Dreyfus

The Governmental Advisory Committee (GAC), which represents States at ICANN, plays an advisory role on issues of public policy and the interaction between ICANN policies and the norms of national or international law. At the end of each ICANN meeting, the GAC releases a Communiqué which summarises the latest developments and requests. The last GAC Communiqué was issued on 11 February 2015.

The first series of recommendations concerns mainly safeguards advice applicable to new gTLDs. These protection measures cover two categories of extensions which were established in the Beijing Communiqué.

Category 1 of sensitive extensions raises concerns with regard to the protection of consumers and regulated markets. In its Communiqué of ICANN 51, the GAC has considered that the Registries should verify the IDs of applicants. In the latest Communiqué, it recommends that the NGPC (New gTLD Program Committee) publicly acknowledges the good practices of those Registries which voluntarily checked the identity of applicants. ICANN should propose this initiative to all Registries, in order for the users to have more faith in e-commerce.

The GAC also advises the implementation of an interim mechanism to address security issues. The PICDRP (Public Interest Commitment Dispute Resolution Process) is a resolution procedure for registries in violation of Public Interest Commitments made in their contract with ICANN. The GAC is of the view that the PICDRP should also be modified in order to solve urgent disputes more quickly.

The Category 2 comprises generic extensions which are however intended for restricted use.

It concerns extensions such as <.tires> or <.hotel>. In the Beijing Communiqué of 2013, the GAC identified the generic extensions for which exclusive access should be justified only by a public interest, including <.baby >.

Notwithstanding these recommendations, Johnson & Johnson maintained its application and responded to GAC so as explain how restricted access to <.baby > was in the public interest. According to Johnson & Johnson, a naming space managed by the company and its partners serve the public interest as consumers will no longer be misled by cybercriminals.

In spite of an obvious lack of legitimacy, Johnson & Johnson obtains the right to use the TLD <baby> in a restrictive way. Whilst it is not conceivable to obtain a trademark on the word “baby” to refer to products and services aiming at children, the generic extension <baby> is henceforth managed exclusively by a company with direct interest in the industry.

The GAC considers that it should collaborate with ICANN on the procedure for opening country and territory names included in second level domain names. The Registries operators must reserve these names and may propose:

• Either the opening of some country names to the public further to an agreement with the relevant Government,
• Or they may propose a list of names for approval to the GAC and ICANN.

Therefore, the GAC Members will have the opportunity to give their consent.

To be followed…

Ever since the alarming proliferation of cybercrime, which equates to an estimated annual cost of more than $ 400 billion, and the recent spate of hacking cases around the world, cyber security has clearly evolved into a global issue. The European Union has therefore taken up the matter in 2013 with a view to proposing a directive to increase the level of cyber security in the Member States and to establish a comprehensive strategy in this regard. The Network and Information Security Directive (NIS) was approved on 13 March 2014 at the European Parliament, and is being discussed at the European Council. This draft directive focuses on entities with the highest risk, namely critical infrastructure operators, where an incident can have far-reaching consequences for public health, the economy and security. However, given the importance of digital industries in our societies, some Member States would be in favor of extending the scope of the Directive to the digital sector to ensure the stability of the European economy.

The aim of this draft directive, which is established on the principles of security of States and economic stability, is to reduce cybercrime. In fact, the Directive aims to establish cooperation between national authorities as regards potential threats to several Member States. Furthermore, the NIS contains a non-exhaustive list of critical infrastructure operators, including operators in the energy, banking, health, transport and financial services sectors. These critical infrastructure operators are subject to a series of security requirements such as incident reports. In France, the ANSSI already deals with the compliance of similar security obligations incumbent upon large banks and telecom operators, but not on private digital stakeholders yet.

The security requirements for critical infrastructure operators could apply to other stakeholders in the private digital industry. Specifically, it should be companies which often have the status of hosting providers, such as Google, Amazon, Microsoft, OVH, Dailymotion, which should be covered. However, during the debates, SMEs have not been formally rejected. In addition, only the most important services would be concerned, that is, those which decision would have a major economic impact. For example, whilst the Amazon cloud service would be concerned, its e-commerce site would not be. This is the subject of a heated debate, and for now, the Member States remain divided as to whether to include or not some digital industry players such as cloud providers, in this European legislation.

