How to protect store layout -Visual Merchandising with Intellectual Property law?

Written by Dreyfus28/05/2021

Visual Merchandising (VM) represents all store layout techniques. It is the art of implementing the identity dimension through scenarization of points of sale.

The term Visual Merchandising is born in the United States in the 1950s with the rise of art in business. Andy Warhol made the first storefronts in New York. After the years of the Depression, it was necessary to boost the economy with eye-catching storefronts.

The industry is branded, every brand is unique and represents your business in the market.

It is the art of implementing the identity dimension of a store through a scenarization of spaces. It is a true creation of the company which displays its own identity in its store.

Visual merchandising makes it possible to reconcile commercial efficiency, aesthetics and enhancement of the image of the brand in order to attract customers and retain them. There are different channels to seek legal protection of your investments in visual merchandising.

How to protect store layout -Visual Merchandising with copyright law?

Interior design is likely to be protected by copyright, provided that the criteria of form and originality are met! In the “Ladurée” case, the Paris Court of Appeal acknowledged the originality of the layout: “The elements and spaces created bore the imprint of the author’s personality and in the choice of style, colors and decoration the personality of the author was reflected”.

How to protect store layout -Visual Merchandising with trademark law?

To be protected, a trademark must be distinctive, lawful and available. Thus, the company Apple Inc was able to obtain the registration of its sales spaces as a three-dimensional trademark.

How to protect store layout -Visual Merchandising with unfair competition and free-riding ?

The main act of unfair competition potentially occurring in visual merchandising is confusion / imitation: causing, in the mind of the customer, an assimilation or a similarity between two companies or between their products and services.

In the Zadig Voltaire v. Bérénice case, the company Zadig France based its claim to protect the fittings of its stores on unfair competition.

Parasitism refers to “the set of behaviors by which an economic agent interferes in the wake of another in order to profit, without investing anything, whether its efforts or its know-how”.

What precautions should you take to protect your IP rights?

To protect your IP rights, it is paramount to take several precautions:

* Ensure that confidentiality clauses are included in your contracts;

* Provide for nondisclosure agreements;

* Be vigilant on the terms of transfer of rights between the creator and the company.

For example, the Court of appeal of Paris considered in the Petit Bateau case that the publication by an employee of photographs revealing the new collection of a clothing brand, even on a private Facebook account, constitutes a serious fault justifying the dismissal.

The Court ruled that the employee at the origin of the publication had committed the serious fault of having communicated to third parties confidential information, while its employment contract expressly provided for an obligation of non-disclosure.

In order to protect your Visual merchandising, it is necessary to establish a protection strategy in the real world and in the digital world.

Why bet on the trademark?

This way you obtain a monopoly, which can be renewable indefinitely and which will constitute the pillar in your marketing and sales strategy.

It is important to register the trademark from the genesis of the project. To that end, it will be necessary to determine a limited but suitable territory. Likewise, it is important to think globally and digitally, and to envision the protection of domain names when registering your trademark.

The domain name is an important asset!

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

Domain names in particular serve as vectors for ever more sophisticated and varied frauds. Managing your brand on the internet is not just about filing and renewing, but also building a strategy.

It is important not only to invest in a protection and preventive defense strategy but also to set up appropriate watch services for your brand.

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

As a creation, Visual merchandising is a real intellectual and economic investment that is essential to protect.

Dreyfus & associés

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

How will the Digital Services Act change the legal framework for Internet services?

Written by Dreyfus26/05/2021

Digital Services Act : For the first time, a common set of rules on the obligations and liability of intermediary services within the single market will open up new possibilities to provide digital services on the Internet across borders, while ensuring a high level of protection to all users, wherever they live in the European Union.

On December 15, 2020, the European Commission published the Digital Services Act (DSA) and Digital Market Act (DMA) draft regulations, which should allow the implementation of a new regulatory framework, to put an end to the lack of responsability of digital giants.

Said regulations should come into force at the beginning of 2022.

The legal framework relating to digital services on the Internet remained mainly governed by the so-called “Electronic Commerce” directive of June 8, 2000, which for several years has already been met with numerous criticisms on the grounds that it has become obsolete and no longer allows to respond effectively to the new digital challenges and the difficulties posed by the emergence of Web giants, often referred to by the acronym “GAFAM” (for Google, Apple, Facebook, Amazon and Microsoft).

