Polish IP & IT law » 2008

Archive for: April, 2008

Trade mark law, case II GSK 92/05

April 30th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 29 June 2005, case file II GSK 92/05 ruled that the interpretation of articles 4 and 7 of the Act on Trademarks should be made in accordance with article 3(1)(e) of the First Directive 89/104. According to this article, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid.

R-116211

This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.

Poland: trade marks for medicines

April 30th, 2008, Tomasz Rychlicki

All readers who are going to apply for trade mark registration for medicines in the Republic of Poland should consider not only the Act on Industrial Property Law and its related Regulations but also the procedure and requirements set by the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products (OFROMPMDABP — now that’s an abbreviation) if they want to avoid any headache.

OFROMPMDABP is a government agency competent for matters related to evaluation of quality, efficacy and safety of medicinal products, medical devices and biocidal products. Trade mark owners should be aware of the existence of the announcement (this is a PDF file in Polish language) issued by the President of the Office on 12 March 2008. This document applies to the process of medicinal product naming and the substitution of names that were already issued.

New name of a medicine product should differ from earlier registered product’s name in at least 3 letters and the new name can not include the sequence of more then two of the same letters. The applicant is required to issue a justified written statement in case of seeking a waiver from the above mentioned rules.
New name can not lead to likelihood on confusion (in print, spelling and pronunciation) with regard to earlier registered name.
New name can not give any promotion or advertising information related to application process.
Signs such as ® and “TM” can not be a part of a new name.

Categories: Class46 post | Polish law | medicinal product | trademark law.

Enforcing EULAs

April 29th, 2008, Tomasz Rychlicki

Selling botnets for particular attacks, black markets for stolen identities, and malware construction kits are all now par for the course for the increasingly commercial malware industry. Discovering that malware authors have actually turned to End-User License Agreements (EULAs) in an attempt to protect their own intellectual property, however, most definitely qualifies as something new, different, and beautifully ironic.

More details in the article available at arstechnica.com website.

What about the eforcement of such “agreement” and the US courts? I guess there is no dubt that such contract would be deemed as null and void. See holding in the case Weisbren v. Peppercorn Prods., Inc., 41 Cal. App. 4th 246, 262, 48 Cal. Rptr. 2d 437, 447 (1995), citing Lewis & Queen v. N.M. Ball Sons, 48 Cal. 2d 141, 150, 308 P.2d 713, 719 (1957).

The courts generally will not enforce an illegal bargain or lend their assistance to a party who seeks compensation for an illegal act. The reason for this refusal is not that the courts are unaware of possible injustice between the parties, and that the defendant may be left in possession of some benefit he should in good conscience turn over to the plaintiff, but that this consideration is outweighed by the importance of deterring illegal conduct. Knowing that they will receive no help from the courts and must trust completely to each other’s good faith, the parties are less likely to enter an illegal arrangement in the first place.

Categories: US law | computer crime | computer law | contract law | criminal law.

Trade mark law, case II GSK 698/08

April 28th, 2008, Tomasz Rychlicki

On 15 April 2003 the Polish Patent Office (PPO) received a request filed by Kosmetyczno Lekarska Spółdzielnia Pracy IZIS from Warsaw to declare the lapse of protection rights for the AMBER R-98839 trade mark registered for Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S., Istambuł (Turkey) in class 3 for goods such as bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. This trade mark was registered on 19 November 1997, with priority date as of 9 February 1994. The request was based on non-use of AMBER trade mark.

IZIS justified its legal interest in requesting the PPO to decide on the lapse of the right of protection because it is the manufacturer of products in class 3 (cosmetics: creams, cosmetics milks, lotions, tonics) that are labeled with AMBER sign and because of the fact that the Polish Patent Office rejected IZIS’s request of 10 April 2003 for invalidation of the right of protection of the disputed trade mark, and held that the AMBER R-98839 trade mark was an obstacle to the application for registration of IZIS word trademark AMBER – IZIS, Z-161082.