While the concerned companies consider these measures as being disproportionate, several Member States seem to favor the extension of said security obligations to private digital industry stakeholders. For example, the French Prime Minister, Manuel Valls and his German counterpart, Chancellor Angela Merkel, are agreeable to the extension. But all member States do not concur on this issue, and even less the affected companies. The latter consider that security obligations, if they must be complied with, could constitute a significant financial burden. In France, the French Association of Internet software and solutions vendors (AFDEL) urged not to extend the field of critical infrastructure operators provided for in the Directive, to “companies of the Information Society”. While supporting the project and its objective of strengthening cyber security in Europe, it asserts that this extension could damage the competitiveness of enterprises. Thus, for AFDEL, the qualification [of] “critical infrastructure” for all digital business is not justified and it would be disproportionate to impose additional administrative obligations.

Currently, the Directive has not yet reached the European Council for a first reading. Forthcoming developments are to be followed minutely and will involve all Internet stakeholders.

In France, in a notice published in the Official Journal of January 23, 2013, the General Commission for Terminology and Neology defined “hashtag” or “mot-dièse” as “a meaningful sequence of characters without spaces starting with # (hash), which indicates a topic of interest and inserted into a message by his editor to facilitate the identification thereof.” Within a few years, the hashtag has become a key element of social networks, both for individuals, particularly journalists, as well as for companies through their trademarks. Companies try to register trademarks comprising the symbol “#”. Nowadays, companies are increasingly launching commercial or promotional transactions with hashtags. For instance, Nike’s “#makeitcount” campaign to celebrate 20 years of business in the football arena. Using hashtags makes marketing operations more interactive than traditional slogans used to. Undoubtedly, the hashtag is a new powerful communication means which companies cannot dispense of.  If some companies reached to protect trademarks with the symbol, a recent decision from the Cour d’Appel of Paris held the secondary nature of the symbol.

First of all, a hashtag may be protected by trademark law. In France, Article L. 711-1 of the IPC provides that “may in particular constitute [such] a sign : a) denominations in all forms such as words , combination of words, surnames and geographical names, pseudonyms, letters, numerals, abbreviations (…)“. Provided that they meet the validity criteria of a trademark, hashtags can therefore be protected as trademarks. There are also a few examples of companies which were successful in registering trademarks constituting the famous symbol “#”, mainly in the United States. As concerns France, the “# CLIENT ADDICT” trademark was filed by Futur Telecom under number 4096205 in class 9, 35, 38 and 42. A decision [1] was recently delivered by the Director General of the National Institute of Industrial Property (INPI) between two trademarks falling in the classes of similar products that made direct reference to the symbol, “#ashtag” and “#HTAG#” trademarks. The director of the INPI found that there were visual, phonetic and intellectual similarities between the two signs. Accordingly the application for registration was dismissed. In addition, the director merely scrutinized the similarities without paying close attention to the specific character of the “#” symbol. Contrariwise, a sole judgment was delivered about the hashtag as a trademark where a company which was the trademark holder of “Cloud 9” had objected to the registration of the “# Cloud” trade mark. In this case, the Cour d’Appel upheld the decision of the Director of the INPI and dismissed the registration of the trade mark, due to the dominant element “cloud” being taken up anew, which generates confusion. But the noteworthy aspect of this judgment lies in the assessment of the symbol “#” which, due to its common use, “shall lead the average and reasonably prudent consumer to consider it as secondary in his perception of the sign in dispute, even if it were to precede the verbal element.”[2].Therefore, the judgment implies that the symbol “#” should be regarded as secondary and as such, cannot be protected in France. In this respect, the United States disagree since the “#” trademark was registered under number 4643644 on November 25, 2014 at the USPTO.

[1] The General Director of INPI, decision dated December, 23, 2014, L’Atelier de l’Optique / Anya K.
[2] CA Paris, Pôle 5, chamber 2, December 5, 2014, n°14/14773, S.A. Foncière Lyonnaise c/ Ball & Young Limited.