It is in this context that the European Commission officially announced its desire to modernize the regulatory landscape relating to digital platforms on the Internet.

As part of its strategy for a digital single market and alongside the Digital Market Act, the European Commission is proposing a regulation on digital services which will be subject to the ordinary legislative procedure of the European Union.

For Margrethe Vestager, executive vice-president for a Europe adapted to the digital age, “the two proposals serve the same purpose: to ensure that we, as users, have access to a wide choice of products and services online, securely. And that businesses operating in Europe can compete freely and fairly online just as they do offline. They are two sides of the same world. We should be able to shop safely and trust the information we read. Because what is illegal offline is also illegal online”.

According to the press release from the European Commission, the rules provided for by this regulation aim to better protect consumers and their fundamental rights on the Internet, to put in place a solid framework for the transparency of online platforms and clear rules with regard to their responsibility, and finally to foster innovation, growth and competitiveness within the single market.

For the first time, a common set of rules on the obligations and liability of intermediaries within the Single Market will open up new possibilities to provide digital services across borders on the Internet, while ensuring a high level of protection for all users, wherever they live in the European Union.

In order to protect Internet users against the proliferation of illegal content and to adapt the existing legal framework to the emergence of new players on the Internet, public authorities have considered various regulatory strategies.

What is illegal content?

Illegal content is defined as any content that does not comply with European Union law or the national law of a Member State (Article 2, g). In other words, the proposed regulation does not define what is illegal, but refers to European and national laws and regulations.

The directive of June 8, 2000 did not define the concept of illegal content either.

Who will be affected by the new rules?

The proposed regulation aims to apply to any provider of intermediary services, whether established in the EU or not, as long as the recipients of such services are established or reside in the EU.

As for intermediary service providers, the proposal maintains the qualifications as provided for in the directive of 8 June 2000, namely network access and data transmission providers, caching operators and hosting providers.

Tthe proposal introduces a new qualification: online platforms. These are defined as hosting service providers who, at the request of the recipient of the service, store and distribute content to a potentially unlimited number of third parties (Article 2, h). Thus, unlike hosting providers, these players also allow content to be distributed.

Note that the proposed regulation makes a distinction between platforms and “very large” platforms. The latter are those that exceed the threshold of 45 million users per month. Said threshold will be reassessed every six months. Indeed, in addition to a set of common rules applicable to any platform, the proposal provides for a reinforced legal framework for “very large” platforms.

Under the directive of June 8, 2000, the platforms were qualified as hosts on several occasions by the courts. Consequently, they currently benefit from a reduced liability regime provided for in that directive.

Thus, these actors are only responsible with regard to the published content if they have effective knowledge of its illegal nature or if, once they have become aware of it, they have not acted promptly to remove it or to make its access impossible.

Is a new liability regime planned?

The proposed regulation does not introduce a new liability regime. Like hosting providers, the platforms will remain subject to the reduced liability regime provided for by the directive of 8 June 2000. The principle of the prohibition of imposing a general surveillance obligation on hosting providers, including the platforms, is also maintained.

However, compared to hosting providers, platforms will have additional obligations which may vary depending on their size.

In addition, unlike the directive of June 8, 2000, the proposal clarifies that content moderation systems voluntarily put in place by intermediary service providers (hosts, platforms, etc.) do not call into question the benefit of the lightened liability regime provided for in the proposal.

The DSA will thus set up control and monitoring mechanisms. At European level, this will be done through a new, fully independent body: the “European Digital Services Committee” (Art. 47-49) in charge of the committee’s advice and national coordinators.

At the level of the Member States, each will have to designate one or more authorities to ensure the application of the future regulation, including one responsible for the coordination of digital services (Articles 39 to 45). The entire framework will be supplemented by soft law: standards, code of conduct, in particular with regard to online advertising (art. 36).

The DSA is thus presented as an ambitious overhaul of the European legislative framework for digital services on the Internet.

A major project in Brussels, the Digital Services Act (DSA) tends to govern digital technology on the old continent for the years to come. In preparation for many months, the text was officially presented in mid-December 2020 and should enter into force in the next 18 to 24 months after agreement of the Member States and vote of the European Parliament.

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

Artists: how can you defend your freedom of artistic expression?

Written by Dreyfus24/05/2021

In a decision handed down on 23 February 2021, the Paris Court of Appeal offers some guidelines in copyright infringement, recalls some key principles and provides an overview of all the usable means of defense.

