TODAY IS WORLD IP DAY

Posted by Radiance Walters on April 26, 2012

World Intellectual Property Organization (WIPO) Director General Francis Gurry said the day “is an opportunity to celebrate the contribution that intellectual property makes to innovation and cultural creation – and the immense good that these two social phenomena bring to the world.” WIPO posted a number of suggestions for celebrating World IP Day. This year’s theme is “visionary innovators – people whose innovations transform our lives.”

What are you doing to celebrate World IP Day?

 

UK Government publishes consultation on copyright

Posted by Duncan Calow on January 19, 2012

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The consultation following up recommendations in the Hargreaves Review outlines Government plans to improve copyright laws.

The consultation, which will run for 14 weeks and conclude on 21 March 2012, is in line with the Government's "response" to the Hargreaves Review of Intellectual Property and Growth ("Hargreaves Review") (for more information on the Hargreaves Review please refer to our May 2011 client alert here).

Continue Reading

UK: High Court rules that Google is not liable in blog defamation case

Posted by Patrick Mitchell on January 13, 2012

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The High Court has ruled that Google did not have "actual knowledge" of defamatory material where complaints were not "sufficiently precise and well substantiated".

On 25 November 2011 the High Court ruled in favour of Google; setting aside an order that permitted the US company to be served out of the jurisdiction in defamation proceedings. The Court ruled that the claimant, former UK intelligence adviser Andrea Davison, had failed to show a real and substantial tort within the jurisdiction or that Google had actual knowledge of unlawful activity on the blog that it hosted.

Continue Reading

New Global Rules for Digital Interactive Marketing

Posted by Debbie Rosenbaum on January 06, 2012

Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Caroline Olstedt Carlström (Stockholm)

The new digital landscape and its embrace by the corporate world create new challenges for all marketing professionals at a pace that has never before been encountered.  In fact, organisational procedures and legal standards are struggling to keep up.  Few jurisdictions have marketing regulations in place that are up-to-date with the latest digital possibilities.  Social media can be an effective tool for marketing and brand awareness, but it also poses great challenges for marketing professionals navigating new issues. 

On September 15th, the International Chamber of Commerce (ICC) presented its new 2011 Consolidated ICC Code of Advertising and Marketing Communication Practice (the “Code”). The Code raises the standards for consumer protection globally and also includes new online rules.  It is recognised as the gold standard for self-regulation and now offers best practice guidance across all sectors, technologies and platforms and guides marketing professionals as they deal with many of the most challenging topics, such as Online Behavioural Advertising (OBA), marketing in digital interactive media, privacy protection, environmental claims and marketing to children.  

Continue Reading

Edwin Co. v. Elio Fiorucci: Designer and Company Share a Name?

Posted by Debbie Rosenbaum on December 30, 2011

Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Stefania Baldazzi and Annalaura Avanzi  (Milan)

In 1967, the well-known Italian fashion designer Elio Fiorucci founded the fashion brand Fiorucci S.p.A.  After more than two decades of success in Italy and around the world, Mr. Fiorucci sold the company and all of its creative assets to the Tokyo Company Edwin Co. Ltd in 1990.  The sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”

In 1999, Edwin Co. registered the mark “ELIO FIORUCCI,” by filing an application with the Office for Harmonization for the Internal Market (OHIM), which is a body of the European Commission, for a broad category of goods, including cosmetics, apparel, footwear and leather products. 

Continue Reading

Idiosyncrasies of the Spanish Fashion Market

Posted by Debbie Rosenbaum on December 27, 2011

Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Bartolome Martin (Madrid)

Some decades ago, the Spanish Tourism Authority’s advertisements across Europe proudly touted that “Spain is different.”  In reality, this may indeed be true.  Spain is an idiosyncratic country where universality and localism are good friends, crisis and luxury seem to have a passionate relationship, and customs from the past walk hand in hand with the latest trends.  This self-contradicting spirit, cultural individuality and inherent diversity are without a doubt reflected in the Spanish fashion market. 

Some decades ago, the Spanish Tourism Authority’s advertisements across Europe proudly touted that “Spain is different.”  In reality, this may indeed be true.  Spain is an idiosyncratic country where universality and localism are good friends, crisis and luxury seem to have a passionate relationship, and customs from the past walk hand in hand with the latest trends.  This self-contradicting spirit, cultural individuality and inherent diversity are without a doubt reflected in the Spanish fashion market. 

Continue Reading

The Debate for AdWords Ownership in Cyberspace Continues

Posted by Debbie Rosenbaum on December 21, 2011

Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)

“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 

In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  

Continue Reading

EMEA's December Trademarks and Design Newsletter

Posted by Debbie Rosenbaum on December 19, 2011

This e-newsletter is written by the DLA Piper Trademarks team. For more information about the articles or the trademark services of DLA Piper, please contact trademarkemea@dlapiper.com.

Continue Reading

"Just passing through sir or really stopping off?" - the CJEU rules on counterfeit goods in transit

Posted by Rebecca Kay on December 15, 2011

By Siân Croxon, Partner, DLA Piper UK

The CJEU has provided some clarification of the law on when EU customs officials can seize counterfeit goods that are merely in transit through the EU. 

The story began in 2008 when a consignment of Nokia branded mobile phones arrived in Heathrow in transit from China to Colombia.  The customs officer was suspicious and sent a sample to Nokia for inspection which duly revealed that the phones were indeed counterfeit.

