GAC priority

Written by Dreyfus11/01/2022

recommandationThe 71st ICANN Summit gave its GAC (Governmental Advisory Committee) the competence to take stock of the essential elements of its missions, reflected in its report of June 21, 2021. In the “Issues of Importance to the GAC”, several elements were highlighted.

1. The next round of new gTLDs allow companies to have a TLD in their name

 

Göran Marby, CEO of ICANN, recalled that strengthening competition and improving the opportunities of Internet users to benefit from their own identifiers is part of ICANN’s duty. The ICANN presented the ODP (Operational Design Phase). This is a system that provides information on the operational issues of the project and aims to implement advice to make the procedure more effective.

But on the other side of the coin, there are also fraudsters amongst the beneficiaries. This is the case, for instance, regarding new gTLDs that were launched on the market almost ten years ago (like <.icu> or <.guru>).

 

 

2. Addressing the issue of domain name abuse

 

The issue of DNS abuse remains a flagship issue for the CAG, who describes the problem as a “priority”. DNS abuse is a term that refers to piracy cases where domain names are registered and used for fraudulent purposes such as phishing. The idea of the Framework on Domain Generating Algorithms (DGA) associated with Malware and Botnets was created. The objective of this framework is to place registries at the center of the fight against these abuses, and to encourage them to prevent the blocking of domain names from DGA’s. These DGA’s are algorithms used to generate a very large amount of domain names that can serve as meeting points between control servers and the command, allowing botnets to thrive more easily.

 

3. Reliability of Data

The GAC highlighted the importance of the correctness and completeness of domain name registration. Data reliability is an important aspect to ensure the prevention of – and fight against DNS abuses. It recalls the obligation of registers and registration offices to verify, validate and correct data. One of the objectives is to respond to the pitfalls of these data in a timely and efficient manner. The GAC specified that this should not only concern compliance with the GDPR but that it should include all information relating to domain names.

 

4. Accessibility of data

The ODP for Stage 2 of the EPDP has been put on the table. The purpose of this ODP is to inform interested parties on the question whether the SSAD (System for Standardized Access/Disclosure) works in favor of the interests of the ICANN community, especially in view of its impact in terms of costs. For the record, via the SSAD, it is possible to get information about requests that demand to lift the anonymity on certain domain names.

Phase 2A of the EPDP (Accelerated Policy Development Process) was discussed after the release of the EPDP Phase 2A Initial Report on the “Temporary Specification” (which is a new version of the Whois). This report provides guidance on how to publish registration information on companies that is not protected by the GDPR as well as email addresses for those who are anonymized.

 

5. Consumer protection

Finally, the recommendations of the CCT (Competition, Consumer Trust and Consumer Choice Review) were addressed. Among the recommendations that the GAC would like to see implemented was a pro bono assistance program as well as the recommendation concerning the identification of party chains that are responsible for registering domain names.

The ICANN’s report of June 21, 2021 highlighted several important elements. The fact that new gTLDs allow companies to have a TLD in their name engenders both benefices and dangers. It underlined the issue of domain name abuse and the importance of the correctness and completeness of domain name registration data, as well as the importance of accessibility of data and the need for consumer protection.

 

 

Dreyfus law firm

 

 

 

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Copyright in front of artificial intelligence

Written by Dreyfus13/12/2021

IA et droit d'auteurFollowing a decision by the Shenzhen Nashan People’s Court in China, a work generated by an algorithmic program has been deemed eligible for copyright protection.

 

1. An infringement action of a work produced by an automated program

 

Tencent, a company specializing in internet services and online advertising, published on its website a financial report article written by an algorithm-based intelligent writing system and data set, called « Tencent Robot Dreamwriter ».

After noticing that the article was reproduced without permission on a website operated by Shanghai Yingxun Technology, Tencent filed an infringement action against the said company.

However, the underlying and main issue in this dispute is whether a work generated with the help of artificial intelligence can adequately benefit from copyright protection.

The issue has been a constant source of controversy on an international scale for several years, and the Beijing Internet Court ruled in 2019 that only legal subjects expressly specified by Chinese copyright law should be considered as appropriate authors of works. Therefore, algorithmic programs are excluded. The court had also investigated on the process of generating the artificial intelligence at issue.