During the proceedings before the PPO the Turkish company submitted evidence of actual use of the disputed trade mark only in respect of soaps. On 5 April 2003 the PPO ruled on the lapse of the right of protection for AMBER R-98839 for goods in class 3 such as “cosmetics”. The Turkish company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC rejected the motion in its decision of 10 March 2008, case file VI SA/Wa 1811/07. The Court held that the term “cosmetics” covers a wide range of cosmetics products intended for various use: industrial, cleaning, protective or fragrance and beautification. The fact that soaps are within the scope of “cosmetics” did not justify the findings of an actual use of the disputed trade mark in respect for all cosmetics where the mark is actually used only in respect of soaps, which were, moreover, identified by the applicant in the description of goods right next to cosmetics. The court also noted that according to article 169(6) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trademark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

Or as the Court said, passivity during the burden of proof is the problem of the trade mark holder. In this case, the Turkish company during proceedings before the Polish Patent Office has not disclosed the existence of valid reasons for non-use, for any goods except soap. The company from Turkey filed a cassation complaint before the Supreme Administrative Court (SAC). The SAC in its judgment of 3 February 2009, case file II GSK 698/08 held that The Nice Classification of goods is not conclusive as to the nature of goods belonging to each of the classes. It has only an auxiliary nature during the process of formulation of lists of goods for signs that were applied for to the Patent Office as to organize the goods and services in accordance to its characteristics.

In case of a dispute before the Patent Office in proceedings for the declaration of lapse of the rights of protection for trade mark as regards to the part of the goods, as a result of non-use of a registered trade mark, it is required to assess the actual attribiution of the disputed goods to a category, regardless of how it the list of these goods was drawn up.

In SAC’s opinion, the Polish Patent Office, followed by the first instance court, have failed to analyze the similarity of the goods for which AMBER trade mark has been registered for and their attribution to a given category. Both the PPO and the VAC did not answer the most important question do soap and cosmetics belong to the same category of goods? It was required by the PPO to assess what is the actual attribution of the disputed goods to what category, regardless of how the list of these goods was done. If you lodge a complaint on the decision of the Polish Patent Office, the first instance court (the VAC) is obliged to review the decision in terms of its compliance with the substantive law and rules of conduct.

The Supreme Administrative Court annulled the contested judgment, and ordered the Voivodeship Administrative Court in Warsaw to reconsider the case.

Poland: e-filing for trade marks applications

April 28th, 2008, Tomasz Rychlicki

There are recent changes in the procedure of filing trade mark applications before the Polish Patent Office. According to the Regulation of the Prime Minister dated 15 May 2008 on filing and processing of patent applications, applications for medicinal products and plant protection products, utility model applications, industrial designs applications, trade mark applications, geographical indications applications, topography of integrated circuits applications and keeping correspondence in electronic form, published in Journal of Laws (Dziennik Ustaw) of 23 May 2008, No 89 item 540, all applications should be filed in e-forms that are available through the PPO website and are prepared in software and in compatibility with formats used by the Polish Patent Office. The use of other computer programs to prepare filing applications requires the approval of the PPO. This Regulation will enter into force on 7 June 2008.

The PPO had also published (DOC file) an English version of table of fees established in the Regulation of the Council of Ministries dated 26 February 2008 amending the regulation on fees relating to the protection of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits.

Single fees (fees are in Polish złoty – to check rates use google.com services or exchange rates provided by the National Bank of Poland):

For trademark application up to three classes of goods according to applicable classification of goods and services – 550,00*
for each class in excess of three – 120,00
for declaration of priority – for each priority claimed – 100,00
For electronic filing of trademark application up to three classes of goods according to applicable classification of goods and services – 500,00*
for each class in excess of three – 120,00
for declaration of priority – for each priority claimed – 100,00
For request for conversion of international registration into national application – 550,00
For request for conversion of Community trademark application into national application – 550,00
For transmittal of Community trademark application – 120,00
For division of application – for each additional application – 550,00
For request for postponement of the payment of a fee – 60,00
For request for restoration of a time limit or the excuse of non-observance of a time limit because of exceptional circumstances occurred – 80,00
For request for re-examination of the matter:
in connection with an order issued** – 50,00
in connection with a decision taken – 100,00
For publication of the mention of grant of right of protection – 90,00
For issuance of a duplicate of certificate of protection: – 100,00
For excerpt from the register: with current legal status with modified or removed information added – 60,00
100,00
For preparation of priority document – 60,00
For request for making a change in the register – for each change made – 70,00
For request for replacement of national registration with international registration – 50,00
For request for transformation of trademark into collective trademark, collective guarantee trademark or trademark protected with one collective right of protection – 500,00
For request for filing a request by the Patent Office of the Republic of Poland for entry in the international register of a change concerning international trademark registration – 200,00
For notice of opposition 1000,00
For request for taking a decision in litigation proceedings – 1000,00
For request for lodging a complaint to Administration Court – 1000,00
For request for international registration – 600,00
For request for registration renewal – 200,00
Additional fee for late submission of request for registration renewal – 300,00
For request for sending communications to addresses additionally indicated (Article 241(2)) – for each additional address – 200,00

