Non classé

On September 12, 2011, the Council of the European Union amended the Directive 2006/116/EC on the term of protection of copyright and certain related rights (Directive 2011/77/UE).

The term of protection for performers, producers of phonograms and broadcasting organizations will be 70 years. Said term is harmonized with the duration of copyright term protection for authors. However, we remind that copyright term protection for authors is 70 years after lifetime whereas copyright term protection for related rights is 70 years after the work is lawfully made available to the public.

Said extension of the term of protection appears as an award granted to performers. Indeed, life expectancy has increased and therefore they will be assured of a stable income for their performances during their entire lifetime.
The EU Member States shall transpose the Directive 2011/77/UE by November 1, 2013.

Click here to download the pdf version of this document

The new trademark law in Kosovo came into force on September 8, 2011. This law is part of a general change in the intellectual property system. In addition, the Law on Industrial Designs and the Law on Patents were also modified so as to harmonize them with the European legislation.

From now on, trademark rights are only acquired through registration, mere use is not enough anymore. Protection of a well-known trademark is also acquired via registration.

In addition, a third-party may present some observations within three months of the publication of the trademark application in the Official Gazette but they will not take part in the proceedings.

Click here to download the pdf version of this document

The .eco is one of hundreds of new top level domains (TLDs) set to be created soon. It is dedicated to companies, individuals and NGOs for their websites on ecologic issues or eco friendly products.

Since the ecologic mater is both sensitive and fashionable, it is not surprising for the .eco extension to be the subject of power struggle to control it.

The organization backed by the famous US Vice President Al Gore to control the .eco extension has decided to clear the way to its rival, another organization backed by the non-less famous Mikhail Gorbachev.

The Canadian company Big Room, supported by Mikhail Gorbachev’s charity Green Cross International, is therefore in good position to win the bid to act as the official registry of the .eco.

Nevertheless, it is important to note that the real challenge for any bidder will be to satisfy all the ICANN criteria…

Click here to download the pdf version of this document

Defective hardware may lead to a whole new category of typo-squatting.

Indeed, where incidents of typo-squatting usually arise due to a misspelling of a domain name by the Internet user himself, hardware malfunction may cause a false transcription of the domain name being typed.

When they are exposed to heat or radiation, memory chips and Central Processing Units caches can generate “flipped bits”, where a 1 turns into a 0 or vice-versa. Since each letter of a domain name is encoded with a binary code from 0000000 to 1111111, a single flipped bit can turn one letter into another and direct the Internet user towards a different domain.

Whilst acknowledging that not all of them could impact a DNS request, it seems that 614,000 memory errors occur per hour globally. Even though such malfunctions should statistically only be a concern for very high-traffic domains, and only if the bit malfunction is quite widespread, there is still a significant chance of problems occurring.

Indeed, bit squatting could be criminally profitable if it were to target popular domains, especially domain names for content delivery networks such as domains providing updates or antivirus protection. Furthermore, for trademark owners particularly at risk of typo-squatting, it is advisable to conduct a review of their trademark’s enforcement strategy.

To this end, trademark owners could proactively register domains that could be bit-squatted, just as some already do to prevent classical incidents of typo-squatting. Only, instead of looking for common misspellings of their name or brand, companies willing to address this problem should be provided with thorough expertise on widespread bit malfunctions.

Click here to download the pdf version of this document

Since the end of 2010, the U.S. authorities launched a round of domain seizures. It is within the framework of this struggle against online infringement that, in February 2011, domain names in “.com” and “.org” of the website Rojadirecta, which displays links to replays of sports events, were seized by the American Government.

The company which owns these contended domains, Puerto 80, filed a petition in the Southern district of New York on the grounds of freedom of speech. on April 4, 2011, the United States District Court judge decided to deny the request arguing that the contents toward which those links were directed were copyrighted.
Furthermore, the owner of these domains was able to carry on its online services by registering domains under country code top-level domains << .es >> (Spain), << .me >> (Montenegro) and << .in >> (India).

According to the judgment which was upheld by the Second Circuit Appeals Court on September 16 2011, the U.S. Government is entitled to seize a domain on the sole assumption of infringement of copyright. By doing so the courts have also widened the scope of power of the American Government which, until then, had only seized sites offering illegal material.

