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Liabilities of domain name registrars in case of intellectual property infringement

business-dreyfus-81-150x150Will domain name registrars be liable for counterfeiting websites? This issue is raised before national jurisdictions.

 

The U.S Court of Appeals for the Ninth Circuit answered negatively to this issue. In this case, the Malaysian company PETRONAS requested the domain name registrar GoDaddy to cancel the domain names <petronastower.net> and <petronastowers.net> directing to pornographic websites. GoDaddy refused to act and Petronas brought an action on ground of cybersquatting against it. However, American legislation considers that a person can be condemned for cybersquatting if the latter registers or uses the domain name in bad faith. The trial court along with the Federal Court of Appeal has rationally dismissed the request of Petronas. They considered that “imposing liability on those who neither use the domain name nor show bad faith would undermine the purpose of the law”.

 

Nevertheless, the German court is not of that opinion. The Regional Court of Saarbrücken has indeed held the domain name registrar Key-Systems which administered the domain name <h33t.com> as liable. It resolved towards a website proposing free download of the album Blurred Lines by the singer Robin Thicke. Key-Systems argued the absence of its control of the website and thus, absence of its liability. Nonetheless, the court considered that the registrar has the obligation to examine the content of the website once it is notified. Moreover, according to the court, the registrar has the duty to take corrective action in case of obvious infringement of intellectual property rights.

 

The directive 2000/31/CE on e- commerce has settled these prompt obligations in case of obvious infringement. However, this obligation was never intended to extend on the domain name registrar. Also, the French jurisprudence puts forward that the technical provider does not have to stand in judgement of whether the infringement of obvious character or not (Cour de Cassation, civ. 1ère , 17 février 2011, n° 09-15.857).

 

The similarity between these two cases is the discussion concerning the liability of the registrar. A European harmonisation of the principle needs to be settled before the expansion of the new Top-Level domains.

 

Dreyfus & associés is specialised in online conflicts of intellectual property. Do not hesitate to contact us for further information.

 

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How the Unified Patent Court is likely to encourage patent trolls

Symbole copyrightStill at the project stage, the Unified Patent Court must ultimately be exclusively competent in matters of European patent and unitary European patent. On that principle, an agreement has been reached between all the Member States of the European Union with the exception of Spain and Poland, but the consistency of the project still has to be improved. That is why the States work on that project which has been approved since more than 40 years. They are currently working on the 15th amendment.

 

This amendment is particularly at the heart of the debate as it would encourage patent trolls, these companies whose main or sole activity is to sue other companies whether there has been patent infringement or not in order to obtain significant damages. For instance, in 2006, the company RIM which manufactures Blackberry telephones has paid $ 612.5 million to the company NTP in order to terminate a dispute filed with the US Courts.

 

Two provisions of the actual version of the agreement establishing the Unified Patent Court are problematic in that regard.

 

First, article 42 gives to the Unified Patent Court a discretionary power particularly important pertaining to the degree of patent infringement, which the Patentee needs to prove in order to obtain provisional measures. Thus, the different divisions of the Unified Patent Court could apply these criteria with more or less negligence. Therefore, it would be easy for all patent owners, including the patent trolls, to obtain such provisional measures even if these measures are not objectively justified.

 

Then, article 33 establishes a mechanism for the separation of actions. Thus, if disputes relating to patent infringement are filed with the local divisions of the Unified Patent Court, the counterclaims for revocation of the patent may be handled by the local division or referred back to the central division of the Unified Patent Court at the Court’s discretion. In the latter case, the actions become independent and the local Judge will not have to stay proceedings. It will then be possible to obtain convictions on infringement of invalidated patents!

 

The giants of innovation such as Google or Apple call for a radical change in the agreement which “enables to concentrate on innovation rather than on litigation”.

 

It will be interesting to see whether the next review of the agreement will include measures to combat patent trolls because the European institutions have never envisaged a system that encourages abusive procedures in patent matters.