Continue Reading

UK signs agreement on intellectual property and growth with Brazil

Posted by Duncan Calow on December 14, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Ofcom has cleared Al Jazeera English channel ("Al Jazeera") for its broadcast of "The Palestine Papers" after a complaint of unfair treatment by the Chief Negotiator of the Palestine Liberation Organisation ("PLO").
"The Palestine Papers", a four-part documentary series broadcast on Al Jazeera, examined "leaked" diplomatic documents relating to the Middle East peace process. The series criticised the role played by Dr Saeb Erakat, the Chief Negotiator of the PLO, a number of times. This prompted Dr Erakat to complain of unfair treatment and unwarranted infringement of privacy on behalf of both himself and the PLO.
The complaint, amongst other things, argued that important contextual information was deliberately omitted so that viewers could not properly understand the subjects discussed during the negotiation scenes and that the programme broadcast details of confidential documents that were stolen from Dr Erakat's office in breach of confidentiality and privacy.
In response to these particular complaints, Al Jazeera stated that the programme makers took reasonable care and carried out considerable research to ensure that all material facts were presented fairly. Al Jazeera also argued that, in any case, any alleged breach was warranted as the programme dealt with public affairs of great political and international importance and there could be no doubt about the importance of investigating and criticising the decisions made by Dr Erakat and other senior negotiators. Therefore, according to Al Jazeera, no consent was required from anyone within the PLO prior to broadcast.
Ofcom found that material facts in relation to the negotiations were not presented or omitted in a way that led to unfair treatment of Dr Erakat and the infringement of privacy in relation to obtaining and using the confidential document was warranted due to the significant public interest in the issues covered by the documentary series.

UK Business Secretary Dr Vince Cable and Brazilian Minister Fernando Pimentel have signed a Memorandum of Understanding to improve cooperation between the UK and Brazil on intellectual property issues ("the Agreement").

Whilst attending the sixth annual Joint Economic Trade Committee ("JETCO") in London on 8 November 2011, Vince Cable and Fernando Pimentel signed the Agreement to cement ties between the UK and Brazil in relation to intellectual property. The Agreement confirms a commitment from both the UK and Brazil to work closely together to ensure that the intellectual property systems in the two countries promote innovation and growth.

The Agreement aims to make it both easier and cheaper for UK businesses to manage their intellectual property in Brazil and follows similar agreements signed by the UK with Nigeria and Mexico this year.

BT requested to block The Pirate Bay website

Posted by Nick Fitzpatrick on December 13, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Ofcom has cleared Al Jazeera English channel ("Al Jazeera") for its broadcast of "The Palestine Papers" after a complaint of unfair treatment by the Chief Negotiator of the Palestine Liberation Organisation ("PLO").
"The Palestine Papers", a four-part documentary series broadcast on Al Jazeera, examined "leaked" diplomatic documents relating to the Middle East peace process. The series criticised the role played by Dr Saeb Erakat, the Chief Negotiator of the PLO, a number of times. This prompted Dr Erakat to complain of unfair treatment and unwarranted infringement of privacy on behalf of both himself and the PLO.
The complaint, amongst other things, argued that important contextual information was deliberately omitted so that viewers could not properly understand the subjects discussed during the negotiation scenes and that the programme broadcast details of confidential documents that were stolen from Dr Erakat's office in breach of confidentiality and privacy.
In response to these particular complaints, Al Jazeera stated that the programme makers took reasonable care and carried out considerable research to ensure that all material facts were presented fairly. Al Jazeera also argued that, in any case, any alleged breach was warranted as the programme dealt with public affairs of great political and international importance and there could be no doubt about the importance of investigating and criticising the decisions made by Dr Erakat and other senior negotiators. Therefore, according to Al Jazeera, no consent was required from anyone within the PLO prior to broadcast.
Ofcom found that material facts in relation to the negotiations were not presented or omitted in a way that led to unfair treatment of Dr Erakat and the infringement of privacy in relation to obtaining and using the confidential document was warranted due to the significant public interest in the issues covered by the documentary series.

A coalition led by the BPI, a music industry body representing a coalition of Hollywood film studios, publishers and record companies, has requested that BT and several other UK ISPs block one of the largest illegal filesharing sites in the world.

The request by the BPI represents the first to be made since the landmark Newzbin2 ruling in August 2011 (for details see the August 2011 edition of Media Intelligence here and the November 2011 edition here) which ordered BT to block its internet subscribers' access to the website of Newzbin2, another illegal filesharing service, using BT's "CleanFeed" filtering technology. Along with a written request to BT made earlier this month, the BPI has also requested that Virgin Media, O2, Talk Talk, Orange and Sky voluntarily block access to The Pirate Bay's website. The Pirate Bay has already been subject to blocking actions in several other jurisdictions around the world.

Meanwhile, following the Newzbin2 ruling, the Motion Picture Association (MPA), the organisation responsible for bringing the Newzbin2 case against BT, is now looking for similar blocking action in respect of Newzbin2 to be taken by the UK's other major ISPs. On 9 November, the MPA confirmed that it had written to Virgin Media, Sky and TalkTalk and sparking interest in whether there might be a move towards another formal court order in the coming weeks.

Culture Minister calls for balance between advertising innovation and privacy

Posted by Patrick Mitchell on December 11, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Ofcom has cleared Al Jazeera English channel ("Al Jazeera") for its broadcast of "The Palestine Papers" after a complaint of unfair treatment by the Chief Negotiator of the Palestine Liberation Organisation ("PLO").
"The Palestine Papers", a four-part documentary series broadcast on Al Jazeera, examined "leaked" diplomatic documents relating to the Middle East peace process. The series criticised the role played by Dr Saeb Erakat, the Chief Negotiator of the PLO, a number of times. This prompted Dr Erakat to complain of unfair treatment and unwarranted infringement of privacy on behalf of both himself and the PLO.
The complaint, amongst other things, argued that important contextual information was deliberately omitted so that viewers could not properly understand the subjects discussed during the negotiation scenes and that the programme broadcast details of confidential documents that were stolen from Dr Erakat's office in breach of confidentiality and privacy.
In response to these particular complaints, Al Jazeera stated that the programme makers took reasonable care and carried out considerable research to ensure that all material facts were presented fairly. Al Jazeera also argued that, in any case, any alleged breach was warranted as the programme dealt with public affairs of great political and international importance and there could be no doubt about the importance of investigating and criticising the decisions made by Dr Erakat and other senior negotiators. Therefore, according to Al Jazeera, no consent was required from anyone within the PLO prior to broadcast.
Ofcom found that material facts in relation to the negotiations were not presented or omitted in a way that led to unfair treatment of Dr Erakat and the infringement of privacy in relation to obtaining and using the confidential document was warranted due to the significant public interest in the issues covered by the documentary series.

