The 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.
YouTube announced its new initiative against illegal uploading of works on its platform.
A new software called Copyright Match tool will watch for re-uploads of content. When such thing happens the user who uploads it will have three options: do nothing; get in touch with the other creator, or request YouTube to remove the video.
The last option, however, can be trigger only if the user is the real copyright holder or has the relevant rights. What’s more, the user has to evaluate whether his work could be interpreted as fair use or be subject to other exceptions to copyright.
More information here.
Elizabeth Ward (Virtuoso Legal) published an interesting article for Lexology which discusses the basic steps every trademark owner selling on Amazon has to bear in mind in order to protect it. In brief, the steps are as follow:
1. Get a Robust Trademark;
2. Protect Yourself Where You’re Selling;
3. Logo or Word?
4. Don’t be too Descriptive!
5. Clear the way;
6. Don’t be afraid to spend money;
7. Nip Trouble in the Bud;
8. Stay Vigilant;
9. Don’t Rely on The Police to Sort it Out;
The full article can be found here.
The Supreme Court in Austria ruled in a lawsuit that had been initiated by Davidoff against a trading company in the country which was selling original perfumes branded with trademarks Davidoff – word and combined. According to Davidoff this could lead to a consumer misleading that this company is part if its distributional channel, taking into account that the company put the trademarks on its website.
According to the court, however, there is no breach of law in the case at hand because the trademark use was only for information purposes and it is in accordance with the legislation on trademark exhaustion, in particular:
A mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
Source: Taylor Wessing, Lexology.
Harley-Davidson won a lawsuit for more than 19 million dollars. The case concerns the internet platform SunFrog which offers for sell t-shirts based on designs submitted by consumers.
According to the accusation, SunFrog offered more than 100 designs containing Harley-Davidson’s registered trademarks.
Although SunFrog agreed to stop selling such products, the infringement continued. Because of this, the Court issued a judgment in Harley-Davidson’s favor, permanently prohibiting SunFrog from making any Harley-Davidson branded apparel products.
In addition, the Court awarded 19,2 million dollars in statutory damages, which amount of money had been determined on the ground of the fact that SunFrog infringing products attract wide exposure judging on the interest of the Facebook ads regarding them. What’s more, the Court took into account Harley-Davidson’s licensing business which amounted to 400 million dollars for a period of about 10 years.
WIPO reports about the accession of Cambodia to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.
According to the information, Cambodia will accept individual fees to cover its cost of substantive examination of each international registration.
More information here.
The General Court of the EU ruled in Case T‑651/16, Crocs, Inc. v EUIPO, Gifi Diffusion. This case concerns a registered EU design 257001-0001 by Western Brands LLC on 22.11.2004 with claimed priority based on a US design registered on 28.05.2004.
This EU design after that was transferred to Crocs. In 2013, the French-based company Gifi Diffusion filed an application for a declaration of invalidity of the design based on a lack of novelty.
As it is known, one EU design can receive protection only in the case that it is novel and has individual character.
EUIPO took a decision for invalidation of the design, which decision was confirmed by the General Court.
The reason for this was that information for the design was available in 2003 through the Corcs’ website, it was displayed on an exhibition in Florida and was available for sale.
Corcs argued that such information wasn’t accessible in EU at that time, but the Court dismissed it because there was no evidence that the Corcs’website wasn’t accessible in EU.
This case is indicative of the need for a good intellectual property planning. In the case of industrial designs and inventions, this is crucial because if these IP assets are not new, for example, they cannot be protected. Due to this, all information regarding them has to be managed very carefully in order to fulfill the respective legal requirements.