In this case, the internationally renowned artist Jeff Koons was condemned for copyright infringement, in solidum with his co-defendants and the Court awarded €190 000 in damages. This amount greatly exceeds the amount awarded in the first instance, where the Court ordered Jeff Koons and his co-defendants to pay €135,000 in damages.

Let’s dive into the facts: in 1988, Jeff Koons started his “Banality” series of works, which consisted of creating three-dimensional objects inspired by various images. One of the works in this series, “Fait d’hiver”, shows a young woman in a fishnet corset, lying in the snow, with a small pig wearing a barrel around its neck.

In November 2014, the Centre Pompidou in Paris hosted a retrospective of Koons’ work, in which several works from the “Banality” series were exhibited, two of which have been subject to infringement lawsuits.

One of the two disputed works is “Fait d’hiver”. The designer of a 1989 advertising campaign for the company Naf-Naf, Frank Davidovici, sued the Centre Pompidou and Jeff Koons, among others, for copyright infringement of the campaign. At that time, the Naf-Naf brand’s Autumn/Winter collection was presented to the general public thanks to a photo of a young woman lying on the snow and accompanied by a pig, wearing a collar reminding one of a Saint Bernard dog.

On November 8, 2018, the Paris Court of First Instance found all the defendants guilty of infringing Frank Davidovici’s economic and moral rights. In their appeal, the defendants then set out all the possible defences in the context of such infringement action.

Was the “fair use” exemption a good idea?

Insofar as Jeff Koons’s work “Fait d’hiver” was conceived in the United States, the artist upheld that United-States law should have applied. To strengthen his argument, he relied on the Rome II Regulation, which seeks to preserve the principle of “lex loc protectionis” about “a non-contractual obligation arising from an infringement of an intellectual property right”. It would have been a mistake for Jeff Koons not to try to benefit from this Regulation, notably since American law provides for the “fair use” exception, which allows the exclusive rights of an author to be limited, in particular, to allow his work to be parodied (17 U.S.C. §107). But let’s remember that in 1992, Koons lost an action in which he had claimed this exception. At the time, the Court charged him with copyright infringement for his sculpture “String of Puppies”, which was considered a copy, with a few differences, of a photo taken by the American photographer Art Rogers. The judges deemed that the slight differences between the original photograph and the sculpture were insufficient to rule out infringement.

That said, and thus contradicting one of Jeff Koons’s arguments showing the differences between his “Fait d’hiver” and that of Naf-Naf, the Court of Appeal recalls that infringement is not assessed regarding the differences, but rather in terms of the similarities between the works involved.

Not too much of a surprise, the Paris Court of Appeal found that French law applied to “Fait d’hiver” insofar as the copyright infringement took place in France. Hence, the exception of fair use was not applicable in the present case.

Did Frank Davidovici have legal standing?

Koons then claimed that Frank Davidovici lacked legal standing. Indeed, the original photograph was a collective work and therefore the property of Naf-Naf. The evidence provided by the appellants was not enough for the Court of Appeal, which came to the same conclusions as at first instance, namely that the advertising campaign was not a collective work but a collaborative work, in which Frank Davidovici’s contribution could be “individualized”, and that the other authors had assigned their economic rights to him.

On the French five-year limitation period for infringement

The appellants argued that the work had been created more than 20 years before the subpoena (which took place on January 9, 2015), that it had been exhibited since 1995 in a Parisian gallery. In addition, they claimed that Jeff Koons displayed the reproduction on his website where he described it as ‘unmissable to anyone interested in [his] work’ and by “anyone”. Koons targeted the respondent.

The Court of Appeal rejected this argument since the respondents were criticising the exhibition at the Centre Pompidou, which had begun in November 214, i.e. two months before the subpoena.

Pleas in law based on the freedom of artistic expression and the parody exception

The appellants invoked Article 10 of the ECHR (European Convention for the Protection of Human Rights) to remind them that judges shall not interfere with the artists’ creative freedom or deny their artistic approach. However, this article also states that the artistic freedom of expression includes limitations, and in this case, the latter was legal since it relied upon Article L.122-4 of the French Intellectual Property Code. This article condemns any adaptation or transformation of a work without the consent of its author. Considering that the sculpture uses the dominant elements of the original photograph (the penguins and the pig’s flower necklace being of little relevance) and that it makes no mention of Davidovici’s work, Koons was obviously at fault. There is a very narrow line between inspiration and infringement of earlier work.