Ed Vaizey has addressed the Internet Advertising Bureau ("IAB") on issues regarding advertising and privacy, including the implementation of the e-Privacy directive, "Do Not Track" (a technology and policy proposal that enables users to opt out of tracking by websites they do not visit) and the upcoming revision of the Data Protection Directive.

During his speech to the IAB on 3 November this year, Ed Vaizey, Minister for Culture, Communications and the Creative Industries, outlined the importance of the relationship between online advertising and concerns about privacy, stressing the need to achieve a careful balance between protecting users' privacy online and encouraging continued innovation in advertising.

Continue Reading

ONLINE MARKET PLACES RESPONSIBLE FOR TRADEMARK INFRINGEMENTS

Posted by Debbie Rosenbaum on December 08, 2011

Reprinted from La A La Mode, DLA Piper's Fashion, Retail and Design E-zine

by Louis Puts (Brussels)

Online marketplaces such as auction sites are often used as platforms for selling unlawful fashion products. On 12 July, 2011, the CJEU rendered an important decision concerning the unlawful offers of cosmetic products with L'Oréal's trademarks on eBay. For the first time, the decision has clarified the circumstances under which online marketplace operators may be held responsible for unlawful trade-marked products offered for sale on their platform site, under trade-mark law, the E-Commerce and the IP Enforcement Directives.

Continue Reading

NEW CONSUMER RIGHTS DIRECTIVE: 10 COMMANDMENTS FOR ONLINE RETAILERS

Posted by Debbie Rosenbaum on December 05, 2011

Reprinted from La A La Mode, DLA Piper's Fashion, Retail and Design E-zine

by Jean-Louis Kerrels and Julie De Bruyn (Brussels)

On June 23, the European Parliament adopted the Consumer Rights Directive.* Among the changes is a 14 day EU-wide right for consumers to change their mind about their online purchases, as well as new information requirements.

Continue Reading

SAS Institute Inc. -v- World Programming Ltd

Posted by Debbie Rosenbaum on December 02, 2011

DLA PIPER IPT ALERT

By Ruth Hoy and Claire Bennett

Advocate General Bot delivered his Opinion in SAS Institute Inc. -v- World Programming Ltd on 29 November 2011.  The judgment of the full Chamber of the CJEU is not expected until sometime in 2012, and it is not yet known whether the Court will follow his Opinion.  In the meantime, the Opinion gives some useful insight for programmers who are trying to create computer programs that are interoperable with programs of others and studying and testing the functionality of programs.

Advocate General Bot delivered his Opinion in SAS Institute Inc. -v- World Programming Ltd on 29 November 2011.  The judgment of the full Chamber of the CJEU is not expected until sometime in 2012, and it is not yet known whether the Court will follow his Opinion.  In the meantime, the Opinion gives some useful insight for programmers who are trying to create computer programs that are interoperable with programs of others and studying and testing the functionality of programs.

Continue Reading

CJEU decision in SABAM -v- Scarlet

Posted by Debbie Rosenbaum on December 02, 2011

DLA PIPER IPT ALERT

By Ruth Hoy and Patrick Van Eecke

As was the case in Newzbin 2, a national court, in deciding whether to order an ISP to implement technical measures to deal with copyright infringement on the part of the ISP's customers, will need to consider whether the proposed measures are proportionate.  In doing so, it will need to strike a fair balance between the protection of intellectual property and that of a freedom to conduct a business enjoyed by ISPs.
On 24 November 2011, the CJEU gave its judgment in a case brought by SABAM, a Belgian collecting society, against Scarlet Extended SA (formerly Tiscali SA).  
In the national court proceedings, SABAM, which represents the interests of copyright owners in musical compositions had brought action to address the problem of P2P file sharing of digital musical files by Scarlet's customers.  The Court of First Instance in Brussels accepted that the activities on Scarlet's customers inevitably involved copyright infringement of  works within SABAM's repertoire, and that it had jurisdiction to order the prevention of such activities.  It appointed an expert to look into the feasibility of certain technical measures which could be implemented by Scarlet.
Following the report of the Court appointed expert, and in accordance with its powers under Article 87(1) of the Belgian Law of 30th June 1994 on Copyright and Rights, as amended by the Law of 10 May 2007, the Belgian court ordered that Scarlet should bring an end to the infringements by making it impossible for its customers to send or receive files containing a musical work in SABAM's repertoire by means of P2P software, in particular by using Copysense by Audible Magic.
The decision was appealed by Scarlet, who argued that: 
The decision was contrary to EU laws on privacy and freedom of expression; 
The decision was contrary to Article 12 of the E-Commerce Directive (which provides immunity to service providers who assist transmission within a communications network); and 
The decision was contrary to Article 15 of the E-Commerce Directive (which provides that "Member States shall not impose a general obligation on providers to monitor the information that they transmit or store nor a general obligation actively to seek factors or circumstances indicating legal liability").
In considering the case, the Brussels Cour d-Appel referred two questions to the CJEU, questioning whether it was contrary to EU law to require an ISP to introduce such a wide-ranging injunction.
In its judgment, the CJEU has confirmed that the injunction in the SABAM case went too far and that it would be contrary to EU law for a national court to order such a wide-ranging injunction which was not limited by (i) time; (ii) cost;  (iii) technical effectiveness of the measure proposed; (iv) type of communication, without distinguishing between lawful and unlawful content.  In particular, the Order must not go so far as to actively require ISPs to monitor the data of each of its customers in order to prevent any future infringement of IP rights. 

As was the case in Newzbin 2, a national court, in deciding whether to order an ISP to implement technical measures to deal with copyright infringement on the part of the ISP's customers, will need to consider whether the proposed measures are proportionate.  In doing so, it will need to strike a fair balance between the protection of intellectual property and that of a freedom to conduct a business enjoyed by ISPs.

On 24 November 2011, the CJEU gave its judgment in a case brought by SABAM, a Belgian collecting society, against Scarlet Extended SA (formerly Tiscali SA).