 

 

2. A precarious apprehension of creations generated by artificial intelligence

 

According to Revised Issues Paper on Intellectual Property Policy and Artificial Intelligence of May 21, 2020 prepared by the WIPO Secretariat, a distinction should be made between « AI generated », which does not require human intervention and which can modify its behavior during an operation in accordance with the application of various factors and « AI assisted », which conversely requires material human intervention and/or direction.

Regarding the European Union, the Delvaux Report adopted in February 2017 by the European Parliament proposed to grant a « sui generis » intellectual property protection to works created by artificial intelligence and to reflect on the criteria of proper intellectual creation applicable to copyrightable works created by computers or robots.

3. Towards an evolution of copyright in the field of artificial intelligence

 

The case opposing Tencent to Shanghai Yingxun Technology is the first litigation to support copyright protection for a work generated by an algorithmic program.

During the proceeding, Tencent explained the entire process of the “creative team” used to generate and publish the article with the assistance of the “Dreamwriter” robot.

The court carried out a reasoning based in particular on two points of assessment.

Firstly, attention was classically paid to the form of expression, the content and structure of the article that have been judged original.

Then, the court turned to the generation process of the article. In this regard, it focused on the presence of factors indicating the creator’s individual selections, judgment and required skills, recognizing that the creation process differed from the ordinary process of creating written works.

This court decision tends to favor, eminently, a possible extension of copyright protection to works generated by artificial intelligence on an international scale. However, reflections on the criteria that could be specifically retained in order to appreciate the benefit of the protection of these works coming from a creative process that has been excluded until now, will continue to feed, and even prolong, the debate.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

 

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How did Miley Cyrus manage to register her eponymous trademark despite the existence of the earlier Cyrus trademark?

Written by Dreyfus03/12/2021

Miley CyrusSome cases are interesting because of the judicial outcomes, others because of the reputation of the Parties in the proceedings, and others because they fall into both categories.

This is the case of the judgment rendered by the General Court of the European Union on June 16, 2021. This decision opposed the European Union Trademark Office (EUIPO) to the company of the famous singer and actress Miley Cyrus: Smiley Miley. The latter is challenging the decision rendered by the Office in the dispute between it and the company Trademarks Ltd.

The genesis of this procedure was the European Union trademark application, in the name of Smiley Miley, of the word mark MILEY CYRUS in classes 9, 16, 28 and 41.

Cyrus Trademarks Ltd. lodged an opposition against said application, on the basis of its earlier European Union “CYRUS” trademark No. 9176306, registered for goods in classes 9 and 20.

 

After the Opposition Division partially upheld the opposition because of the likelihood of confusion, Smiley Miley filed an appeal that the EUIPO rejected.

Indeed, the EUIPO considered that there was a likelihood of confusion in particular because the level of attention of the relevant public varied from medium to high, that, by all means, the goods and at stake were identical and similar, and that, visually and phonetically, the signs were relatively similar.

Were the signs distinctive, different and differentiable?

The key criterion for assessing the risk as a whole is the overall impression that the trademark produces.

The Board of Appeal first tried to analyze the value of a surname compared to a first name and concluded that a surname has a “higher intrinsic value”. Then, the Court considered that neither the first name Miley nor the surname Cyrus are common in the European Union, “including for the English-speaking public”.

Not surprisingly, the applicant denounced this reasoning. The Court of First Instance recalled that these principles cannot be applied automatically, as they are principles drawn from experience and not set in stone. That said, as the singer and actress enjoys real renown, the assessment of the distinctive character of her mark would be less Manichean than it would have been for a trademark based on the first and last names of a non-famous person. In this regard, the Court of First Instance agreed with the applicant, considering that none of the elements of the mark “MILEY CYRUS” was more dominant than the other.

Regarding visual and aural levels, the Tribunal deemed that the trademarks were similar despite their differences.

The delicate examination of the conceptual comparison of signs

The applicant assessed that, due to Miley Cyrus’s fame, the mark was distinct from the earlier trademark. The EUIPO considered that the name and surname of the singer had not become a symbol of a concept.

The Court of First Instance accepted that Miley Cyrus was a character known to the general public in the ordinary course of events (a finding the Board of Appeal did not challenge).

