Facebook Twitter Instagram Linkedin
Contact

Dreyfus

DeepSeek: The Emergence of China’s New AI Powerhouse

Written by Dreyfus28/02/2025

In the rapidly evolving landscape of artificial intelligence (AI), the emergence of new players can significantly disrupt existing paradigms. One such entrant is DeepSeek, a Chinese AI startup that has recently garnered attention for its innovative approaches and competitive performance metrics. As enterprises consider integrating DeepSeek into their operations, it is imperative to understand not only its capabilities but also the legal, data privacy, and intellectual property implications associated with its use.

I – Overview of DeepSeek

A – Development and Release

DeepSeek, officially known as Hangzhou DeepSeek Artificial Intelligence Co., Ltd., unveiled its open-source R1 model on January 27, 2025. This release sent ripples through the U.S. technology sector, particularly as reports highlighted that DeepSeek achieved performance levels comparable to established models like OpenAI’s o1-mini, but at approximately 5% of the development cost. This development challenges the prevailing notion that advancing large language models (LLMs) necessitates substantial capital and computational resources.

B – Key Features and Performance

DeepSeek’s R1 model is designed to handle a variety of complex tasks with notable efficiency. Its open-source nature allows users to download and run the model locally, eliminating the need for data storage on cloud platforms controlled by DeepSeek. This flexibility has attracted a surge of AI developers exploring DeepSeek as a viable alternative to existing models.

II – Legal Considerations for Enterprise Users

A – Data Ownership and Usage Rights

Enterprises must exercise caution when utilizing DeepSeek’s online platforms, such as its iOS, Android, or web chatbot interfaces. DeepSeek’s privacy policy grants the company broad rights to exploit user data collected through prompts or from user devices. This includes monitoring interactions, analyzing usage patterns, and using data to train and improve their technology. Additionally, DeepSeek reserves the right to share collected information with advertising and analytics partners, as well as third parties in connection with corporate transactions.

B – Compliance with International Trade Laws

The storage of all personal data on servers located in China introduces complexities concerning international trade laws that restrict or prohibit data transfers to certain foreign countries, including China. Companies should thoroughly review DeepSeek’s privacy terms to ensure compliance with their internal data security policies and external commitments to customers.

III – Data Privacy and Security Concerns

A – Data Storage and Transfer

DeepSeek’s practice of storing user data on servers within the People’s Republic of China (PRC) raises significant data privacy concerns. The PRC’s regulatory environment differs markedly from frameworks like the General Data Protection Regulation (GDPR) in the European Union or the California Consumer Privacy Act (CCPA) in the United States. Users should be aware that their data may be subject to local laws that permit government access without the stringent safeguards found in other jurisdictions.

B – Potential Risks for Enterprises

For enterprises handling sensitive or proprietary information, using DeepSeek’s online platforms could pose confidentiality risks. The broad data usage rights claimed by DeepSeek may conflict with an organization’s obligations to protect client data or trade secrets. It is crucial for companies to assess these risks and consider whether running a local instance of DeepSeek’s model, thereby retaining full control over their data, is a more suitable option.

IV – Intellectual Property Challenges

A – Allegations of Unauthorized Use

Recent reports indicate that OpenAI has accused DeepSeek of unlawfully using its AI models, raising significant legal and ethical concerns. OpenAI asserts that there is evidence suggesting DeepSeek illicitly utilized its models to enhance its own AI systems.

B – Implications for AI Development

These allegations, if substantiated, could have profound implications for the AI industry, particularly concerning the protection of intellectual property and the ethical development of AI technologies. Enterprises should monitor these developments closely, as they may impact the legal landscape surrounding AI tool usage and development.

V – DeepSeek AI: Privacy Concerns and Regulatory Actions in Europe

Unlike other AI models, DeepSeek is open-source and entirely free. However, its use raises significant concerns regarding data privacy, particularly in terms of compliance with the General Data Protection Regulation (GDPR).

European data protection authorities have expressed concerns about DeepSeek’s data collection and processing practices. For instance, the Luxembourg National Commission for Data Protection (CNPD) has warned about the risks associated with using DeepSeek, emphasizing that user input may be recorded, transferred, stored, or analyzed without a clear data protection framework. The absence of a DeepSeek representative in the European Union complicates GDPR enforcement and makes it difficult for EU citizens to exercise their data rights.

In response, some regulatory authorities have taken concrete action. The Italian Data Protection Authority (Garante) ordered the blocking of the DeepSeek application in Italy after the company failed to provide requested information regarding its privacy policy and data processing practices.

These measures highlight the challenges posed by the rapid emergence of AI models like DeepSeek, particularly regarding compliance with European data protection regulations. European authorities continue to monitor these developments closely to ensure user data security and privacy.

Conclusion

DeepSeek represents a significant advancement in the AI field, offering promising capabilities that could benefit various enterprise applications. However, organizations must carefully weigh these advantages against the potential legal, data privacy, and intellectual property risks associated with its use. Conducting thorough due diligence and consulting with legal experts in data protection and intellectual property law is essential before integrating DeepSeek into business operations.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters.

Dreyfus Law Firm collaborates with a global network of IP attorneys to provide tailored legal solutions in the evolving field of AI and copyright.

Join us on social media !

LinkedIn  

Instagram

FAQ

1 – What is the link between artificial intelligence and personal data?

Artificial intelligence (AI) relies on processing and analyzing large datasets to learn, identify patterns, and make predictions. When AI processes information that can identify an individual (such as names, addresses, browsing history, biometric data, etc.), this data is considered personal and is subject to strict regulations, including the General Data Protection Regulation (GDPR) in Europe.

2 – How does artificial intelligence process data?

AI systems process data through machine learning and deep learning algorithms. These models are trained on large amounts of data to recognize patterns and improve predictions. The processing includes: • Collecting and storing data • Cleaning and structuring information • Analyzing trends and modeling predictions • Making automated decisions based on the analysis To comply with regulations, data must be used transparently, minimized, and secured.

3 – What is the legal framework for AI?

AI is regulated by multiple legal frameworks at both national and international levels. In Europe, it is primarily governed by: • The GDPR, which imposes strict obligations on the collection, processing, and storage of personal data. • The proposed EU AI Act, which aims to classify AI systems based on their risk level and impose specific obligations on developers and users. • Other sector-specific regulations, such as those related to consumer protection, cybersecurity, and liability for errors or damages caused by AI.

4 – Does AI collect your personal information?

AI can process personal information if it is designed to analyze user data (e.g., facial recognition, personalized recommendations, virtual assistants). However, companies and organizations using AI technologies must comply with principles of transparency, data minimization, and user consent. Responsible AI systems should integrate data protection mechanisms such as anonymization, encryption, and access control to prevent misuse or non-compliant processing.

5 – Does the GDPR apply to AI?

Yes, the GDPR applies to any AI system that processes personal data, regardless of the technology used. Key obligations include: • Obtaining explicit user consent for data collection and usage. • Complying with the principle of data minimization, meaning only collecting data that is strictly necessary. • Implementing security measures to protect data processed by AI. • Ensuring the right to explanation, allowing individuals to obtain information about automated decision-making processes. • Granting individuals the right to erasure of their personal data upon request. Any organization using AI must ensure that its systems comply with GDPR requirements and other applicable regulations.

Read More

How to secure Intellectual Property Rights in public tenders and procurement

Written by Dreyfus25/02/2025

Winning public tenders can open substantial opportunities for businesses. However, participating in these processes often involves navigating intricate intellectual property issues, particularly when delivering innovative solutions or creative services. This article provides a comprehensive guide to securing your intellectual property rights in public tenders, ensuring you retain control over your creations while meeting procurement requirements.

 Understanding the intersection of IP and public procurement

Why intellectual property clauses are important in public contracts ? Public contracts frequently involve the creation of intellectual works such as software, designs, or research. However, without well-drafted clauses, you risk losing rights to your creations. The inclusion of clear IP provisions ensures:

  • Defined ownership: Establishes whether rights remain with the contractor or transfer to the public entity.
  • Scope of use: Determines how the procuring entity may use the delivered results.
  • Fair compensation: Reflects the value of IP rights in contract pricing.