Continue Reading

ON TREND: EU POLICY MAKING IN BRUSSELS

Posted by Debbie Rosenbaum on November 30, 2011

Reprinted from La A La Mode, DLA Piper's Fashion, Retail and Design E-zine

by Emma Greenow (Brussels)
http://www.shutterstock.com/pic.mhtml?id=5228836
http://www.shutterstock.com/pic.mhtml?id=80653660
With what can seem to be an overwhelming increase in the quantity and complexity of EU regulation facing the fashion industry, understanding and taking action in this area can seem as if you are navigating a tangled web of issues and stakeholders.
The recent EU regulatory agenda has included policy reviews in relation to the intellectual property framework, the Digital Agenda, Online Behavioural Advertising, Consumer Rights and redress amongst others. Each of these developments has a direct impact on business activities in the fashion industry in Europe and, for this reason, interaction from rightsholders into the creation of the regulatory framework is essential. 
In recognition of this fact, fashion houses and brands are investing heavily in strategic discussions at EU level in order to directly provide input into many of the forthcoming changes. Through enhanced regularised contact with legislators and the provision of timely and helpful advice, all stakeholders are trying to move towards more workable and less cumbersome regulatory obligations for businesses.
An effective example of the need and value of increased dialogue was shown in the drafting of the recent recommendations for Online Behavioural Advertising, where industry, consumer groups and legislators worked together through dialogue to develop a series of best practice principles which all parties supported.  As a result of this process, the contributors may well have diverted a further regulatory burden for all stakeholders.
Following the changes brought about by the Lisbon Treaty, it is vital for all fashion industry participants to engage and input into all 3 key EU institutions, the European Commission, the European Parliament and the Council of the European Union. 
Legislative advocacy by rightsholders can take many forms - from the traditional methods such as meet and greet sessions with key stakeholders, press releases and local media, to the more sophisticated and targeted advocacy including social media campaigns, video messaging and awareness raising. All methods have definite advantages however it is key to know when to link each method into your activities. 
The face of the regulatory framework for the fashion industry is changing rapidly and this trend is likely to continue into 2012 - what is of key importance is your inclusion and input into these forthcoming discussions.

by Emma Greenow (Brussels)

With what can seem to be an overwhelming increase in the quantity and complexity of EU regulation facing the fashion industry, understanding and taking action in this area can seem as if you are navigating a tangled web of issues and stakeholders.

The recent EU regulatory agenda has included policy reviews in relation to the intellectual property framework, the Digital Agenda, Online Behavioural Advertising, Consumer Rights and redress amongst others. Each of these developments has a direct impact on business activities in the fashion industry in Europe and, for this reason, interaction from rightsholders into the creation of the regulatory framework is essential.

Continue Reading

BT and TalkTalk granted leave to appeal Digital Economy Act decision

Posted by Duncan Calow on November 17, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Internet Service Providers ("ISPs") BT and TalkTalk have been granted permission to appeal against the High Court's April 2011 ruling in their judicial review proceedings in relation to the Digital Economy Act.

The Digital Economy Act ("the Act") was passed by the Government in April 2010 with a view to protect creative industries such as music and film-making by introducing measures to tackle online copyright infringement. Under the Act, ISPs would be compelled to take an active role against pirates by, for example, sending out warning letters to alleged illegal downloaders.
BT and TalkTalk, two of the UK's largest ISPs, brought a judicial review of the Act in April 2011, claiming that the measures to tackle online copyright infringement were not only disproportionate but were also not compliant with EU law. However, the High Court ruled in favour of the Government, recognising the measures as both lawful and proportionate (please see the article in our April 2011 issue of Media Intelligence here).
After failing to obtain permission to appeal against the decision in June 2011, BT and TalkTalk finally succeeded on 7 October 2011. Lord Justice Lewison granted leave to appeal on four of the five grounds addressed in the initial case. The ISPs argue that the Act is not compliant with the following European Directives: the Technical Standards Directive, the Authorisation Directive, the E-Commerce Directive and the Privacy and Electronic Communications Directive. The ISPs accepted the High Court's opinion that there is a very high threshold of proving disproportionality and therefore have not sought appeal on their original claim that the act "represents a disproportionate interference with the rights of internet service providers, subscribers and internet users and with the concept of freedom of expression".
The hearing at the Court of Appeal is likely to be held next year, meaning the full implementation of the Act is likely to be further delayed. BT's challenge to the Act coincides with separate action taken by Hollywood studios under the Copyright, Designs and Patents Act 1988, under which BT has been ordered to block access to a website that facilitates online infringement of copyright (please refer to the next item in this newsletter here).

Continue Reading

"Goo Goo" and "Gaga"

Posted by Patrick Mitchell on November 16, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Ate My Heart Inc v (1) Mind Candy Ltd (2) Moshi Music Ltd (2011) - interim junction granted against online children's game company and its subsidiary
The High Court has granted an interim injunction preventing the promotion of an animated character known as "Lady Goo Goo" and its associated song due to the risk that the public would confuse it with the music artist Lady Gaga and her associated trademark.
The High Court proceedings were brought by the applicant following the attempted release of "The Moshi Song" by Moshi Music, a new division of the children's social networking site Moshi Monsters. The song had already been posted on YouTube and Moshi Music planned to release it as a single on iTunes. The online computer game also features an animated cartoon baby known as "Lady Goo Goo" which was arguably a visible representative of Lady Gaga. The applicant argued that there had been infringement of its LADY GAGA trade mark.
The applicant argued that there was a risk that consumers might consider "Lady Goo Goo" to have originated from the same source as, or a source economically linked to, Lady Gaga. This argument was strengthened by the fact that users had published blog comments suggesting they were confused as to whether there was a connection.
The factors relevant for the assessment as to whether or not there was a risk of confusion were as follows:

Ate My Heart Inc v (1) Mind Candy Ltd (2) Moshi Music Ltd (2011) - interim junction granted against online children's game company and its subsidiary

The High Court has granted an interim injunction preventing the promotion of an animated character known as "Lady Goo Goo" and its associated song due to the risk that the public would confuse it with the music artist Lady Gaga and her associated trademark.