When the Court of First Instance assessed the conceptual meaning of “MILEY CYRUS”, using the Larousse definition of “concept”, its research showed that, given her fame, the singer had indeed become the symbol of a concept.

On the other hand, and insofar as the artist had never performed using her surname alone, even though it is not common, the Court concluded that the public would not necessarily perceive the term “Cyrus” as referring directly to Miley Cyrus.

The Court therefore concluded that the “earlier mark has no particular semantic meaning for the relevant public”. Moreover, insofar as the concepts of the two trademarks were quite different, this had the effect of blurring their visual and phonetic similarities.

The law established that to qualify a likelihood of confusion, there must be an identity or similarity of the signs and an identity or similarity of the goods and services designated. Here, the Court of First Instance’s reasonings allowed to discard the likelihood of confusion between the two marks; the star entered the European Union trademark registry under No.012807111.

 

This decision serves as a reminder that great conceptual differences between two trademarks can benefit an applicant. This case also adds to the list of cases where the fame of names has allowed visual and phonetic similarities of signs to be easily dismissed.

 

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Are we still really anonymous on social networks in 2021?

Written by Dreyfus10/11/2021

Social mediasAnonymity on the Internet, or the eternal debate about social networks, raises more and more moral and legal questions with an exponential number of disputes brought before the courts.

The popularization of social networks is usually associated with anonymity, and therefore with the eternal debate about the lifting of anonymity in the face of the excesses of certain users. The murder in October 2020 of Professor Samuel Paty, targeted on social networks, or a wave of insults towards a candidate of Miss France at the end of 2020, have re-launched this discussion on the political scene. And especially the desire to add a section to the French legislative proposal “strengthening the respect of the principles of the Republic” to fight against online hate.

 

 

 

 

As a preliminary, it is interesting to really ask ourselves about anonymity on the Internet: are we really anonymous on the Internet?

 

The answer is no in most cases. Indeed, when we browse the Internet, an IP address anchors each of our researches. This address makes it possible to identify each device that connects to the Internet, even indicating the geographical location of the person.

This is one of the reasons why it is very difficult to leave no trace of your passage on the Internet, unless you are a very experienced technician.

The difficulty in reality is related to the obstacles linked to the recovery of these data allowing to identify a user, more than to the existence of anonymity stricto sensu. The Internet actors play a preponderant role in the possibility that some users have to hide their identity. This concealment has increased especially with social media.

 

The position of social networks

Social networks and other platforms argue that they are simply “host” or “technical intermediary” to reject a request to lift anonymity or to delete an account that is the author of contentious content.

Only a court decision can force these platforms to lift anonymity on an account. However, judicial decisions are still discreet. This can be explained on the one hand by the fact that positive law only allows the anonymity of an account to be lifted if the content is clearly illicit. On the other hand, the freedom of expression constitutes an obstacle to the lifting of anonymity.

However, some recent decisions seem to reverse this trend.

 

French jurisprudence on the move

On February 25, 2021, the Paris Judicial Court (Tribunal judiciaire, Paris, (ord. réf.), February 25, 2021, G. B. c/ Sté Twitter International Company) ordered Twitter to communicate the identification data of a user, in a case against a female Youtuber. Under Article 145 of the French Civil Procedural Code, “if there is a legitimate reason to preserve or establish before any trial the evidence of facts on which the solution of a dispute may depend, legally admissible measures of investigation may be ordered at the request of any interested party, on application or in summary proceedings. The influencer filed a request with the Court for the communication of identification data in parallel with the filing of a criminal complaint for defamation.

This communication of data by hosts is provided for by Article 6-II of the law of June 21, 2004. Indeed, this article provides for an obligation for hosts to hold and retain data allowing the identification of persons who have: “contributed to the creation of the content or of one of the contents of the services for which [they] are a provider”.

The Court granted the applicant’s request, as the existence of a legitimate reason was well established, namely the short duration of the storage of these identification data. The court thus ordered Twitter to disclose the necessary information:

♦ The types of protocols and the IP address used to connect to the platform

♦ The identifier used to create the account

♦ The date the account was created

♦ The first and last names or the company name of the account holder

♦ the pseudonyms used

♦ the associated e-mail addresses

 

The European court, also seized of the matter

 

The High Court of Ireland has referred to the Court of Justice of the European Union the issue of lifting anonymity in a case between Facebook Ireland and a school, whose staff was subjected to derogatory comments via an Instagram account (a platform recently acquired by Facebook).