IP in public procurement is governed by national laws and sector-specific agreements. In France, the Intellectual property Code and the public procurement code define default rules for IP ownership and transfer in public contracts. Internationally, EU directives provide harmonized principles for public procurement.

Key IP issues in public tenders

Ownership of results

The ownership of intellectual property created under public contracts varies depending on the type of deliverables and the procurement model:

  • Licenses vs. ownership transfer: Default rules under French law (CCAG-PI, CCAG-TIC) often provide the public entity with a license, while exclusive transfer requires explicit contractual provisions.
  • Existing works: Contractors typically retain rights to pre-existing works incorporated into deliverables, but must grant the public entity a license for operational needs.

Use of Pre-existing IP

Clearly identify pre-existing IP or know-how and establish its legal treatment:

  • Declare all pre-existing elements upfront.
  • Use non-exclusive licenses to prevent the loss of proprietary rights.

Confidentiality and protection of know-how

Protecting trade secrets and know-how is critical:

  • Non-disclosure agreements: Ensure these are in place before tender submission.
  • Restricted access clauses: Limit the use and dissemination of sensitive information shared during the tender process.

Compatibility with open data requirements

Public authorities often require results to be shared under open access frameworks. Define the boundaries for such usage, ensuring it aligns with your business model.

 Drafting effective IP clauses in tender proposals

Several steps for writing these clauses:

  1. Clearly define deliverables

The contract should specify the IP status of each deliverable:

  • Distinguish between bespoke developments and standardized solutions.
  • State whether deliverables include software, designs, or reports.
  1. Specify the scope of rights granted

Define the following:

  • Territorial scope: E.g., national, European, or global usage rights.
  • Duration: Temporary or perpetual rights.
  • Purpose: Limit rights to specific uses (e.g., internal use).
  1. Address modifications and derivative works

Explicitly regulate:

  • The procuring entity’s ability to modify or adapt the work.
  • Conditions for creating derivative works or sublicensing.
  1. Include compensation for IP

Ensure your tender pricing reflects the value of IP rights being transferred or licensed:

  • Itemize costs related to IP creation and licensing.
  • Incorporate royalties for extended or expanded use.

Navigating complex scenarios

Collaborative innovation

When collaborating with public entities, co-created IP may arise. To safeguard your rights:

  • Establish co-ownership agreements, detailing how rights are shared and exploited.
  • Define rules for filing patents or registering designs.

Litigation and disputes

If disputes arise:

  • Refer to arbitration clauses or administrative jurisdiction defined in the contract.
  • Use preambles and detailed IP clauses as evidence of intent.

Handling open-source deliverables

When contributing open-source solutions:

  • Verify licensing terms align with procurement requirements.
  • Prevent conflicts between proprietary and open-source components.

Conclusion 

First of all, consult legal and IP professionals, as Dreyfus Law Firm, during tender preparation to:

  • Draft robust IP clauses.
  • Identify potential risks.

Then, review your portfolio to:

  • Identify IP that may be affected by the contract.
  • Ensure readiness for compliance and negotiations.

Then, benchmark standard practices in your sector for IP management in public procurement.

Finally, many procurement frameworks allow for dialogue phases—use this to clarify and protect your IP interests.

Securing intellectual property rights in public tenders requires a proactive approach, balancing the demands of public authorities with your strategic interests. By defining clear contractual provisions, understanding applicable laws, and protecting your pre-existing assets, you can safeguard your IP and build lasting value from public contracts.

Dreyfus Law Firm has been assisting clients in securing and maximizing the value of their intellectual assets. With deep expertise in intellectual property and tailored services, we ensure optimal management of your rights in public tenders and procurement.

Dreyfus Law Firm collaborates with a global network of IP attorneys to protect your innovations while maximizing their potential.

Follow us on social media !

LinkedIn  

Instagram

 FAQ

1 – How to protect your intellectual property in a contract?

To protect your intellectual property in a contract, it is essential to include specific clauses detailing the rights and obligations of the parties. Key aspects to consider include:

  • Clearly defining the intellectual property covered (trademarks, patents, copyrights, trade secrets, software, etc.).
  • Determining ownership of rights: specifying who owns the creations and innovations developed under the contract.
  • Regulating the use of rights: setting out the terms for assignment, licensing, or usage of the intellectual property.
  • Ensuring confidentiality: including a non-disclosure clause to prevent the leakage of sensitive information.
  • Providing enforcement mechanisms in case of infringement (penalties, damages, termination, etc.).

A well-drafted contract helps anticipate disputes and secure the company’s intangible assets.

2 – What is an intellectual property clause?

An intellectual property clause is a contractual provision that defines the rights and obligations of the parties concerning protected creations, inventions, or trade secrets. It may cover:

  • Ownership of rights: clarifying who holds the intellectual property created or used under the contract.
  • Usage conditions: outlining the terms for assignment, licensing, or exploitation of the rights.
  • Protection obligations: ensuring confidentiality and preventing any infringement of intellectual property rights.
  • Remedies in case of disputes: specifying penalties for infringement, breach of commitments, or unauthorized disclosure.

This clause is crucial in service agreements, collaboration contracts, employment contracts, and distribution agreements to avoid legal uncertainties.

3 – What is trade secret in intellectual property?

A trade secret in intellectual property refers to a set of confidential information, methods, or technical processes that have economic value. This can include:

  • Manufacturing formulas or industrial processes.
  • Specific commercial or marketing strategies.
  • Proprietary databases.
  • Software or algorithms that are not patented.

Trade secrets are indirectly protected through business confidentiality and non-disclosure agreements (NDAs) but do not enjoy exclusive rights like patents or trademarks.

4 – How to protect your trade secrets?

Trade secrets can be protected through several mechanisms, including:

  • Confidentiality agreements: signing NDAs with employees, partners, and service providers.
  • Information access restrictions: limiting access to trade secrets to authorized personnel only.
  • Establishing proof of ownership: documenting and dating key processes (e.g., through notarized records or deposits with specialized organizations).
  • Employment or collaboration contracts: including confidentiality and non-compete clauses to prevent knowledge leakage.
  • Technical security measures: securing databases, software, and sensitive documents with encryption and restricted access.

These precautions ensure the exclusivity of trade secrets and prevent unauthorized use by third parties.

 

Read More

The case of the domain name : Afnic rules in favor of the Syndicat des Vins

Written by Dreyfus24/02/2025

Afnic (Association Française pour le Nommage Internet en Coopération), which is responsible for managing domain names ending in .fr, has issued its decision in the dispute between the Syndicat des Vins Côtes de Provence and the company AOC ET COMPANIES. What is at stake? The domain name <cotesdeprovence.fr>, registered since 2004 by AOC ET COMPANIES. The Syndicat des Vins, the organization that protects and manages the “Côtes de Provence” appellation d’origine contrôlée (AOC), contested this ownership, arguing that its registration and use infringed the rights guaranteed by law on this renowned wine appellation.

After analyzing the arguments of both parties, Afnic ruled in favor of the Syndicate and ordered the transfer of the domain name to its benefit. A look back at a landmark decision that illustrates the importance of protecting geographical indications on the Internet.

A domain name at the heart of the battle

The dispute concerned the website <cotesdeprovence.fr>, registered on May 17, 2004 by the company AOC ET COMPANIES, which specializes in IT services and website creation. For almost 20 years, this domain name was not used. But in March 2024, the Côtes de Provence Wine Syndicate took steps to recover this domain, believing that it constituted misappropriation of a protected AOC.

According to the Syndicate, the “Côtes de Provence” AOC, recognized since 1977 and enjoying a strong reputation in France and internationally, had to be protected against any unauthorized commercial or private use. In particular, it invoked Article L. 45-2 of the French Postal and Electronic Communications Code, which allows a domain name to be challenged in the event of infringement of rights protected by law, such as a geographical indication or trademark.

