The DLA Piper Fashion, Retail and Design Group distributed a special edition of its e-magazine, Law à la Mode. The edition coincides with the 135th INTA (International Trademark Association) Annual Meeting in Dallas, Texas. Given the nature of the conference, the special edition focuses exclusively on branding issues such as securitizing trademarks, IP rights in shop formats and brand protection considerations for entrants into emerging markets. Please click here to read the e-magazine.
Trade dress protection has existed for more than a hundred years in the United States, but for a long time took a back seat to patents, trademarks and copyrights in the intellectual property pantheon. Then came the US Supreme Court decisions in Two Pesos, Wal-Mart and Traffix Devices, raising the profile of trade dress and altering the public’s perceptions. In the 15 years since then, the number of applications filed with the US Patent and Trademark Office seeking trade dress protection has increased dramatically, and so has litigation over trade dress claims. Because trade dress litigation is, in most cases, significantly cheaper than patent litigation, it may soon become a major competitor to patent litigation as a means of resolving disputes.
DLA Piper plans to officially launch its new office in Seoul today. With this opening, DLA Piper will expand its strategic presence to 16 of the G20 economies.
This video was originally posted by the DLA Piper Italian Intellectual Property and Technology team at http://blog.dlapiper.com/iptitaly/.
This past weekend, over 200 DLA Piper attorneys traveled to Schaumburg, Illinois for the Intellectual Property & Technology (IPT) Practice Group Conference (“Conference”). The Conference’s theme was “Celebration and Commitment.” This three-day event focused on networking across offices, celebrating the achievements of the IPT practice, and committing to goals to expand and improve the IPT practice in 2013.
The Conference consisted of sessions on alternative fee arrangements, business development, diversity and pro bono projects, social media brand building, and team building. Of course, the highlights of the Conference were the very humorous group commercials on the DLA Piper IPT brand and the entertaining Karaoke night. We look forward to next year’s Conference!
GAMING & BETTING
Betfair files complaint with the EC over newly passed Cypriot laws that ban betting exchanges
This legal action challenges the Cypriot legislature’s unanimous move to prohibit betting exchanges and online casino games.
Betfair, the leading online betting exchange, filed a formal complaint with the European Commission (Commission) on 10 September 2012 in relation to recently passed Cypriot gambling legislation. This new legislation was passed in July of this year, the most fundamental feature of which is the prohibition of online casino (including poker) and betting exchanges. Therefore, only sports betting (other than exchanges) are permitted.
With the resurgence of business interest in Myanmar, the loosening of sanctions and the growing feeling that Myanmar is again "open for business", it is essential that trade mark owners selling their goods or services in Myanmar (or if others are importing and selling their goods in Myanmar) urgently consider their trade mark position for and how to protect their trade marks in Myanmar.
There is currently no legislation in Myanmar giving a proprietary right to a mark on registration. One must therefore look to Myanmar's general law to determine the acquisition of title to and protection of trade marks in Myanmar.
A new opportunity is on the horizon for brand owners seeking to expand their online presence in China. Starting September 15, 2012, owners of a valid trademark registration will be able to register .中国 (or “.CHINA”) domain names corresponding to their registered marks.
Choosing the right battles: DLA Piper's Radiance A. Walters on how to avoid the "trademark bully" label
Reposted from Intellectual Property Magazine, July 12, 2012
This article discusses the increasingly important role of social media in trademark enforcement efforts, and provides effective tips and strategies for corporate counsel to create a solid, value-driven enforcement strategy and avoid the "trademark bully" label.
Read here: Social Media and Trademark Bullying
Reposted from Law à la Mode, Edition 6 - Summer 2012
By Alexander S. Birkhold (New York)
The recent formation of the Model Alliance, an organization seeking to enforce and expand existing legal protections for models in the United States, has prompted increased US scrutiny of employment and image rights issues in the fashion industry.
Beijing Friendship Hotel, along with Beijing's Renmin University of China, hosted the United States-China Intellectual Property Adjudication Conference. Ann Ford (Washington, DC), along with other DLA Piper partners including Yan Zhao (Shanghai), Ed Chatterton (Hong Kong), and Beni Surpin (San Diego) attended the Conference. DLA Piper Partner and IPT leader John Allcock moderated a key session on "Enforcement of Patent Judgments."
