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


Continue Reading DLA Piper Gathers in Schaumburg for IPT Retreat

By John Wilks and Damian Herrington, DLA Piper UK

The Internet Corporation for Assigned Names and Numbers (ICANN) has just announced that the target “Reveal Day” for its new generic Top Level Domain (“gTLD”) program – the day when the list of gTLDs that have been applied for is announced – will be 13 June 2012. This date will be eagerly awaited by brandowners, both those who have applied to register their brands as gTLDs (and will want to see whether anyone has applied for similar domains which may be in competition with their application), and those who may wish to object to a gTLD application which is confusingly similar to their brand.


Continue Reading ICANN ANNOUNCES “REVEAL DAY” FOR NEW GTLD PROGRAM

Reposted from DLA Piper’s Media & Sport Group Bulletin

Editorial Team: Nick FitzpatrickDuncan 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 Government publishes consultation on copyright

Reposted from DLA Piper’s Media & Sport Group Bulletin

Editorial Team: Nick FitzpatrickDuncan 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 UK: High Court rules that Google is not liable in blog defamation case

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 New Global Rules for Digital Interactive Marketing

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

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 Idiosyncrasies of the Spanish Fashion Market

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 The Debate for AdWords Ownership in Cyberspace Continues

by Patrick Van Eecke, Cameron Craig and Jim Halpert

Viviane Reding, European Commission Vice-President and Commissioner responsible for justice, fundamental rights and citizenship, has announced the long-awaited Proposal for a new Data Protection Regulation. 

The Proposal, announced December 6, has now entered into inter-service consultation with other Commission Directorates-General, after which the text will be considered by the Parliament and the Council, who may make significant changes. 

The Regulation would repeal the current Data Protection Directive 95/46. It is expected to become law in two to three years. 


Continue Reading FIRST INSIGHT INTO THE EUROPEAN COMMISSION’S PROPOSAL FOR A NEW EU DATA PROTECTION LAW