In April 2024, the Syndicate sent a formal notice to the Holder requesting the free transfer of the domain. In response, the latter refused, explaining that he was the legitimate owner and indicating that he was only willing to transfer it as part of a commercial transaction.

Faced with this refusal, the Syndicat referred the matter to Afnic via the PARL EXPERT procedure, an arbitration mechanism dedicated to disputes over .fr domain names.

The parties’ arguments

The Côtes de Provence Wine Syndicate: an infringement of legally guaranteed rights

The Syndicate argued that the registration and renewal of the domain name <cotesdeprovence.fr>:

  • Infringed upon the “Côtes de Provence” AOC, protected by the Rural Code and Maritime Fisheries (article L. 643-1).
  • Were likely to weaken or divert the reputation of this AOC by preventing the legitimate rights holders from using the domain name.
  • Were the result of a registration in bad faith, since the holder had no connection with the wine sector and had never used it to promote an activity related to the appellation.
  • Were motivated by a purely speculative interest, as the Holder had offered to sell the domain for financial compensation.

The Holder, AOC ET COMPANIES: a desire to preserve its rights

For its part, the company AOC ET COMPANIES rejected these accusations, stating that:

  • It had been the legitimate owner of the domain since 2004, having acquired it entirely legally according to the “first come, first served” rule applied by Afnic.
  • The acronym “AOC” in its trade name did not refer to “Appellations d’Origine Contrôlée” (Controlled Designations of Origin), but to its slogan “[Surname] Optimizes your Trade and Etc.”
  • The domain name did not infringe the rights of the Syndicate, as it had never been used to promote wines or a competing product.
  • The sale of the domain was not a sign of bad faith, but a direct consequence of the Syndicate’s efforts to claim its transfer.

The Expert’s analysis: abusive private use of the domain name

The Expert appointed by Afnic examined the arguments and evidence of both parties. Several factors weighed in favor of the Syndicate:

  • The protected nature of the “Côtes de Provence” AOC: the Expert recognized that this appellation, governed by an official decree of 1977, benefited from legal protection and could not be used without justification.
  • The perfect identity between the domain name and the AOC: the domain <cotesdeprovence.fr> completely reflected the appellation, which risked creating confusion.
  • The absence of legitimate exploitation: the Holder had never used the domain for 20 years and had no connection with the world of wine.
  • The sale of the estate: the fact of having offered the domain name for sale and of promoting it on a dedicated site was perceived as an attempt at speculation, which constitutes evidence of bad faith according to article R. 20-44-46 of the CPCE.

Thus, the Expert considered that the registration and use of the domain infringed the rights guaranteed by law and that it should be transferred to the Côtes de Provence Wine Syndicate.

 

A decision in favor of the protection of geographical indications

On September 10, 2024, Afnic confirmed the Expert’s decision and ordered the transfer of the domain name <cotesdeprovence.fr> to the Syndicat des Vins Côtes de Provence.

The decision was enforced after a period of 15 days, during which time the Holder may still initiate legal proceedings if they so wish.

This case illustrates the importance of protecting geographical indications on the Internet. Domain names, as strategic communication and marketing tools, cannot be monopolized for speculative purposes when they include designations protected by law.

Nevertheless, this decision raises questions, because it calls into question the ownership of a domain name registered for 20 years. Although foreclosure does not apply in this case, it creates real legal uncertainty for domain name holders. In this case, this situation can be explained by the lack of use of the domain name during this entire period. In general, establishing a system of limitation for this type of procedure would be appropriate in order to guarantee legal certainty.

 

Dreyfus Law Firm, with its expertise in intellectual property and domain name protection, assists its clients in defending their rights against the risks of cybersquatting and infringement of their IP rights. We act in UDRP disputes, analyzing each case from the perspective of trademark law and regulations specific to protected geographical indications (PGI) and controlled designation of origin (CDO). Thanks to our experience in the strategic management of domain name portfolios, we implement tailored solutions to anticipate, monitor and defend the digital assets of our clients, whether they are producers, professional associations or companies in the wine and food industry.

FAQ

  1. Can a registered designation of origin (AOC) be protected on the Internet?

Yes. An AOC is a distinctive sign protected by law. The registration of a domain name containing an AOC without legitimate justification may be contested by the organization in charge of its defense.

  1. What can be done if a domain name contains an AOC without authorization?

The AOC defense organization may take legal action or resort to extrajudicial procedures such as PARL EXPERT with Afnic for .fr domain names, or UDRP for international extensions (.com, .org, etc.).

  1. How does Afnic’s PARL EXPERT procedure work?

PARL EXPERT is a fast, out-of-court procedure for resolving disputes relating to .fr domain names. An expert examines the arguments of the parties and can decide on the transfer or deletion of the disputed domain name.

  1. Is it possible to register a domain name for the sole purpose of reselling it?

No. Speculative registration of a domain name, without the intention of exploiting it but with the aim of reselling it at a high price, may be considered as use in bad faith and give rise to a dispute.

  1. Can a domain name corresponding to an AOC be used by a company outside the sector?

The use of a domain name corresponding to an AOC by a company that has no connection with the sector concerned may be contested if it risks weakening or misappropriating the reputation of the appellation.

  1. What criteria can be used to prove bad faith in the registration of a domain name?

Bad faith can be established if the domain holder:

  • Has no legitimate interest in registering it,
  • Seeks to profit from the reputation of an AOC or a trademark,
  • Offers the domain for sale after being contacted by a right holder,
  • Does not actively exploit it for a long period of time.
  1. Can an AOC be considered as public property on the Internet?

No. AOCs are protected by legislation and cannot be freely used by third parties without authorization. They benefit from a specific legal framework that prevents their abusive appropriation.

  1. Can an organization that defends an AOC recover a domain name without financial compensation?

Yes. If the organization demonstrates that the registration of the domain name infringes the AOC, Afnic or a competent authority may order its transfer without any obligation to compensate the original holder.

Dreyfus Law Firm works in partnership with a global network of lawyers specializing in intellectual property.

Follow us on social media!

LinkedIn  

Instagram

Read More

UDRP: The Côtes de Provence Wine Syndicate loses its fight for the domain name

Written by Dreyfus24/02/2025

The present proceedings – Syndicat des Vins Côtes de Provence v. Pascal Leemann-Pluot – Case No. D2024-5223 – concern the domain name <cotesdeprovence.com>, registered on January 29, 2007 by the Respondent, an individual domiciled in the United States. The Complainant, Syndicat des Vins Côtes de Provence, considered that this domain name infringed its rights, in particular its French trademarks and its Côtes de Provence appellation protected by French and European regulations.

Background and Position of the Complainant

  • Appellation and missions of the Syndicate

The Complainant is a trade association created in 1933 to defend and promote the “Côtes de Provence” appellation d’origine contrôlée (AOC), which designates a geographical wine-growing area covering several communes in the Provence region. It emphasizes its high profile, its substantial production (more than 130 million bottles in 2022), as well as its trademarks registered in France.

  • Trademarks claimed

The Complainant relies mainly on two French trademarks:

  1. A purely figurative trademark (no. 1432164) representing a bottle of wine (without any relevant textual element).
  2. A semi-figurative trademark (no. 3753570) including the words “SYNDICAT DES VINS COTES DE PROVENCE”.
  3. He also emphasizes that he is the holder of several domain names containing the expression “cotesdeprovence”, such as <cotesdeprovence.fr>, <odg-cotesdeprovence.fr> or <odg-cotesdeprovence.com>.
  • Arguments about similarity and confusion

The Complainant considers that the domain name <cotesdeprovence.com> reproduces identically the essential element of its signs, namely “COTES DE PROVENCE”. Despite the semi-figurative form of its trademark, it considers that the dominant verbal element is “Côtes de Provence” and that there is therefore a likelihood of confusion.

