Non classé

A recent lawsuit was filed between a company and its former president. This case¹ provided the English courts with the opportunity to rule on the question of the legal nature of e-mail contents: are they susceptible to appropriation?

In the case where intellectual property rights would be upheld, the judge distinguished between the status of the e-mail title and that of its contents. Having considered several possibilities in which the content would belong either to the sender or to the recipient, no satisfactory solution could be proposed.

In the judge’s opinion, the recent pattern of jurisprudence could not favor intellectual property rights, whilst recognizing that the question had not been fully explored. In reality, certain decisions have left room for doubt², although not directly related to intellectual property rights pertaining to e-mail content in the strictest sense.

In such cases, jurisprudence would be more inclined to establish protection via copyright or the non-respect of confidential information.

[1] Fairstar Heavy Transport N.V versus Philip Jeffrey Adkins and Claranet Limited [2012] EWHC 2952 (TCC).

[2] Pennwell Publishing v Ornstien [2007] EWHC 1570; WRN Limited v Ayris [2008] EWHC 1080; Boardman v Phipps [1966] UKHL 2

Victoria’s Supreme Court, in its initial findings, condemned Google Inc. on November 12^th 2012 for having reproduced information judged to be defamatory in its natural referencing service.

The plaintiff, Milorad Truklja, a show organizer, had made the headlines in Australian papers after shots were fired at him in a Melbourne restaurant in 2004.

Reporting this event, numerous press reports implied that he was linked to the world of organized crime. In addition, these reports provided links to the site “Melbourne Crime”, specialized in the recording of violent acts purportedly carried out by organized crime.

Google was implicated by the fact that, upon entering the name of the plaintiff in the search engine, the first three pages systematically provided links to articles and images associating him with organized crime.

Milorad Truklja therefore sent a letter of notification to Google asking them to modify the search results.

Having received no reply from Google, he lodged a complaint for defamation with the Court at Victoria.

In their defense, Google submitted that they cannot be held responsible for content generated automatically by a robot. They insisted on the fact that the process is fully automated and requires no human intervention.

Both jury and judge refuted this argument based on their capacity as editors (relating to the law of criminal infringement by the Australian press). The Court insisted on the fact that in Australian law, the mere intention to publish content is sufficient to qualify as defamation. Viewed in this way, the judge stipulated, Google did effectively intend to publish this content, just as a newsagent would do and therefore they were declared guilty of an act of defamation.

On November 19^th, the Mexican Economy Minister lodged a formal request with the Director General of the World Organization for Intellectual Property, for Mexico to join the Madrid Protocol for the international registration of marks, taking the total of member states to eighty-nine.

For Mexico, Latin America’s second-largest economy and member of the G20, this membership is a continuation of the policies initiated by its government which aim to increase its commercial agreements by the diversification of its partners.

Mexico’s membership will take effect from February 19^th 2013 and the designation of Mexico by international mark will thereafter be possible.

In 2012 the Philippines, Colombia and New Zealand had already joined the system of the international mark.

The Madrid System, regulated by two treaties, the Madrid Arrangement (1891) and the Madrid Protocol (1989), enables the mark holder to protect their mark in several countries by making a single demand for registration at their national office (such as the INPI in France) or their regional one (such as the OHMI). Administrated by the international bureau of the OMPI, this system has several advantages: registration in a single language and savings both in the initial and renewal stages.

The EU Parliament has just approved the European Patent, whose not so nice technical name is “the EU patent package”. This package is composed of three parts, the unitary patent, the language regime and the unified patent court.

The new patent will automatically be valid in all 25 EU member states taking part (Spain and Italy are currently outside the new regime, but could decide to join in at any time). The EU patent taxes will costs precisely €4,725 when the new system is up to speed, compared to the average of €36,000 needed today for the same protection. Consequently, the new regime will offer a more effective protection for a lower price.