The appellants also sought to invoke the parody defence, relying on the definition given by the CJEU (Court of Justice of the European Union) in 2014 in the Deckmyn case, which stated that “the essential characteristics of parody are, first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery“. The Paris Court of Appeal considered here that the humorous purpose was certainly not obvious, insofar as Koons described his “Fait d’hiver” as being “a work on renewal“, the illustration of the “process of self-acceptance“. Besides, according to the Court, there was a gap of almost 30 years between the advertising campaign and the sculpture. This period was so long that the public might not have perceived the parody.

The boundary between free inspiration and art infringement is very narrow, and sometimes difficult for artists to apprehend. Despite the solid defence strategy of Jeff Koons, one must acknowledge that it is essential to obtain prior approval before creating a work that may infringe the rights of another artist.

Towards increased protection for authors and performers: what does Directive 2019/790 bring to the harmonization of contract chains?

Written by Dreyfus20/05/2021

The Copyright Directive n° 2019/790 of April 17, 2019 is a milestone in strengthening the protection for authors and performers. The provisions of the directive regarding contracts in the field of literary and artistic property generally tend to rebalance the legal relationship between contractors, to the benefit of creators. This is notably reflected in the rules on contract chains.

A. The European classifications of contract chains in the field of copyright law

The European legislator specifies the chains of contracts that are subject to the new regulation.

1. Primary contracts: Licenses and transfer of rights

As regards primary contracts, Article 18(1) of the Directive distinguishes between licenses and transfer of rights.

These provisions thus implicitly rely on a criterion, which looks at whether there is a transfer of ownership or not, and which is used in French law to distinguish between assignments and licenses, to classify contracts in the field of literary and artistic property. So far, this aspect was not clearly stated in the intellectual property code.

In other words, the assignment is a transfer of ownership whereas the license confers only an exploitation right: the assignment is therefore always exclusive whereas the license is not necessarily exclusive; the assignment includes, in particular, a transfer of ownership of the infringement action, which is not the case in a license.

2. Secondary contracts: sub-licenses, licenses and subassignments

When the primary contract is a license, the secondary contract is a sub-license, by virtue of Article 19 of the Directive.

Where the first contract of the chain consists in a transfer of ownership, the second contract will be, depending on the case, assimilated to either a licensing contract (if its object is to confer an exploitation right) or to a sub-assignment contract (if another transfer of ownership is completed).

B. Increased protection of creators in contractual matters

The new European provisions outline a legal regime that strongly protects creators in contract chains, and thus substantially reform the case law of the Court of Cassation on these issues.

1. Prior to the enactment of the directive, limited protection for authors in chains of contracts

In French law, many specific provisions in the field of literary and artistic property aim at protecting the author in his/her contractual relations, especially the rules concerning the formal requirements of authors’ contracts. Yet, the protection of the author beyond the first contract remained rather limited.

Indeed, the intellectual property code does not specifically regulate contract chains. In a Perrier decision dated October 13, 1993, the French Supreme Court distinguished between contracts concluded with authors and contracts concluded between operators, considering that the latter operators were not subject to the provisions of the intellectual property code. Thus, the obligations of sub-operators towards authors were limited.

For instance, an obligation of transparency towards authors had already been enacted, but it was very limited, and only concerned distributors of long cinematographic works and audiovisual works created thanks to funding from the National Center for Cinema and the Moving Image (articles L213-28 and L251-5 of the Cinema and the Moving Image Code).

Similarly, the principle of a proportional remuneration of authors by sub-operators was interpreted quite restrictively, and only applied to audiovisual works, according to rulings of the French Supreme Court dated July 16, 1998, and May 29, 2013.

2. The benefits of the Copyright Directive for authors and performers

The Directive changes the old framework and extends the protection of creators in contractual matters.

From now on, Article 19 of the European Union directive states an obligation of transparency for sub-operators towards authors and performers, and grants authors and performers a direct right of action against sub-operators who would not comply with their obligation.

Moreover, Article 18 generalizes the principle of appropriate and proportional remuneration by the sub-operator to authors and performers to all fields of literary and artistic property.

Finally, Article 20(1) establishes an adjustment mechanism together with a direct right of action for authors or performers against the party with whom they have concluded a contract for the exploitation of rights or against their successors. This mechanism is designed to provide for an additional remuneration when the remuneration initially agreed upon proves to be unreasonably low compared to the total income subsequently derived from the exploitation of the works or performances.