The question posed to the CJEU, concerns the threshold of seriousness that allows an exception to the GDPR, which protects our personal data, and thus be able to condemn the platform concerned to lift the anonymity on the authors of the contentious content.

The answer of the CJEU, will not come before several months, however it will surely allow to have clearer criteria concerning the balance between the respect of freedom of expression, protection of personal data, and infringement of people.

 

These decisions could open the way to a more supervised and therefore better regulated anonymity on social networks. A growing body of case law in this area, could encourage the courts to more condemn more easily these platforms, to communicate these identification data in order to punish the illicit content that users publish too easily, taking refuge behind anonymity and freedom of expression.

 

Dreyfus is at your disposal to assist you in securing these projects.

 

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Podcast – You, Me & IP : Intellectual property, Cybersecurity and malicious Domain Names: how to combine them?

Written by Dreyfus04/11/2021

podcastWe are pleased to present the “You, Me & IP” Podcast – Episode 4 in which Nathalie Dreyfus, founder of Dreyfus & Associates is the guest of Carlos Northon, founder and CEO of Northen’s Media PR & Marketing Ltd.

“Intellectual property, Cybersecurity and malicious Domain Names: how to combine them?”

 

If you want to know more about intellectual property issues and discover a rich and experienced vision on the subject, you can also read the article Nathalie Dreyfus wrote for “The Global IP Matrix”.

 

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Influencers: be careful not to promote counterfeit products!

Written by Dreyfus15/09/2021

influencersThe Internet has changed the way we do business. From now on, advertising agencies are no longer the only ones to promote their client’s products; influencers have become the privileged interlocutors of brands wishing to make their products successful. If this approach does not seem abnormal, legal actions are flourishing against these people, for trademark infringement.

In a recent case, “Petunia Products, Inc. V. Rodan & Fields, et al.”, the plaintiff Petunia Products (“Petunia”) filed a complaint against Rodan & Fields for infringement of its trademark “BROW BOOST”. The latter had hired the influencer Molly Sims in order to promote its “Brow Defining Boost” product. On August 6, 2021, Federal Judge Cormac J. Carney dismissed the influencer’s motion to dismiss the complaint of alleged trademark infringement, in particular, because the plaintiff had succeeded in demonstrating that the promotion of the contested product could mislead consumers and create a likelihood of confusion between the prior trademark and the defendant’s product.

In particular, the judge argued that the Federal Trade Commission (FTC) declared that influencers and celebrities could be held liable for false or, at the very least, misleading advertising. Judge Carney drew a parallel with the case at stake and considered that every statement made by an influencer could amount to liability. Besides, and this is the main point of the first decision in this case, the judge took into consideration the risk of confusion, keystone of any claim for trademark infringement. In this case, this risk was genuine since the products were in direct competition with each other, from two competing companies operating on the same market, with a very similar name.

However, this decision must be balanced insofar as Judge Carney only ruled on the motion to dismiss filed by the influencer.

 

Concept and role of the influencer

It is necessary to understand the legal definition of “influencer”. In the opinion in Maximian Schrems v. Facebook Ireland Limited, Advocate General Bobek defines influencers as “everyday, ordinary internet users who accumulate a relatively large following on blogs and social media (…)”.

The French Authority of professional regulation of advertisement (ARPP) defines an influencer as “an individual expressing a point of view or giving advice in a specific field (…)”. It adds: “an influencer can act in a purely editorial framework or collaboration with a brand for the publication of content (product placement, (…), distribution of advertising content, etc.)” (free translation).

The influencer, therefore, has the power to direct the choices of the people following him/her, which is all the easier as the social networks on which they act are increasingly simple of use and accessible to the greatest number. Because of this ease of use, two American influencers, Kelly Fitzpatrick and Sabrina Kelly-Krejci promoted counterfeit products on Instagram and TikTok for sale on the Amazon platform. Amazon, therefore, filed a lawsuit on November 12, 2020 against the two women for fraudulent promotion of counterfeit products.