Continue Reading

EU: Commission Report on the Digital Agenda: social networks can do much more to protect minors' privacy

Posted by Nick Fitzpatrick on November 10, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Following a report focussed on the implementation of the "Safer Social Networking Principles of the EU" the European Commission has found that social networking sites are not doing enough to protect minors' privacy.

Continue Reading

IPO signs copyright agreement with Nigerian counterparts

Posted by Duncan Calow on October 28, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The Intellectual Property Office has signed a landmark copyright agreement with its counterparts in Nigeria in an attempt to improve international cooperation on copyright issues between the two nations.

Continue Reading

Arsenal win Spanish trademark case

Posted by Patrick Mitchell on October 26, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Arsenal have successfully persuaded the Spanish Patent and Trademark Office to force a shop owner in Seville to change the name of her shop from 'Arsenale'.
Arsenal succeeded in demonstrating that the use of the name Arsenale for a hat, shoe and clothes store in Seville constituted a breach of Arsenal's trademark due to the risk of confusion between the two names.
The owner, Alicia Simon, registered the name Arsenale in 2007 and has faced a legal pursuit from the London club ever since. She claims that the name had nothing to do with the club and is in fact a reference to the Italian word given to shipbuilders' yards in medieval Pisa and Venice. Indeed, Ms Simon's assertion of cultural influences are supported by the location of the shop in the Arenal de Sevilla district, where Seville's medieval shipyards were historically located.
Ms Simon has subsequently appealed the decision to a Madrid tribunal.

Arsenal have successfully persuaded the Spanish Patent and Trademark Office to force a shop owner in Seville to change the name of her shop from 'Arsenale'.

Arsenal succeeded in demonstrating that the use of the name Arsenale for a hat, shoe and clothes store in Seville constituted a breach of Arsenal's trademark due to the risk of confusion between the two names.

The owner, Alicia Simon, registered the name Arsenale in 2007 and has faced a legal pursuit from the London club ever since. She claims that the name had nothing to do with the club and is in fact a reference to the Italian word given to shipbuilders' yards in medieval Pisa and Venice. Indeed, Ms Simon's assertion of cultural influences are supported by the location of the shop in the Arenal de Sevilla district, where Seville's medieval shipyards were historically located.

Ms Simon has subsequently appealed the decision to a Madrid tribunal.

 

 

The BBC is suing Berlusconi for "copying" Strictly Come Dancing

Posted by Patrick Mitchell on October 19, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

BBC Worldwide's lawyers are suing Berlusconi's Italian television network claiming that broadcaster Mediaset, which is owned by the Italian Prime Minister's family,  has copied the show's format.
The BBC is preparing a joint action with Rai, the Italian public broadcaster, against Mediaset. A BBC-licensed version of Strictly Come Dancing, namely Dancing With The Stars, has been running on Rai for the last six years. However, Mediaset now plan to launch a new, rival show on its Canale 5 channel. The new show, entitled 'Balia!' is said to be based on a South American dance show, 'Bailando Por Un Sueno', which translates as Dancing For A Dream.
Mediaset has denied copying the BBC's format and has put forward key differences between the shows, including the fact that the celebrities in Mediaset's version are partnered with amateur dancers as opposed to professional ones.
Pier Silvio Berlusconi, the Prime Minister's son and deputy chairman of Mediaset, stated, in defence of the show's format, that "the dance talent show is a format that works on commercial television everywhere in the world. We certainly wouldn't claim that the only reality format is Big Brother".
However, a BBC spokesman has expressed the importance of its Dancing With The Stars format: "It has been named as the world's most successful reality TV format and has been licensed to over 35 international broadcasters...it is very important to BBC Worldwide and its international licensees that the format is protected from infringement".

BBC Worldwide's lawyers are suing Berlusconi's Italian television network claiming that broadcaster Mediaset, which is owned by the Italian Prime Minister's family,  has copied the show's format.

The BBC is preparing a joint action with Rai, the Italian public broadcaster, against Mediaset. A BBC-licensed version of Strictly Come Dancing, namely Dancing With The Stars, has been running on Rai for the last six years. However, Mediaset now plan to launch a new, rival show on its Canale 5 channel. The new show, entitled 'Balia!' is said to be based on a South American dance show, 'Bailando Por Un Sueno', which translates as Dancing For A Dream.

Mediaset has denied copying the BBC's format and has put forward key differences between the shows, including the fact that the celebrities in Mediaset's version are partnered with amateur dancers as opposed to professional ones.

Pier Silvio Berlusconi, the Prime Minister's son and deputy chairman of Mediaset, stated, in defence of the show's format, that "the dance talent show is a format that works on commercial television everywhere in the world. We certainly wouldn't claim that the only reality format is Big Brother".

However, a BBC spokesman has expressed the importance of its Dancing With The Stars format: "It has been named as the world's most successful reality TV format and has been licensed to over 35 international broadcasters...it is very important to BBC Worldwide and its international licensees that the format is protected from infringement".

 

 

Keeping pace with social media in the workplace

Posted by Debbie Rosenbaum on October 14, 2011

By Kate Hodgkiss, Adam Hartley and Vinita Arora

The use of social media is now common place the corporate world, but are organisations protecting themselves by ensuring the relevant policies and procedures are in place? 

Social media connects millions of people across the world every day and has become an important way for people to communicate. It is now an integral part of the way we live and increasingly affects the way we work and do business. 

Continue Reading

Google pressed to block copyright-infringing websites

Posted by Patrick Mitchell on October 11, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The UK's Secretary of State for Culture, Media and Sport, has stated that search engines and ISPs should "make life more difficult" for sites breaching copyright laws.
Whilst detailing his vision of a new Communications Act at the Royal Television Society's Cambridge Convention, Culture Secretary Jeremy Hunt, reiterated the Government's support of the Hargreaves proposal to set up a new Digital Copyright Exchange.

The UK's Secretary of State for Culture, Media and Sport, has stated that search engines and ISPs should "make life more difficult" for sites breaching copyright laws.