  • Rights and legitimate interests

The Complainant claims that the Defendant has not been authorized to use the appellation or to register a domain name corresponding to its trademarks or its AOC/PDO. It adds that the use of the site associated with the domain name (pages of pay-per-click advertising links related to the sale or delivery of wine) does not constitute legitimate or bona fide use.

  • Registration and use in bad faith

The Complainant maintains that the expression “Côtes de Provence” enjoys a strong reputation and that it is unlikely that the Defendant was unaware of the existence of the AOC and related rights. The association of the domain name with a site of sponsored links targeting the wine estate would demonstrate a desire to profit from the reputation of the appellation and to create confusion among Internet users, which would characterize bad faith.

Defendant’s position

The Respondent did not participate in the proceedings and did not submit any arguments in response. The only information available is that provided by the Complainant and the Center’s findings, in particular that the site linked to the domain name displayed PPC links relating to wine and that no active use by the Respondent (such as its own commercial site) has been proven.

Panel Analysis

  1. a) Similarity between the domain name and the trademarks
  • The Panel notes that the Complainant’s entirely figurative trademark (no. 1432164) does not include a word element, and therefore cannot be compared textually to the domain name <cotesdeprovence.com>.
  • The second trademark (no. 3753570), registered in 2010 (i.e. after the registration of the domain name in 2007), includes the element “SYNDICAT DES VINS COTES DE PROVENCE”, but is not strictly equivalent to “COTES DE PROVENCE” alone. The Panel recognizes that the Complainant considers it to include a dominant element “Côtes de Provence”, but notes the absence of concrete evidence to demonstrate that this verbal segment would be protected in isolation or considered the pre-eminent part of the trademark.
  1. b) Rights or legitimate interests of the Respondent

In view of the Panel’s conclusion on bad faith (see below), it was not considered necessary to make a final decision on the question of legitimate rights or interests. In accordance with the UDRP procedure, failure to prove bad faith of registration and use is sufficient to reject the complaint, without it being mandatory to analyze the second element.

  1. c) Registration and use in bad faith
  • Priority of the trademark over the domain name

The semi-figurative trademark mentioning “Côtes de Provence” dates from 2010, while the domain name was registered in 2007, which makes it unlikely that there was an initial intention to specifically target the Complainant’s trademark.

  • Reputation of the Complainant vs. reputation of the wine region

Even if the appellation “Côtes de Provence” is recognized in the wine sector, the Panel notes that the Complainant’s argument does not prove that the Respondent was aware of the syndicate or its trademarks in order to exploit their reputation. It is plausible that the Defendant wanted to capitalize on the interest in the region or the “Côtes de Provence” wine, without necessarily targeting the owner of the trademarks or the organization managing the AOC.

  • Advertising links (pay-per-click)

The advertising content of the site is focused on the theme of wine, but does not in itself demonstrate the intention to exploit the Complainant’s trademark. To characterize bad faith, it would have been necessary to establish that the Defendant was aware of the Syndicate and its rights or that it was specifically targeting the trademark.

  • Panel’s conclusion

Not being able to find any evidence proving a deliberate intention to appropriate the reputation of the Syndicate or its brands, and noting moreover that the registration predates the semi-figurative trademark, the Panel finds that the Complainant does not fulfill the condition of bad faith within the meaning of the UDRP Policy.

Decision

In the absence of sufficient evidence of bad faith in the registration and use of the domain name, the complaint is rejected. The domain name <cotesdeprovence.com> therefore remains in the possession of the Respondent.

Conclusion

The Panel, applying the rules of the UDRP, concludes that the Complainant does not meet the requirement to establish bad faith registration and use by the Respondent. Accordingly, the complaint is dismissed.

The UDRP aims to resolve conflicts between trademarks and domain names, not between geographical indications and domain names. In this case, in the absence of a similar trademark and proof of bad faith on the part of the domain name holder, the outcome of this decision is in accordance with the UDRP rules.

This decision highlights the importance of owning a trademark to effectively defend one’s interests when faced with the registration of a domain name.

The Côtes de Provence Wine Syndicate has also acted, this time successfully, via the French administrative procedure PARL-EXPERT to recover the same domain name in <.fr>: add link.

Dreyfus Law Firm, with its expertise in intellectual property and domain name protection, assists its clients in defending their rights against the risks of cybersquatting and infringement of their IP rights. We act in UDRP disputes, analyzing each case from the perspective of trademark law and regulations specific to protected geographical indications (PGI) and controlled designation of origin (CDO). Thanks to our experience in the strategic management of domain name portfolios, we implement tailored solutions to anticipate, monitor and defend the digital assets of our clients, whether they are producers, professional associations or companies in the wine and food industry.

 

FAQ

 

  1. What is the UDRP procedure and when is it applicable?

The UDRP (Uniform Domain Name Dispute Resolution Policy) procedure is a mechanism set up by ICANN to resolve domain name disputes. It applies when the complainant considers that a domain name is identical or similar to a trademark that they hold, that the defendant has no right or legitimate interest in the domain and that they have registered and are using the domain in bad faith.

  1. Can a domain name containing a protected designation of origin (PDO) be recovered?

The protection of designations of origin is governed by specific regulations (French and European, for example). However, the UDRP generally only recognizes rights related to trademarks. It may therefore be more difficult to claim a domain name on this basis alone. Legal action based on PDO or unfair competition laws could be an alternative.

  1. Can a semi-figurative trademark be sufficient to obtain a domain name via the UDRP?

It all depends on the textual elements of the trademark. If the domain name in question only includes part of a semi-figurative trademark, the chances of success may be reduced, especially if this part is not clearly identified as dominant.

  1. Can a domain name registered before a trademark be recovered under the UDRP?

As a general rule, if the domain name was registered before the trademark claimed by the complainant, it is difficult to prove bad faith. However, there are some exceptions, particularly if the defendant was already aware of the trademark and intended to exploit it abusively.

  1. Is the display of advertising links (pay-per-click) on a site proof of bad faith?

Not necessarily. Although some cases of cybersquatting are characterized by the exploitation of a domain name for sponsored links, bad faith must be demonstrated. If the domain contains a generic or geographical term and the defendant does not specifically target a trademark, it may be difficult to prove abusive use.

  1. Can a right to a designation of origin be invoked if it is well known?

The reputation of an appellation of origin can be a factor, but it does not automatically confer a right under the UDRP. As the procedure is trademark-oriented, it is often preferable to resort to actions based on the specific regulations of appellations or on the law of unfair competition.

  1. What can be done if a UDRP complaint is rejected?

If a UDRP complaint is rejected, other options exist:

  • Legal action: depending on the country, it may be possible to invoke trademark law, appellation of origin law or unfair competition law.
  • Negotiation: an amicable approach can be attempted with the domain holder.
  • Monitoring and future actions: monitor possible new uses of the domain and intervene if misuse is detected.
  1. How can a name associated with a designation of origin be effectively protected?
  • Register a word mark including the designation as soon as possible.
  • Register the relevant domain names before a third party does.
  • Actively monitor domain registrations and online uses.
  • Act quickly in the event of a disputed registration, via a UDRP procedure or legal action. 

Dreyfus Law Firm works in partnership with a global network of lawyers specializing in intellectual property. 

Follow us on social media!

LinkedIn  

Instagram

Read More

Getty Images (US) Inc and Others v. Stability AI Ltd [2025] EWHC 38 (Ch): An interesting case in AI and Intellectual Property Law

Written by Dreyfus19/02/2025

The recent High Court decision in Getty Images (US) Inc and Others v. Stability AI Ltd [2025] EWHC 38 (Ch) has garnered significant attention, marking a pivotal moment in the intersection of artificial intelligence (AI) and intellectual property (IP) law. This case addresses the complexities arising from the use of copyrighted materials in training AI models, setting a precedent for future disputes in this evolving field.

I – Background of the case

Getty Images, a renowned global visual content provider, initiated legal proceedings against Stability AI Ltd, an open-source generative AI company known for developing “Stable Diffusion,” a deep-learning model capable of generating images from textual descriptions.