 

What is the influencer’s responsibility?

First of all, and Judge Conrey noted this in his decision, the influencer must state on the publication that the promotion of the brand results from a collaboration with the latter.

In France, this is also a recommendation of the French Professional Advertising Regulation Authority but most of all a legal obligation, which the French law for confidence in the digital economy (LCEN) of 2004 had already formulated. If the influencer can escape the net and not be found guilty of trademark infringement within the framework of a collaboration (that would be different if he/she promotes an infringing product directly), he/she could, be found liable of parasitism, unfair competition or misleading commercial practice, all three of which are heavily sanctioned under Article 1240 of the French Civil Code.

However, it is noteworthy that the influencer bears the weight of his/her responsibility concerning the information he/she publishes! Therefore, if a plaintiff can prove that the influencer in question was fully aware that the product he/she was promoting infringes on a third party’s rights, then it is likely that a judge would find the influencer and the company that contacted said influencer guilty of trademark infringement, either jointly or individually. Again, the judge will also consider the extent to which the product advertised by the influencer could confuse the public mind.

 

Hence, being an influencer is not without risks, and the partnership agreement concluded with a company must be carefully examined beforehand. Analysing the environment is essential as well as the product to be promoted must not infringe upon the prior rights of a trademark, even more so a competitor.

Dreyfus is at your disposal to assist you in securing these projects.

 

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How does the departure of Lionel Messi from FC Barcelona demonstrate the influence of players on the Intellectual Property rights of soccer clubs?

Written by Dreyfus08/09/2021

lionel messi soccer Underlying the performance of athletes, soccer clubs are engaged in a big race to develop their respective trademarks. FC Barcelona, until now the second biggest soccer club trademark, now risks losing its place to the club Paris Saint-Germain (PSG) as a result of Lionel Messi’s departure.

Lionel Messi has recently made the news by announcing his departure from FC Barcelona after more than two decades with the club.

This unexpected announcement is mainly due to the financial difficulties faced by FC Barcelona who are unable to take on the costs of the new contract agreed with the footballer two weeks ago..

This departure may not only impact the club’s quality of play but also its finances and especially its Intellectual Property rights.

 

 

A probable significant decrease in the value of the FC Barcelona brand

 

Brand Finance, in an article of 6 August 2021, estimated that the departure of Lionel Messi could cause an 11% decrease in the value of the club. This departure would cause a loss of €137 million. According to Brand Finance estimates. FC Barcelona has been, until now, one of the three most valued brands among soccer clubs (behind Real Madrid and in front of Manchester United). This news may well change the ranking.

Lionel Messi’s departure is even more impactful as he is considered one of the greatest players in the history of soccer. FC Barcelona’s image is therefore strongly impacted.

 

An opportunity for Lionel Messi’s new club.

 

On the other hand, the recruitment of the footballer by PSG is a real boon for the club which could see the value of its brand increase considerably. According to Brand Directory, the PSG brand is currently worth €887 million and ranks 7th among the most important soccer club brands.

The influence of players on intellectual property rights is such that some player brands even rival the value of some clubs’ rights. Messi has the most registered trademarks of all footballers. He has 115 trademarks, compared to 60 for Neymar, 53 for Cristiano Ronaldo and 46 for Paul Pogba. His trademarks are registered in various countries around the world, but mainly in Argentina, his country of origin. They are mainly registered in class 25 (Clothing), 28 (Games, sporting goods, toys) and 9 (Computer programs).

This trademark portfolio, owned by the footballer, is also an asset for the club that recruits him, as it increases its importance and influence.

So, PSG now holds two of the biggest players in terms of brand portfolio, Neymar and Lionel Messi, and could also be inclined to recruit Paul Pogba.

 

An impact on the new cryptocurrencies

 

As a result of PSG’s brand value, its cryptocurrency, “PSG Fan Tokens”, has grown considerably. The club made its mark by concluding the first player signing that included fan tokens. This news caused the cryptocurrency to rise by +100% in just three days.

As a result, the simple signing of Messi boosted the club’s PSG token capitalization to almost €144 million.