The European directive therefore extends the regulation of contract chains in the field of literary and artistic property, while strengthening the protection of creators.

Article 34 of Law n°2020-1508 of December 3, 2020 authorizes the French government to enact, by ordinance, any law aimed at ensuring the transposition of articles 17 to 23 of this directive.

Why does the willingness to sell a domain name is not conditioned on an active approach?

Written by Dreyfus18/05/2021

(OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)

Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .

En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.

Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge.
Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine.
L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.

En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine .
Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.

Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.

L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».

En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.

Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.

International designs: why has Belarus ratified the Hague Agreement?

Written by Dreyfus10/05/2021

Over the past two decades, like other countries in Central and Eastern Europe, Belarus has focused its efforts on the transition to a knowledge-based economy. To do so, the government is supporting the development of an innovation ecosystem that fosters business growth and the country’s long-term economic viability. Strengthening the national intellectual property system is at the heart of this project.

The Hague system offers the owner of an industrial design the possibility of obtaining protection for his design in several countries by filing a single application in one language with a single Office.

This system is administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

Since May 13, 2015, the United States and Japan can be designated as countries for the registration of an international design. Most recently, Belarus joined the Hague System for the International Registration of Industrial Designs.

As a general rule, industrial design protection is limited to the country in which it was granted. The Hague Agreement Concerning the International Registration of Industrial Designs provides for an international registration procedure: the applicant can make a single international deposit, with WIPO. The holder can designate as many Contracting Parties as he wishes.

An international registration produces the same effects as those of a registration effected directly in each of the countries designated by the applicant, provided that protection is granted by the competent Office of such country.

On April 19, 2021, Belarus deposited its instrument of accession to the Geneva Act (1999) of the Hague Agreement with the Director General of the World Intellectual Property Organization (WIPO). The Republic of Belarus becomes the 66th Contracting Party to the 1999 Act and the 75th member of the Hague Union.

This accession brings the total number of countries covered by the Hague system to 92, expanding the system’s coverage further into the Commonwealth of Independent States (CIS).

This Agreement allows the registration of an industrial design in several countries through a single application to the International Bureau of WIPO.

The advantages of such an international design filing are numerous.

On the one hand, it considerably reduces formalities while offering registration in several countries. On the other hand, it makes it possible to simplify the subsequent management of the design as all the acts necessary for the protection of this design, such as renewal or registrations, will be carried out through a single procedure.

Besides, it is interesting to note that, unlike the international trademark system, no prior national application or registration is necessary to apply for an international design.

Finally, the only limit to this international industrial design system is the number of members. Indeed, only the States members of the Hague Agreement as revised on several occasions and in particular by the Geneva Act of 1999, can be designated by this international registration.

In other words, and once again in a manner comparable to the international mark, in order to designate certain countries, the applicant will have to file a national design and will have to go through the accompanying formalities.

However, while there are to date 95 member countries to the Madrid Agreement and to the Protocol relating to this arrangement concerning the international registration of marks, there are unfortunately only 64 members for the international registration of industrial designs and models. Several countries are therefore missing, including countries such as Australia, China, the Russian Federation, Ireland and Mexico.

Since July 19, 2021, Belarusian businesses and designers will be able to start using the Hague System to protect their designs internationally by filing a single international application covering up to 100 designs.

What are the new cookies regulations?

Written by Dreyfus04/05/2021

The Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation) affects how you, as a website owner, can use cookies and online tracking of visitors from the European Union.

Wednesday March 31, 2021 was the very last limit set by the National Commission for Informatics and Freedoms (Cnil), for French advertisers to comply with European rules relating to cookies.

From Thursday, April 1, 2021, the banner on websites is required to enable much more explicitly Internet users to “refuse” these computer tracers much more explicitly.

This is one of the measures voted in 2016 by the European Union in the General Data Protection Regulation (GDPR) and entered into force in May 2018 in all 28 (now 27) member states.

When they browse the web or use mobile applications, Internet users are increasingly followed by various actors (service editors, advertising agencies, social networks, etc.) who analyze their browsing, their movements and their consultation or consumption habits, in particular in order to provide them with targeted advertising or personalized services.

This tracing is carried out by means of various technical tools, “tracers“, of which cookies are a part.

Cookies are small pieces of text inserted into your browser while you are browsing the web.