Getty Images alleged that Stability AI unlawfully “scraped” millions of images from its websites without consent, utilizing these images to train and develop the Stable Diffusion model. Furthermore, Getty contended that the outputs of Stable Diffusion reproduced substantial parts of its copyrighted works and, in some instances, retained Getty’s watermarks, leading to claims of copyright infringement, database right infringement, trademark infringement, and passing off.

II – Legal framework

A – Copyright infringement

Under the UK’s Copyright, Designs and Patents Act 1988 (CDPA), copyright infringement occurs when a substantial part of a protected work is reproduced without authorization. Getty Images argued that Stability AI’s use of its images in training the AI model constituted such reproduction, thereby infringing upon its exclusive rights.

B – Database rights

Getty also claimed infringement of its database rights, asserting that the compilation of its images constitutes a database protected under the CDPA. The unauthorized extraction and reutilization of these images by Stability AI were alleged to violate these rights.

C – Trademark infringement and passing off

The presence of Getty’s watermarks in the outputs of Stable Diffusion formed the basis of the trademark infringement and passing off claims. Getty contended that such use could mislead consumers regarding the origin of the images, potentially damaging its brand reputation.

III – Court’s analysis and findings

One of the key issues raised concerned territorial jurisdiction and the location of the alleged infringing acts. Stability AI argued that the training and development of the Stable Diffusion model had been conducted entirely outside the United Kingdom, primarily in the United States.

However, the High Court identified inconsistencies in the statements made by Stability AI’s CEO, Mr. Emad Mostaque, particularly regarding the involvement of UK-based employees and resources. As a result, the Court found that there were plausible grounds to suggest that certain disputed activities had taken place in the UK, warranting a more thorough examination at trial.

Getty sought to act on behalf of a group of approximately 50,000 copyright holders who had granted it exclusive licenses. However, the Court rejected this request, deeming the group’s definition too vague, as it depended on the outcome of the litigation. Additionally, the Court highlighted the practical difficulty of precisely identifying the specific works used to train Stable Diffusion in the UK, posing an additional obstacle to the admissibility of the collective action.

Finally, the Court considered whether the Stable Diffusion software could be classified as an “article” within the meaning of Sections 22 and 23 of the CDPA, which govern secondary infringement related to the importation, possession, or distribution of illicit copies. Traditionally limited to tangible goods, these provisions, according to the Court, could potentially be extended to intangible objects such as software, paving the way for a significant evolution of copyright law in the digital age.

IV – Implications of the decision

A – For AI development

This case underscores the necessity for AI developers to exercise caution when utilizing third-party materials in training models. The court’s willingness to consider software as an “article” for the purposes of secondary infringement suggests that developers could face liability for unauthorized use of protected works, even in the absence of direct copying.

B – For Intellectual Property rights holders

The decision highlights the challenges IP rights holders face in protecting their works against unauthorized use in AI development. The court’s approach to jurisdiction and the interpretation of existing legal frameworks may influence how rights holders structure their agreements and enforcement strategies in the context of emerging technologies.

Conclusion

The Getty Images v. Stability AI case represents an important development in the intersection of AI and IP law. The court’s findings on jurisdiction, representative actions, and the interpretation of statutory terms reflect the evolving legal landscape as it adapts to technological advancements. As AI continues to integrate into various sectors, this decision serves as a critical reference point for both developers and rights holders navigating the complexities of IP protection in the digital era.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

Dreyfus Law Firm collaborates with a global network of intellectual property attorneys.

Join us on social media !

LinkedIn  

Instagram

Read More

UDRP and ccTLDs: Essential Insights for Recovering a Local Domain Name

Written by Dreyfus18/02/2025

In today’s interconnected digital economy, domain names have become invaluable assets for businesses, serving as critical elements of their online identity and branding efforts. However, cybersquatting, the unauthorized registration of domain names, presents significant obstacles for brand protection. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) offers a mechanism to address such disputes, but its applicability varies, especially concerning country code Top-Level Domains (ccTLDs). This article provides a comprehensive overview of the UDRP’s relationship with ccTLDs and offers actionable advice for reclaiming local domain names.

Understanding the UDRP and Its Application to ccTLDs

The UDRP, established by the Internet Corporation for Assigned Names and Numbers (ICANN), provides a streamlined process for resolving disputes related to the bad-faith registration of domain names. While the UDRP is universally applicable to generic Top-Level Domains (gTLDs) such as .com, .net, and .org, its application to ccTLDs is inconsistent.

Each ccTLD registry operates independently, and the adoption of the UDRP or a variant thereof is at the discretion of the individual registry. For instance, the World Intellectual Property Organization (WIPO) administers dispute resolution services for numerous ccTLDs that have adopted the UDRP or its variants. Businesses must research and understand the rules applicable to their target ccTLD.

Key Considerations for Reclaiming Local Domain Names

  1. Registry Policies: Before initiating a claim, confirm whether the ccTLD registry adheres to the UDRP or an equivalent dispute resolution procedure. This information is often available on the registry’s official website or via WIPO’s online resources.
  2. Eligibility Criteria: To succeed under the UDRP, you must establish the following cumulative conditions:
  • The domain name is identical or confusingly similar to your trademark.
  • The registrant has no legitimate interests in the domain name.
  • The domain was registered and is being used in bad faith.

Trademark rights, even those unregistered in some jurisdictions, play a crucial role in demonstrating your case.

  1. Procedural Variations: Be aware that while some ccTLDs have adopted the UDRP in its entirety, others may have tailored processes with specific submission requirements, timelines, and fees. Familiarize yourself with the specific procedures and requirements of the relevant ccTLD.

Steps to Initiate a Domain Dispute Under the UDRP

  1. Preparation: Gather evidence supporting your claim, including proof of trademark rights, instances of the domain’s bad-faith use, and any correspondence with the registrant.
  2. Filing the Complaint: Submit a formal complaint to an accredited dispute resolution provider, such as WIPO or the Forum. The complaint should detail the basis of the dispute and the relief sought, typically the transfer of the domain name.
  3. Administrative Proceedings: Once the complaint is filed and accepted, the registrant will be notified and given the opportunity to respond. A panel of experts will evaluate submissions from both parties and issue a decision, often within 60 days.
  4. Implementation of Decision: If the decision favors the complainant, the domain name will be transferred after a brief period, provided no court action is initiated by the registrant.

Conclusion

Recovering a ccTLD domain name registered in bad faith requires not only a strong understanding of the UDRP but also the nuances of local registry rules. By diligently preparing your case, navigating registry-specific procedures, and engaging experienced professionals, you can effectively reclaim domain names that align with your trademark rights.

At Dreyfus Law Firm, we specialize in navigating the complexities of domain name disputes across various jurisdictions. Our partnership with a global network of attorneys specializing in Intellectual Property ensures that we provide comprehensive and effective solutions tailored to your needs.

 

FAQ 

What is a country code top-level domain (ccTLD)?

A country code top-level domain (ccTLD) is a two-letter domain extension assigned to a specific country or territory, based on ISO 3166-1 country codes. Examples include .fr for France, .de for Germany, and .uk for the United Kingdom. These domains are generally managed by national organizations and may have specific registration requirements.

What is the EU country code top-level domain?

The ccTLD for the European Union is .eu. It is managed by EURid (European Registry for Internet Domains) and is available to businesses, organizations, and individuals residing in the EU or the European Economic Area (EEA).

What country code top-level domain is France?

France’s ccTLD is .fr. It is administered by AFNIC (Association Française pour le Nommage Internet en Coopération). Registrants must meet certain residency or business presence requirements in France.

Can anyone use country domains?

Not necessarily. The eligibility to register a ccTLD varies by country:

  • Open ccTLDs: Some, like .co (Colombia) and .io (British Indian Ocean Territory), are widely available for international use.
  • Restricted ccTLDs: Others, like .fr (France), .us (United States), and .ca (Canada), require a local presence or a registered business in the respective country.
    Always check the registration policies of the ccTLD before attempting to register.