With thousands of e-books and digital tablets sold in the last few years, the French Intellectual Property Code (Code de la Propriété Intellectuelle français (CPI)) has recently changed in order to reflect these technological developments by incorporating specific provisions relative to publishing in “digital format”. These amendments have been requested and encouraged by authors and the Publishers’ Union (Syndicat de l’édition) who have outlined their desires to see this new form of operation in a Framework Agreement on e-books dated March 21, 2013.

The order of November 12, 2014 thus adds and amends several Articles of the CPI to include the digital publishing contract. For example, Article L. 132-1 of the CPI on the definition of publishing contracts is drafted as follows: “A publishing contract is a contract whereby the author of a work of the mind or his successors in title assign under specified terms to a person referred to as the editor the right to manufacture or have manufactured a number of copies of the work or to publish or to ensure its publication in digital format”. The reference to publishing the work in a digital format has been added on numerous occasions in the chapter dedicated to publishing contracts, whenever deemed necessary.

Apart from these amendments, it should be noted that two subsections have been added to give more clarity to the outline of this chapter: one named “General rules” with references made to the digital format, and the other named “Special provisions applicable to publishing a book” where the difference in regimes between the two forms of exploitation as well as remuneration issues of the author are highlighted. In this regard, it should be noted that a separate section in the agreement must, for example, be dedicated to the transfer of digital rights. In the same vein, the termination of the transfer of rights in a printed format will not affect those of the digital rights, and conversely. Thus, exploitation on paper and on a digital media are clearly distinguished. Finally, in addition to the digital aspects, new provisions also address the forms of accountability due to the author by the editor as well as all the recourse available to the author in the event of non-compliance with this obligation, or yet the option for one of the Parties to terminate the contract where a sustainable lack of economic activity has been ascertained in the exploitation of the work.

Henceforth, the concept of publishing contract includes the publishing of physical copies of the work and its publishing in digital format. This change has been expected for a long time. It is a major step forward and offers legal certainty in the digital era, in accordance with the case law.

Since the fall of Mouammar Khadafi in 2011 and the civil war which engulfed Libya, the Libyan Industrial Property Office was being incessantly opened and closed, rendering trademark protection difficult in the country.

The Libyan Intellectual Property Office was reopened on December 7, under the control of the Fajr Libya militia.

While it is once again feasible to file applications for new trademarks, it cannot be said for sure that their registration will be valid given that the political situation remains volatile in Libya. It is not certain whether the Fajr Libya militia will manage to keep control over the Office.

The Government and the Libyan Parliament are trying to regain control of the Office. It is thus not recommended to file applications for new trademarks for the time being in Libya.

Dreyfus & associés is at your disposal for any advice on this matter.

The Member States of the European Union are particularly committed to copyright protection. However, the European Union based on free market principles, has lately relaxed its protective stance. In this regard, the Order of the Court of Justice of the European Union (CJEU) of October 21, 2014 addressed the issue of the framing. This technique involves incorporating a web page of a site within another site through a frame. The purpose of framing is to increase the number of connections automatically.

In Germany, the company BestWater had produced a commercial which was later uploaded on YouTube without its authorization. The video was taken up by two independent commercial agents to promote the products of a competitor. BestWater filed infringement proceedings, demanding the termination of the broadcast. Its claims were rejected by the German lower courts on the grounds that the work, i.e the video, was already disclosed to the public as a result of its first broadcast on YouTube. Consequently, a new communication to the public, using the same technical medium, cannot be described as a communication to a new public. BestWater appealed to the Federal Court of Justice (Bundesgerichtshof), which encountered a difficulty with the interpretation of Directive 2001/29 on copyright and related rights. Indeed, Article 3§1 of the Directive requires, in principle, permission of the copyright holder, from the time that there has been communication to the public.

The German Federal Court then referred the following preliminary question to the CJEU: “Can the fact that the work of another person made available to the public on a website is inserted in another web site under conditions such as those of the main proceedings be described as ‘communication to the public’ within the meaning of Article 3, paragraph 1, of Directive 2001/29, even where the work in question is not transmitted to a new audience or communicated through specific technical means different from that of the original communication.” In other words, what happens when the said video is embedded in a third party site? Is the criterion of the “new public” met and is a new authorization of the right holder required?

