Intellectual Property Law Internet Law IT Law Computer Law

On the basis of article 4, section 1, of the Polish Law on Patent Attorneys of 11 April 2001 (Dziennik Ustaw (Official Gazette) No. 49, pos. 509, with subsequent amendments), a patent attorney profession is to provide assistance in matters of industrial property: to private individuals, legal persons and entities without legal personality.

Article 2. Whenever in this Act is referred to the Industrial Property - shall mean:
1) acquisition, preservation, carrying out and enforcing of rights related to industrial property, and in particular to inventions, utility models, industrial designs and topographies of integrated circuits, as well as trademarks, trade names and geographical indications,
2) combating unfair competition in respect of items referred to in paragraph 1.

As you can see at first glance, the scope of representation for matters relating to unfair competition has been recognized in the act quite narrowly. It was confirmed by the Polish Supreme Court judgment of 16 October 2004, act signature CK III 580/03, which was published in Orzecznictwo Sądu Najwyższego Izba Cywilna 2005/9/164/109 (the jurisprudence of the Supreme Court, Civil Chamber). The Court ruled.

Patent attorney may be a representative in judicial proceedings, which are the subject of a claim arising from unfair competition in respect of items referred to in article 2, section 1 of the Law on Patent Attorneys of 11 April 2001 Dziennik ustaw No. 49, pos. 509.

Fortunately for all patent attorneys, there is also judgment of the Polish Supreme Court of 13 March 2008, act signature III CSK 337/07. I got it “extracted” from the Court and I’ve uploaded to www.orzecznictwo.net website. The Court simply held.

Patent attorney may be representative in each case relating to unfair competition.

“ACQUA DE DIO GIORGIO MANI” makes you think of:
A. JOOP!
B. DAVIDOFF COOL WATER
C. HUGO BOSS
D. …………… ?

I recommend you to check Polish trade mark application no 288589 of 8 December 2004 filed for Laboratorium Chemiczne “PANDA” Jerzy Bucior. The list of goods include:

perfumery, essential oils, cosmetics, personal and hair preparations, perfumes, eau de Cologne, toiletries, flower extracts for perfumes, deodorants, shaving preparations, bath preparations, depilatory preparations, cosmetic milk, cosmetic creams and lotions, varnishes, make-up products, toilet soaps, hair lotions, lipsticks, inks, crayons, powder, cosmetics talc, petroleum jelly, nail polish remover

Penalties for a total of more than $ 1.2 million Polish złoty were imposed by the Office of Competition and Consumer Protection (UOKiK) on The Association of Authors (ZAiKS) and the Polish Filmmakers Association (APF) because of their agreement “to eliminate competition between them”.

In December 2005, at the request of the Board of Press Editors, UOKiK has began antitrust proceedings against ZAiKS and SFP. The decision to penalise those two organisations was issued on 29 August.

UOKiK has found that since 2003, ZAiKS and SFP, seeking to guarantee itself the highest profits, have operated under the unlawful antitrust agreement. SFP and ZAiKS concluded an agreement which established a uniform, rigid rates for the use of audiovisual works (such as DVD movies) and refused to negotiate them - announced Malgorzata Krasnodębska-Tomkiel (the President of UOKiK) at a press conference in Warsaw.

The decision of the President of the Office of Competition and Consumer Protection, DOK - 6/2008 of 29 August 2008, and the official press release are available at www.uokik.gov.pl website in Polish language.

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 www.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 www.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 claim. More details at www.eff.org website.

Microsoft Corp. v. Novell, Inc., 2008 U.S. LEXIS 2612 (U.S. 2008).

Judges: Roberts, Stevens, Scalia, Kennedy, Souter, Thomas, Ginsburg, Breyer, Alito.

OPINION

Petition for writ of certiorari to the United States Court of Appeals for the Fourth Circuit denied. The Chief Justice took no part in the consideration or decision of this petition.

Previous case Novell, Inc. v. Microsoft Corp., 505 F.3d 302, 2007 U.S. App. LEXIS 24101 (4th Cir. Md., 2007). As usually more details available at www.groklaw.net website.