What is the difference between a TLD and a ccTLD?

A TLD (Top-Level Domain) is the highest level in the domain name system (DNS). TLDs are divided into two categories:

  • gTLDs (Generic Top-Level Domains): These are not country-specific and include .com, .org, .net, .info, and .shop.
  • ccTLDs (Country Code Top-Level Domains): These are assigned to specific countries or territories, such as .fr, .uk, .de, .jp.
    While gTLDs are generally open for global registration, ccTLDs may have specific rules restricting their use to residents or businesses within a country.

Partner with us to safeguard your digital assets across jurisdictions.

The Dreyfus Law Firm is in partnership with a global network of lawyers specializing in Intellectual Property.

LinkedIn  

Instagram

Read More

ICANN 81: Navigating the Future of Internet Governance

Written by Dreyfus17/02/2025

ICANN’s Annual General Meeting serves as a cornerstone for discussions on internet governance, policy development, and technical advancements. The 81st meeting in Istanbul was no exception, offering a platform for diverse voices to influence the trajectory of the digital landscape.

Key Highlights

Focus on New gTLDs

A significant portion of ICANN 81 was dedicated to the forthcoming application window for new generic Top-Level Domains (gTLDs), scheduled for the second quarter of 2026. This marks the first opportunity since 2012 for entities to apply for new gTLDs, signaling a monumental shift in domain name expansion. The anticipated release of the updated Applicant Guidebook in early 2025 underscores ICANN’s commitment to a streamlined and efficient application process.

Enhancements in DNS Security

Addressing DNS abuse and enhancing security protocols were paramount during the sessions. Discussions centered on implementing robust measures to mitigate threats, ensuring a safer and more resilient Domain Name System.

Emphasis on the Multistakeholder Model

Reaffirming its dedication to inclusive governance, ICANN highlighted the importance of the multistakeholder model. Engaging various stakeholders, from governments to private entities and civil society, remains crucial for balanced and effective internet governance.

Detailed Session Overviews

New gTLD Program Implementation

The session delved into the specifics of the upcoming gTLD application process. Key topics included applicant support mechanisms, evaluation criteria, and timelines, providing prospective applicants with essential insights.

DNS Abuse Mitigation Strategies

Experts presented comprehensive strategies to combat DNS abuse. Emphasis was placed on collaboration between registries, registrars, and law enforcement agencies to detect and prevent malicious activities.

Universal Acceptance Initiatives

Promoting the acceptance of all valid domain names and email addresses, regardless of script or length, was a focal point. Initiatives aimed at achieving true universality in internet access and communication were discussed extensively.

Looking Ahead to ICANN 82

Building on the momentum from ICANN 81, the upcoming ICANN 82 Community Forum is scheduled from March 8 to 13, 2025, at the Hyatt Regency Seattle Hotel in the United States. As the first meeting in the annual cycle, the Community Forum emphasizes internal work of the Supporting Organizations and Advisory Committees, cross-community interactions, and plenary sessions on topics of community-wide interest. Participants can anticipate in-depth discussions on policy development, technical updates, and strategic planning for the future of internet governance.

Conclusion

ICANN 81 in Istanbul marked a significant milestone in the ongoing evolution of internet governance. The deliberations and decisions made during this meeting have set the stage for future developments, ensuring that the internet remains secure, inclusive, and resilient. As a recognized expert in domain name law and digital brand protection, Dreyfus Law Firm closely monitors these regulatory changes and their impact on businesses. Our firm provides strategic guidance to help clients navigate the complexities of internet governance, enforce their rights against cybersquatting, and anticipate new compliance requirements. With our deep expertise in ICANN policies and domain name dispute resolution, we support companies in safeguarding their online presence and adapting to the ever-changing digital landscape.

Frequently Asked Questions (FAQ)

What is ICANN?

The Internet Corporation for Assigned Names and Numbers (ICANN) is a nonprofit organization responsible for coordinating the maintenance and procedures of several databases related to the namespaces and numerical spaces of the internet, ensuring its stable and secure operation.

What are gTLDs?

Generic Top-Level Domains (gTLDs) are one of the categories of top-level domains (TLDs) maintained by ICANN. Examples include .com, .org, and .net.

When is the next application window for new gTLDs?

The next application window for new gTLDs is scheduled for the second quarter of 2026.

What is the multistakeholder model?

The multistakeholder model is a governance structure that brings together all stakeholders, including businesses, civil society, governments, and technical experts, to participate in policy development processes.

Where can I find more information about ICANN meetings?

Detailed information about past and upcoming ICANN meetings can be found on the official ICANN meetings website.

The Dreyfus Law Firm is in partnership with a global network of lawyers specializing in Intellectual Property.

LinkedIn  

Instagram

Read More

Understanding the French Trademark Office INPI Decision of October 7, 2024: Implications for Trademark Opposition Procedures

Written by Dreyfus11/02/2025

On October 7, 2024, the French National Institute of Industrial Property (INPI) delivered its much-anticipated ruling in case NL 23-0255. The decision, which examined the interplay of trademarks, trade names, and domain names under intellectual property law, rejected LPB SAS’s nullity claims against the contested mark “Les P’tites Bombes LPB.” This ruling highlights critical principles in trademark opposition proceedings, offering key insights into risk of confusion, proof of usage, and procedural nuances.

Understanding the Background of the Dispute

Parties and Context

The case involved LPB SAS, the claimant, challenging the trademark “Les P’tites Bombes LPB,” registered in May 2019. The opposition was based on earlier rights, including:

  • The corporate name “LPB”;
  • The trade name “Les P’tites Bombes”;
  • The domain name lespetitesbombes.com.

LPB SAS argued the contested trademark created a risk of confusion due to the similarity of signs and overlapping goods and services.

LPB SAS argued a risk of confusion, asserting similarity in signs and overlapping goods and services.

Legal Analysis

Applicable Law

The contested trademark was evaluated under provisions in place at the time of its registration. Articles L.711-2, L.711-3, and L.714-3 of the French Intellectual Property Code set forth conditions for nullity, requiring proof of:

  • Earlier rights such as trade names or domain names;
  • A likelihood of confusion between the contested mark and these earlier rights.

Earlier Rights

Under French intellectual property law, trademarks can be opposed based on earlier rights, including:

  • Corporate names: Identifiers of legal entities conducting business. The INPI confirmed LPB SAS’s prior use of its corporate name for wholesale fashion activities. However, the institute found no evidence linking LPB SAS’s corporate name to goods or services overlapping with the contested mark, and insufficient demonstration of confusion due to differences in the signs’ overall impressions.
  • Trade names: Commercial identifiers associated with a specific business reputation. While LPB SAS substantiated limited usage of its trade name, the INPI held that the claimant failed to demonstrate nationwide recognition.
  • Domain names: Online identifiers with established goodwill or recognition. LPB SAS asserted long-standing exploitation of this domain for e-commerce. However, most evidence provided, including web analytics and sales data, was dated after the trademark’s registration. As a result, the INPI ruled out effective use predating May 2019.

Likelihood of Confusion: A Holistic Perspective:

The INPI evaluated confusion using the following factors:

  • Visual and phonetic differences: The contested mark and earlier rights shared limited similarity.
  • Distinctiveness: The claimant failed to show that the earlier rights were distinctive enough to create confusion.
  • Consumer perception: An average consumer with moderate attention would not likely confuse the contested mark with the earlier rights.

The cumulative analysis negated the existence of a risk of confusion.

Practical Implications for Businesses

Clarifying the Burden of Proof

The decision highlights the necessity for claimants to present robust, contemporaneous evidence of their earlier rights’ usage and recognition. Post-registration documentation cannot substantiate claims of prior use. Claimants must demonstrate:

  • Effective prior use of earlier rights;
  • Nationwide recognition where applicable.