There are various types of cookies and have multiple uses: they can be used to remember your customer ID with a merchant site, the current content of your shopping cart, the language of the web page, an identifier allowing to track your navigation for statistical or advertising purposes, etc.

They are a source of concern for many users, while others are not even aware of their existence apart from the mandatory pop-ups on all websites that ask you to “Accept cookies“.

If you are a website owner, it is important that you make sure that the management of cookies and consent on your site complies with the very strict requirements of the GDPR.

In France, the National Commission for Informatics and Liberties (CNIL) carries out numerous checks and issues sanctions for non-compliance with the GDPR and French legislation.

Your website is required under the EU’s General Data Protection Regulation (GDPR) to allow European users to control the activation of cookies and trackers that collect their personal data.

This is the essential point of consent to the use of cookies according to the GDPR – and the future of our digital infrastructures.

The CNIL reminds that the consent requirement provided for by these provisions refers to the definition and the conditions provided for in Articles 4 and 7 of the GDPR.

It must therefore be free, specific, enlightened, unambiguous and the user must be able to withdraw it, at any time, with the same simplicity with which he has granted it.

In order to remind and clarify the law applicable to the deposit and reading of tracers in the user’s terminal, the CNIL adopted guidelines on September 17, 2020, supplemented by a recommendation aimed in particular at proposing examples of modalities consent collection practices.

Consent must be manifested by a positive action of the user, informed beforehand, in particular, of the consequences of his or her choice and having the means to accept, refuse and withdraw his or her consent. Appropriate systems must therefore be put in place to collect consent in practical ways that allow Internet users to benefit from easy-to-use solutions.

Acceptance of general conditions of use cannot be a valid method of obtaining consent.

The CNIL will therefore now carry out checks to assess compliance with the rules relating to tracers, in application of article 82 of the Data Protection Act and articles 4 and 7 of the RGPD on consent, as summarized in its guidelines.

Through this action, the CNIL intends to meet the expectations of Internet users who are increasingly sensitive to Internet tracking issues, as evidenced by the constant complaints it receives on this subject.

If breaches are noted following checks or complaints, the CNIL may use all the means made available to it in its repressive chain and issue, if necessary, formal notices or public sanctions.

The evolution of the applicable rules, clarified by the guidelines and the recommendation of the CNIL, marks a turning point and progress for Internet users, who will now be able to exercise better control over online tracers.

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

How does the bad faith duplicate between registration and bad faith use?

Written by Dreyfus29/04/2021

UDRP While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.
In the present case, Great American Hotel Group, Inc. complained that its former vice-president retained the domain name <greatamericanhg.com> and changed the password of the account used to manage this name with the registrar.

It all started in 2011 when the applicant decided to adopt the name Great American Hotel Group. Its president at the time asked Mr. Greene, then vice-president of the company, to reserve the domain name <greatamericanhg.group>.
The latter did so, but – apparently without notifying his superior – reserved the domain name in his name instead of that of the company. He did, however, record the company’s postal address, and pay with the company card. In 2012, he hired an anonymity service to hide his data.

Since its registration, the name had been used for the company and Mr. Greene had always treated the domain name as part of the company’s assets.

However, following disagreements, Mr. Greene was suspended from office in 2015 and dismissed in 2016. In 2017, the name was renewed by the company’s technical teams even though Mr. Greene was no longer present. However, the latter subsequently changed the password so that the name could no longer be renewed by the company. The applicant’s counsel proceeded to send Mr. Greene a letter of formal notice, which remained unanswered, leading to the filing of a UDRP complaint.

The panellist acknowledged that the applicant had common law trademark rights through the use of the sign “Great American” and that the registrant did not have any legitimate rights or interest in the name as it was created for the applicant company.
He also acknowledged that the domain name was used by Mr. Greene in bad faith.

Nevertheless, the panellist was more sceptical regarding the issue of bad faith registration. Indeed, the name had been reserved by Mr. Greene at the request of the president of the applicant company, which, in principle, had, in fact, been a registration in good faith.

In order for registration by an employee to qualify as having been done in bad faith, the panellist specified that the employee must have, from the beginning, had “an intention to cause harm”. Therefore, the evaluation must be factual and done on a case-by-case basis.

In this case, Mr. Greene had registered the domain name in his own name. The panellist found that “this may be subject to questioning, and the fact that he did not mention the company does not constitute a good domain name management practice”, however, the president and the company seemed to be equally as uninterested in formalizing the reservation of the name.