Whilst detailing his vision of a new Communications Act at the Royal Television Society's Cambridge Convention, Culture Secretary Jeremy Hunt, reiterated the Government's support of the Hargreaves proposal to set up a new Digital Copyright Exchange.

Continue Reading

Digital Agenda: further action required to safeguard children online

Posted by Nick Fitzpatrick on October 10, 2011

Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The European Commission has issued a report reviewing how Member States are implementing EU Recommendations ensuring that children can enjoy the digital world confidently and safely, finding that measures taken so far have been insufficient overall.

On 13 September 2011 the Commission adopted a Report, 'Protecting Children in the Digital World', analysing the implementation by Member States of the 1998 and 2006 EU Recommendations on the protection of minors in the digital world.

On 13 September 2011 the Commission adopted a Report, 'Protecting Children in the Digital World', analysing the implementation by Member States of the 1998 and 2006 EU Recommendations on the protection of minors in the digital world.

Continue Reading

French CASTEL (卡斯代尔) Company Frozen out of China?

Posted by Edward Chatterton on September 29, 2011

A recent decision of the Wenzhou Intermediate People's Court in China should put Western brand owners on their guard when being sued in China.  It also provides yet another reminder of the importance to Western brand owners of filing first in China.

Continue Reading

Is BSkyB's control of subscription pay-TV movie rights in the UK restricting competition?

Posted by Patrick Mitchell on September 06, 2011

From DLA Piper's Media and Sports Group e-newsletter 'Media Intelligence'

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The Competition Commission has given a preliminary ruling that BSkyB's control over subscription pay-TV movie rights is restricting competition.

 

In a "Provisional findings report" published on 19 August, the Competition Commission has provisionally ruled that Sky's control over the acquisition and distribution of first subscription pay-TV window ("FSPTW", which window typically falls after theatrical release and DVD/EST/TVOD exploitation) movie content on pay TV adversely affects competition between pay-TV retailers.

Continue Reading

Ciao!

Posted by Ann Ford on August 29, 2011

Ciao to Chiara Garofoli, our DLA Piper colleague from Milan, Italy who is going off to work for Google, Milan.  Chiara was a founding and active editorial member of our fashion law publication, Law a la Mode, and an editorial member of this Blog.  Best of luck at Google, Chiara!

British website owners targeted by US Immigration and Customs Enforcement

Posted by Rebecca Kay on August 18, 2011

Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

British websites suspected of infringing US copyrights are being targeted by the US Immigration and Customs Enforcement (ICE) agency whether or not their servers are based in the US and whether or not there is another direct link to the country.


ICE has warned website owners that they could face extradition to the US on piracy charges if they have reason to believe they are infringing US copyrights. In addition, websites could be closed down.


Erik Barnett, ICE's assistant deputy director, warned that all '.com' or '.net' websites could be legitimately targeted if they were suspected of involvement in spreading pirated US films, TV or other media. These web addresses have their connections routed through Verisign, an internet infrastructure company based in Virginia, which ICE believes is an adequate connection to seek a US prosecution.


ICE has targeted not only those sites that directly host or stream pirated material, but also those that simply provide links to it. Barnett's comments follow the case of Richard O'Dwyer, a British student facing extradition for running TVShack.net, a web site which provides links to non-licensed streams of US films and TV shows. 

TV Catchup case referred to Court of Justice of the European Union

Posted by Rebecca Kay on August 17, 2011

Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Mr Justice Floyd has referred to the Court of Justice of the European Union ("CJEU") the question of whether live streaming of television programmes over the internet is a "communication to the public" and therefore subject to copyright laws.


TV Catchup Limited ("TVC") operate an internet based live streaming service of broadcast television programmes, including films, in which the copyright is owned by broadcasters ITV, Channel 4 and Channel 5.  TVC's website allows members of the public to access live UK television on computers, games consoles and smart phones. There are over 50 channels available.


In November last year, with the threat of a copyright infringement action looming, TVC applied to the High Court for summary judgment against the broadcasters, on the basis that their claim would have no real prospect of success at trial.  TVC argued that in order to infringe copyright in a broadcast under section 20 of the Copyright, Designs and Patents Act 1988 ("CDPA 1988") ("communication to the public"), the alleged infringer's transmission must itself be a broadcast within the meaning of s.6 CDPA 1988.  Mr Justice Kitchin disagreed and the case proceeded to trial.


Last week, Mr Justice Floyd handed down the High Court's judgment.  He provisionally agreed with the claimants' contention that TVC's streaming service is a "communication to the public" for the purposes of section 20 of the CDPA 1988, but considered that the principles set out in the leading CJEU authority on this point, the Rafael Hoteles case, did not go far enough to enable him to answer the question conclusively in the claimants' favour.  He therefore referred the question to the CJEU.


Floyd J. also addressed the issue of whether TVC had reproduced a "substantial part" of the films and broadcasts in its buffers and on the screens of users.  This issue is currently awaiting judgment by the CJEU in the Football Association Premier League v QC Leisure case, in relation to the screening of live foreign broadcasts of Premier League matches in pubs.  Pending that judgment, Floyd J. expressed the provisional view that TVC had reproduced a substantial part of the films in its buffers and onscreen, but not a substantial part of the broadcasts.  Questions on these issues will also be referred to the CJEU, but are likely to be conclusively determined much more swiftly by the Premier League judgment.


Floyd J. also held that final judgment on TVC's defence under section 28A of the CDPA (which permits in certain circumstances the making of temporary copies which are transient or incidental and an integral and essential part of a technological process, and which have no independent economic significance) should be deferred pending the outcome of the Premier League case; his provisional view is that the defence does apply to reproduction in the buffers ("it is reasonably clear that the reproductions in the buffers have no independent economic significance"), but he was less certain in relation to reproduction on users' screens.

Landmark ruling for database owners in relation to 'seeding' and 'substantial part'

Posted by Rebecca Kay on August 16, 2011

By Simon Levine & Catherine Beloff, DLA Piper United Kingdom

Simon Levine
Catherine Beloff

Beechwood House Publishing (t/a Binleys) v Guardian Products Limited & another [2011] EWPCC 22 

His Honour Judge Birss QC has handed down a landmark ruling in the Patents County Court, with positive and important implications for the protection and enforcement of sui generis database right. 