A group of us from our DLA Piper IPT group around the world, including those from Hong Kong, San Diego and Washington, DC are in Beijing, China attending the United States-China Intellectual Property Adjudication Conference. Yesterday, several top Chinese judicial and government leaders joined Gary Locke, U.S. Ambassador to the PRC, Judge Randall Rader, Chief Judge to the U.S. Court of Appeals for the Federal Circuit and David Kappos, Under Secretary of Commerce for IP, Director of the U.S. Patent and Trademark Office to talk about our shared goal of IP enforcement. Key issues will be discussed in the areas of trademark, patent and copyright. The Chinese press came out in force to cover the opening ceremony of the Conference and the judges and commissioners speaking there.
By Rebecca Kay
This Tuesday, members of DLA Piper's Fashion, Retail and Design Group assembled in Washington with retail clients from around the globe, for a working lunch entitled "Around the retail world in sixty minutes: Reflecting the top branding issues for retailers in 2012". As well as being a fantastic opportunity to catch up with industry peers, the event was a fascinating insight into topical issues and concerns.
By Ruth Hoy, John Wilks, and Nick Edbrooke
On 20 February 2012 the UK High Court issued a decision relating to the infamous "Pirate Bay" website. The decision provides a useful example to copyright owners of how to combat online piracy, especially where the infringer eludes UK proceedings by operating from abroad. It is the first case where the UK courts have been asked to award injunctions against ISPs in respect of a Peer to Peer network using the popular Bittorrent file sharing protocol (as opposed to other file exchange protocols).
The Internet Corporation for Assigned Names and Numbers (ICANN) has just begun accepting applications for the new generic top-level domain (gTLD) program. This program allows organizations to own their own top-level domain extension and is intended to greatly proliferate the number of available domain extensions beyond the “.com,” “.org” and limited number of other extensions to which Internet users are accustomed.
With a few exceptions, organizations can apply to have almost anything to the right of the dot, including their company’s own brand name or a generic term.
Please note that March 29 is the last day applicants can register in the system and April 12 is the last day that applications will be accepted.
While we have previously written about gTLDs and will continue to update our blog as the process unfolds, we wanted to update our counterparts that a new version of the Applicant Guidebook has been released in connection with the opening of the application window.
For more specific information about the gTLD application process and its impact on your brand, or to discuss the possibility of moving forward with an application for a new brand-centric gTLD, please let us know how we can help!
Fashion is an integral part of how consumers construct their personal identities and choose to portray themselves in their everyday lives. From a societal perspective, we correlate luxury fashion brands with success and exclusiveness. We notice individuals with red-soled stilettos or LV patterned brown leather purses because we know that while these individuals could have chosen from a variety of options, they chose to identify themselves with expensive emblems of status. This aura of exclusiveness is the value that luxury brands provide to their consumers: few can have it; the others merely aspire to it.
Social media stands in stark contrast to this image. Social media platforms are inherently noisy, crowded and easily accessible from a variety of platforms. This dichotomy begs the question: will using social media tarnish the value of luxury brands by making them too accessible by the masses?
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.
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.
“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.
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 firstname.lastname@example.org.
DLA Piper's Fashion Retail Design Group recently published Law a la Mode - Edition 4 Winter 2011, a legal fashion-style magazine that is distributed to clients and friends of the firm worldwide. Law a la Mode has a revolving editorialship and Edition 4 is the first to be edited by the U.S. offices.
Members of the U.S. editorial board include Ann K. Ford, Gina Durham, Tamar Duvdevani, Kiran N. Gore, Melissa Reinckens, Debbie Rosenbaum, Michelle Schaefer, Radiance A. Walters, and Job Seese (New York, Washington DC, and Chicago).
The magazine is available here.
We welcome your thoughts and comments on our latest edition.
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.
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.
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.
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.
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.
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.
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.
As you may already know, the "dot-xxx" (.XXX) top-level domain is the Internet's new home for adult content.
Next Tuesday, December 6, the ICM Registry in charge of the .XXX top-level domain will make .XXX domains available for purchase to the public on a first-come, first-serve basis.