For four years, until he was suspended from his functions, the registrant had always displayed conduct that demonstrated that he understood that the name belonged to the company. Thus, there is no reason to suppose that by reserving the name four years earlier, he had intended to compete with the applicant or to benefit from some type of tactical advantage against him.

Consequently, the plaintiff’s complaint was dismissed as the registration in bad faith had not been established. Nevertheless, the panellist specified that the applicant could turn to other avenues to try to obtain relief.

The significance of this decision, in addition to highlighting the dual condition of bad faith, is that it reiterates the need to set up an internal naming charter to avoid any dispersion of assets, both in terms of trademarks and domain names.

How to protect your brands in the digital era?

Written by Dreyfus26/04/2021

“Intellectual property was viewed with passion – and in a style steeped in pre-Romanticism! – as “the most sacred, the most legitimate, the most unassailable […], the most personal of properties”; “The least likely to be contested, the one whose increase can neither hurt republican equality, nor overshadow freedom,” said Patrick Tafforeau in his book Intellectual Property Law published in 2017.

It should be borne in mind that intellectual property is protected by law. This protection is notably achieved through patents, copyright and trademark registrations. These intellectual property rights allow creators to obtain a certain form of recognition or even a financial advantage from their inventions, plant varieties or creations.

In this sense, paragraph 1 of article L111-1 of the Intellectual Property Code provides that: “The author of a work of the mind enjoys on this work, by the sole fact of his creation, of an exclusive and intangible property right enforceable against all”.

In fact, the Internet has created tremendous opportunities for companies in terms of communicating their brand message. However, its global reach, openness, versatility and the fact that it is largely unregulated are all elements that have created fertile ground for trademark infringement such as counterfeiting.

For a long time, real world activity and Internet activity were separated. Today, the two worlds undeniably tend to come together. Trademark law is therefore very useful in defending yourself in the digital era. By appropriately balancing the interests of innovators with those of the general public, the intellectual property system aims to foster an environment conducive to the flourishing of creativity and innovation.

When you create a company or launch a product, know that it is recommended to protect your trademark (which can be the name of your company, a logo, numbers, letters, etc. …). This registration will protect your company from counterfeiting.

Once registered, the trademark is an industrial property title which gives you a monopoly of exploitation for a period of ten years, renewable indefinitely.

Registering your trademark gives you an exclusive right to a sign that distinguishes the products or services you offer from those of your competitors, which is a significant competitive advantage ! As such, your sign is protected for the categories of goods and services referred to in your trademark registration and in the territory for which said registration is accepted.

In this perspective, it is necessary to put in place a strategy for the protection of your brand as soon as possible. Before filing a trademark, it is important to make sure that it is available and that there is no owner of an earlier right to that trademark. You must therefore be the first to register this mark.

The reasons why trademark registration is becoming a necessity are multiplying in the face of the phenomenon of cybersquatting. Thus, owners of registered trademarks benefit from new advantages in the defense of their rights on the Internet.

First, it has become increasingly important to protect your brand on social media. Since 2009, Facebook has allowed its members to create usernames, easily accessible, but which can include brands. Prior to 2009, Facebook allowed registered trademark owners to identify their trademarks and prevent their use by other members.

Most social networks register user names on a “first come, first served” basis. In order to defend your rights, it is preferable to have a registered trademark in order to report a violation of trademark rights, according to the general conditions of use of social networks.

Secondly, the presence of a mark on the Internet also imposes its protection in referencing on search engines and in particular paid referencing. Through the AdWords system, Google allows advertisers to select keywords so that their ads will appear to Internet users after entering those words into a search. Conflicts arise when advertisers buy keywords that contain brands, but do not have rights to them.

Owning a trademark right then also becomes extremely useful in the fight against unfair practices.

Thirdly, the proliferation of new gTLD domain name extensions must also attract the attention of trademark owners. To date, more than 300 new gTLDs have been delegated, and gradually hundreds more will follow. Faced with the risk of conflicts with protected trademarks, a new tool is made available to trademark rights holders: The Trademark Clearinghouse. It is a centralized declarative database of registered trademarks. Once the trademark is registered, the holder benefits from the priority registration period for new gTLDs – Sunrise Period – and is notified when a third party wishes to register a domain name identical or similar to its trademark. The registrant of the disputed domain name is also informed that he may infringe trademark rights.

