Brief IP news

briefs_1131.  Mexico to use the list of terms from the harmonised database in TMclass. For more information here.

2. Digital royalties to creators top €1 billion as global collections rise 6.2% to €9.6 billion. For more information here.

3. How to label your European Year of Cultural Heritage 2018 event? For more information here.

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Shift the blame for copyright infringement to your parents – an EU Court decision

pirate-2129571_960_720The European Court has ruled in case C‑149/17,Bastei Lübbe GmbH & Co. KG v Michael Strotzer, which concerns the following:

Bastei Lübbe is the holder, as a phonogram producer, of the copyright and related rights in the audio version of a book.

Mr Strotzer is the owner of an internet connection through which, on 8 May 2010, that audio book was shared, for the purpose of downloading, with an unlimited number of users of a peer-to-peer internet exchange. An expert correctly attributed the IP address in question to Mr Strotzer.

By letter of 28 October 2010, Bastei Lübbe warned Mr Strotzer to cease and desist the infringement of copyright which had occurred. That warning notice was unsuccessful and Bastei Lübbe brought an action before the Amtsgericht München (Local Court, Munich, Germany) against Mr Strotzer as the owner of the IP address in question, seeking damages.

However, Mr Strotzer denies having himself infringed copyright and maintains that his connection was sufficiently secure. In addition, he asserts that his parents, who live in the same household, also had access to that connection but that to his knowledge they did not have the work in question on their computer, were not aware of the existence of the work and did not use the online exchange software. In addition, Mr Strotzer’s computer was switched off at the time when the infringement in question was committed.

The Amtsgericht München (Local Court, Munich) dismissed Bastei Lübbe’s action for damages on the ground that Mr Strotzer could not be held liable for the infringement of copyright in question, because he had stated that his parents could also have committed the infringement in question.

Bastei Lübbe appealed against the decision of the Amtsgericht München (Local Court, Munich) before the Landgericht München I (Regional Court, Munich I, Germany).

That court is inclined to hold Mr Strotzer liable in that it does not follow from his explanations that a third party used the internet connection at the time of the infringement. It considers that Mr Strotzer is therefore seriously likely to have committed the copyright infringement.

That court nevertheless considers itself to be compelled to apply Paragraph 97 of the Law on copyright and related rights, as amended by the Law of 1 October 2013, as interpreted by the Bundesgerichtshof (Federal Court of Justice, Germany), which in its view might preclude the defendant from being held liable.

In fact, according to the case-law of the Bundesgerichtshof (Federal Court of Justice), as interpreted by the referring court, it is for the applicant to allege and prove the infringement of copyright. The Bundesgerichtshof (Federal Court of Justice) considers, moreover, that the owner of an internet connection is presumed to have committed such an infringement provided that no other person was able to use the internet connection at the time of the infringement. However, if the internet connection was not sufficiently secure or was knowingly made available to other persons, then the owner of that connection is not presumed to have committed the infringement.

In that case, the case-law of the Bundesgerichtshof (Federal Court of Justice) nonetheless places on the owner of the internet connection a secondary burden to present the facts. The owner discharges that secondary burden to the requisite standard by explaining that other persons, whose identity he discloses, where appropriate, had independent access to his internet connection and are therefore capable of having committed the alleged infringement of copyright. Although a family member of the owner of the internet connection had access to that connection, the owner of that connection is not, however, required to provide further details relating to the time and the nature of the use of that connection, having regard to the protection of marriage and family guaranteed by Article 7 of the Charter of Fundamental Rights of the European Union (‘the Charter’) and the corresponding provisions of the German Basic Law.

In those circumstances, the Landgericht München I (Regional Court, Munich I) decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1. Should Article 8(1) and (2), in conjunction with Article 3(1), of Directive 2001/29/EC be interpreted as meaning that “effective and dissuasive sanctions” for infringements of the right to make works available to the public are still provided for even when the owner of an internet connection used for copyright infringements through file-sharing is excluded from liability to pay damages if the owner of that internet connection can name at least one family member who, besides him or her, might have had access to that internet connection, without providing further details, established through appropriate investigations, as to when and how the internet was used by that family member?

2. Should Article 3(2) of Directive 2004/48/EC be interpreted as meaning that “effective” measures for the enforcement of intellectual property rights are still provided for even when the owner of an internet connection used for copyright infringements through file-sharing is excluded from liability to pay damages if the owner of that internet connection can name at least one family member who, besides him or her, might have had access to that internet connection, without providing further details, established through appropriate investigations, as to when and how the internet was used by that family member?’