Indeed, the fact of providing users with links leading to protected contents can be just as harmful for copyright owners. If the method agreed by the American judges is disputable, the liability of the host of the links could also have been established on the grounds of the “Online Copyright Infringement Liability Limitation Act.” Although it might be arduous to prove, one could argue that the fact of providing links, with the knowledge that those links lead directly to illicit contents, should nullify the benefits of the liability limitation of the online service provider (safe harbor).

Click here to download the pdf version of this document

Following a relatively quiet summer season, ICANN just published a modified version of the gTLD Applicant Guidebook on September 19, 2011.

Dreyfus & associes was present at the Parisian global awareness meeting dedicated to new gTLDs organized by ICANN.

This new guide is indented to specify various points decided during the Singapore meeting dated June 20, 2011 and more particularly confirms that applications for new gTLDs are planned to be accepted from January 12 to March 29, 2012. Application will have to be completed and the tax procedure paid by April 12, 2012 at midnight.

New list of prohibited terms

The modified version of the guide adds new terms to the list of prohibited terms that won’t be available for application, in particular those of the International Olympic Committee and the International Red Cross, as listed below:

International Olympic Committee
OLYMPIC OLYMPIAD OLYMPIQUE
OLYMPIADE OLYMPISCH OLÍMPICO
أوﻟﻴﻤﺒﻴﺎد أوﻟﻴﻤﺒﻲ OLIMPÍADA
奥林匹克 奥林匹亚 奧林匹克
奧林匹亞 Ολυμπιακοί Ολυμπιάδα
올림픽 올림피아드 Олимпийский
Олимпиада

International Red Cross and Red Crescent Movement 1B
REDCROSS REDCRESCENT REDCRYSTAL
REDLIONANDSUN MAGENDDAVIDADOM REDSTAROFDAVID
CROIXROUGE CROIX-ROUGE CROISSANTROUGE
CROISSANT-ROUGE CRISTALROUGE CRISTAL-ROUGE
CRUZROJA MEDIALUNAROJA מגן דוד אדום
CRISTALROJO Красный Крест Красный Полумесяц
لالهلا رمحألا رمحألا بيلصلا Красный Кристалл
紅十字 اﻟﻛرﻳﺳﺗﺎﻟﺔ اﻟﺣﻣراء ءارمحلا ةرولبلا
红十字 紅新月 红新月
紅水晶 红水晶

Enlarged list of reserved country names

In addition to the country names defined in the ISO 3166-1 list, other variations have been included in the applicant guidebook essentially to cover territory names included in the corresponding two-character ISO code. For instance, the .gp code corresponding to Guadeloupe also applies to La Désirade, Marie-Galante and Les Saintes whose names will not be available for applicants.

It is worthwhile to note that .us corresponding to the United-States will also cover the name “America”.

Background screening on the candidates

This new application guide also contains information on the background screening on the candidates and the corresponding time frame (10 years). ICANN is in discussions with INTERPOL to identify ways in which both organizations can collaborate in background screenings on candidates and on potential supplemental investigations.

GAC warning

The new application guide specifies the content of the advices and warnings emitted by the GAC (Government Advisory Committee) in relation to some applications. ICANN also specifies how these advices and warnings should be or not taken into account.

No developments on rights protection mechanisms

The new guide does not contain any information on right protection mechanisms. Neither the Trademark Clearing House mechanisms have been specified, nor the organization that will be in charge of its management.

The new gTLD program is now fully launched and it will be possible for the first candidates to file their application in about 100 days. ICANN expects to receive several hundred applications, which will undoubtedly change the Internet landscape.

Click here to download the pdf version of this document

Although three-dimensional trademarks are registrable in China, the recent case Nestlé SA vs. Master Sauce CO. Ltd suggests that enforcement of trademark rights might not always be ensured.

The case involved the shape of a brown, square-based bottle sauce which was designed by Julius Maggi in 1886 and is now used by Nestlé for its products. In 1995, Nestlé obtained registration of a three dimensional trademark in various countries but it was rejected by the Chinese Trademark Office.

Nestlé filed a review in 2007 and the Trademark Review and Adjudication Board ruled that although this three dimensional sign would normally be regarded as a product container and could not itself indicate the origin of the products, Nestlé had submitted enough evidence of use during the review procedure to prove that the trademark had obtained distinctiveness through use and could be approved for registration.

After receiving a cease-and-desist letter by Nestlé, Master sauce Co Ltd, which had been using a square-based bottle since 1983 for various products, took the initiative to file an action for a declaration of non-infringement with the Intermediate People’s Court of Jiangmen City and an application with the Trademark Review Adjudication Board to cancel Nestlé’s trademark.