To determine the issue, the ECJ drew inspiration from the Svensson case dated February 13, 2014 concerning Internet links. The Court held that embedded videos cannot be described as “communication to the public (…) to the extent that the work in question is not transmitted to a new public or communicated through a specific technical means different from that of the original communication.” Thus, if the right holder initially allowed the video to be uploaded on YouTube, they cannot prevent the “embedding” on third party sites. Otherwise, all Facebook users who share videos with their “friends” would have incurred liability, with potentially chaotic proceedings as a result. Moreover, from another point of view, the framing would thus enable appropriating the work of another person while avoiding the scope of provisions regarding reproduction rights. One can raise the question of how fair this technique really is, too.

This decision regarding framing has reinforced the case law of the Court of Justice which is already well settled with respect to hyperlinks.

As from July 2015, cybersquatters will not be able to “fly” towards another registrar when they are targeted by an UDRP Complaint!

ICANN (Internet Corporation for Assigned Names and Numbers), the organization responsible for naming the Internet, announced recently the approval of new URDP (Uniform Domain-Name Dispute-Resolution Policy) rules. The main amendment aims to fight against “Cyberflight”.

This change has its origins in the GNSO’s (Generic Names Supporting Organization, the body representing the States within ICANN) recommendations which are stated in the Report on blocking domain names covered by UDRP complaints, dated July 5, 2013.

Cyberflight is a relatively common practice used by cybersquatters who, upon receipt of an UDRP complaint, transfer the domain to another registrar. GNSO observes in its report that most of the registrars were blocking the domain names following a notification relative to the lodging of an UDRP complaint. However, it is not a regular practice as there were no UDRP rules regarding such blocking. Thus, where the domain name was not blocked, the cybersquatter could change registrar and avoid the UDRP dispute.

According to the new rules, any accredited registrar must, within 2 business days, block the domain name upon notification of an UDRP procedure (rule 4(b)). This technical measure prevents the transfer but affects neither the resolution of the domain, nor its renewal. Thus, the holder of the disputed domain name will not be able to change the registrant or registrar. Blocking the domain name will not have an impact on the registrar’s obligation to provide the real identity of the registrant.

Another change which aims to restrict cyberflight consists in the removal of the complainant’s obligation to send a copy of the complaint to the respondent (rule 3(b)(xii)). Thus, the holder of the disputed domain name is not informed as from the start of the UDRP proceedings and before the domain name is blocked by the registrar. He is also prohibited from notifying the holder of the domain name.

In situations where the complaint is either withdrawn or dismissed, the registrar must withdraw the blockage within one business day.

We can only applaud these new rules which will come into effect on July 31, 2015 and shall apply to all registrars accredited by ICANN.

Abu Dhabi, an Emirate state in the United Arab Emirates, recently enacted a new directive to regulate trade names, in particular to prevent the development of conflicts with trademarks.

This law is applicable locally and is in line UAE trademark laws. It applies to companies operating in Abu Dhabi and using trade names. This law regulates which trade names can or cannot be registered.

The purpose of the law is to prevent the continuing conflicts between trademarks and trade names in the country, which are currently a genuine issue because the two databases were never cross-checked. Many trademark owners have long suffered from their trademarks being registered and used as trade names. Indeed, trade names are not published as it is the case for trademarks, and therefore, it is not possible to object to their adoption. Thus, the new directive will help to prohibit the registration of trade names which are identical or similar to locally or internationally registered trademarks. In the absence of the trademark owner’s authorization, it will thus be impossible to register an identical or similar trade name.

In the future, this new law should minimise conflicts between trade names and registered trademarks.

Events with significant media coverage, whatever their nature, often provide self-seekers with a golden opportunity to exploit the situation for commercial ends. Thus, unscrupulously some have sought to take advantage of the tragic attacks which occurred in Paris. Barely a few hours after the attack against the editorial team of the satirical newspaper, Charlie Hebdo in the morning of January 7, 2015, the INPI, the National Institute of Industrial Property, received about fifty filing applications for the “Je suis Charlie” trademark and derivatives thereof.