Anyone can register a domain for around $100-$150 per year, assuming, of course, it has not already been blocked or registered during one of the sunrise periods. No trademarks are necessary to participate in this registration.
Clients who wish to block .XXX domains can work with us to set up automated purchases that will begin immediately upon the opening of the December 6th window. While we can make no guarantees regarding success, we believe this is an important opportunity to proactively protect your brand.
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.
The Autumn Edition of Law à la Mode is now available online: click here to view the e-magazine.
With a Belgian editorial team for this edition, we wanted to give a flavour of an up and coming fashion capital in the heart of Europe. With a mix of cultures from Europe and beyond, Belgium is fast becoming a key location for new design and innovation in fashion. More than just moules, frites and beer, we are fortunate enough to have some of the most renowned fashion academies in Antwerp and Brussels generating internationally known designers such as Dries Van Noten, Ann Demeulemeester, Martin Margiela and Olivier Theyskens.
As Belgium is also the hub of EU policy development and creation, we share with you our thoughts on the trends around policy making - steering you through the agenda and potential activity (page 4).
Sustainability being the buzz word of the moment in relation to product development, we have an insight from our UK team on the interplay between the sustainability debate and the fashion industry (page 5).
The UK Intellectual Property Office ("IPO") has signed a landmark agreement with the Mexican Institute of Industrial Property ("IMPI") to improve cooperation between the two nations on issues of copyright, patents, trade marks and designs.
The agreement aims to support the growth of UK businesses operating in Mexico and follows recommendations made in the Hargreaves Report that the UK should continue to pursue international interests in intellectual property.
UK Minister for Intellectual Property, Baroness Wilcox, said: "in the midst of a globalised era, it is imperative for Governments to jointly collaborate on common understandings such as innovation. We are certain that this partnership will enrich our IP systems, and will benefit IP stakeholders in both economies".
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").
A Joint Committee of MPs and peers from the House of Commons and House of Lords ("the Committee") has issued a report on the Draft Defamation Bill ("the Bill"), approving many of the Government's proposals but also recommending further changes that should be made to libel laws.
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.
It goes without saying that companies are increasingly using social media to reach new customers and to strengthen relationships with loyal customers. As you may already know, Google opened its social media platform, Google+, to businesses and brand owners today. A Google+ profile is similar to a Facebook Fan page, and we want to encourage you to set up an official page to both promote and protect your brand. You can open your company's Plus page at http://plus.google.com/pages/create.
As always, let us know if you have any questions or if we can be helpful in any way.
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.
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.
Authorities in New Zealand are using the Major Events Management Act 2007(MEMA) to combat ambush marketing at this year's Rugby World Cup (RWC).
The RWC has been declared a "Major Event" for the purposes of MEMA (under the Major Events Management Act (Rugby World Cup 2011) Order 2007) - as such, parties that are not official commercial partners of the RWC are prohibited from marketing their goods and services in any way that suggests they are official sponsors or otherwise associated with the event. The MEMA attempts to prevent ambush marketing by prohibiting the use of key event emblems and words, including phrases such as "Rugby World Cup" and "Webb Ellis Cup", as well as the use of the RWC logo or image of the Web Ellis Cup, in any advertising or promotional activity. Furthermore, the MEMA seeks to provide areas and routes around the stadia where unauthorised advertising and street trading are prohibited.
The Advertising Standard Agency ("ASA") order that an advertisement for thetrainline.com be removed due to its misleading content.
The television advertisement for thetrainline.com, which was broadcast on 9 May 2011, featured people carrying placards that stated "Save 43% on average" and "Save up to 6pm the day before travel". On-screen text stated "Advance fares and selected routes only. Subject to availability".
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".
By Nicholas Cole, Special Counsel, DLA Piper Australia
On 14th September 2011, the Australian Minister for Broadband, Communications and the Digital Economy, Senator Stephen Conroy announced an independent inquiry into the Australian media (Media Inquiry).
The Media Inquiry significantly expands the scope of the Government's existing review of the policy and regulatory frameworks that apply to the converged media and communications landscape in Australia (Convergence Review).
The social networking site brings action against Twittad, an online advertising service, for use of the trademark "Let Your Ad Meet Tweets" in a battle to win trademark registration of the term "tweet".