The PSG trademark is on track for considerable expansion, which can only reinforce the strength and interest of Intellectual Property rights in the world of soccer. Whether it’s the value of a club brand, the derivative products derived from it, or its cryptocurrencies, the composition of soccer teams considerably influences the pecuniary value of clubs.

We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.

 

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What are the new provisions of the April 17, 2019 European Directive on copyright?

Written by Dreyfus03/09/2021

author rightsAside from including related rights for press publishers and press agencies, and rebalancing relations between rights holders and content sharing platforms, the April 17, 2019 Directive strengthens the position of authors vis-à-vis assignees. These last provisions about copyright have just been transposed into French law.

 

The transposition marks a significant step forward in protecting creators and cultural organizations in the digital age. While cultural pieces of work are becoming more and more accessible online, this provision reaffirms the importance of copyright.

 

Copyright begets fair remuneration of artists and creative enterprises in the member states of the European Union. The Directive’s purpose is to establish a global framework, where intellectual creators, authors, content editors, service providers and users will all be able to benefit from clearer, modernized and adapted rules of the digital era. As such, the Directive aims to ensure that online press publishers and authors/artists receive better renumeration – especially when leading platforms such as Google News or Youtube use their work. The adoption of this Directive is the result of negotiations that lasted more than two years.

 

What are the new provisions of the Directive?

The Directive aims at modernizing the European Union copyright law, taking into account the increase in digital and cross-border uses of protected content. This directive mainly provides:

 1) measures to adapt certain exceptions and limitations to the digital and cross-border environment, among which are exceptions concerning:

– text and data mining (TDM exception),

– the use of works in digital and cross-border teaching activities, in particular the accessibility needs of people with disabilities, and

– conservation of cultural heritage;

2) measures to improve licensing practices and ensure more extensive access to content, which consist of harmonized rules facilitating:

– the exploitation of works that are not commercially available,

– the extension of collective licensing contracts by collective management organizations to rightsholders who have neither authorized nor excluded the application of these mechanisms to their works,

– the negotiation of agreements to make works available on video-on-demand platforms (VoD platforms), and

– entry into the public domain reproduction of works of visual art at the end of the initial term of protection; and

3) measures to ensure fair market practices with respect to copyright, liability of content sharing platforms, and contracts for the remuneration of authors and performers.

Similarly, Article 15 of the said Directive creates a new neighbouring right for press publishers. Remember, neighbouring rights are exclusive rights, more recent than copyright, and are exercised independently of the latter. They were born from the need to make the auxiliaries of creation benefit from making their works available to the public. Finally, article 17 (ex-article 13) created a liability regime adapted for internet content sharing platforms, while establishing a new exception for the monopoly of rightsholders.

 

What are the new obligations of content-sharing platforms?

The targeted main players (Title IV of the Directive) are platforms for mass sharing of copyright and related rights protected content – such as such as Google, YouTube, Dailymotion, or Facebook. The Directive more precisely defines it as:

 

“The provider of an information-focused service, whose main objective or one of its main objectives is to store and give the public access to a significant quantity of copyrighted works  or other protected subject matter  that has been uploaded by its users, which it organizes and promotes for profit.”

 

There are cumulative criteria that determine their obligations. Platforms that have been active for less than three years and have an annual turnover of fewer than 10 million euros will be subject to reduced obligations. On the other hand, platforms exceeding this limit will be subject to a proactive obligation provided for by the Directive regarding works distributed without authorization. The Directive excludes from the liability regime non-profit online encyclopedias such as Wikipedia, non-profit educational and scientific directories, open-source software platforms, online marketplaces like Amazon, Cdiscount or eBay, and individual cloud storage services with no direct access to the public. With regard to the regime applicable to content sharing platforms falling within the above-mentioned scope, the most important thing is to have the rightsholders’ authorization, which allows copyrighted work to be available to the public through, for example, a license agreement.

 

Can platforms be exonerated from liability?

Platforms may be exonerated from liability if it meets the following three cumulative conditions:

– That it has “made its best efforts” to obtain permission from the rightsholder to release the work to the public,

– That it has “made its best efforts” “in accordance with high industry standards of professional diligence” to ensure the unavailability of the copyrighted work once the unauthorized communication of it has been reported by the rightsholder by means of “relevant and necessary information,“

– That it acted promptly to withdraw or block access to the work upon receipt of “sufficiently motivated” notification from the rightsholder.