The claimant in this case publishes a database called Binleys Database of GP Practices, consisting of the names and addresses of individuals, such as practice nurses and doctors, associated with GP practices.  As is common practice amongst owners of large databases, Binleys 'seeds' the database.  Seeding involves including fictional dummy contacts (in this case, Binley's staff) and unique indicators within a database to enable the owner to monitor whether someone is using its data unlawfully.  Binleys finds out if someone is using data from its database because a letter will be sent to one of its seed addresses.

Continue Reading

Harry Potter plagiarism claim fails

Posted by Rebecca Kay on August 16, 2011

Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

A £659 million damages claim against JK Rowling and her publisher, Bloomsbury, was struck out by the Court of Appeal after the claimant failed to meet the deadline for payment of security for costs.


The estate of the late author Adrian Jacobs had accused JK Rowling of copying substantial parts of the plot for the fourth Harry Potter book, "Harry Potter and the Goblet of Fire", from "The Adventures of Willy the Wizard - No 1 Livid Land", written by Jacobs in 1987.  Mr Jacobs' estate said the plot of Goblet of Fire copied elements of the story including the concept of a year long wizard contest.


Mr Jacobs' estate was required to pay approximately £1.5 million to the court as security against the likely costs to be incurred by JK Rowling and Bloomsbury should the case eventually go to trial.  The estate failed to meet the deadline to produce the first tranche of the money and the case was struck out.


This recent failure of the claimants in the English courts marks the second blow to the claim which has already been rejected by a court in the United States earlier this year. In her judgment in the US case, Judge Shira Scheindlin stated that any "serious comparison of the two [books] strains credulity".


More recently, Mr Justice Kitchin, who ordered the payment of security costs in March, expressed scepticism over the merits of any claim stating that he thought the claim had an ''improbable'' chance of success.  He also attacked the way in which the estate had conducted the litigation, stating individuals associated with the estate "have also engaged in what I think the defendants fairly describe as thinly veiled threats to publicise the allegation that Ms Rowling has engaged in plagiarism''.


Whilst the claim as been struck out in the English courts, Max Markson, spokesman for the estate, has not ruled out further litigation "in another country, another jurisdiction".

ASA finds L'Oreal guilty of using misleading and exaggerated advertisement techniques

Posted by Rebecca Kay on August 15, 2011

Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Two advertisements for L'Oreal (UK) Ltd's beauty brands, Lancôme and Maybelline, were ordered to be removed from advertising circulation due to their misleading content (decisions here and here).

The two advertisements, for Lancôme's "Teint Miracle" foundation featuring Julia Roberts and Maybelline's "The Eraser" foundation featuring Christy Turlington, used post-production digital manipulation on the faces of both women.  This was found to heighten the effect both products could actually achieve.


For both advertisements, L'Oreal (UK) Ltd supplied unedited pictures of the women to show that the effect of the digital manipulation was not to mislead but to fulfil the expectations held about the beauty of Roberts and Turlington.  They also provided evidence that supported overall claims for the effects both products would have on the skin.


However, the challenge, brought by the MP Jo Swinson, was upheld. The ASA could "not conclude that the ad image accurately illustrated what effect the product could achieve" and so were misleading and in breach of CAP code 3.1 (Misleading advertising) and 3.11 (Exaggeration). The adverts must not appear again in their current form.

Social Media: Legal (and less Legal) Tips for the Hospitality Industry for Avoiding Pitfalls and Reaping Benefits

Posted by John Wilks on August 15, 2011

It goes without saying that social media platforms are now key weapons in the armoury of any marketing department.  Few major brands in any sector are without a Facebook presence, and even those yet to use social media as a marketing tool will be affected by references to them on such platforms.

The hospitality industry is as affected by this phenomenon as any.  As well as universally relevant platforms like Facebook, Twitter and Bebo, there are of course numerous specific hospitality industry sites enabling user-generated postings and reviews: Tripadvisor, Expedia, Yelp, Toptable, and so on.  In addition, there are content-hosting sites like Youtube, which may for example be used to host viral advertisements.  These different sites raise numerous legal issues: around branding, advertising, content ownership, defamation, rights in content, etc.  The issues themselves are rarely new, but the response to them may demand a different approach.  Below are some recommendations from a lawyer’s perspective on how hospitality industry operators may best shape their social media strategy.

Continue Reading

UK TO GET PARODY AND IPOD DEFENCES BUT NOT WIDE SITE BLOCKING POWERS

Posted by John Wilks on August 08, 2011

Last Wednesday, the UK Government gave its much-awaited response to the review of the UK intellectual property regime conducted by Professor Hargreaves earlier this year (see our earlier post here). They accepted all of Hargreaves' recommendations, which include in particular extending defences to copyright infringement, eg. by creating a format-shifting defence to legitimise people putting their music collection on their MP3 players. While many of these changes may be welcomed, it is far from clear how they would give the UK economy anything like the enormous boost (between £5 billion and £8 billion by 2020) that the Hargreaves review predicted.

At the same time, the UK government announced plans for its implementation of the controversial Digital Economy Act 2010, which include a decision to park implementation of a broad right which would enable copyright holders to force ISPs to block infringing websites.

Continue Reading

UK & Copyright Piracy: NEWZBIN2 TAKES ANOTHER BLOW

Posted by Rebecca Kay on August 05, 2011

In a landmark ruling, the UK High Court has delivered its verdict in Round Two of Hollywood versus the Copyright Pirates – despite Newzbin2 not even taking part in the fight.

Ringside rules

Rights-holders have long sought an effective legal mechanism to reduce the scale of online piracy of copyright material by UK users. Rights-holders are often prevented from taking action against primary infringers because they locate themselves beyond the jurisdiction of the courts or use decentralised networks in order to distribute content.  On the other hand, taking action against individual consumers has never been the favoured option.  Internet service providers ("ISPs"), the rights-holders argue, are the gatekeepers that provide the facilities that allow UK users to infringe copyright on a massive scale.  Moreover, they are not a moving target and have the practical means to restrict access to sources of infringements.