Twittad, a provider of online advertising was granted registration of the mark LET YOUR AD MEET TWEETS in 2008. However, in a move to claim "tweet" as its own, Twitter has filed a complaint with the United States District Court in Northern California for the cancellation of Twittad's registration.
Giving its reasons for bringing the action, Twitter stated that Twittad's use of the mark "exploits the widespread association by the consuming public of the mark TWEET with Twitter and threatens to block Twitter from its registration and legitimate uses of its own mark."
The lawsuit argues that "tweet" became widely adopted by consumers and media outlets to refer to Twitter immediately after its launch. Prior to this, "tweet" was not generally known to the consuming public beyond its dictionary meaning and had no association with web-based social networking and communications services.
As part of the Advertising Standards Authority ("ASA")'s survey, 120 websites were monitored by the ASA Compliance team for a period to 1 March. In addition, the ASA Compliance team contacted the offending website owners and sought an assurance that they would amend their advertising to ensure compliance on a go-forward basis.
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.
Excerpts from DLA Piper's INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS - ASIA PACIFIC | Issue 2, Q2 2011
The “dot-xxx” (.XXX) top-level domain is just days from its launch as the new home for adult content on the Internet.
As part of the launch, ICM Registry, the registry selected to maintain the .XXX top-level domain, is providing an opportunity for companies that do not want their brands associated with adult content to block their registered trademarks from being registered as .XXX domains, during a period named Sunrise B.
Whether or not your brand participated in the pre-sunrise reservation “wish list,” you will need to submit an application during Sunrise B, which runs from September 7 to October 28, 2011.
The goods were seized at a car boot sale, as part of a regular inspection by Trading Standards officers. The lighters displayed the Olympic symbol and London 2012, which are protected trade marks, and did so without the authority of the controller of those marks, The London Organising Committee of the Olympic Games. Various Olympic-related words and marks are given elevated protection under the Olympic Symbol (Protection) Act 1995 and the London Olympic Games and Paralympic Games Act 2006.
This seizure provides another example of trading standards officers working in conjunction with the organisers of the 2012 Games to seek to prevent so-called ambush marketing. We understand that steps are now being taken to trace the supply of these lighters.
The International Olympic Committee is encouraging athletes competing at the 2012 Games to use social media after issuing guidelines for its use.
The IOC encourages competitors to "post, blog and tweet their experiences" but warns that if rules are broken it can withdraw accreditation, shut down online operations and start legal proceedings for damages. The IOC guidelines also warn against athletes using social media platforms for commercial or advertising purposes and prohibits sharing videos filmed at Olympic venues, although still photographs will be permitted.
The IOC issued the guidelines in order to pre-empt the problems that occurred at the Vancouver Winter Olympics. The IOC said: "Unlike in Vancouver, where the rules were adapted to fit changed circumstances, the rules in force in London have been properly codified."
The IOC recommends that postings, blogs or tweets should be in a first-person, diary-type format and should not be in a journalistic style. Further, all content should "be dignified and in good taste, and not contain vulgar or obscene words or images".
Athletes will not be permitted to use the official Olympic symbol, and any reference to the word "Olympic" must be factual and "not associated with any third party or any third party's products or services".
The guidelines can be viewed on the IOC website here.
Reposted from DLA Piper's Media & Sport Group bulletin
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.
Social Media: Legal (and less Legal) Tips for the Hospitality Industry for Avoiding Pitfalls and Reaping Benefits
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.
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.
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.
Guest blog post by Megan A. Cosgrove and Carissa L. Bouwer. Megan and Carissa are summer associates in the Sacramento office of DLA Piper. They attend University of the Pacific, McGeorge School of Law and will graduate in 2012.
Last weekend, we decided to host a wine and cheese party for a small group of friends. We ran down the list of everything we needed. Small plates? Check. Wine glasses? Check. Napkins? Check. Those little wine glass charms so people can identify their glasses? Check check. Brie? Check. Parmesan? Che…wait…we have a hard white pungent cheese, but I’m not sure that it’s from Parma. Does it need to be? And that pastry…we can’t just assume it’s Cornish. What if it’s not? We’d be liars. All of our closest friends would find out that our Cornish pastries weren’t from the UK and they would never come back for wine, cheese, and delish appetizers again.