The application will have to be filed in English, German or French before the European Patent Organisation. If filed in another language, a translation into one of these three languages will be required. The translation costs will be fully refunded for EU-based small and medium-sized companies, non-profit organizations, universities and public research organizations.

Each part of the package should come into effect on January 1^st, 2014.

On October 26, 2012, ICANN’s President, Fadi Chehadé, said that he has continued to negotiate the contracts with IBM and Deloitte, the companies responsible for the technical implementation of the Trademark Clearinghouse. Additional terms will be added to the contracts. One of them will specify that ICANN will retain “all intellectual property rights in the Trademark Clearinghouse data”.

This clause is interesting. In Europe, the producer of a database who is making a substantial investment has a sui generis right by law[1] conferring prerogative on the content of the database. Structural elements of the database are also protected by copyright.

This is not the case in the US, where the database protection is ensured by contract, even if copyright could be invoked if the database presents a creative input in its presentation or its arrangement. However, the US Courts are reluctant to apply copyright without proof of real originality.

Therefore, ICANN will protect itself against any extraction or reuse of the Trademark Clearinghouse data.

In this way, ICANN is improving the situation, as no entity will be able to acquire rights on the Trademark Clearinghouse data.

The 12th edition of the French Legal Awards took place in Paris on November 29, 2012 to reward the best lawfirms.

The Dreyfus Lawfirm has been awarded in the Intellectual Property field and obtained the Silver Trophy.

Already singled out in 2011 as a « rising specialized team », the firm is recognized once again as a leader in the Intellectual Property field.

We kindly thank our clients since without their trust this award would not have been possible.

The Thai parliament has just very recently approved its government’s proposal for accession to the Madrid System.

The Madrid System, established by the Madrid Arrangement of 1891 and the Madrid Protocol of 1989, offers a Mark holder the possibility of obtaining protection for his Mark in several countries by making a single application for registration at a national office (such as INPI in France) or a regional one (such as OHMI). This system enables a significant reduction in the costs incurred by multiple applications for national Mark registration. The Protocol also simplifies the administration of Marks by enabling a change or a renewal of registration following the same procedure.

Thailand, South Asia’s second largest economy, is thereby progressively aligning itself with international practice. The aim is to stimulate the country’s economic expansion by enhancing its attractiveness in the eyes of Mark holders.

However, for Thailand’s accession to become a reality, its Parliament would still need to make changes to existing legislation concerning Marks. These amendments, already drawn up by the Thailand’s Mark Office, should be approved within the next six months. Thailand’s accession to the Madrid System is scheduled for 2015.

1-Draw

The draw is presented by ICANN as a equitable and reliable method to determine the order priority for Application process.

ICANN divulged details about the draw. ICANN obtained a licence to hold a lottery in California.

As planned, Applicants can purchase the tickets directly or name a prox to purchase them for them. Tickets will be for sale from December 12 to the morning of December 17th at the Hilton LAX in Los Angeles.

The new gTLD draw will take place on December 17, 2012, in afternoon. It will take place at the Hilton LAX as well and will be open to the public. Applicants do not have to be personnaly present for the draw.

2 –Initial evaluation

Evaluation results to be excepted in August 2013 and Background screening results will be published at the same time as Initial Evaluation Results. First initial evaluation results will be released in priority order starting March 23, 2013.

3 –Withdraw of Application

Still regarding new gTLD’s, six Application withdrawals have been withdrawn (AND, ARE, EST, CHATR, CIALIS and KSB) ad seven additional withdrawals are in progress.

The TLD Application System (TAS) will reopen on November 26th 2012 and Applicants will have to reset their passwords.

On September 10^th, the Director General of the World Intellectual Property Organization announced the deposit by the New Zealand government of its accession to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks.

The Madrid System, established by the Madrid Arrangement of 1891 and the Madrid Protocol of 1989, offers a Mark holder the possibility of obtaining protection for his Mark in several countries by making a single application for registration at a national office (such as INPI in France) or a regional one (such as OHMI). This system enables a significant reduction in the costs incurred by multiple applications for national Mark registration.