* In case of collective trademark, collective guarantee trademark or trademark filed for collective right of protection – the amount of the fee is subject of increase of 100%
** this does not apply to requests for the exemption from the payment of a fee

I have previously informed P.T. readers about higher fees for trade marks’ applications in Poland in a post entitled “Poland: higher fees for trade marks“.

US copyright and legal acts

April 25th, 2008, Tomasz Rychlicki

This is with regard to my post entitled “The law is not for the People!“. 17 U.S.C § 105. “Subject matter of copyright: United States Government works” provides that:

Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

The issue is a little bit complicated. Some questions and problems were already mentioned in the House Report, H.R. Rep. No. 94-1476, 94th Cong. 2d Sess. 58-59 (1976).

Section 105. U.S. Government Works

Scope of the prohibition

The basic premise of section 105 of the bill is the same as that of section 8 of the present law—that works produced for the U.S Government by its officers and employees should not be subject to copyright. The provision applies the principle equally to unpublished and published works.

The general prohibition against copyright in section 105 applies to “any work of the United States Government,” which is defined in section 101 as “a work prepared by an officer or employee of the United States Government as part of that person’s official duties.” Under this definition a Government official or employee would not be prevented from securing copyright in a work written at that person’s own volition and outside his or her duties, even though the subject matter involves the Government work or professional field of the official or employee. Although the wording of the definition of “work of the United States Government” differs somewhat from that of the definition of “work made for hire,” the concepts are intended to be construed in the same way.

A more difficult and far-reaching problem is whether the definition should be broadened to prohibit copyright in works prepared under U.S. Government contract or grant. As the bill is written, the Government agency concerned could determine in each case whether to allow an independent contractor or grantee to secure copyright in works prepared in whole or in part with the use of Government funds. The argument that has been made against allowing copyright in this situation is that the public should not be required to pay a “double subsidy,” and that it is inconsistent to prohibit copyright in works by Government employees while permitting private copyrights in a growing body of works created by persons who are paid with Government funds. Those arguing in favor of potential copyright protection have stressed the importance of copyright as an incentive to creation and dissemination in this situation, and the basically different policy considerations applicable to works written by Government employees and those applicable to works prepared by private organizations with the use of Federal funds.

The bill deliberately avoids making any sort of outright, unqualified prohibition against copyright in works prepared under Government contractor grant. There may well be cases where it would be in the public interest to deny copyright in the writings generated by Government research contracts and the like; it can be assumed that, where a Government agency commissions a work for its own use merely as an alternative to having one of its own employees prepare the work, the right to secure a private copyright would be withheld. However, there are almost certainly many other cases where the denial of copyright protection would be unfair or would hamper the production and publication of important works. Where, under the particular circumstances, Congress or the agency involved finds that the need to have a work freely available outweighs the need of the private author to secure copyright, the problem can be dealt with by specific legislation, agency regulations, or contractual restrictions.

The prohibition on copyright protection for United States Government works is not intended to have any effect on protection of these works abroad. Works of the governments of most other countries are copyrighted. There are no valid policy reasons for denying such protection to United States Government works in foreign countries, or for precluding the Government from making licenses for the use of its works abroad.

The effect of section 105 is intended to place all works of the United States Government, published or unpublished, in the public domain. This means that the individual Government official or employee who wrote the work could not secure copyright in it or restrain its dissemination by the Government or anyone else, but it also means that, as far as the copyright law is concerned, the Government could not restrain the employee or official from disseminating the work if he or she chooses to do so. The use of the term “work of the United States Government” does not mean that a work falling within the definition of that term is the property of the U.S. Government.