 

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Protection of Country names as trademarks

Symbole copyrightThe 31st session of the WIPO Standing Committee on Trademarks, Industrial designs and Geographical Indications was held in Geneva between March, 17 and 21 2014. WIPO reviewed the Draft Recommendation proposal on the protection of country names, prepared by Jamaica delegate in December 2013.

 

This proposal has been ongoing pending since 2009, however to date the attempts to broaden the scope of article 6ter of the Paris Convention [for the Protection of Industrial Property] have proven unsuccessful. This article outlines the prohibitions regarding the use as a trademark of State emblems, official signs and hallmarks of intergovernmental organisations. The Standing Committee has noted that “the protection that currently exists internationally for country names is inconsistent internationally. Therefore there is need for internationally consistent protection for country names.”

 

Trademark protection may be useful for a country in international trade and in export markets for specific goods and services. This should protect States from misleading trademarks using the name of their country.

 

If the country name is used as a trademark, the government will become the brand owner and will be responsible for all that it entails (acquisition, maintenance and enforcement of rights). In practice, this also means that the government must have competent lawyers to manage the brand both domestically and abroad.

 

The US has submitted various questions to the Committee, including with respect to States that may decline to manage their trademark. South Africa also expressed its reservations with regards to the draft recommendation.

 

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A US court reopens the question on the legal nature of domain names

business-dreyfus-81-150x150Following the sex.com case, the Court of Appeal for the Ninth Circuit considered that the domain name was subject to property rights – the debate on the legal nature of the domain name appeared closed. Still, the Federal Court in Virginia brought its contribution.

 

It concerns a judicial winding-up proceedings. The Court held that the domain name is only a contractual right and as such, it does not have separate existence from the provider which renders the Internet address accessible. Consequently, according to the decision of the Federal Court of Virginia, a domain name cannot be sold by a liquidator to pay the debt of a company. The Court followed the decision rendered in various precedents. In the case of Network Solutions dated April 21, 2000, it had already been found that “a domain name is not a personal property”.

 

In France, the property right over a domain name in .com has been long established. A judgement of the Commercial Court of Marseille ruled that the registrant was “the proprietor of the domain names for having registered them prior to the creation of the company” from which it was claiming to cease the use of the names.

 

If the debate is intense in the United States, the issue seems already settled in France, which appears to be logical. Indeed, the domain name is an intangible asset in the commerce, which its holder has owned by registering it. Hence, nothing is against the application of Article 544 of the Civil Code to domain names.

 

Nonetheless, the status of the domain names is flickering because it is not textually defined. The judgement of the Federal Court of Virginia perfectly illustrates it. A clear definition of the nature of the domain name is necessary to bring security and stability to the registrants.

 

Dreyfus & associés can help you manage your domain names disputes.  Please feel free to contact us for any information.

 

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Fake account of James Dean: The right holders sue Twitter

Symbole copyrightThe Twitter account @JamesDean is at the heart of a legal battle which has just begun. Launched in 2009 by an anonymous fan, it gathers the biography, quotations and photos of the actor who deceased more than 60 years ago.

 

The licensing agency CMG Worldwide requested Twitter to take down the account in issue. To support its request, CMG argued that the account user is infringing the mark James Dean and that it violates its “right of publicity”. The licensing company obtained a categorical refusal from the social network. Indeed, Twitter considered that the simple use of a pseudonym does not constitute an infringement of trademark rights because messages sent by some 8,000 followers did not have any commercial character.

 

Consequently, the company GMG Worldwide went before the courts and has sued the social network for trademark infringement. The request relies on the ground that by allowing a user to infringe the mark JAMES DEAN, Twitter is itself a counterfeiter.

 

However, it shall be an uphill battle for CMG. The protection granted to trademarks does not extend to all use of names. Furthermore, the general conditions of use are clear. Twitter does not prevent the creation of an account under a fake name be it the name of a celebrity. The only limits to this freedom are infringement to public order and to intellectual property rights.

