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In a previous article² we highlighted the decision made by the Appeal Court in Paris³ in which Cobrason’s claims were upheld against Google and the ‘Solution’ company for unfair competition and misleading advertising. This stemmed from the appearance of an advertizing link directing Internet users to the latter’s website when searches using the key word “ Cobrason” were made in the context of an Adwords campaign.

This verdict did not appear to us to reflect the position of the CJUE⁴ and we questioned its wider impact. The response to this question has just been given by the Court of Cassation which, in its judgment of 29 January 2013, overturns and invalidates the aforementioned Appeal decision.

The High Court criticizes the Appeal Court for having accepted that the ‘Solution’ company had committed acts of unfair competition “without identifying elements that could lead to a risk of confusion between the Internet sites of the two companies whereas the canvassing of other client bases is legitimate if unfair methods are not proven”. The Court further criticized the judges for finding the Solution company responsible for misleading advertizing, commenting that they had determined “with improper motives to label an advertisement as false or as designed to mislead based on one or several of the element listed in article L.121-1 of the Consumer Code”.

This confirms the position adopted by the Court of Cassation in its decision of 25 September 2012 in which it indicated that once advertisements are clearly separated from normal search results and provided that they are sufficiently clear, they will naturally enable the average Internet user to realize that the products or services targeted are not being offered by the right holder. The use of a trademark or social label as a key word by a competitor in the context of a campaign by Adwords is therefore not illegal.

A few days later, the High Court of Australia⁵ also ruled that Google could not be the author of adverts displayed by its search engine since the average user understands that this advertising comes from third parties and is in no way adopted or validated by Google.

The Court of Cassation also corrected the Appeal judges on the question of Google’s liability. In effect, in its first findings, it censured the Appeal Court decision due to its lack of response to Google’s conclusions which were based on the regime of limited responsibility of hosts   according to article 6.1.2 of the LCEN. In so doing the Court of Cassation confirmed the position it had adopted in its three verdicts of 13 July 2010 in which it had found Google not responsible for acts of counterfeit based on the same article.

This decision serves as a firm reminder addressed to the Appeal judges that again outlines the necessary requirements before liability can be proven against advertisers using the Google Adwords advertizing system. Moreover, by deciding that if Google’s responsibility can be examined but may only be upheld in limited cases where the latter’s activity does not comply with the conditions necessary to benefit from the limited responsibility outlined in article 6 of the LCEN, the High Court is confirming that it’s the responsibility of advertisers that should be the primary focus.

¹ Cass. Com., 29 janvier 2013, Solution / Google, Cobrasons

² http://blog.dreyfus.fr/2011/06/systeme-publicitaire-google-adwords-la-cour-d%E2%80%99appel-de-paris1-rend-une-decision-non-conforme-a-la-jurisprudence-communautaire/

³ Paris Appeal Court 11 May 2011, Google France et Inc., Home Cine Solutions / Cobrason

⁴ CJUE, 23 March 2010 cases C-236/08, C-237/08 and C-238/08: in which the European Court indicated that in order to benefit from the regime of limited responsibility, the host’s activity must be by definition “purely technical, automatic and passive”.

⁵ High Court of Australia, 6 February 2013, Google Inc v Australian Competition and Consumer Commission [2013] HCA 1, 6 February 2013, S175/2012.

On March 20, 2013, Icann made some updates about the TMCH.

After the public comment period followed by observations from the Generic Names Supporting Organization (GNSO, a support organization), ICANN which manages the worldwide domain name system has brought to light the following proposals of the Strawman solution[1]:

• 30-Day Notice Requirement for Sunrise

This notice will allow rights holders to anticipate and prepare themselves to the launch of a new TLD.

If this measure is charitable, it is nevertheless not revolutionary. Indeed, the existence of a notice prior the launch of a new gTLD is quite usual.

• 90-Day Trademark Claims Period

The Trademark Claims Service is a notification service providing notice to the registrant of a domain name that (perfectly) matches a trademark in the TMCH.

The initial period, set at 60 days, has been extended to 90 days.

If this announcement may look appealing, the consequences are limited due to the very function of the Trademark Claims Service. Indeed, the registrant will be able to register the domain name even if it receives a notification. The latter does not prevent the registration of the disputed domain name but is an evidence of bad faith in case of litigation.