The Court ‘s decision:

Article 8(1) and (2) of Directive 2001/29/EC, of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, read in conjunction with Article 3(1) thereof, and Article 3(2) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national legislation, such as that at issue in the main proceedings, under which, as interpreted by the relevant national courts, the owner of an internet connection used for copyright infringements through file-sharing cannot be held liable to pay damages if he can name at least one family member who might have had access to that connection, without providing further details as to when and how the internet was used by that family member.

IBM and Groupon reached a multi-million dollar deal

hammer-802298_960_720The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.

After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.

This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.

In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.

Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.

Source: WIPR.

Nintendo won a copyright lawsuit against a go-kart operator in Tokio

wario-1912622_960_720Nintendo successfully won a copyright lawsuit in Tokio against the local company MariCar Inc., an operator of a go-kart service which provides its customers with costumes that look alike Nintendo’s famous game characters.

In contrast with many countries around the world, it is possible to drive a kart on public roads in Japan.

According to Nintendo, such use of its characters constitute a copyright infringement because the company has never given a permission.

The Court agreed with this claim and imposed a compensation.

This case is a good example of many similar practices, not only in Japan, where companies use famous characters for different entertainments or advertisements without receiving the necessary copyrights from the relevant owners.

Source: The Japan Times

ISPs have a right to be compensated in some cases when providing information for copyright infringers

law-1991004_960_720The Supreme Court of Canada ruled in the case Rogers Communications v Voltage Pictures, where the point at issue is whether the internet service providers (ISPs) have to be compensated for their costs when they give information for potential infringers.

In the case at hand, movies owned by the US company Voltage were been illegally used by Rogers’s individual clients.

The Canadian internet provider agreed to disclose the required information for these persons but only against financial compensation. The US company disagreed.

According to the the Supreme Court’s decision in such cases, the ISP has right to receive a compensation for its reasonable costs but only in a case when the information is not required by the law.

For example, connecting the IP address of a customer to his real identity and submitting this information with the copyright holder is not covered by the law requirements.

Source: WIPR.

Service providers and their liability – an EU Court decision

pexels-photo-257736The European Court ruled in case C‑521/17 Coöperatieve Vereniging SNB-REACT U.A. v Deepak Mehta. The case concerns the following:

SNB-REACT is a body established in Amsterdam (Netherlands), whose purpose is to ensure the collective representation of trade mark proprietors.

It has brought proceedings before the Harju Maakohus (Court of First Instance, Harju, Estonia) against Mr Mehta, seeking an injunction terminating the infringement of the rights of 10 of its members and preventing any future infringement of those rights, and seeking damages in respect of the loss caused by Mr Mehta.

In support of that application, SNB-REACT submitted that Mr Mehta had registered internet domain names which were unlawfully using signs identical to trade marks owned by its members, together with websites unlawfully offering for sale goods bearing such signs. Furthermore, SNB-REACT has argued that Mr Mehta is the owner of IP addresses corresponding to those domain names and websites. Lastly, it maintained that Mr Mehta’s liability is incurred by reason of the unlawful use of the signs at issue by those domain names and websites which, it claimed, had been brought to his attention on several occasions.

In his defence, Mr Mehta has claimed that he had neither registered the domain names and websites challenged by SNB-REACT nor used in any way signs identical to the trade marks owned by the members of that body. Furthermore, whilst acknowledging his ownership of 38 000 IP addresses, he stated that he had rented them only to two third-party companies. Lastly, he stated that, in the light of that activity, he was to be viewed solely as offering a service providing access to an electronic communications network, together with an information transmission service.

The Harju Maakohus (Court of First Instance, Harju) dismissed the action brought by SNB-REACT, ruling, first, that the latter had failed to show that it had standing to bring an action in its own name seeking to enforce the rights of its members and to recover compensation for the loss caused by the infringement of those rights. In that regard, that court found that SNB-REACT did not itself own any rights over the trade marks concerned by its application, before holding that Article 601(2) of the Law on trade marks had to be interpreted as meaning that a body such as the applicant did not have standing to bring legal proceedings for purposes other than the representation of its members.

Secondly, the Harju Maakohus (Court of First Instance, Harju) found that the evidence adduced by SNB-REACT served to establish that Mr Mehta was the owner of the IP addresses linked to the internet domain names unlawfully using signs identical to the trade marks owned by the members of that body, and to the websites unlawfully selling goods bearing such signs. By contrast, it took the view that that evidence demonstrated neither that Mr Mehta was the owner of those domain names and websites, nor that he himself had unlawfully used the signs at issue. In the light of those findings, that court concluded that Mr Mehta’s liability could not be established as a result of the unlawful activity of persons operating those domain names and websites, in accordance with Article 8(1) of the Law on information society services.