This case turned on the application of section 97A of the Copyright, Designs and Patents Act 1988, which provides that the High Court has the power to grant an injunction against an internet service provider ("ISP") where the ISP has "actual knowledge of another person using their service to infringe copyright".  The section was adopted in order to implement Article 8(3) of the Information Society Directive (2001/29/EC): "Member States shall ensure that rightsholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right".  However, despite having the potential to be a valuable weapon against infringers, the provision has long sat collecting dust, untested by rights-holders. 

Until now.

Continue Reading

UK Supreme Court Opens Door to Overseas Copyright Claims in UK Courts

Posted by John Wilks on July 31, 2011

By John Wilks and Damian Herrington, DLA Piper UK

In its first ever ruling on an intellectual property case, the UK's Supreme Court has decided in Lucasfilm v Ainsworth that the stormtrooper helmets used in the Star Wars films were not "sculptures", and thus were not protected by the English law of copyright.

Significantly, however, the Supreme Court also ruled that the infringement claims based on US copyright brought by Lucasfilm in respect of Mr Ainsworth's acts in the US were justiciable in the English courts, a ruling which could have wide-ranging implications for the ability of English courts to decide claims for acts taking place in foreign countries which infringe the copyright in those countries.  The case indicates that if a defendant is resident in England, the English courts will be prepared to deal with claims for infringement of foreign copyright.

Whether the decision leads to full scale forum shopping by copyright infringement claimants remains to be seen.  But it will give claimants a useful litigation option in cases where there is international infringement of copyright by an English-domiciled defendant.

Continue Reading

UK: HEADLINES PROTECTED BY COPYRIGHT, AND "MERELY BROWSING" NOT A DEFENCE

Posted by John Wilks on July 28, 2011

UK CLIENT ALERT

At the end of a month where the main item of UK news has been the news itself, the English Court of Appeal has confirmed that headlines may be copyright works in their own right, and it is not a defence for an internet user accessing copyright-protected content to say they were merely browsing the relevant web page.

The Court of Appeal gave the first instance judgment of Mrs Justice Proudman in this case (NLA v Meltwater) a very definite seal of approval, describing it as “clear, careful and comprehensive”.  

While this case was about newspaper headlines and article extracts, the expansive approach taken to the scope of literary copyright will be encouraging to anyone seeking to assert rights in very brief strings of words- jokes, straplines, product names and titles of books, songs, and films spring to mind in particular.  The vagueness of the Court's reasoning in this regard means it is, however, still difficult to determine where the borders of protection will fall for particular examples, but it is clear that what determines the point is the level of effort in the creation process, not the end result.

Continue Reading

Social Media & The Future of Legal Service

Posted by Debbie Rosenbaum on July 25, 2011

Guest blog post by Carissa L. Bouwer. Carissa is a summer associate in the Sacramento office of DLA Piper. She attends University of the Pacific, McGeorge School of Law and will obtain a J.D. in 2012.  

Advances in technology have changed the way lawyers conduct research, communicate with clients, discover information about opposing parties, and even file documents with courts.  Is the next advancement likely to be in the way that defendants are served process?

Since 2008, the United Kingdom, Canada, New Zealand, and Australia have all allowed substituted service of process through Facebook when a defendant could not otherwise be served.  In 2009, the United Kingdom allowed an injunction to be served via Twitter by sending a message that contained a link to the injunction.  In giving approval for service through social networking sites, the courts required that reasonable efforts were made to serve the defendants, that they could not be served in another manner, and that the service was likely to give actual notice.  The Australian court also stipulated that the papers be sent through a private message and not just posted on the defendant’s wall where it would go into the newsfeed of all of the defendant’s friends.

There are approximately 150 million Facebook users in the United States and more than 750 million around the world.  Twitter users number 300 million.  LinkedIn had 3.6 million visitors in May.  In comparison, readership of newspapers is decreasing dramatically: New York Times print edition is 1.4 million on Sundays and 1.8 million people read USA Today. 

In the United States, the minimum standard for service of process has long been to provide “actual notice.”  In Mullane v. Central Hanover Bank & Trust, the Supreme Court said that due process requires that “notice is reasonably calculated, under all the circumstances, to apprise interested parties of the pendency of the action and afford them an opportunity to present their objections.”  Notice by publication is not thought to give actual notice when a defendant’s identity is known.  That is especially understandable today, as print newspapers are a declining industry and readership continues to fall.  However, a large percentage of the population, nationally and globally, check their e-mail and other social networking sites daily, if not hourly.  When people move from place to place, their access to social networking sites moves with them.  Where other methods of notice have failed, a Facebook message may serve the ultimate goal of providing actual notice to a defendant who can’t be physically found.  It also has the advantages of being fast, cheap, and seems particularly appropriate when the underlying action is web-based.  To date, there are no reported cases of service of process in the U.S. being made through social networking, but attorneys may begin to consider it an option for defendants who are avoiding service by traditional methods.

There are concerns about identifying the correct person and confirming that their social networking accounts are active.  Courts will, and should, require that evidence be offered proving the documents served on social media sites will come to the defendant’s knowledge.  But once those concerns have been alleviated, service through social media may be the next great step of using technology to bring us closer together.

EMEA's June/July Trademarks and Design Newsletter

Posted by Debbie Rosenbaum on July 14, 2011

NEWS

Costa Rica: Ratification of Hague Apostille Convention

Greece: New Draft Trademark Law to Be Submitted to Parliament

New Zealand: Changes to New Zealand Designs Practice

Portugal: Creation of a Specialized Court of Intellectual Property, The IP Court

CASE LAW

CA Paris, Pôle 5 ch. 2, April 1st, 2011, Sté Elytel v/ Sté Univers Poche

CheapFlights International Ltd v OHIM, Cases T-460/09 and T-461/09, 5 May 2011.

DHL Express France v Chronopost SA, Case C-235/09, 12 April 2011.

Continue Reading