 

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New gTLD’s: Sunrises as at 10 April 2014

business-dreyfus-81-150x150Six months after the release of the first gTLD and 82 Sunrise periods later, almost as many new gTLDs remain available or are expected to become available over the next few months. These include Starting Dot, the registry operator for .ARCHI, the .BIO and the .SKI.

 

Usage of .ARCHI will be limited to qualified architects, members of an organisation or a national association which is itself a member of the International Union of Architects (UIA), which represents approximately 1.3 million architects. Sunrise opened on 8 April 2014 and will close on 8 June 2014.

As for the .BIO gTLD, it will obviously be dedicated first and foremost to the organic farming sector. However, it could equally attract the life and natural sciences sectors and biography.

Finally, the new gTLD .SKI targets ski professionals and will be a good reference to facilitate access to resources for those who practice this sport.

 

We remind you that a Trademark registered in the Trademark Clearinghouse along with the corresponding SMD file is required to register a domain name during a Sunrise period.

 

1)    Sunrises ending in the next 10 days

TLD Sunrise starts
Sunrise ends
kim 11/03/2014 11/04/2014
pink 11/03/2014 11/04/2014
red 11/03/2014 11/04/2014
shiksha 11/03/2014 11/04/2014
farm 11/02/2014 12/04/2014
blue 14/03/2014 13/04/2014
移动 – mobile 14/03/2014 13/04/2014
codes 11/02/2014 14/04/2014
viajes 11/02/2014 14/04/2014
wed 17/03/2014 18/04/2014
agency 18/02/2014 19/04/2014
bargains 18/02/2014 19/04/2014
boutique 18/02/2014 19/04/2014
cheap 18/02/2014 19/04/2014
zone 18/02/2014 19/04/2014

 

2)    Running Sunrises

TLD Sunrise starts Sunrise ends
ninja 19/02/2014 21/04/2014
immobilien 19/02/2014 21/04/2014
nagoya 20/02/2014 21/04/2014
cool 25/02/2014 26/04/2014
watch 25/02/2014 26/04/2014
social 26/02/2014 28/04/2014
reviews 26/02/2014 28/04/2014
futbol 26/02/2014 28/04/2014
wien 11/02/2014 30/04/2014
qpon 02/04/2014 02/05/2014
works 04/03/2014 03/05/2014
expert 04/03/2014 03/05/2014
wiki 03/03/2014 05/05/2014
exposed 11/03/2014 10/05/2014
foundation 11/03/2014 10/05/2014
cruises 18/03/2014 17/05/2014
flights 18/03/2014 17/05/2014
rentals 18/03/2014 17/05/2014
vacations 18/03/2014 17/05/2014
xyz 19/03/2014 20/05/2014
tienda 25/03/2014 24/05/2014
properties 25/03/2014 24/05/2014
condos 25/03/2014 24/05/2014
maison 25/03/2014 24/05/2014
bid 31/03/2014 30/05/2014
trade 31/03/2014 30/05/2014
webcam 31/03/2014 30/05/2014
villas 18/03/2014 31/05/2014
dating 01/04/2014 31/05/2014
events 01/04/2014 31/05/2014
partners 01/04/2014 31/05/2014
productions 01/04/2014 31/05/2014
pub 02/04/2014 02/06/2014
世界 (world) 02/04/2014 02/06/2014
jetzt (now) 02/04/2014 02/06/2014
tokyo 07/04/2014 06/06/2014
дети (kids, children) 07/04/2014 06/06/2014
community 08/04/2014 07/06/2014
catering 08/04/2014 07/06/2014
cleaning 08/04/2014 07/06/2014
cards 08/04/2014 07/06/2014
archi 08/04/2014 08/06/2014
moda 09/04/2014 09/06/2014

 