In the appeal which it has brought before the Tallinna Ringkonnakohus (Court of Appeal, Tallinn, Estonia), SNB-REACT submits, first, that it is possible to interpret Article 601(2) of the Law on trade marks as meaning that a collective representation body has standing to bring, in its own name, an action to defend the rights and interests of its members. Secondly, it submits that the court of first instance erred in excluding all liability on the part of Mr Mehta for the services that he provided to persons operating domain names and websites in the context of online sales of counterfeit goods. It is submitted that the limitation of liability set out in Article 8(1) of the Law on information society services applies in fact to service providers who act only as neutral intermediaries, but not to those who, like Mr Mehta, are aware of the infringement of intellectual property rights and play an active part in such infringement.

In its decision to refer, the Tallinna Ringkonnakohus (Court of Appeal, Tallinn) states that, bearing in mind those arguments and the doubts which it entertains as to the compatibility of national law with EU law, it considers a preliminary ruling from the Court to be necessary on two points.

In the first place, it is unsure whether a body such as SNB-REACT has standing to bring, in its own name, an action to defend the rights and interests of its members. For that reason, it requests the Court to interpret Article 4(c) of Directive 2004/48, in order to allow the referring court to determine, in full knowledge of the facts, the scope which should be given, in the case in the main proceedings, to the combined provisions of Article 3(2) of the Code of Civil Procedure and Article 601(2) of the Law on trade marks.

In the second place, the referring court is unsure whether Mr Mehta’s liability cannot be established, even if he has not used signs in breach of the rights held by the members of SNB-REACT, inasmuch as he has provided services to persons who operate the domain names and websites which use those signs unlawfully, by renting the IP addresses which he owns under conditions allowing those persons to operate anonymously. The referring court also states that the answer to that question depends on the meaning of Articles 12 to 14 of Directive 2000/31, which were transposed into national law by Articles 8 to 10 of the Law on information society services.

It is in those circumstances that the Tallinna Ringkonnakohus (Court of Appeal, Tallinn) decided to stay the proceedings and to refer to the Court the following questions for a preliminary ruling:

‘(1) Is Article 4(c) of [Directive 2004/48] to be interpreted as meaning that Member States are required to recognise bodies collectively representing trade mark proprietors as persons with standing to pursue legal remedies in their own name to defend the rights of trade mark proprietors and to bring actions before the courts in their own name to enforce the rights of trade mark proprietors?

(2) Are Articles 12, 13 and 14 of [Directive 2000/31] to be interpreted as meaning that even a service provider whose service consists in registering IP addresses, thus enabling them to be anonymously linked to domains, and in renting out those IP addresses, is to be regarded as a service provider within the meaning of those provisions to whom the exemptions from liability provided for in those articles apply?’

The Court’s decision:

1.  Article 4(c) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that the Member States are required to recognise a body collectively representing trade mark proprietors, such as that at issue in the case in the main proceedings, as a person entitled to seek, in its own name, the application of the remedies laid down by that directive, for the purpose of defending the rights of those trade mark proprietors, and to bring legal proceedings, in its own name, for the purpose of enforcing those rights, on condition that that body is regarded by national law as having a direct interest in the defence of such rights and that that law allows it to bring legal proceedings to that end, these being matters for the referring court to verify.

2. Articles 12 to 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the limitations of liability for which they provide apply to the provider of an IP address rental and registration service allowing the anonymous use of internet domain names, such as that at issue in the case in the main proceedings, inasmuch as that service comes within the scope of one of the categories of service referred to in those articles and meets all the corresponding conditions, in so far as the activity of such a service provider is of a merely technical, automatic and passive nature, implying that he has neither knowledge of nor control over the information transmitted or cached by his customers, and in so far as he does not play an active role in allowing those customers to optimise their online sales activity, these being matters for the referring court to verify.

What should we know about trademark oppositions?

pexels-photo-277124It is a widespread opinion that protection of a trademark requires its registration before the Country’s Patent Office. Even though this is true it is not the end of the story when it comes to trademark protection. Why?

The main reason for this is the fact that the legislation in most of the countries around the world doesn’t require from Patent Offices to stop every new trademark application even in a case that it is identical or similar to already registered one. This responsibility is given to the trademark owner who can file an opposition against such new marks if and only if he wants to do this.

But if the owner misses out on filling an opposition on time, the new mark will be registered and the following options for its cancellation could be more expensive and time-consuming.

So all in all every trademark holder has two main variants to support its already registered mark:

  1. To monitor the Patent Office’s trademark bulletins by himself – it has to be noted here that although everyone can assess identical marks for identical goods and services (a mark X for a good Y is a mark X for a good Y), the situation is much more complex when it comes to similarity, which requires in-depth knowledge regarding trademark legislation and case law.
  2. To subscribe for different software decisions which will alert him in case of new identical or similar marks and after that to discuss the results with a trademark attorney.

In any case, it is vital such monitoring to be carried out on a regular base and oppositions to be filed on time in order for the trademark protection to be maintained properly.