In a further development, the time limit to exercise the right to notify a refusal of protection was extended from one year to eighteen months, as is the case in the United Kingdom. However, the island of Tokelau, although an integral part of New Zealand’s territory, was not included in the agreement. Only by consultation, made compulsory by the constitutional status of the island and the commitment of the Government of New Zealand to the development of self-government for Tokelau, could such accession be agreed.

The Madrid Protocol will enter into force, with respect to New Zealand, on December 10^th, 2012. From that moment on, New Zealand will be available for an International trademark’s filling.

Nominet is the registry responsible for the <.co.uk> domains and operates also a dispute resolution service. On a general level, as the allocation of the domain names has always been offered under the “first come, first served” approach, it can raise conflicts. When someone estimates that a domain name registration has been made in violation of his rights (like a trademark), he can envisage two different paths. Either he can go to court, following the normal process of a lawsuit, or he can file a complaint with Nominet, which provides its own extrajudicial procedure for domain name disputes.

This extra-judicial dispute procedure is set out in a document called “Dispute Resolution Service Policy” (DRS). After the filling of the complaint, parties have to pass through a mediation phase, which, in some cases, ends up, on a settlement. If the mediation fails, an Expert rules on whether there has been abusive registration of the domain name.

The decision of the Expert can be appealed with Nominet, which then appoint an appeal panel of three members from a group called the “Expert Review Group”. The Experts will only state on the abusive nature of the registration as for the first hearing of the case.

Airline operator Emirates has used the Nominet process described before to challenge the registration of the domain name <emirates.co.uk> on the basis of his trademark’s right.

The first Expert decided domain name’s registration was legitimate and Complainant appealed the case directly before Nominet. The panel of Experts reversed the decision and ordered the transfer of the domain name in dispute.

An appeal was then lodge before the High Court of Appeal.

The Judge explained that the DRS policy do not authorize the addition of parallel court proceedings on the point.

Indeed, if that were to happen, then any DRS procedures that were subsequently started would be immediately suspended under paragraph 20 of the procedure[1]. Therefore, “Complainant would be deprived, for the time being, of the proceedings which the DRS held him out”.

Furthermore, the High Court’s judge added that the Nominet procedure was “much more consistent with the conclusion that the question (of abusive registration) is one for the Expert alone”. The abusive registration of a domain name can only be held before Nominet.

The claim was therefore stroked out.

The accuracy of this decision has to be noted. The High Court of Justice made a strict interpretation of the DRS policy in order to protect the Nominet dispute procedure and explained precisely how the addition of a parallel route would have threaten the extrajudicial procedure.

Therefore, there could be no re-hearing of a second degree extrajudicial decision of Nominet. Furthermore, in the light of High Court decision, we might think that there should be no re-hearing of a first degree decision too. Indeed, Judge said the question of abusive registration was for the expert alone and consequently not for a Judge, even regarding a non-appealed decision.

Furthermore, it seems that UK Judges are not bound by a Nominet decision. Indeed, the deny of a “parallel route” highlight the independence between the two procedures. Consequently, it would be illogical to bind a Judge by an Expert decision. Moreover, the possibility of a new judgement, independent from an extrajudicial decision has already been set out for the UDRP by the United States District court in May 10, 2001[2].

The independence of the two procedures keeps them safe one from another. Indeed, the Expert and the Judge do not rule the same way since the Expert could only decide on the abusive registration of the domain name. If a re-hearing of a Nominet decision had been authorized before the Judge, this later would have decided in the light of the abusive registration too. Consequently, this could have created an interference with other law like trademarks. For example, a trademark infringement is independent from any king of abusive behaviour from the infringer. Authorizing a re-hearing would have introduced a new unforeseen kind of exception.