• Trademark Claims protection for previously abused names

A new system has just been established, designed to protect trademarks which have already been subject to cybersquatting. It is now possible to record names infringing a trademark. The following conditions were imposed:

–          as a result of a UDRP or court proceeding, the name must have been found to be the subject of abusive registrations;

–          the said mark has to be duly registered in the TMCH;

–          the number of the names is limited to 50.

This measure is interesting and innovative but should have a limited scope. Indeed, according to our experience, it is not often that a name is included identically in several extensions. This element should therefore involve quite a small number of names.

If the protective effects of these measures are limited in general, these initiatives should be welcomed, being in favor of rights holders.

Our Law firm is at your disposal for any further information.

The independent objector designated by the ICANN has lodged 24 objections against new applied-for gTLDs before the International Chamber of Commerce (ICC).

The role of this objector, impartial and independent, is limited to filing objections on the grounds of limited public interest and/or community objections. His role is not to act in favor of private interests.

A community objection must be backed by a significant portion of the community that the gTLD string explicitly or implicitly targets. Before filing such an objection, the independent objector has take various factors into consideration such as level of public recognition of the community, its length and the number of people it is composed of.

Regarding limited public interest objections, the concerned applied-for gTLD string must be contrary to generally accepted legal norms of morality and public order that are recognized under fundamental principles of international law, which are the following:

• Incitement to or promotion of violent lawless action ;
• Incitement to or promotion of discrimination based upon race, color, gender, ethnicity, religion or national origin, or other similar types of discrimination that violate generally accepted legal norms recognized under principles of international law ;
• Incitement to or promotion of child pornography or other sexual abuse of children ;
• Determination that an applied-for gTLD string would be contrary to specific principles of international law as reflected in relevant international instruments of law.

Here are the 24 objections

The ICC will conduct an administrative review of each objection and the objector will be asked to correct any formal deficiency.

Each applicant will be notified by the ICC when an objection has been filed against its string. It will be invited to file a response. If an applicant, such as Amazon, faces several objections, it will have to file a response for each string, it will not be possible to file a single response for several objections. A non refundable tax of 5000€ applies when the response is filed. If the applicant does not reply to the objection, it will be in default and will automatically lose the case.

Then, the ICC experts will render their decisions. To be continued…

ICANN has just announced the updated version of the URS (Uniform Rapid Suspension), which is the procedure dedicated to new gTLDs complementing the current UDRP (Uniform Domain Name Dispute Resolution Policy). The updates are minor, but they nevertheless include guidelines similar to those implemented for the UDRP. These guidelines will assist the parties or their counsels along the various stages of the procedure.

In addition, each URS arbitration center is expected to produce supplemental supplementary rules to help standardize conduct for the center’s interactions with complainants and respondents. Supplemental rules are already in place for the UDRP. The URS taxes will be outlined in these supplemental rules.

For the time being, the National Arbitration Forum is the only URS provider.

This update is a great opportunity to focus on the differences between the new URS and its elder sister the UDRP.

The URS provides a quicker and less expensive resolution system but with limited impact since it can only order the suspension of the disputed domain name until its expiration. It is not possible to obtain the transfer or cancellation of the domain name via the URS. The respondent can request a yearlong extension as from the expiration date.

The quicker resolution system generates substantial differences between both procedures. The URS complaints are much briefer than those of the UDRP since it limits the complainant’s explanatory statement to 500 words against 5000 with the UDRP, which greatly restricts the arguments. The objective is indeed to limit the URS to obvious cybersquatting acts. The response to the complaint is limited to 2500 words. The respondent has only 14 days instead of 20 with the UDRP in which to respond.  In addition, when rendering the decision, the Examiner has only 5 days instead of 14 as from the response or from the expiration of the deadline to file a response.

When it comes to tax issues, according to (the) ICANN, the URS tax should be between 300-500USD, which is less than the 1500USD requested by the WIPO arbitration center for the UDRP.

