Audiovisual works: the protection of program titles by trademark law

Written by Dreyfus02/09/2019

Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.

The advantages of trademark protection

First, the term of protection of a title by trademark law. Trademark law initially grants protection for 10 years, but this term is renewable indefinitely (Art L712-1 CPI). Thus, provided the owner submits a renewal application within the time limit, the trademark can be protected indefinitely. Copyright, on the other hand, can grant protection up to 70 years after the death of the author of the work, but the ‘guarantees’ of protection may be less obvious than trademark law because there is no register of copyright.

On the other hand, while copyright imposes a condition of originality (Art.L711-2 CPI), trademark law requires a distinctive character (Art L711-2 CPI). Thus, if the title of TV show or audiovisual program is distinctive and acts as an indicator of origin, it may be protected. In contrast, for copyright, it is necessary to prove originality, which is more difficult to prove. Since copyright is not subject to registration, the condition of originality must always be demonstrated in the course of a dispute. Thus, copyright protection is never certain.

A title may be protected by trademark law if it does not directly designate the goods and services for which registration is sought. Thus, if the title is arbitrary, there is nothing to prevent the title from benefiting from this protection. Finally, it should be borne in mind that trademark protection is not an impediment to copyright protection; it is thus possible to combine both protections.

The limits of trademark protection

Some limitations to the protection of audiovisual programs’ titles by trademark law should nevertheless be noted. The protection conferred by trademark law grants a monopoly on the use of the registered terms (Art L-713-1 CPI) and therefore the right to oppose use by third parties. However, in order to do so, it is necessary to prove :

The use of the sign by a third party “as a trademark”

First, it must be proven that the use of the title by a third party was “as a trademark”. To illustrate this concept, we can refer to the judgment rendered about the series “Le Bureau des Légendes”. In this case, the Paris Court of First Instance (TGI) dismissed the infringement action brought against a book, using the title, devoted to the study of the series. The purpose here was not to offer goods and services designated in the registration, but simply to refer to the series as such (TGI Paris, réf., April 16, 2018, n°18/53176). Use as a trademark would have been in the context of the sale of derivative products in connection with the series.

A commercial use of the sign

Secondly, in order to oppose the use of a sign, the owner must provide proof of commercial use. This means that it is not sufficient to prove merely a reference to the title. The use must take place in the course of business and not only for illustrative purposes. There must be a genuine commercial link between the sign and the use made by a third party.

A risk of confusion in the mind of the public

Finally, the risk of confusion in the public mind must be shown. The use of the sign must raise doubts as to the origin of the goods and services offered. A trademark is intended to guarantee in particular the origin of the goods and service. Thus, the use of the sign by a third party must infringe this guarantee of origin, severing the direct link between the sign and its owner.

For instance, the judges considered that there was no likelihood of confusion between Canal+’s trademark “LE ZAPPING” and the trademark “LE Z#PPING DE LA TELE”. In view of the evidence provided, and the overall impression, there was no likelihood of confusion. The phonetic and visual differences of the two signs were sufficient to eliminate this risk (CA Versailles, 12th ch., July 3, 2018, n°18/02091).

However, the principle of speciality of the trademark may be used against the owner of a trademark. Since a trademark is registered for specific categories of goods or services, the owner can only oppose the use of the sign for identical or similar goods or services. Thus, if a sign is used for a completely different area of activities, the owner will not be able to oppose this use of the sign. This was the case for Canal +, concerning its mark “LE ZAPPING”. The notoriety of this brand was certainly recognized by the Court, but only in the field of television broadcasts. Thus, it was not possible for Canal + to oppose the filing of a similar trademark for other categories of goods and services than those designated in registration of the trademark “LE ZAPPING”.

Conclusion

Trademark law grants additional protection to a title of an audiovisual program. It complements the protection that copyright can grant, in a more certain way through the requirement of registration. The point of filing a sign representing the title of an audiovisual work is therefore to acquire double protection, on both grounds. Admittedly, the conditions to be met in order to be able to bring an infringement action under trademark law may be difficult to achieve. Nevertheless, trademark law offers more means of action, and therefore of compensation for damage in the event of unjustified use by third parties.

Dreyfus law firm, expert in trademark law, will assist you in the management of your trademark portfolio.

The EU cybersecurity certification Framework

Written by Dreyfus30/08/2019

Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.

This situation has made European authorities aware of the need to deal with these threats in an effective and coordinated way, relying their actions on policies dealing specifically with cybersecurity within the European Union. By means, the aim is thus to improve cooperation, exchange of information and coordination between the Member States and the institutions, bodies, offices and agencies of the Union.

The European Commission, as part of the Digital Single Market Strategy, has approved Regulation No. (EU) 2019/881, on ENISA (the European Union Agency for Cybersecurity) and on certification of information and communications technology cybersecurity, which came into force on June 27, 2019.