Judgment of the Court of First Instance (Grand Chamber) from September 17, 2007 in the case T-201/04, Microsoft v. Commission.

1. Annuls Article 7 of Commission Decision 2007/53/EC of 24 March 2004 relating to a proceeding pursuant to Article 82 [EC] and Article 54 of the EEA Agreement against Microsoft Corp. (Case COMP/C-3/37.792 – Microsoft), in so far as:

– it orders Microsoft to submit a proposal for the establishment of a mechanism which is to include a monitoring trustee with the power to have access, independently of the Commission, to Microsoft’s assistance, information, documents, premises and employees and to the source code of the relevant Microsoft products;

– it requires that the proposal for the establishment of that mechanism provide that all the costs associated with the appointment of the monitoring trustee, including his remuneration, be borne by Microsoft; and

– it reserves to the Commission the right to impose by way of decision a mechanism such as that referred to in the first and second indents above;

2. Dismisses the remainder of the application;

3. Orders Microsoft to bear 80% of its own costs and to pay 80% of the Commission’s costs, with the exception of the costs incurred by the Commission in connection with the intervention of The Computing Technology Industry Association, Inc., Association for Competitive Technology, Inc., TeamSystem SpA, Mamut ASA, DMDsecure.com BV, MPS Broadband AB, Pace Micro Technology plc, Quantel Ltd, Tandberg Television Ltd and Exor AB;

4. Orders Microsoft to bear its own costs and to pay the Commission’s costs relating to the interim measures proceedings in Case T‑201/04 R, with the exception of the costs incurred by the Commission in connection with the intervention of The Computing Technology Industry Association, Association for Competitive Technology, TeamSystem, Mamut, DMDsecure.com, MPS Broadband, Pace Micro Technology, Quantel, Tandberg Television and Exor;

5. Orders Microsoft to pay the costs of Software & Information Industry Association, Free Software Foundation Europe, Audiobanner.com and European Committee for Interoperable Systems (ECIS), including those relating to the interim measures proceedings;

6. Orders the Commission to bear 20% of its own costs and to pay 20% of Microsoft’s costs, with the exception of the costs incurred by Microsoft in connection with the intervention of Software & Information Industry Association, Free Software Foundation Europe, Audiobanner.com and ECIS;

7. Orders The Computing Technology Industry Association, Association for Competitive Technology, TeamSystem, Mamut, DMDsecure.com, MPS Broadband, Pace Micro Technology, Quantel, Tandberg Television and Exor to bear their own costs, including those relating to the interim measures proceedings.

September 17, 2007, The Court of First Instance will rule in the case Microsoft v. Commission, T-201/04, OJ C 294 of 02.12.2006, p.56 (PDF file).

Annul the Commission Decision of 24 March 2004 in proceedings regarding the application of Article 82 of the EC Treaty (Case COMP/C-3/37.792 Microsoft), concerning competition conditions in the markets of work group server operating systems and multimedia players or, in the alternative, annul or reduce the fine imposed on the applicant.

Meanwhile, if you are a Polish language speaker/reader there is also a very interesting post and discussion started by Piotr Waglowski on his website. It concerns “foggy” lobbing PR action which is dedicated to protecting companies consumers. In general, the goal is to raise the awarness that one comapny has almost 80% of the Internet ad market share within the European Union. We wonder who sponsors this so-called “social movement” with the help of PR company. As someone points such action is visible in London’s tube since two months.

Alex Ionescu claims on his website www.alex-ionescu.com, that he has succesfully bypassed protection implemented in Microsoft Windows Vista which is called Protected Media Path. It is designed to seriously degrade the playback quality of any video and audio running on systems with hardware components not explicitly approved by Microsoft. More details at www.slashdot.org website.

In August issue of the computer magazine called CHIP I read a short but pithy article by Tomasz Borukało titled “Paragrafami w konkurencję”. Maybe some statements about the law are no so precise as it should be for a lawyer but generally I agree with the author’s conlusions. Unfortunatelu this article is available online yet. It is about the HDCP technology and about licensing policy of patent holders to such solutions. Meanwhile I spoted an article at www.businessweek.com website concering HDTV technology in Europe. It’s worth thinking about.