The problem of states’ copyright claims to legal acts was discussed in the American case-law. There are two judgments dealing with this problem that are worth reading. The judgment in County of Suffolk v. First Am. Real Estate Solutions, 261 F.3d 179 (2d Cir. N.Y. 2001) and Veeck v. S. Bldg. Code Cong. Int’l, 293 F.3d 791 (5th Cir. en banc 2002), US Supreme Court certiorari denied by, Motion granted by S. Bldg. Code v. Veeck, 2003 U.S. LEXIS 5186 (U.S., June 27, 2003). Bill Patry has some brilliant comments as usually.

Categories: 17 U.S.C. | US law | copyright law.

Trade mark law, case II GPS 1/08

April 23rd, 2008, Tomasz Rychlicki

The of the Polish Supreme Administrative Court (SAC) in its judgment of 23 April 2008, case file II GPS 1/08 ruled that according to Article 169(1)(i) of the Act on Industrial Property Law, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use.

Article 169(1)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with later amendments.

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years, unless serious reasons of non-use thereof exist; …

The Polish Supreme Administrative Court has been asked the following important question: should the date of lapse of the right of protection for a trade mark be the last day of a period of five successive years (as mentioned in article 169(1)(i) of the IPL) or the day when the motion to declare the expiration of trade mark rights was filled, if the period of five successive years of non-use of a registered trade mark was longer then five years?

Poland: Vinci against counterfeits

April 18th, 2008, Tomasz Rychlicki

In the article entitled “Poles love counterfeits“, the Polish website TVN24.pl reports about a recent initiative of the Polish Ministry of Finance and Customs Service. Both institutions are going to dam “the rivers of counterfeits” that are flooding to Poland from the East. It was estimated that about 86% of goods seizured by the Polish Customs came from China in 2006. On 2 April 2008 the system called “Vinci” was presented to the European Commission. Eight days later it started to work for the Polish Customs Service. According to Iwona Mońko, Head of the IP Rights Protection Department in the Ministry of Finance, the IT system for “Vinci” consists of a database which stores a hudge amount of data related to counterfieted products. Customs officers have the immediate access to those information.

The law is not for the people!

April 16th, 2008, Tomasz Rychlicki

I found it in the post available at boingboing.net website.

The State of Oregon is sending out cease and desist letters to sites like Justia and Public.Resource.Org that have been posting copies of Oregon laws, known as the Oregon Revised Statutes.

We’ve sent Oregon back two letters. The first reviews the law and explains to the Legislative Counsel why their assertion of copyright over the state statutes is particularly weak, from both a common law perspective and from their own enabling legislation.

The position of the Legislative Counsel is that their public access obligations have been fulfilled by their web site. However, their web site has over 500,000 HTML errors, does not meet Section 508 accessibility requirements, has no metadata, as our second letter points out.

Particularly galling is the fact that Thomson West has also made a copy of these statutes and has done so without a commercial license, but the Legislative Counsel explicitly told Tim Stanley of Justia that they weren’t going to send cease and desist letters to West. Evidently, it is much easier to pick on the little guys.

Oregon is not unique in asserting copyright over state law, but they are definitely one of the more aggressive in this kind of FUD campaign. Justia and Public.Resource.Org have decided this is an important issue to resolve and we’re going to hold firm on this. Anybody else who is making a mirror of the Oregon law should drop me a line and let me know.

The original letter can be found at scribd.com website. Would you like to know how it looks in Poland? In short. The Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631 with later amendments.

Art. 4. The following shall not be protected by copyright:
1) normative texts and the drafts thereof,
2) official documents, documentary material, devices and symbols,
3) descriptions of patents and other protection titles,
4) simple press news.

You may perform the legal interpretation for yourself.

Who will be guilty?