Finally, if a domain name reproducing or containing a trademark is registered, the trademark rights holder has the possibility of taking action against cybersquatters using dedicated extrajudicial procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP). These dedicated procedures are only open to trademark holders.

It should be remembered that the business landscape has changed with the rise of the Internet and, in order to thwart the risks of intellectual property infringements on online markets, it is important that companies adapt their management of industrial property rights portfolio accordingly.

Nathalie Dreyfus – Industrial Property Attorney, Expert at the Paris Court of Appeal, Founder & Director of Cabinet Dreyfus in Paris – Dreyfus.fr

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

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

Written by Dreyfus22/04/2021

While certain geographical names may, by exception, benefit from protection within the meaning of the UDRP rules, it should be remembered that they must be perceived as a trademark or service mark over which the applicant has rights. However, the mere use of a geographical name to identify certain goods and services as a territorial entity is not sufficient to demonstrate rights in a trademark or service mark within the meaning of the Guidelines, as the pannelist rightly pointed out in the present Decision.

In this case, the geographical name Solothurn (‘Soleure’ in French), corresponding to a city in Switzerland, was reproduced in its entirety in the domain name <solothurn.com>. It was registered in 1997 and has not been used since except to redirect to a “pay-per-click” page.

The applicants, the City of Solothurn and two associations under Swiss law promoting mainly tourism and unsurprisingly showing a strong interest in the domain name <solothurn.com>, claimed an unregistered trademark right on the sign “Solothurn”, which has been used extensively over the years. They also claimed protection of the name as “trademark-like” within the meaning of the Swiss law on unfair competition.

In this regard, they provided several documents attesting to the use of this geographical name by tourists since 1890 and its recognition as such. The applicants inferred that the use of the sign “Solothurn” constituted a trademark used to identify tourism and other related services. They also cited several decisions of the centre concerning geographical names, which are far from having argued in their favour.

The defendant, domiciled in the United States and known for his activities related to domains specializing in “geographical” domain names, had put the domain name <solothurn.com> up for sale. The defendant cited numerous decisions on how geographical names should be assessed (including a decision about the name <rouen.com>) and on the need to fulfill the function of a trade-mark.

Faced with this case and the question of whether the applicants could validly claim an unregistered trademark right in the name “Solothurn”, the panellists carried out a meticulous examination of the case law of the decisions of the WIPO panellists (overview) in the field of geographical names.

In particular, they recalled that according to the overview, “geographical terms used only in their ordinary geographical sense, except when registered as trademarks, do not, as such, provide standing to act in UDRP proceedings“. They also noted that in UDRP matters, it has generally been difficult for affiliates or entities responsible for a geographical territory to demonstrate trademark rights over that geographical name. However, the panellists noted that the decisions cited by the applicants all acknowledged that the geographical name was used in a purely descriptive way of a geographical location and not as a trademark.

On the other hand, they took note of the fact that some panellists have indicated that an unregistered trademark right in a geographical name may be granted to an official authority in exceptional circumstances. The circumstances in question cover the increasingly rare assumption that the geographical name would be used in connection with products and services but without any connection to the geographical location to which it corresponds. The idea is that the trade name should not generate an association with a geographical location in the minds of consumers, but rather an association with products and services, as the main function of the brand requires. For example, we can mention the products of the Ushuaïa brand, unrelated to Tierra del Fuego.

In the present case, the panellists noted that the applicants had not provided any proof of use of the name “Solothurn” in connection with products and services beyond those provided by the City of Switzerland. On the contrary, the applicants merely pointed out the use of the name “Solothurn” in connection with the name of the city of Switzerland and the tourist activities offered there. Consequently, the panellists could not validly conclude that the applicants had established that they had rights in the unregistered Solothurn trademark.

The panelist added that the applicants could not rely on the protection of this name as “trademark-like” within the meaning of the Swiss law on unfair competition insofar as Article 4.a. (i) of the Guidelines expressly refers to the “trade or service mark“.

Finally, the complaint was rejected as the applicants had not provided proof of trademark rights. However, this decision seems to be qualified by the panellists, who point out that it is a decision rendered under the UDRP principles, adapted to disputes between registrants and trademark owners whereas the solution could have been different under Swiss law and in matters of unfair competition.

The “morality” of this decision is not new; the UDRP procedure is not suitable for all disputes involving domain names and should not be systematically preferred to legal proceedings, even if it does have the advantage of being faster and less costly.

Intellectual Property