Differences are not only limited to the length of procedures and their costs. The URS procedure requires the list of goods/services of the trademark(s) cited in the complaint as well as evidence of the use of said trademarks. The URS complaint has to be filed in English but the respondent’s reply can be drafted in their native language if the complaint was notified in this language. In addition, if the respondent does not reply to the complaint, the registry will notify them that they are prohibited from changing the website and the whois content. If the whois can be blocked directly by the registry, the latter cannot technically freeze the website, so if the registrant changes the website, which authority will intervene?  In the situation where the respondent is at fault and the Examiner rules in favor of the complainant, the respondent can file a response within 6 months of the decision, which would reinitiate the URS procedure. This implies that the ruling is not definitive during this 6 months period.

Finally, even though the UDRP allows the respondent 10 days as from the notification of the decision to file a judicial action against the complainant , it does not provide an appeal procedure. This is now done by the URS which provides an appeal procedure with the selection of an appeal examiner.

On December 12 2012 the Autorité de la concurrence imposed a €900,000 fine on the Danish company Bang & Olufsen for having prohibited its approved distributors from selling its products online¹. The Authority noted that “such anti-competitive practices are systematically considered, both in European Union and National law, as certainly being a serious breach of conduct.”

Bang & Olufsen is a company producing top of the range Hi-fi systems. In its European contract for selective distribution, unaltered since 1989, the aforementioned company banned the sale of its products by mail order. Based on an internal memo and statements by approved distributors, the Authority discovered that online sales had also been prohibited.

This decision corroborates an earlier ruling in 2008², which fined the Pierre Fabre Dermo-Cosmétique company for a ban imposed on its approved distributors against Internet sales of its products unless on medical prescription. A question of prejudice had been lodged with the Court of Justice of the European Union regarding the validity of such practices. The Court ruled that “[the] general and total ban on Internet sales of contractual products to end users effectively constitutes a characteristic restriction of competition by object (…)”.

Only an objective justification could legitimize such a ban but the company provided no such justification in the case in point. Moreover, according to the Court, the protection of the products’ brand image does not constitute adequate justification.

The authorities therefore concluded that the company had weakened competition amongst its approved distributors – intra-brand competition – and had prevented them having access to other consumers. At the same time, the latter were unable to benefit from more attractive pricing and this practice was a disservice to those living a long way from any point-of-sale.

This is therefore a further warning to distribution networks who must be careful about any restrictions imposed on Internet sales.

_________________

[1] Decision n° 12-D-23 – 12 December 2012.

[2] Decision n° 08-D-25 – 29 October 2008.

On February 20, 2013, ICANN just revealed that NAF will be the first center to operate the URS. The URS will deal with cybersquatting related to new gTLDs and will complement the current UDRP (Uniform Domain-Name Dispute-Resolution Policy) while distinguishing itself by a faster and cheaper dispute resolution. The URS procedure will only lead to the suspension of the disputed domain name. No transfer or cancellation of the domain name will be available with this procedure.

The NAF has secured the first appointment by ICANN to administer the URS and made sure to be the first out of the starting block. Founded in 1986 and approved by ICANN, the NAF has authority to resolve domain name disputes and especially is handling nearly half of the UDRP procedure, the other half being done by WIPO (World Intellectual Property Organization).

The nomination of NAF is therefore a further step in the program set for the imminent launch of the new gTLDs.

ICANN CEO Fadi Chehadé has just announced that ICANN is planning on recommending the first TLDs for delegation on April 23, 2013. At this stage, we don’t know which TLDs will be involved.

However, what is certain is that ICANN will be evaluating applicants in the order determined by the prioritization draw held in December 2012. It doesn’t mean that the new gTLDs will be operational at the end of April. In fact, after a TLD is recommended for delegation, the applicant must pass a technical test and then sign a Registry agreement with ICANN. It is only after full completion of these two steps that the new domain is added to the root zone. We could then see some new TLDs on the Internet in few months. In fact, the exact timeline is up to each applicant bearing in mind the sunrise period, which usually is a period of 30 days for trademark holders followed by a 60 days landrush period, after which registration is fully open to the public.

A limit to trademark restrictions: a brokerage can display the distinctive brand of insurance companies.

By an interim ruling dated 14^th January 2013, the TGI in Paris has stated that an insurance company cannot condemn a brokerage for displaying its brand and logo on a website if deemed necessary for its business activity. This would be in order to inform Internet users of the companies that it represents and whose products it is authorized to market.