Perhaps this isn’t a conversation you’ve had before a party. But let’s be honest, our tastes, and our conversations, have changed quite a bit since our college days. I’m pretty sure I never bothered asking where the beer in that keg came from, but it might be time we ask where our wine, cheese, and other food products come from. And interestingly enough, the birthplace of many foods and beverages we consume are actually revealed in the name. And a lot of imposters are going to have to change.
In 2000, the California Legislature agreed with Napa Valley wine producers that the term “Napa” signified quality in wine. They were concerned that novice wine buyers would be duped into paying more for a lower quality wine if the term “Napa” did not designate that the wine was actually from the well-known grape growing region of California. As a result, the legislature passed Bus. & Prof. Code § 25241, providing that wine made from grapes grown in other regions could not be branded “Napa wines.”
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.
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.
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.
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
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.
In June, our team was asked to contribute to a Managing Intellectual Property Magazine feature on trademark protection for slogans/phrases. Our responses were provided alongside responses from seven other practitioners from around the world as part of a global practice feature MIP runs on a monthly basis. Here are our answers, and we encourage you to read the others in the June 2011 edition of MIP here.
The social network and blogging site, Twitter, has been forced to hand over details of its users in a landmark ruling.
South Tyneside council brought the case before the US Courts, seeking to identify a blogger who criticised councillors and officials.
It is believed to be the first time the site has been forced to provide details about users in the UK. The case could now open the gates to a flood of further cases after controversy surrounding gagging orders being breached online by Twitter users. As reported in our May newsletter here, the footballer Ryan Giggs was named in parliament as the footballer at the centre of a Twitter row after details emerged of an injunction he had obtained to keep private details of an alleged affair. Lawyers acting for the footballer have experienced difficulties in obtaining details of Twitter users, due to the fact that Twitter is based in California and not within the normal jurisdiction of the English courts.
South Tyneside council went directly to the US, where the 9th Circuit Court has jurisdiction over Twitter, giving Twitter no alternative but to hand over the information because they were required to do so under Californian law.
On Radio 4's Law in Action programme, Attorney General Dominic Grieve stated that people who use internet sites such as Twitter to breach privacy injunctions could face action, warning users: "I will take action if I think that my intervention is necessary in the public interest, to maintain the rule of law, proportionate and will achieve an end of upholding the rule of law. It is not something, however, I particularly want to do."
At a special meeting in Singapore, the board of directors of the Internet Corporation for Assigned Names and Numbers (ICANN) approved a plan that will bring wide-reaching changes to the Internet's generic top-level domain structure.
The measure, which allows private companies and other organizations to create new website domain name suffixes (such as dot-movie, dot-insurance, dot-brand, or dot-dlapiper, for example), passed by a vote of 13-1, with two members abstaining. With the plan approved, ICANN now launches a six-month Global Communication Campaign designed to raise awareness about the coming changes among consumers and potential applicants.
According to rumors coming from the Italian Patent and Trademark Office (UIBM) it is only a matter of weeks before the much awaited activation of a trademark opposition procedure in Italy.
An administrative procedure to oppose to applications for identical or similar trademarks was actually introduced in the Italian system back in 2005, with the enactment of the Industrial Property Code. However, it then remained dead letter, waiting for implementing ministerial decrees. Following the recent adoption, on 11 May 2011, of a decree which also incorporates the draft standard form to be used for filing the opposition, everything seems now ready for the official launch of the new procedure as of July 2011, when the UIBM will also start publishing its monthly online Official Trademarks Bulletin.
The opposition procedure will be open to owners of earlier trademarks registration/application and exclusive licensees. According to the above-mentioned decree of May 2011, the procedure is applicable in respect of (i) any trademark application filed in Italy as of 1 May 2011 and of (ii) the Italian designation of any international trademarks published on the first July issue of the WIPO Gazette of International Marks.