Scope of Trademark Nullity

This decision underscores the need to narrowly tailor nullity claims, ensuring:

  • Clear alignment between earlier rights and the contested mark’s goods and services.
  • Direct evidence of overlap and potential consumer confusion.

Broader Legal and Strategic Takeaways

From a strategic perspective, this case exemplifies the challenges businesses face in protecting legacy rights against newer trademarks. Businesses must maintain comprehensive, dated records of usage, reputation, and consumer recognition to safeguard their intellectual property and support future litigation or opposition.

Procedural Changes in Trademark Opposition

The case reflects procedural shifts in French trademark law, notably:

  • Stricter evidentiary requirements.
  • A more streamlined opposition process.

To succeed in nullity claims, opponents must present:

  • Detailed documentation of prior use.
  • Proof of consumer recognition.
  • Clear articulation of harm resulting from potential confusion.

Conclusion

The INPI’s decision in NL 23-0255 sets a high bar for nullity claims and reinforces the importance of proactive intellectual property management. For trademark holders, the ruling serves as a critical reminder to document and safeguard rights effectively.

About Dreyfus Law Firm

Dreyfus Law Firm specializes in intellectual property law, providing expert guidance on trademark protection and opposition procedures. Our global network of attorneys ensures comprehensive solutions tailored to your business needs. Subscribe to our newsletter or follow us on social media for the latest insights in IP law.

FAQ 

What is a trademark opposition in France?

A trademark opposition in France is a legal procedure allowing the holder of earlier rights (such as a prior trademark, trade name, or business name) to oppose the registration of a later mark that may infringe upon their rights. The opposition must be filed with the French National Institute of Industrial Property (INPI) within two months from the publication of the trademark application in the Official Bulletin of Industrial Property (BOPI). The opponent must provide evidence of a likelihood of confusion between their earlier trademark and the contested application.

What is the opposition procedure for WIPO?

For International Trademarks filed under the Madrid System, opposition procedures vary depending on the designated country. The World Intellectual Property Organization (WIPO) itself does not handle oppositions; instead, once an international application is published in the WIPO Gazette of International Marks, each designated country examines the mark according to its national law. Any third party wishing to oppose the registration must do so directly with the national or regional IP office (e.g., INPI for France, EUIPO for the European Union) within the applicable opposition period.

How is EU trademark opposition processed?

In the European Union, trademark oppositions are handled by the European Union Intellectual Property Office (EUIPO).

  • The opposition must be filed within three months of the publication of the EU trademark application in the EU Trademark Bulletin.
  • The opponent must be the owner of an earlier registered trademark or other prior rights.
  • The opposition process consists of a cooling-off period (for possible settlement), followed by an adversarial phase where both parties submit arguments and evidence.
  • The EUIPO then issues a decision, which can be appealed before the Board of Appeal and subsequently before the General Court of the European Union.

What invalidates a trademark?

A trademark can be invalidated if it does not comply with legal requirements. Common grounds for invalidation include:

  • Lack of distinctiveness: The mark is purely descriptive or generic.
  • Earlier conflicting rights: A third party holds prior rights to a similar or identical trademark.
  • Bad faith registration: The mark was filed dishonestly, such as to block competitors.
  • Deceptive nature: The mark misleads consumers about the nature, quality, or origin of the goods/services.
  • Non-use: If a registered trademark is not used for five consecutive years, it may be subject to cancellation for non-use.

How to deal with trademark infringement?

If you believe your trademark is being infringed, you should take immediate action to protect your rights. Possible steps include:

  • Sending a cease-and-desist letter to the infringer, requesting them to stop using the mark.
  • Negotiating an amicable settlement to avoid litigation.
  • Initiating administrative procedures such as opposition or cancellation actions before the relevant IP office.
  • Filing a legal action for trademark infringement before national courts.
  • Monitoring and enforcing your rights by conducting regular brand surveillance to detect unauthorized use.

What is the action for trademark infringement?

Trademark infringement actions typically involve:

  1. Filing a lawsuit before a competent court: The trademark owner must provide evidence of infringement.
  2. Provisional measures: The court may grant injunctions to stop unauthorized use before a final decision is reached.
  3. Damages and penalties: Courts may award financial compensation for losses suffered due to the infringement.
  4. Seizure of infringing goods: Counterfeit or infringing products may be confiscated.
  5. Criminal proceedings (in serious cases): Infringement may be subject to fines or imprisonment, depending on national laws.

    Dreyfus Law Firm is partnered with a global network of lawyers specializing in Intellectual Property.

    Join us on social media!

    LinkedIn  

    Instagram

Read More

The Challenges of the UDRP Procedure in the Face of the Rise of New gTLDs

Written by Dreyfus11/02/2025

The digital landscape has undergone significant transformations with the introduction of new generic Top-Level Domains (gTLDs). This expansion presents both opportunities and challenges, particularly concerning the Uniform Domain-Name Dispute-Resolution Policy (UDRP). As experts in intellectual property law, we aim to elucidate the complexities that brand owners face in navigating the UDRP amidst the proliferation of new gTLDs. This article will provide an overview of the UDRP procedure, discuss the implications of new gTLDs, and explore how brand owners can adapt their strategies to address these challenges.

Understanding the UDRP: A Framework for Resolving Domain Disputes

Definition and Purpose

Established in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP provides a streamlined mechanism for resolving disputes related to domain names. Its primary objective is to address cases where domain names are registered and used in bad faith, infringing upon trademark rights.

Key Criteria for Filing a Complaint

To initiate a UDRP proceeding, a complainant must demonstrate that:

  • The disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
  • The respondent has no rights or legitimate interests in respect of the domain name.
  • The domain name has been registered and is being used in bad faith.

These criteria ensure that the UDRP targets clear cases of abusive domain name registrations.

The Impact of New gTLDs on the Domain Landscape

Expansion of the Domain Name System

In 2012, ICANN launched the New gTLD Program, significantly expanding the number of available gTLDs beyond the traditional ones like <.com>, <.org>, and <.net>. This initiative introduced a plethora of new extensions, such as <.shop>, <.tech>, and <.paris>, aiming to enhance consumer choice and foster competition. For instance, <.shop> has been widely adopted by e-commerce businesses, while <.tech> has gained traction among technology companies.

Opportunities and Risks for Brand Owners

While new gTLDs offer brand owners the chance to secure domain names that align closely with their trademarks and industries, they also pose increased risks of cybersquatting. The vast array of new extensions provides malicious actors with more avenues to register domain names that infringe upon established trademarks.

Challenges Posed by New gTLDs to the UDRP

Increased Potential for Cybersquatting

The surge in gTLDs has led to a corresponding rise in cybersquatting incidents. According to the World Intellectual Property Organization (WIPO), there has been a notable increase in UDRP cases, with a record number of complaints filed in recent years. WIPO reported a 20% increase in UDRP cases filed between 2015 and 2020, demonstrating the growing impact of cybersquatting in the era of new gTLDs.

Complexity in Brand Protection Strategies

Brand owners now face the daunting task of monitoring and protecting their trademarks across a vastly expanded domain landscape. This complexity necessitates more comprehensive surveillance and enforcement strategies to safeguard intellectual property effectively.

Jurisdictional and Procedural Issues

The introduction of numerous gTLDs has also led to jurisdictional challenges, as different registries may have varying policies and procedures. This fragmentation can complicate the enforcement of UDRP decisions and the overall dispute resolution process. For example, the variation in registry policies across jurisdictions, such as Europe and Asia, often creates hurdles for uniform enforcement of UDRP decisions.

Adaptations and Responses

Evolution of the UDRP Framework

In response to the evolving domain landscape, there have been discussions about reforming the UDRP to address new challenges effectively. Proposals include introducing financial penalties for cybersquatters and extending response times for respondents. However, such changes must be balanced against the need to maintain the UDRP’s efficiency and effectiveness.