 

Finally, the platforms must be transparent towards rightsholders about the measures taken within their area of responsibility. This Directive gives certain platforms greater responsibility for the content they publish. Meanwhile, the liability system for online selling platforms, where counterfeits abound, will not change. Their status as host or publisher will always determine their liability regime.

In France, in addition to the debates surrounding compliance with the Intellectual Property Code, it will be interesting to see to the court’s decisions in the months to come.

We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.

 

 

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How are restaurants trademark portfolios evolving?

Written by Dreyfus02/08/2021

To protect a trademark and minimize the risk of potential legal action, restaurateurs should employ an ongoing research strategy, registration and monitoring.

 

What impact could the pandemic have on restaurant brand portfolios?

The pandemic has pushed restaurants to innovate. Delivery services, technological services, and even innovative uses of restaurant real estate are leading to an increase in trademark demands beyond traditional restaurant services.

Foodservice companies have expanded the use of “ghost kitchens” (also known as “dark kitchens” or “virtual kitchens”).

In ghost kitchens, chefs prepare food only for delivery or pickup without a seat for customers. A ghost kitchen can serve as a cooking space for multiple brands, allowing operators to expand their customer base without investing in a separate area for each brand.

The ghost kitchen concept also encourages experimentation because a brand can get started quickly with little additional cost.

The legal consequences arising from the different classes and descriptions of services requested by kitchens and brands continue to evolve. Regardless of what lies ahead, restaurants and related entities need to extensively think when filing for trademark protection and enforcing their rights.

The Covid-19 pandemic has put innovative pressure on the restaurant industry. As restaurants have changed or expanded their products and services since the start of 2020, their trademark portfolios have also expanded to include new classes of trademark registration.

How to effectively manage restaurants trademark portfolios?

In this context and after having created the name, the question of the company’s trademarks protection and international extension quickly arises, even for restaurants.

Today, there is a craze for trademark registration, which has a considerable impact on the strategy of their management by companies. It is increasingly complex to create a distinctive and solid brand or to maintain a monopoly on a word coveted by many.

In addition, legal risks have accelerated with e-commerce, market globalization and the company’s international exposure to the Internet.

As the demand for contactless food delivery grows, restaurants and related brands have adopted broad strategies, including partnering with ghost kitchens or selling food through temperature-controlled lockers.

At the same time, these new business areas have created an increased need to examine restaurant trademark portfolios and identify areas for which brands should be protected.

 

What precautions should you take to protect your IP rights?

It is of great importance to protecting your IP rights to take several precautions:

  • Ensure that you included confidentiality clauses in your contracts;
  • Provide for non-disclosure agreements;
  • Be vigilant on the terms of transfer of rights between the creator and the company.

 

It is necessary to establish a protection strategy in the real world and in the digital world to protect your trademark portfolio.

Why bet on the brand?

It is about obtaining an operating monopoly, which can be renewable indefinitely and will constitute the pillar in your marketing and commercial strategy.

It is necessary to register the trademark from the genesis of the project. Determine a limited but suitable territory is also of great necessity. Likewise, it is about thinking globally and digitally by protecting domain names when registering the trademark.

The domain name is an important asset!

Today, insurers identify the intellectual property of which domain names are a part as one of the top three risks facing businesses.

The domain name occupies a special place in that it serves as a vector for ever more sophisticated and varied frauds. Managing your trademark on the Internet is not just about filing and renewing but also building a strategy.

It is crucial to invest in protection and preventive defense strategy and also set up surveillance on your brand.

Finally, you must be particularly vigilant about the use that is made of your brand on the Internet to avoid any “bad buzz”, which would be particularly harmful to your reputation.

A restaurant’s brand portfolio is a true intellectual and economic investment that must be protected.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed of the current issues of intellectual property and digital economy through articles written by the legal team of Dreyfus & associés.

 

 

ABOUT THIS TOPIC…

 

♦ Why is the well-knownness of an earlier trademark not enough to qualify bad faith?

♦ Why is claiming unregistered trademark rights over a geographical name a difficult challenge in UDRP proceedings?

 

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