This new regulation has two main objectives. On the one hand, to give ENISA (the European Agency for Cybersecurity, now named the European Union Agency for Cybersecurity) a greater role in the field of cybersecurity, establishing a series of objectives and tasks. On the other hand, the creation of a common certification framework at European level, with the aim of guaranteeing an adequate level of cybersecurity of ICT products, services and processes in the EU, avoiding the fragmentation of the internal market.

Concerning the first objective, the first substantive point of the Regulation is to give more powers to the European Union Agency for Cybersecurity (ENISA). It will now have a permanent mandate facilitating the exercise of the new functions assumed, one of which is to increase cooperation on cybersecurity within the Union, for example in cases of large-scale cyberattacks or cross-border crises. This strengthening is also reflected in the economic resources for ENISA, increasing from 11 to 23 million euros over a period of five years.

It is noteworthy that European regulation focuses on users by addressing concepts such as users’ awareness, and the application of good practices online. Both public bodies and private stakeholders will receive recommendations on safe configurations and maintenance of their devices, and the availability and duration of updates, as well as the perceived risks.

With regard to the second objective, the regulation creates a framework for European Cybersecurity Certificates for products, processes and services that will be valid throughout the EU. It is the first EU legislation on the internal market to take up the challenge of enhancing the security of connected products, Internet of Things devices and critical infrastructure through such certificates.

The creation of the cybersecurity certification framework incorporates security features in the early stages of their technical design and development (security by design). It also enables their users to ascertain the level of security assurance, and ensures that these security features are independently verified.

As to the second objective of the regulation, the certification framework will provide EU-wide certification schemes as a comprehensive set of rules, technical requirements, standards and procedures. This will be based on agreement at EU level for the evaluation of the security properties of a specific ICT-based product or service, for instance, smart cards. This will certify that ICT products and services which have been certified in accordance with such a scheme comply with specified requirements. In particular, each European scheme should specify: a) the categories of products and services covered, b) the cybersecurity requirements, for example by reference to standards or technical specifications, c) the type of evaluation such as self-assessment or third party evaluation, and d) the intended level of assurance for instance, basic, substantial and/or high.

ENISA’s mandate is immediate from the entry into force of the Regulation, whereas the cybersecurity certification framework will have to be developed. In this respect, the Commission’s agenda has already included the submission of proposals to ENISA for the preparation of certification projects, as well as the creation of expert groups on cybersecurity.

Finally, this European regulation not only seeks to increase users’ confidence in the use of connected devices, but also to strengthen the European cybersecurity industry and the European Single Market, positioning it as a global benchmark, in line with other markets such as the United States or China.

With significant expertise in protecting innovative products and designs, and in defending intellectual property rights on the Internet, Dreyfus is well positioned to assist you in enhancing your assets on the web.

The « Copyright in the Digital Single Market » Directive: transposition is on the way!

Written by Dreyfus28/08/2019

Protecting authors’ rights is a necessity in the digital age, as information flows more and more easily. That is why the European Commission reported in September 2017 that it was necessary to tackle illegal online content, while the French legislature has already transposed several European directives and has modified its literary and artistic property law.

In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.

New exceptions to copyright

There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:

– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);

– The use of works in digital learning activities including distance learning. States may, however, provide a fair compensation for rightholders (Article 5);

– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).

French law already provides similar exceptions in the article L. 122-53°) e) 8°) and 10°) of the French Intellectual Property Code, but this is not necessarily the case for all member States.

Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfully published.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..

Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which are retained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.

Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management

The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.

According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”

Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).

Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.

In France, article L. 134-4 of the French Intellectual Property Code already gives authors of out-of-commerce books the right to oppose to their exploitation.

Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.

Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.

Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.

The related right of press publishers

Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :

– Private and non-commercial uses;

– Hyperlinks;

– Use of isolated words or very short extracts of a press publication;

– Works published for the first time before the Directive’s entry into force.

Moreover, this right is only granted for two years from January 1st of the year following the date on which that press publication is published.

This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.

Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.

Online content-sharing service are fully responsible (Article 17)

In France, platform operators enjoy the protective status of article 6-I-2 of the law “for confidence in the digital economy” n° 2004-575 of 21 June 2004. They are not

liable if they “promptly” remove the content at stake.

Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exempt from liability if they have:

– “Made best efforts to obtain an authorization” from rightholders;

– “Made best efforts” to ensure the unavailability of the work and

– Acted “ expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.

Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.

Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.

Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.

Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.

The next step is the transposition of these provisions, which must be done by 21 June 2021 at the latest. France, which supports this text, should proceed with this transposition next summer. A proposal for a law on related rights with regard to press articles is already under consideration.