Introduction of the URS Procedure

To complement the UDRP, ICANN introduced the Uniform Rapid Suspension (URS) system, designed for clear-cut cases of infringement. The URS offers a faster and more cost-effective means of suspending infringing domain names but does not provide for their transfer to the complainant.

Recommendations for Brand Owners

Given the complexities introduced by new gTLDs, brand owners should:

  • Develop a robust domain name strategy that includes registering key trademarks across relevant gTLDs.
  • Implement continuous monitoring to detect and address potential infringements promptly.
  • Utilize mechanisms like the Trademark Clearinghouse to safeguard their rights during the launch of new gTLDs.

Brand owners should also consider employing AI-powered tools to automate the monitoring of domain name registrations across multiple gTLDs.

Conclusion

The proliferation of new gTLDs has undeniably transformed the domain name ecosystem, presenting both opportunities and challenges for brand owners. While the UDRP remains a vital tool for combating cybersquatting, it must evolve to address the nuances introduced by the expanded gTLD space. As the domain name landscape continues to evolve, staying ahead requires not only vigilance but also an adaptable strategy that leverages legal and technological advancements.

At Dreyfus Law Firm, we offer comprehensive services to protect and enforce your domain name rights, including proactive domain name monitoring, strategic enforcement actions, UDRP complaints, and tailored solutions for brand protection in the digital space. Our expertise spans domain name recovery, litigation, and cybersecurity strategies to mitigate the risks posed by online infringement and cybersquatting.

 

For tailored advice on navigating the complexities of domain name protection, subscribe to our newsletter or contact Dreyfus Law Firm for expert guidance.

 

FAQ

How does UDRP work?

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an administrative process designed to resolve disputes over domain names that have been registered in bad faith. Complainants must demonstrate that:

  • The disputed domain name is identical or confusingly similar to their trademark.
  • The domain holder has no legitimate rights or interests in the name.
  • The domain name was registered and is being used in bad faith. Decisions under the UDRP are made by dispute resolution providers, such as WIPO, and can result in the transfer or cancellation of the domain.

What are the grounds for a domain name dispute?

A domain name dispute arises when a domain name is alleged to have been registered in bad faith, infringing upon trademark rights. Under the UDRP, the cumulative  grounds for a complaint are:

  • The domain name is identical or confusingly similar to a trademark owned by the complainant.
  • The domain registrant has no legitimate rights or interests in the domain name.
  • The domain name was registered and is being used in bad faith, such as for cybersquatting or phishing.

What is UDRP top-level domains?

UDRP applies to generic Top-Level Domains (gTLDs) such as <.com>, <.org>, <.net>, and to new gTLDs like .shop and .tech, as well as country-code Top-Level Domains (ccTLDs) that have voluntarily adopted the UDRP framework.

What are examples of gTLDs?

Examples of traditional gTLDs include:

  • .com
  • .org
  • .net
  • .info
  • .biz

New gTLDs introduced under the ICANN expansion program include:

  • .shop
  • .tech
  • .law
  • .paris
  • .bank

Dreyfus Law Firm is partnered with a global network of attorneys specializing in Intellectual Property.

LinkedIn  

Instagram

Read More

AI and Copyright: Understanding the U.S. Copyright Office’s Second Report on Copyrightability

Written by Dreyfus10/02/2025

The evolution of AI and Copyright

The United States Copyright Office has released the second part of its comprehensive study on artificial intelligence and copyrightability. This latest report, dated January 29th 2025, titled “Copyright and Artificial Intelligence, Part 2: Copyrightability“, delves into one of the most contentious legal questions of the modern digital era: Can AI-generated content receive copyright protection?

As AI tools like ChatGPT, MidJourney, and DALL·E continue to evolve, artists, musicians, and content creators are leveraging these technologies to assist in their creative processes. However, where does the boundary between human creativity and AI automation lie? This report provides critical insights into how the U.S. Copyright Office currently addresses AI-generated works and their copyrightability.

Background: A recap of Part 1 – Digital Replicas

Before discussing AI-generated works, it is essential to recall the findings from the first part of the U.S. Copyright Office’s AI report, which focused on digital replicas (e.g., deepfakes and AI-generated voices). Key takeaways from Part 1:

  • Digital replicas (AI-generated likenesses of individuals) raise significant legal and ethical concerns.
  • The report emphasized the lack of clear legal frameworks to address the unauthorized replication of an individual’s image or voice.
  • The Copyright Office recommended further legislative action to protect against AI-generated deepfakes and potential misuse of identity rights.

With Part 2, the focus has now shifted to an equally pressing issue: the copyrightability of AI-generated content.

AI-Generated works and copyrightability

The fundamental question addressed in Part 2 of the report is: To what extent can AI-generated content be considered copyrightable under U.S. law?

1 – Human authorship requirement

According to the U.S. Copyright Act, only works created by a human author qualify for copyright protection. The Copyright Office reaffirms this principle, stating that:

  • Copyright protection does not extend to material generated wholly by AI.
  • AI-assisted works may qualify for copyright protection if there is sufficient human involvement in the creative process.
  • The determination of copyrightability will be handled on a case-by-case basis.

There is a key precedent: Thaler v. Perlmutter (2023) – The U.S. courts upheld that AI-generated works cannot be copyrighted, reinforcing the human authorship requirement.

2 – The role of AI in creativity

The Copyright Office differentiates between AI as a tool and AI as an autonomous creator.

  • AI as an assistive tool meaning that if AI is used to enhance human creativity, the final work may be eligible for copyright protection.
  • AI as an autonomous creator meaning that if AI produces a work without human creative input, it cannot be copyrighted.

For example: a human artist using Photoshop, AI-based filters, or generative AI as part of their creative workflow can still claim copyright. However, a fully AI-generated artwork created without human selection, arrangement, or modification is not copyrightable.

3 – The significance of prompts

One of the most controversial topics covered in the Copyrightability Report is whether AI-generated content based on human prompts qualifies for copyright protection.

The Copyright Office’s stance:

  • Writing a prompt alone is not sufficient for copyright protection.
  • Prompts must involve “sufficient creative expression” and “substantive human input” to be considered authorship.
  • A person modifying, arranging, or selecting elements of AI-generated content may qualify for partial copyright protection.

Therefore, an AI-generated images or texts created using a prompt may not belong to the user unless they demonstrate clear human creativity in the final output.

4 – Legal analysis and international approaches

Different countries are addressing AI and copyright in varying ways:

  • United States: AI-generated content is not eligible for copyright protection unless there is substantial human involvement.
  • United Kingdom: AI-generated works may receive limited protection under existing copyright laws.
  • European Union: The EU AI Act mentions the obligation for AI systems to comply with intellectual property rights.
  • China: AI-generated works can be copyrighted, but liability and authorship rules remain ambiguous.

The lack of global harmonization in AI and copyright laws could create significant legal uncertainties for creators using AI worldwide.

Implications and potential legal changes

The Copyright Office recognizes the complexity of AI copyrightability and explores potential legal reforms, including:

  • Clarification of “substantial human involvement” in AI-assisted works.
  • New guidelines for AI-generated content registration.
  • Possible introduction of a sui generis (unique) legal framework for AI-generated creative works.

However, the report does not recommend legislative changes at this time, instead emphasizing case-by-case assessments.

Conclusion: The Future of AI and Copyright

The U.S. Copyright Office’s second report on AI and copyrightability establishes that:

  • AI-generated works are not independently copyrightable unless there is clear human authorship.
  • Prompts alone do not establish copyright ownership.
  • The legal framework remains flexible but requires further clarification.

As AI technology continues to evolve, creators, businesses, and policymakers must navigate an uncertain legal landscape.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

Dreyfus Law Firm collaborates with a global network of IP attorneys to provide tailored legal solutions in the evolving field of AI and copyright.

Join us on social media !

LinkedIn  

Instagram

 

Read More
Contact
Sign up for our newsletter and stay informed about the latest developments in intellectual property and the digital economy!
Facebook Twitter Instagram Linkedin

© 2024 Dreyfus – Created by Agence Peach