3)    Sunrises to come

TLD Sunrise starts Sunrise ends
voting 15/04/2014 16/05/2014
tools 15/04/2014 14/06/2014
parts 15/04/2014 14/06/2014
industries 15/04/2014 14/06/2014
supply 15/04/2014 14/06/2014
supplies 15/04/2014 14/06/2014
kaufen 16/04/2014 16/06/2014
best 17/04/2014 17/05/2014
wang 21/04/2014 21/05/2014
орг (org) 22/04/2014 22/05/2014
संगठन (org) 22/04/2014 22/05/2014
机构(org) 22/04/2014 22/05/2014
report 22/04/2014 21/06/2014
vision 22/04/2014 21/06/2014
fish 22/04/2014 21/06/2014
actor 30/04/2014 30/06/2014
nyc 05/05/2014 20/06/2014
koeln 12/06/2014 13/07/2014

 

 

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France: the law adopted on 11 March 2014 strengthens the fight against counterfeiting

Symbole copyrightOn 13 March 2014, a new law (Nr 2014-315) came into force to strengthen the fight against counterfeiting. This law aims at providing tougher penalties for counterfeiters and clarifies certain provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).

 

What are the main changes introduced by this law?

 

  • The right of information procedure has been simplified. A request for information may now be raised before any judgment on the merits for counterfeiting, including before the Judge in charge of interim proceedings (juge des référés). The list of documents and information that may be requested has been removed. Hence judges are now free to determine the scope of their investigatory measures.
  • When allocating damages, the court must separately take into consideration:

– “negative economic  consequences (…) including profits and losses incurred”;

– “non-pecuniary loss”; and

– “profits earned by the infringer, including savings on intellectual, material and advertising investments”.

 

The legislation sought tougher and more accurate penalties by demanding a clear distinction between the different levels of harm. Applicants must now show the harm suffered and may no longer seek compensation without justification.

 

  • The statute of limitation to initiate counterfeiting proceedings has been extended to five years for all Intellectual Property actions. Previously, copyright infringement actions were subject to a 5 year limitation and patents and trademarks actions to a 3 year limitation. This extension ensures better protection and takes into consideration the interests of right owners.
  • Custom officers have been granted additional rights; they can now deal with counterfeiting of designations and geographical indications as well as goods in transit.
  • Infringement seizure proceedings have been harmonized for all intellectual property rights. The court may order any legally admissible investigatory measure, even without an infringement seizure. Further, a new Article (art L332-2 Intellectual Property Code (Code de la Propriété Intellectuelle, CPI)) has created an offence in case of non-compliance with the deadline to initiate proceedings after the performance of a seizure in copyright infringement.

 

The law adopted on 11 March 2014 awards new privileges to right owners in the fight against counterfeiting. One must now hope for a strict and efficient implementation of the new provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).

 

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New extension of the domain names: turmoil concerning !

business-dreyfus-81-150x150The independent objector (IO) has known a severe setback in the conflict against the company Amazon on the delegation of the extension <.amazon>.

Having been appointed by ICANN to represent the interest of the online community as regard to the delegation of new extensions, the IO could take charge of questions concerning public interest and the community’s objections when none objected to the application.

 

In the present case, the IO argued for a “substantial opposition” of the Amazonian communities against the claims of the company Amazon on the delegation of <.amazon> as well as its equivalents in Japanese and Chinese characters.

The Internet giant defended itself by highlighting the lack of proof as regard to the existence of this “substantial opposition” and the damages which could be caused by the Amazonian communities in case of <.amazon> delegation. Furthermore, as outlined by the expert Lucas G. Radicati di Brozolo, the community does not seem to have suffered from the use of the domain name <amazon.com>.
If this ground is sufficient for the Expert to reject the objection then he has analysed the independence of the objector in an incidental manner in accordance with the request of Amazon.

The famous online marketplace highlighted that there is a conflict of interest arising from the close ties between the IO and the government representing the Amazonian communities (Brazil and Peru) whereas he can act only on behalf of Internet users. Thus, his objection would only aim at formalising the objection of the governments. Alain Pellet denied the charges by affirming that the link simply results from a “normal average social life”.