April 15th, 2008, Tomasz Rychlicki

There is a short article availabe at wired.com website where you may read about some thoughts of Harry Sintonen regarding security of couple of websites. As from the media point of view the most spectacular cross-site scripting attack concerned CIA’s website. But I found on Harry’s list other addresses that are worthy a short notice here, for instance, the official website of the European Parliament. You may ask why? Because there is another article available at gazeta.pl website (in Polish language) where Waldy Dzikowski (the chief of Platforma Obywatelska’s parliamentary club) tells about how he opts about electronic elections to the European Parliament which will be held in another thirteen months. I have to admit that I am not sure who is supporting Mr Dzikowski because there is always someone who has the interest to supply the Republic of Poland with e-voting infrastructure or as Witold Drożdż from the Ministry of Interior and Administration said “technical and organization” infrastructure. When I think about such problems as faced by the CIA or European Parliament websites then I instantly wonder if someone can assure me about security and what is even more important about the lack of frauds in the process of electronic voting? Of course, we have proper crminal provisions against crimes aimed at voting process in the Criminal Code – CRC – (in Polish: Kodeks Karsny) of 6 June, 1997, Journal of Laws (Dziennik Ustaw) No. 88, item 553, with later amendments.

Chapter XXXI. Crimes against elections and referendum
Art. 248.
Article 248. Whoever, in connection with elections to the Sejm, Senate, election of the President of the Republic of Poland, elections to European Parliament, local elections or referendum:
(…)
3) damages, hides or forge reports or other election or referendum documents,
(…)
4) interferes or allow to interfere with the collecting or counting votes
(…)
5) gives another person unused voting card before an end of voting or gets an unused voting card from another person in order to use it in voting,
- shall be subject to the penalty of deprivation of liberty for up to 3 years.
(…)
Art. 250a. § 1. Whoever, being entitled to vote, gets financial or personal benefits or requests such benefit for voting in a given way, shall be subject to the penalty of deprivation of liberty for a term of between 3 months up to 5 years.
§ 2. The same penalty should apply to a person which gives financial or personal benefits to a person entitled to voting in order to induceaby such person to vote in a given way or for voting in a given way.

Art. 251. Whoever, in violation of regulations on secrecy of votiong, against the will of a voter, acquaints with the content of a vote, shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to 2 years.

As you can see there are some possibilities. There are also “anti-compromise” regulations (sic!).

Chapter XXXIII. Crimes against protection of information
(…)
Article 267.
§ 1. Whoever, without being authorised to do so, acquires information not destined for him, by opening a sealed letter, or connecting to a wire that transmits information or by breaching electronic, magnetic or other special protection for that information shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to 2 years.
§ 2. The same punishment shall be imposed on anyone, who, in order to acquire information to which he is not authorised to access, installs or uses tapping, visual detection or other special equipment.
§ 3. The same punishment shall be imposed on anyone, who imparts to another person the information obtained in the manner specified in § 1 or 2 discloses to another person.
§ 4. The prosecution of the offence specified in § 1 – 3 shall occur on a motion of the injured person.
(…)

Art. 268a. § 1. Whoever, without being authorised to do so, destroys, damages, removes, changes lub makes an access to data difficult or in a significant way disrupts or prevents from the automatic process, gathering or transmission of such data, shall be subject to the penalty of deprivation of liberty for up to 3 years.
(…)

Art. 269.§ 1. Whoevery, damages, removes or changes information data of particular importance for country’s defences, safety of transportation, function of governmen administration, other state’s organ or state’s institution or local government albo zakłóca disrupts or prevents from the automatic process, gathering or transmission of such data, shall be subject to the penalty of deprivation of liberty for a term of between 6 months up to 8 years
§ 2. The same penaly should apply to a person who commits offences mentioned in § 1, by destroying or replacing the information carrier or by destroying or damaging a device serving for automatic processing, gathering or transfering of information data.

Art. 269a. Whoever, without being authorised to do so, by transmission, destroy, removing, damaging or changing information data, in significant manner disrupts the work of a computer system or a teleinformatic network, shall be subject to the penalty of deprivation of liberty for a term of between 3 months up to 5 years

Art. 269b. § 1. Whoever, produces, acquires, sells off or makes available to other persons devices or computer software adapted to perform a crime mentioned in art. 165 § 1 pt 4, art. 267 § 2, art. 268a § 1 or § 2 in connection with § 1, art. 269 § 2 or art. 269a, and computer passwords, access codes or other data that allow for the access to information stored in a computer system or teleinformatic network, shall be subject to the penalty of deprivation of liberty for up to 3 years.