The judge considered that there was no possible confusion for Internet users logging onto a site entitled Brokerage since they would automatically know that they were in contact with a broker representing several companies and not with the insurance company itself.

In this case the judge applied the exception of “necessary reference” under article L.713-6 b) of the French Intellectual Property Code (CPI). This exception permits the use of another brand “as a necessary reference to indicate the nature of a product or service, notably as an accessory or separate item, as long as there is no confusion as to product origin.” The displaying of the insurance company’s trademarks by the brokerage was necessary, it was neither an accessory nor a separate item, but these illustrations were only given as examples by the CPI. The use of the word “notably” allows for the broader application of this article. A similar judgment could also be upheld for maintenance or repair services which indicate the make of vehicles, for generic products which made reference to the original medicine in order to guide patients, or for the names of sporting events reproduced on websites for online betting.

This exception to trademark restrictions requires proof that there is no confusion as to the origin of products and services, as demonstrated by the judge referring to the overall understanding of Internet users logging onto the site of a brokerage. The ruling follows the trend of current legal practice on ‘necessary reference’. But it is bolder, in that the few decisions thus far on ‘necessary reference’ were within similar contexts, but in this decision the judge has innovated by entering a new field of insurance broker activities.

However, it is still simply an interim ruling. This decision is only temporary because it will have to be examined in detail and the jurisdiction established will perhaps revoke the extension of the necessary reference exception granted to brokerages.

The World’s Leading Trademark Professionals

In the third edition of The World Trademark Review 1000 (WTR) – The World’s Leading Trademark Professionals, 2013, Nathalie Dreyfus founder of Dreyfus & associés was recognized as a Bronze individual in prosecution and strategy in trademarks in France. In addition, Nathalie Dreyfus is also cited as a recommended expert who takes an “adaptable, forward-thinking” approach to a wide range of trademark matters.

A recent lawsuit was filed between a company and its former president. This case¹ provided the English courts with the opportunity to rule on the question of the legal nature of e-mail contents: are they susceptible to appropriation?

In the case where intellectual property rights would be upheld, the judge distinguished between the status of the e-mail title and that of its contents. Having considered several possibilities in which the content would belong either to the sender or to the recipient, no satisfactory solution could be proposed.

In the judge’s opinion, the recent pattern of jurisprudence could not favor intellectual property rights, whilst recognizing that the question had not been fully explored. In reality, certain decisions have left room for doubt², although not directly related to intellectual property rights pertaining to e-mail content in the strictest sense.

In such cases, jurisprudence would be more inclined to establish protection via copyright or the non-respect of confidential information.

[1] Fairstar Heavy Transport N.V versus Philip Jeffrey Adkins and Claranet Limited [2012] EWHC 2952 (TCC).

[2] Pennwell Publishing v Ornstien [2007] EWHC 1570; WRN Limited v Ayris [2008] EWHC 1080; Boardman v Phipps [1966] UKHL 2

Victoria’s Supreme Court, in its initial findings, condemned Google Inc. on November 12^th 2012 for having reproduced information judged to be defamatory in its natural referencing service.

The plaintiff, Milorad Truklja, a show organizer, had made the headlines in Australian papers after shots were fired at him in a Melbourne restaurant in 2004.

Reporting this event, numerous press reports implied that he was linked to the world of organized crime. In addition, these reports provided links to the site “Melbourne Crime”, specialized in the recording of violent acts purportedly carried out by organized crime.

Google was implicated by the fact that, upon entering the name of the plaintiff in the search engine, the first three pages systematically provided links to articles and images associating him with organized crime.

Milorad Truklja therefore sent a letter of notification to Google asking them to modify the search results.

Having received no reply from Google, he lodged a complaint for defamation with the Court at Victoria.

In their defense, Google submitted that they cannot be held responsible for content generated automatically by a robot. They insisted on the fact that the process is fully automated and requires no human intervention.

Both jury and judge refuted this argument based on their capacity as editors (relating to the law of criminal infringement by the Australian press). The Court insisted on the fact that in Australian law, the mere intention to publish content is sufficient to qualify as defamation. Viewed in this way, the judge stipulated, Google did effectively intend to publish this content, just as a newsagent would do and therefore they were declared guilty of an act of defamation.