These developments are to be monitored…

An employee refuses to transfer domain names wrongly registered in his own name

Written by Dreyfus22/08/2019

WIPO, Arbitration and Mediation Centre, March 15, 2019, No. D2018-2944, Théâtre du Gymnase Marie Bell SAS versus Mr. Erol Topal.

This case illustrates the need for any company to define a clear policy for managing its domain names to ensure that these domain names are registered in the company’s name and remain under its control. If this is not done the company may lose some of its rights. Moreover, if an employee registers domain names in his or her own name it could be difficult to recover these domain names.

The Théâtre du Gymnase Marie Bell, commonly known as the “Théâtre du Gymnase”, was registered in 1958. It is a Parisian performance hall which was classified as a historical monument in 1994.

In 2004, one of its employees registered the domain name <theatredugymnase.com> in his own name, but allegedly on behalf of the company. In addition, in 2018, he registered four other domain names that include all or part of the company’s name: <theatre-du-gymnase.com>, <theatredugymnasemariebell.com>, <gymnasemariebell.com> and <letheatredugymnase.com>.

The day after these domain names were registered, the Théâtre du Gymnase noticed malfunctions on its official website located at www.theatredugymnase.com. No information was being displayed, not even the performances scheduled.

On October 25, 2018, the theatre fired the employee, on the grounds of his refusal to provide the codes to manage the official website. Subsequently, formal letters were sent but there was no response to these.

The Théâtre du Gymnase then filed a UDRP complaint seeking the transfer of the domain names.

The respondent, (now a former employee of the company) said that he retained the names because proceedings before the Labour Court were pending. He also claimed to have registered and managed a number of domain names for the complainant, without ever getting paid. He stated that in August 2018 an invoice of 36,000 euros was sent to the Théâtre, which acknowledged the due amount and indicated its intention to pay. However, the respondent has not received any payment because proceedings before the Labour Court were subsequently initiated.

Initially, the expert had to consider whether the complainant had trademark rights in its name, because ownership of a trademark is necessary to bring a successful complaint under UDRP. Although the name “Théâtre du Gymnase Marie Bell” is not registered as a trademark, the company claimed to have rights in it, particularly due to its use as a company name, trade name and brand. The Expert therefore considered that the use of this name is such that the complainant enjoys unregistered trademark rights, (on which a complaint may be based). Therefore, the likelihood of confusion between the disputed domain names and the complainant’s prior rights could be recognised.

Regarding the question of the respondent’s rights or legitimate interest or bad faith use of the domain names, four of the disputed domain names were registered on the eve of the malfunctions of the complainant’s web site, after which it was discovered that only the respondent had access to site management and refused to provide the complainant with the codes that would allow such access.

In addition, these four domain names pointed to what appeared to be the site of a Turkish specialty restaurant, and the other pointed to what appeared to be the official website of the Théâtre du Gymnase, but which indicated that there would be no performance whereas the new official website accessible at the address “www.theatredugymnase.paris” showed performances were ongoing.

Thus, the expert noted that the use made of the disputed domain names disrupted the claimant’s activities.

For these reasons, the transfer of the names to the Théâtre du Gymnase, was ordered without prejudice to the decision that will be made by the Labour Court.

Although this is a case of “all’s well that ends well” for the Théâtre du Gymnase matters might have gone differently. If for example the expert had taken the view that this was a dispute over payment of an invoice legitimately incurred by the respondent in compliance with the complainant’s express wishes, the decision could have gone differently. The existence of a clear, unambiguous domain name policy should leave no room for doubt whether an employee is acting within defined guidelines or is acting contrary to an employer’s guidelines – and therefore is clearly in bad faith. Consequently, this case reflects the importance of establishing a naming policy internally, setting clear rules and best practices for the registration and management of trademarks and domain names, in order to avoid disruption and potential asset loss.

The pseudonym: what protection?

Written by Dreyfus20/08/2019

As an Alias adopted to preserve anonymity, the pseudonym is frequently used in the public sphere for commercial purposes. This can be, for example, the pen name of an author, the identity under which a painter is known, etc.

French law does not provide any legal status for the pseudonym. However, it is recognized as a right of personality. As such, it enjoys an existence and legal protection.

When the pseudonym is intended for public use, the choice requires particular attention. Therefore there are limits established by law which must be respected. Thus, the pseudonym chosen must not violate public order or morality. The existence of prior rights, such as a registered trademark or prior use of the same pseudonym by another individual, is also a limiting factor.

In addition, Article L. 711-4 of the French Intellectual Property Code states that a sign may not be adopted as a trademark if it infringes an earlier right. These earlier rights include the personality rights of another person, particularly his surname, pseudonym or likeness.

The pseudonym may not only constitute an earlier blocking right for a trademark but may also be registered as a trademark. This has two consequences:

– the need to check whether the pseudonym infringes apreviously existing pseudonym used commercially

A pseudonym used in the private sphere raises few problems in practice. The same applies if it is used for a limited period of time. If it is not intended for commercial use, it is not necessary to check the existence of any previous use by a third party.