The broadcast of this slogan, created by Joachim Roncin, artistic director of Stylist magazine, half an hour after the attack, was beyond measure. The whole world, with social networks in the front line, took over and almost instantly popularized the visual. Faced with such magnitude, the creator of the visual formally opposed any commercial use of the message and the image. The INPI responded on the same day by issuing a press release announcing the dismissal of such filing applications on the grounds that “this slogan cannot be picked up by an economic actor due to its wide use by the community.” Thus, a few hours sufficed to render “Je suis Charlie” world famous and inalienable. Beyond the ethical aspect, would the widespread use of this visual have therefore rendered it devoid of any distinctive character?

This rejection is not so obvious and may be legally questionable. In accordance with Article L711-2 of the Code of Intellectual Property, “are devoid of any distinctive character: signs or names which in everyday or technical language simply constitute the necessary, generic or usual product or service; signs or names which may serve to designate a characteristic of the product or service (…); signs which consist exclusively of the shape imposed by the nature or function of the product.” However, at the time of filing, the slogan had not yet become part of common parlance or professional language to describe a product or service, nor any of its characteristics and could not necessarily be considered as being a sign constituting a product. Consequently, the slogan could have been treated as distinctive. The argument of the INPI for rejecting the distinctive character is therefore questionable. The INPI should have instead chosen a contention based on public policy to oppose trademark applications to the extent that a monopoly on the slogan could restrict freedom of expression.

Nevertheless, the intention of the INPI is commendable. An extreme state of affairs begets an extreme remedy and the informed position adopted by the INPI can only be saluted. Indeed, the INPI’s role is to examine trademark applications and it may reject them if they do not meet the substantive requirements for registration as required by law. Once the trademark is filed, the INPI publishes the registration of the trademark within a period of six weeks. After this period, the examiner scrutinizes the merits of the application and may raise objections. Third parties also have the opportunity to submit comments or to object to the registration of the trademark, when it published. In this case, the INPI issued a provisional refusal objection to these registrations. The applicants concerned can respond to this objection. Indeed, they can react and respond to this objection within two months, should they so wish to do so. However in view of the exceptional situation, their responses will have little chance of success.

Thus, the shady affair surrounding Charlie should not take place, at least legally in France. It is rather different in practice and the INPI could not, over the last few days, hinder the surge of multiple products bearing the image of the famous visual on eBay, such as stickers or T-shirts. Moreover, due to the international media buzz around the attacks, other foreign offices, such as the Benelux Office or the United States, have received similar requests. As concerns Benelux, the process is ongoing and the decision should be taken within two months. In the United States, Steven Stanwyck and Kelly Ashton also filed the trademark with the USPTO (the US Patent and Trademark Office) for communication and advertising services falling within class 35. In addition, during the registration [procedure], they specified that they wished to use this brand for non-profitable purposes. The USPTO (United States Patent and Trademark Office) has not responded yet.

More recently, the Community Trademark Office (OHIM) received a community trademark application for the same mark, that is, to be protected throughout the entire territory of the 28 countries across the European Union. The application for registration will, in all probability, be rejected because it is likely to prejudice the public interest. In fact, this trademark should be considered contrary to public order and morality. The INPI has no power to contest such registrations outside French territory and therefore cannot prevent foreign companies from disseminating the “Je suis Charlie” mark in the future.

Furthermore, in parallel to these filing applications, domain names such as “charliehebdomassacre.com” or “je-suischarlie.com” were put on sale. The latter, for instance, is on sale display for 349 euros on the domain name sales platform Sedo, the market leader. When confronted with such dishonest business, registrars do little, if anything at all and hide behind the first-come, first-served principle and allege that they must remain neutral and passive. However, in case of a dispute over the registration or use of a domain name, it is nonetheless feasible to initiate actions, particularly in cases of fraud like the UDRP procedure.

Given the current context, it is advisable that registrars, at least the French ones, align themselves with the stance adopted by the INPI in refusing to register such domain names for reasons of public order.