To date, administrative proceedings are still pending but the courts have issued decisions against Nestlé. On July 2010, the Jiangmen Court found that Nestlé’s mark was weakly distinctive and its use by another party, in conjunction with another trademark, did not constitute infringement.
In November 2010, Nestlé appealed unsuccessfully to the Guangdong Higher people’s Court. Indeed, the Court found the trademark was used as a container by other manufacturers than Nestlé, before the registration of its trademark and concluded the shape of the bottle was not distinctive enough. The Court also noted that Master Sauce did not use the bottle as a trademark and thus did not act in bad faith.

That is to say the Court considered that, however well-known a trademark is outside China, its distinctive character cannot be recognized if the mark is famous in China.

Click here to download the pdf version of this document

The shoemaker Louboutin is well known for high heeled shoes with a glossy vivid red outsole protected by trademark rights.
Louboutin sued Yves Saint Laurent (YSL) alleging that the use of red color on high heeled shoes outsoles creates a likelihood of confusion and then constitutes a trademark’s infringement.

On August 10, 2011, the New York District Court stated that the red color, qualified as Chinese red by Louboutin, cannot be identified as a distinctive sign, which implies that trademark protection cannot be granted.

Louboutin declared that these red outsoles are an important element of the company’s image and that many figurative trademarks were entitled to trademark protection such as the Louis Vuitton logo or Burberry check.

However, the judge said that color serves ornamental and aesthetic functions in the fashion industry and red color used by Louboutin could not confer an exclusive right. Red outsoles are not considered as a distinctive sign allowing customers to identify the product. The judge added that no fashion designer should be allowed a monopoly on a color because they all need to be able to use the full palette, as it is the case for the artists.

The EU case law states that a color is entitled to trademark protection under certain conditions listed by ECJ in May 6, 2003 . It is in particular specified that a distinctive criterion has to be proved and the color must be graphically represented in a precise, easily accessible, lasting and neutral way. Nevertheless, the distinctive criterion is very rarely accepted and the European Tribunal of 1st instance rejected two trademarks claims related to colors for lack of distinctive criterion. It is interesting to note that the OHIM recently accepted the registration of a three dimensional trademark of the famous red outsoles, the description of the trademark being “high heeled shoes”, not only “shoes”.

_______________________
1. Christian Louboutin SA et al v. Yves Saint Laurent America, Inc et al., 1:11-cv-2381 NYSD August 10, 2011
2. CJEU, May 6, 2003, Libertel Groep BV contre Bureau Benelux des Marques, C104/01.
3. EGC, Nov. 12, 2010, aff. T-404/09 et T-405/09

Click here to download the pdf version of this document

Part of the legal battle between George Lucas and Andrew Ainsworth over the sale of Stormtrooper helmets, made famous in the first Star Wars film, came to an end on 27 July 2011 with the judgment of the Supreme Court of the United Kingdom[1].

In 1976, Mr Ainsworth had been involved in the production of the original Stormtrooper helmets.  The helmets had been designed and put into drawing by an artist following the instructions given by George Lucas himself.  Mr Ainsworth’s role was to produce a mould prototype for the helmet on the basis of these drawings.   Mr Ainsworth went on to make 50 helmets for the film 1977 Star Wars film, using one of these moulds.

In 2004, with Ainsworth started producing and selling helmets made on the basis of these original moulds.

The legal battle commenced in the US when Lucasfilm, a company owned by George Lucas, took action against Mr Ainsworth in relation to sales of these helmets available on Ainsworth’s website.  In 2005, Lucasfilm obtained a default judgment together with a significant award of damages before the US courts, in particular, for copyright infringement.  However, Lucasfilm did not seek to enforce the judgment in the US, Ainsworth having no assets in the US, and the judgment remained unsatisfied.  Lucasfilm decided therefore to bring their claim before the English Courts, on the basis of the infringement of the copyright subsisting in the helmet both under English and US law.

Both before the High Court and on appeal before the Court of Appeal[2], it was held that any intellectual property rights existing in the helmet belonged to Lucasfilm, and not to Mr Ainsworth.