– the protection of a pseudonym may be increased if it is registered as a trademark

Registering a pseudonym as a trademark provides better protection. This registration also leads to its becoming an intellectual property asset in its own right and therefore increases its value. This provides security for the user of the pseudonym as well as for his business partners. It is then easier to carry out commercial operations using this pseudonym (assignment contracts, licensing, marketing operations, etc.)

Dreyfus can assist you in the registering of your trademarks in all countries of the world. Do not hesitate to contact us.

Disputes regarding domain names and : it is now possible to act before the WIPO Mediation and Arbitration Centre.

Written by Dreyfus09/08/2019

The China Internet Network Information Center (CNNIC), registry of the <.CN> and <.中国> ccTLDs, has designated WIPO to provide dispute resolution services under the China ccTLD Dispute Resolution Policy. Disputes in relation to these ccTLDs may be filed with WIPO from August 1, 2019.

The <.CN> Policy is ONLY applicable to <.CN> and <.中国> domain names that have been registered for less than three years.

This Policy applies to <.CN> and <.中国>domain names that are identical or confusingly similar, not only to a mark, but to any “name” in which the complainant has civil rights or interests (.CN Policy, article 8(a)), whereas the UDRP is limited to the protection of trademark rights.

It is sufficient for the complainant to prove that either registration or use of the disputed domain name is in bad faith, whereas the UDRP requires the complainant to prove both elements.

The appeal jurisdiction belongs to the Courts of China or the arbitration Chinese institution, and the proceedings language will be Chinese (unless otherwise agreed by the parties or determined by the Panel).

This adds to the over 75 other ccTLDs for which trademark owners can rely on WIPO’s dispute resolution services.

The dispute resolution policy which governs the domain has extended the term within which action may be taken from 2 to 3 years.

Written by Dreyfus09/08/2019

On March 2017, the new General Civil Chinese Law Rules extended the general limitation period for civil actions from 2 to 3 years.

Since then, many recommendations have been made about the need to change the China Internet Network Information Centre (CNNIC) dispute resolution policy which barred action against a <.cn> domain name which had been registered for more than two years to accord with the one established under the Civil regulation.

The CNNIC developed its first domain name dispute resolution rules in 2000, and following the provisions under the General Civil Law Rules of People’s Republic of China, in force at that time, set a term of 2 years following registration within which action had to be taken.

The CCNIC was established June 3, 1997 who is the registry for domain names in China.

Indeed, the China Dispute Resolution Policy (CNDPR) is the only dispute resolution policy which sets a time limit within which to admit complaints about domain names. This 2 year time-bar has been seen as an effective barrier to challenging any <.cn> registrations, because after the 2 years period, the only possibility was either to negotiate or attempt court action. Fortunately, in order to align the CNDPR time limit for action to the General Civil Law rule, it has been reviewed and extended to 3 years. This was implemented on 18 June 2019, and provides more flexibility to complainants to initiate alternative dispute resolution proceedings against domain names in the <.cn> name space.

Despite this good news there are still some unanswered questions; in particular whether the change to the new term has retroactive effect, or will apply only to those domain names registered after the change in the policy became effective.

To be continued…

United Kingdom: The Trademark Office no longer collects and forwards to WIPO fees when registering an International trademark.

Written by Dreyfus19/06/2019

The United Kingdom Office has withdrawn its notification made under Rule 34 (2) (b) of the Common Regulations applicable to the Madrid Agreement and the Madrid Protocol.

As a result, since May 6, 2019, the United Kingdom Office no longer collects and forwards to the International Bureau of WIPO (World Intellectual Property Organization) the fees due under these regulations.

In other words, any payment of these fees pursuant to a registration requested of the United Kingdom Office must be made directly to WIPO, as is already the case in France. As a result of this administrative change, a payment can now be made in four ways:

– By debiting a WIPO current account;

– By credit card, but only for payments of fees related to renewal of registered marks, notification of irregularities issued by the Office, or for additional fees relating to the designation of additional contracting parties after the trademark has been registered. Such payments are made in Swiss francs and require a WIPO reference number;

– By bank transfer;

– By postal transfer for inter-European payments.

To be handled correctly, payments by bank transfer must include the name and complete address of the payer, the transaction code (EN), the trademark number, the trademark name, if available, or its verbal elements, and the name of the trademark holder, if different from the payer. In the case of multiple requests, a list containing each request and the amount paid for each request is also required.

It is important to pay all fees in full, otherwise an irregularity notification will be issued. This notification shall specify a payment period beyond which the request shall be deemed to have been abandoned.

As the United Kingdom Registrar no longer makes these payments to WIPO, it is up to the applicant or his representative to be vigilant and diligent when making them.

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