 

This vision of the “social life” won’t be shared by the expert of the ICC. Based on objective criteria, he asserts that the ties between the IO and the two major representatives of the Amazonian communities lead to justifiable doubts as to his independence. As far as the importance of ensuring neutrality, independence and impartiality of the IO’s office and of the overall process of dispute resolution for gTLDs are concerned the objection of the claimant company on the IO’s independence must be welcomed. What image will ICANN and the candidates to the contracts of delegation of new extensions will project with a non-independent Independent Objector?

 

This debate is not new… The issue of the independence of the IO has in vain been raised against the IO’s opposition on the delegation of <.patagonia>. The counsel of the applicant company had not only highlighted the ties of Alain Pellet with Argentina and Chilli which have constantly designated him as arbitrator in different international litigations but also with his team of counsel at the ICC. The representation of the Argentine Republic by Mr Daniel Müller in the case Certain Pulp Mills on the River Urugay in 2006-2010 or the representation of the Chilean Republic by Mr Samuel Wordsworth concerning a maritime dispute with Peru were thus exposed. Finally, the presence of Héloïse Bajer-Pellet who is presumably the daughter or daughter-in-law of the Professor Pellet in the board also gives rise to concerns regarding the notion of independence as interpreted by IO.

 

It is neither necessary to call down anathema on the IO nor challenge his goodwill. However, one can blame some sort of regrettable clumsiness.

There is a need to consolidate the IO’s practices in the realisation of its mission in order to reassure the applicants of new gTLDs domain names on the seriousness of delegation operations as regards to their investment of time and money.

The delegation of <.amazon> generates a lot of discussion: the Governmental Advisory Committee (GAC) has advised the Executive Committee of ICANN to withdraw this extension. This victory undoubtedly constitutes a major asset for Amazon to convince of the contrary!

 

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CJEU broadens the scope of Custom Regulation for counterfeiting goods

Symbole copyrightOn February 6th, the Court of Justice of the European Union (CJEU) ruled on the application of the Customs Regulation to seizure of counterfeiting products bought online.

 

To allow seizure, the Regulation requires that these goods ought to be distributed to the public and in the course of trade. In this case, a Danish court has referred a preliminary ruling to CJEU. The application of the aforementioned Regulation to products bought online by an individual was at stake. And the Danish court underlined that this scenario resembled importation for personal purposes rather than trade.

 

In a terse decision, the Court of Justice deliberated that “the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online website in a non-member country enjoys the protection afforded to that holder by that regulation at the time where goods entered the territory of that Member State”. The Court therefore considered the criteria set up by the Regulation to be redundant.

 

The Court further concluded that “it is not necessary […] for the goods at issue to have been subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State”. In accordance with its established jurisprudence, Philips case (Case C-446/09 Philips and Nokia, December 1st, 2011), the CJEU casted aside the criteria of focalization on the activities of the website.

 

Overall, this ruling leads to a necessarily larger application of the Regulation, which should apply to all goods entering the European territory.

 

By voiding the criteria of the Customs Regulation, the Court of Justice would be ultra vires. Regarding preliminary rulings, its role is limited to the interpretation of the European legislations. However, the position of the Court is understandable since the protection granted to holders of intellectual property rights is essential. In a globalized economy, the protection of innovations by European companies must be a priority.

 

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Protect the names of your leaders: .CEO gTLD now open

business-dreyfus-81-150x150The .CEO gTLD has been open for registration since 28 March 2014. This is a highly sought after gTLD as it enables corporate executives to protect their identity on the Internet.

We strongly recommend registering the names of your leaders as a pre-emptive measure. Leader names are seldom registered as trademarks, meaning that UDRP and URS protection mechanisms are usually ineffective.

Our firm remains at your disposal for any further queries and to assist you in relation to pre-emptive registration.

 

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