The question of whether Mr Ainsworth could be prevented under English law from making the helmets on the basis of the original designs and moulds, in relation to which he held no IP rights, depended on whether the helmets qualified as an artistic work and, in particular, a “sculpture” in which copyright subsisted.  If the helmets were protected by copyright, the manufacture and sale of the helmets by Ainsworth would constitute an infringement of these rights.  In this respect, under section 4 of the Copyright Designs and Patent Act 1988 (the “CDPA”), three-dimensional artifacts are protected under the copyright law only if the work can be qualified as a sculpture or work of artistic craftsmanship.  Furthermore, although the drawings themselves made by the artist would be protected by copyright, pursuant to section 51 of the CDPA, there is no infringement of such designs, unless the resulting work constitutes an “artistic work” and in the present case a sculpture.

Both the High Court and the Court of Appeal held that the helmets were not sculptures on the grounds that their purpose was primarily utilitarian, and not artistic.

Furthermore, the Court of Appeal also held that the English courts did not have jurisdiction to rule on an action for infringement of a US copyright.

Lucasfilm appealed this decision before the UK Supreme Court.  The Supreme Court concurring with the lower courts held that the helmet did not qualify as a “sculpture”, and as such was not protected by copyright.  In support of this finding, the Supreme Court held that the helmet was utilitarian in the sense it was an element in the process of production of the film and the Star Wars film itself was the work of art.

However, in relation to the question on jurisdiction, the Supreme Court held, overturning the Court of Appeal’s ruling on this point, that an English court would have jurisdiction, in circumstances such as those at hand, to try a claim for infringement of US copyright.  This ruling accordingly opens the way for Lucasfilm to bring proceedings in relation to the infringement of its US copyright before the English courts.

This approach to determining whether a creation is protected by copyright is in stark contrast to the rules applicable in France.  Indeed, in France, the author is simply required to establish that the work is original, i.e. is an expression of the author, to benefit from protection available under copyright law.

[2] [2009] EWCA Civ 1328

Click here to download the pdf version of this document

With the emergence of smartphones and tablet computers, the development of mobile applications is a booming business.  In order to showcase their own and third party applications, several companies have put into place mobile application distribution platforms, including Google’s Android Market, Apple’s App Store or R.I.M.’s Blackberry App World.  More than 20 billion applications have been downloaded via these platforms, which propose several thousand new applications each day.  To date, there are approximately 40 such platforms, the number of which is constantly increasing.

Both the applications themselves and the pages on the platforms are susceptible to infringe IP rights.  Among the most frequently identified violations, which are susceptible to constitute infringement or unfair competition:

• reproduction of a trade mark in the title of an application
• reproduction of a trade mark in the application itself
• development of clones of existing applications
• reproduction of trade marks in wallpaper and other personalised aspects of the terminals

These types of breaches are not new in the IT world.  However, the specificity of the apps markets are so that they create a concentration of these breaches and increase their effects by segmenting the search results (principle of vertical search engines).  Accordingly, an infringing application can be well ranked on a platform on which the number of applications in the same category or associated with the same key words is not very high.  Furthermore, the content of the platforms is not necessarily indexed on the principal search engines. Therefore, a watch of the principal search engines will not necessarily identify these breaches.

The liability regime applicable to these downloading platforms will depend on the facts of the case.  Indeed, according to the French Supreme Court[1], authors of titles and hyperlink texts qualify as editors, as defined by French press law, if they determine and check the content of the site, and play an active role, having knowledge and control over the data stored.  Conversely, the platforms may benefit from the limited liability regime applicable to hosting providers, if their role is neutral, in the sense that their conduct is merely technical, automatic and passive.

In the case of the applications market, the titles and the content of the applications and the corresponding pages are determined by the developers (in accordance with the platforms’ T&Cs).  In terms of control of the content, each platform applies its own policy. For instance, App Store, App World and Android Appstore have all put into place procedures for checking new applications, the scope of which varies greatly.  These platforms could accordingly qualify as editors, making them liable for the content of the applications which they propose.

In any case, during the sole month of February, Android Market received 206 notifications half of which involved trade mark rights.  Thirty-one notifications came from Facebook, further to the reproduction of its trade mark in the title or the icon of a third party application[2].

Rights holders are therefore well advised to monitor on a constant basis these new platforms in order to identify any unauthorised use.

[1] French Supreme Court, 17 February 2011, Mr O.X. v. Bloobox.net

[2] http://www.chillingeffects.org/weather.cgi?WeatherID=648

Click here to download the pdf version of this document