This list is really long, right? I asked my Polish readers if they are familiar with any cases regarding such crimes. I guess we have a really small percentage. The question is, if it’s a really small percentage of crime detection or just such crimes itself?

Poland: Olsztyn’s problems with logo

April 11th, 2008, Tomasz Rychlicki

The local Polish newspaper Gazeta Olsztyńska reported (this article is scanned in a PDF file, Polish language) on Olsztyn City Council’s problems with the official logotype. According to Gazeta Olsztyńska, none of the city hall’s clerks thought about filing a trade mark application for Olsztyn for over 11 years. When they finally decided to do so, a big problem with the small Gmina Cekcyn unexpectedly occurred. A similiar logotype is already registered for Cekcyn’s administrative district. This issue spawned also another debate. Both logotypes are very alike.

Janusz Wierzyński (artist from Olsztyn) said that they must be kidding. According to Mr Wierzyński, the composition is almost the same. The arrangement of logo’s elements is reversed but those parts are identical and both signs are created in the same style. Małgorzata Lubieniecka-Chełstowska, an advocate specializing in the field of copyright tried to look at this issue from the viewpoint of “allowed inspiration” doctrine. However, she concluded that the definition of “allowed inspiration” and its confines are very blurred.

Naked photos via IM

April 11th, 2008, Tomasz Rychlicki

The in the article entitled “Wyrok za nagie zdjęcia w sieci“, the Polish newspaper Gazeta Wyborcza reported on a Polish teenager who was sentenced for sending naked photos of his friend through the IM (Gadu-Gadu).

The boy (now 19 years old) pleaded guilty and was convicted for 1,5 year of jail time. As a probation the sentence is in the stay of execution for 3 years. The girl was living in a small town of Chełmża and she said she just wanted to impress her friend from a school – Paweł G. She took her naked pictures in 2006 (she was 14 years old) and sent them to him via Gadu-Gadu. After couple of days all town was talking about those pictures. Students were sending these photos to each others via cellphones and over the Internet. The principal of the school where those students were attending has informed a prosecuting attorney and the local department of education about this issue.

My dear English readers, I have to admit that I’d like to write more about this case but the biggest problem is with the Polish courts which do not publish such judgments. It is also hard to say on which grounds the prosecution based its charges. It was probably article 202 of the Polish Penal Code of 6 June 1997 (Kodeks Karny z dnia 6 czerwca 1997 r. Dziennik Ustaw Nr 88, poz. 553)

Article 202
§ 3. Whoever produces, for the purpose of dissemination or imports or propagates pornographic material in which minors under the age of 15 participate, or pornographic material associated with the use of violence or the use of an animal shall be subject to the penalty of the deprivation of liberty for a term of between 6 months and 8 years.

§ 4. Whoever records pornographic material in which minors under the age of 15 participate, shall be subject to the penalty of the deprivation of liberty for a term of between one year and 10 years

§ 4a. Whoever gets, keeps or owns pornographic material in which minors under the age of 15 participate, shall be subject to the penalty of the deprivation of liberty for a term of between 3 months and 5 years.

April 10th, 2008, Tomasz Rychlicki

An IP licensing agency which is working for the Lockheed Corporation has send C&D letter to John MacNeill and “requested” him to remove his works from TurboSquid website. Those works were professionally made 3D models of B-24 plane. The Equity Management alleged that such works infringes on B-24 trade mark, owned by Lockheed. There is a really good post about this issue on boingboing.net website so I’ll not repeat this news. However, I was interested in the case-law that was cited by Corynne McSherry (staff attorney working for the Electronic Frontier Foundation) as she published a post about her response letter PDF file, in John MacNeill case on eff.org website. One of cited cases was WCVB-TV v. Boston Athletic Ass’n, 926 F.2d 42 (1st Cir. 1991). The Court ruled that

Defendants failed to show that plaintiff’s broadcast with the use of the words “Boston Marathon” created a risk of public confusion that plaintiff’s broadcast had an official imprimatur.