As the timeframe within which the opposition can be filed is rather tight (3 months from the publication of the relevant application), it is highly advisable that trademark owners and exclusive licensees have in place an adequate surveillance system to be able to promptly detect any trademark applications potentially conflicting with their earlier rights. Moreover, whoever intends to file an opposition on account of an earlier trademark must be ready to provide evidence of its use. Lacking evidence of genuine use of the earlier trademark the opposition will be rejected The notice of opposition to registration of a trademark is to be filed in Italian, using a standard form. Once completed, the form needs to be transmitted in 3 copies to the UIBM by hand, registered letter or authenticated e-mail.
If you are interested in this topic and you want to know more, feel free to contact me, Chiara Garofoli (email@example.com)
Posted by Alexander Tsoutsanis, senior associate with DLA Piper in Amsterdam.
On Monday 23rd May, Alexander Tsoutsanis spoke at Stanford during the Stanford Intellectual Property Seminar for IP Judges from the People's Republic of China. Alexander was a panelist speaking about recent developments in Europe on the protection of well-known marks. Apart from explaining the European approach on determining blurring, tarnishment and free-riding associated with well-known marks, Alexander also discussed the general impact of the recent decision of the European Court of Justice in DHL v. Chronopost of 12 april 2011. This decision about Community Trade Marks basically obliges European courts to limit a cross-border injuction to (only) those jurisdictions where the functions of the plaintiff's mark are harmed (and e.g. confusion in the market place occurs). This ruling may therefore require brand owners to revise their litigation strategy in cross-border trade mark injunctions in the European market. The panel session was part of a week-long visit of Chinese IP Judges to Stanford, in which leading scholars and legal counsels explained the current developments and best practices in protecting Intellectual Property.
Alexander is a senior associate with DLA Piper in Amsterdam and also a part-time assistant professor in Intellectual Property Law at Leiden Law School.
There was an audible buzz in the IP community on Wednesday morning, as the findings of the latest UK IP policy review, led by Ian Hargreaves, were published in the report: "Digital Opportunity: A Review of Intellectual Property and Growth." (Click here)
The exam question
The review was first announced by the UK government on 11 November 2010 (see our previous alert here), following a speech made by the Prime Minister in which he set out his "vision" for London’s East End to become a pre-eminent "Silicon Valley"-style technology centre. Interpreting Mr Cameron's "exam question" as being: "Could it be true that laws designed more than three centuries ago with the express purpose of creating economic incentives for innovation by protecting creators' rights are today obstructing innovation and economic growth?", Hargreaves' answer is a firm yes.
The report sets out recommendations for an overhaul of the UK IP regime, in order to render it fit for the digital era and thus give the UK a competitive edge: although they are more in the nature of evolution not revolution. The recommendations include the following:
In the battle for co-existence between national brands and private brands (in Australia, known as home or house brands), several truths emerge:
- National brand owners have to accept competition represented by emergence of home brands and furthermore, that home brands can often quite lawfully borrow from, and leverage off, the look and feel and get up of a national brand.
- The ability for a national brand owner to successfully enforce its intellectual property rights will typically turn on whether the company has taken positive steps of registering its trade mark rights and demonstrating ownership of other packaging rights - eg. trade dress, copyright.
- Proof of ownership, particularly registered rights, will give a trade mark owner the necessary 'cut through' to force a meaningful conversation with private brand owners.
- Any aspect of packaging which you regard as your valuable IP - eg colours, shapes, layout and design - should be registered as individual trade marks. The benefits of registration, when it comes to enforcement and protection of your patch, far outweigh relatively minor costs of registration.
During a constructive INTA panel discussion of representatives from manufacturers, private and national brand owners, valuable insight was provided today into the challenges for business in adopting new brand names which don't infringe upon third party rights. Target's in-house counsel revealed that several hundred brand concepts were considered and searched before settling on their UP and UP brand. Unless you, as a national brand owner, take the positive steps of registering your trade marks then your marks will not be revealed on these searches and a battle with a private label inevitably looms.
- In India, disparaging advertising is reported to be an increasing problem. Companies should be aware their brand could be subject to ridicule in advertising in India.