In New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992), United States Court of Appeals for the Ninth Circuit, held in the judgment written by Alex Kozinski, that the defendant has used “The New Kids On The Block” trade mark

to identify the group and not to imply the group’s endorsement. The court noted that a competitor could even use a rival’s trademark in advertising for profit if the use was not false or misleading and did not implicate the source-identification function of the trademark

Corynne McSherry also mentioned the case Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) where the Court held that the Found

claim failed because the law of the deceased personality’s domicile did not recognize a post-mortem right of publicity. The court then held that the merchant was entitled to a fair use defense under 15 U.S.C.S. § 1115(b) because the merchant’s use of the name and likeness of Princess Diana was a permissible nominative fair use. The court further held that the false advertisement claim was groundless because the statements in the advertisements at issue were true and the charity fund had no reasonable basis to believe they were false. The court finally held that the award of attorneys’ fees to the merchant was justified and reasonable.

For the comparative approach in a similiar case I’d like to mention about The Court of Justice of the European Communities’s case C-48/05, Adam Opel (OJ C 56 of 10.03.2007, p.4). Adam Opel discovered that a 1:24 remote-controlled scale model of the Opel Astra V8 coupé, bearing the Opel logo on its radiator grille like the original vehicle, was being marketed in Germany. The trade mark holder for Opel mark has also found that toys’ producer is Autec. Opel sued Autec before the Landgericht Nürnberg-Fürth, but interpretation problems arose as regards to article 5(1)(a) and (2), and article 6(1)(b) of the First Directive 89/104/EEC (I always wonder where is the second directive ;) and in the consequence the case landed as a request for the preliminary ruling under Article 234 EC, before the Court. It held that:

1. Where a trade mark is registered both for motor vehicles – in respect of which it is well known – and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models:

– constitute, for the purposes of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys;

– constitute, within the meaning of Article 5(2) of that directive, a use which the proprietor of the trade mark is entitled to prevent – where the protection defined in that provision has been introduced into national law – if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles.

2. Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale models, within the meaning of Article 6(1)(b) of Directive 89/104.

Update on May 21, 2008.
It looks like Lockheed Martin has withdrawn its claims. More details at eff.org website.

Poland: Scypek almost like Oscypek

April 4th, 2008, Tomasz Rychlicki

In the article entitled “Scypek almost like Oscypek“, the Polish newspaper Gazeta Wyborcza reports about strange and shady business carries on at many markets in towns located at The Beskids. P.T. readers already know that Oscypek is a protected designation of origin. But in some markets of Szczyrk or Wisła you may find cheeses that are advertised as SCYPEK. Accroding to Gazeta Wyborcza some merchants says that:

one needs to find a way, if such restrictions have been introduced. I do not want to have any problems regarding controls. People already know what is going on. The tourists like this cheese and they want to buy it – so why not sell it?

Artur Siedlarek representing the Agricultural and Food Quality Inspection in Warsaw said that such operation infringes European Union’s norms.

It is like a game. The seller wants to sell but he also does not want to run the risk of being controlled

Piotr Kohut, gazda (the name for a farmer in the Tatra Mountains region) from Koniaków, owns the first bacówka (JPG file of this type of a building) that met European Union’s requrements regarding the production of OSCYPEK. He says that he understand such behaviour.

Everyone wants to make money but you won’t get ahead in life if you lie. If they want to act like this then let they sell it honestly – like cheese made from cow’s milk.

Categories: Class46 post | EU law | Polish law | Protected Designation of Origin | criminal law.

Poland: advertised by hooligans

April 3rd, 2008, Tomasz Rychlicki

The Polish website sport.pl that is owned by Gazeta Wyborcza reports in a post entitled “Elana już reklamowana przez bijatyki” about a small football club (3rd league) from Toruń which under the preasure of its fans changed its name from Toruński Klub Piłkarski (Toruń’s Football Club) to Elana. There is a little problem with club’s name. Elana is also business name (the firm) owned by club’s past sponsor. Piotr Wujków – the chairman of the club and a lawyer – told in his official statement that Elana’s name is used in a “different field of of exploitation”, they are football club not a business entity and they did not need a permission to use Elana’s name.

Ten days after Toruń’s Football Club has changed its name almost one hundred hooligans attended a football game of their team. They were wearing clothes with new logo. The game ended with riots on the football field.

Categories: Class46 post | advertising law | firm.