- Disparaging advertising not specifically legislated against in Australia. Instead, this sort of advertising is largely moderated by commercial and cultural influences which results in consumers not responding positively to a company's disparaging attack on a competitor particularly where the attack is baseless, scandalous or amounts to innuendo. To the extent that an advertisement is untruthful then possible grounds may exist under our ACL (misleading or deceptive conduct) or passing off. HK, Japan and US reported similar situations in their countries. in the cases of Japan and US, additional potential remedies to comparative advertising issues exist under Unfair Competition laws.
- Representatives from most jurisdictions agreed that disparaging advertising is unlikely to amount to trade mark infringement because no 'use as a trade mark'.
- Enforcement of trade marks in China: HK representative advised that enforcement in China is improving for overseas trade mark owners but the emphasis is on overseas trade mark owners to register in China. China's trade mark system operates on a first to register basis making it important for companies to protect their mark in China.
- Each jurisdiction represented in this discussion reported that matrix of laws dealing with passing off, copyright, trade dress (US), statutory misrepresentation provide a means for dealing with a competitor's conduct which 'sails too close to the wind'.
Comparative advertising is one of those issues that underscores the importance of having your company's marketing team work closely with the legal team.
What do you think? Is comparative advertising effective? Which country has it "right"?
Today, May 11, 2011, marks the opening of the Sunrise period for reservation of the newly-created .ASIA domain names utilizing characters from the Chinese, Japanese and Korean written language. Referred to as "Internationalized Domain Names" or "IDNs," these domains will allow for companies to register their company names in, for example, Chinese Kanji script followed by the .ASIA top-level domain. Today's opening of the sunrise period allows registered businesses, registered trademark owners and existing owners of .ASIA top-level domains to register these new IDNs.
It is important to note that this sunrise period is not a landrush, wherein registration would be first-come-first-served. Rather, applications will be accepted from today until July 20, 2011, after which point any contested domains will be put to auction. Nonetheless, clients are encouraged to apply for their names as soon as possible, as the July 20 deadline will approach quickly. Shortly thereafter, on August 2, 2011, the landrush period will open, at which point registration will be granted first-come-first-served.
As always, please feel free to contact us at DLA Piper with any questions or concerns you might have concerning this or any other domain name registration or enforcement issues.
The Summer Edition of Law à la Mode is now available online: click here to view the e-magazine.
As some fashion operators choose Hong Kong for their IPOs, in this Summer edition of Law à la Mode you can read about how the introduction of a competition bill in Asia’s fashion hub may have an impact on its ever booming fashion and luxury market (pages 6-7). If legal updates are what you are looking for and you love shoes, you can’t miss the article on the red soles dispute (pages 10-11) and a report about trade mark distinctiveness for sneakers (pages 12-13). Our opinion articles explore the theme of fashion trade secrets (page 4) and reputation management of brands (page 5). Talking about (super)brands, see how you can benefit from extended protection in Russia (pages 8-9).
Again, we spoke with representatives of the fashion business (“A word from the Industry’s Mouth”, pages 14-15), including Kirstie Clements, editor of Vogue Australia. Moreover, this issue sees the addition of a new column devoted to fashion and social media, in which we will consider the pros and cons of establishing a presence in the social media arena and attempt to give some legal guidance to avoid potential pitfalls (page 16).
Law à la Mode brings together the latest news, comment and legal updates in the fashion, retail and design sector.
As always, we are eager to share publications from DLA Piper's Trademark teams across the world. Here is the latest version of France's Trademark and Design February/March newsletter.
One of the advantages to being an international firm is that our expertise and experience is global. We are delighted and eager to share our European, Asian, and African colleagues' recently published Winter Design and Trademark Newsletter.
Here are just some of the important alerts relevant to our clients worldwide.
Every quarter our team publishes an Intellectual Property and Technology newsletter, in which we regularly analyze and explore issues related to trademark, copyright and advertising law along with the other areas of IP. Allyn Taylor, one of our partners, wrote an article for the last edition that we'd like to reshare.
By Allyn Taylor
Back when products and services were sold via brick and mortar stores, only large corporations or conglomerates seriously considered seeking global protection for valued brand names. Now, however, in the age of the Internet and Cloud, goods and services can be delivered virtually anywhere. Seeking trademark protection on a global basis is often a logical option for even a small company. Yet the question inevitably arises: “How do I accomplish this in an efficient, cost-effective manner?”