Intellectual Property Law Internet Law IT Law Computer Law

Joe Gratz wrote a post about a very interesting judgment in the case Lenz v. Universal Music Corp., No. 07-3783 (N.D. Cal. August 20, 2008), PDF file.

The purpose of Section 512(f) is to prevent the abuse of takedown notices. If copyright owners are immune from liability by virtue of ownership alone, then to a large extent Section 512(f) is superfluous. As Lenz points out, the unnecessary removal of non-infringing material causes significant injury to the public where time-sensitive or controversial subjects are involved and the counter-notification remedy does not sufficiently address these harms. A good faith consideration of whether a particular use is fair use is consistent with the purpose of the statute. Requiring owners to consider fair use will help “ensure[] that the efficiency of the Internet will continue to improve and that the variety and quality of services on the Internet will expand” without compromising “the movies, music, software and literary works that are the fruit of American creative genius.” Sen. Rep. No. 105-190 at 2 (1998).

I still wonder why such regulation were not included in analogical provisions of Polish or European Union law.

When I see such legislative initiatives as reported by the European Digital Rights at www.edri.org website, I start to doubt about European integration if the process of adopting directives looks like that (you do remember how was the Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions adopted and all this controversy with ignoring the voice of one country during the Council meeting right?). I see a lot of advantages of the Community Trade Mark system but lobbying in the European Union makes me annoyed at the bureaucrats and European bureaucracy and you should read this post in such manner. ;)

Update on July 8, 2008.
Philippe Aigrain has written a very detailed post regarding lobby process within the EU in the field of IP law. It is available at www.paigrain.debatpublic.net website.

Today is the official “premiere” of the Office for Harmonization in the Internal Market’s website and beginning July 1, 2008, the US Copyright Office is offering online registration of claims to copyright through the electronic Copyright Office (eCO) website.

I do not want to brag about myself but I wrote once in the post titled “The Law” that I want to write some article. You may wonder what has happened after almost two years since I’ve issued such statement?

Legal context: This article deals with most important legal questions regarding graffiti. It seeks to identify issues that may arise in copyright and trade mark law. The analysis is based on selected international, Polish, UK, US and European Union regulations.

Key points and practical significance: The social phenomenon known as graffiti is not legally indifferent. However, there are few articles dealing with those issues relevant in IP law. The author presents a short overview of the contemporary graffiti movement. He then presents important IP legal problems that may arise as regards to graffiti activity and briefly analyzes those issues relevant to domestic and international legal regimes.

Key Words: Most graffiti is illegal, but that does not mean that interesting IP questions do not arise in relation to this cultural phenomenon. Following a short overview of the contemporary graffiti movement, the author article seeks to analyse some of the basic questions that arise concerning copyright protection and industrial property law. The author calls for a more focused analysis in the future of this controversial problem.

T. Rychlicki, Legal questions about illegal art, Journal of Intellectual Property Law & Practice 2008 3(6):393-401; doi:10.1093/jiplp/jpn058.

Adidas Am., Inc. v. Payless Shoesource, Inc., 3:01-cv-01655 (D. Or. Nov. 8, 2001). $305 million judgment. The issue was a trade mark infringement of 3 stripes. So, that’s more than $100m per stripe as Marty Schwimmer has noted. There are some documents related to this case at Marty’s website too. Adidas is very protective when it comes to this sign/mark. As an example you may read cases that were brought before The Court of Justice of the European Communities. C-102/07, adidas and adidas Benelux.

First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the requirement of availability cannot be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.

C-408/01, Adidas-Salomon AG and Adidas Benelux BV v. Fitnessworld Trading Ltd., OJ C 304, 13.12.2003, p. 5.

1. A Member State, where it exercises the option provided by Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, is bound to grant the specific protection in question in cases of use by a third party of a later mark or sign which is identical with or similar to the registered mark with a reputation, both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark.

2. The protection conferred by Article 5(2) of Directive 89/104 is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.

3. The fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of Directive 89/104 where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark, with the result that one of the conditions of the protection conferred by Article 5(2) of Directive 89/104 is then not satisfied.

Well, what can I say? Such marks and sign will always bring public controversy. I can unmodestly recommend you my post titled “Non-traditional trademarks in Polish case law” and “Reclaim Magenta“.

I started an academic platform called www.lawinit.com together with dr Wojciech Wiewiórowski and thanks to great help of Marcin Sochacki and Marcin Czerwiński. We think about English version too so if you are interested in such academic cooperation then you are warmly welcomed. Meanwhile, among other things there are great translations of German courts judgments provided by Justyna Kurek.

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.

I wrote a post titled “Reclaim Magenta” some time ago. Of course, color per se, serving as a trademark will always bring some doubts and I know that well. There is an article available at www.engadget.com website, this time.

Federico Biancuzzi wrote an article “The Laws of Full Disclosure” which is available at www.securityfocus.com website. There is a little part where he asked me some questions regarding Polish and European legal regimes.

Finally, after remaining anonymous for some time, I am able to present you the Class46 project website. As you may read it is an experimental site dedicated to European trade mark law and practice by friends and supporters of MARQUES. I was invited by Jeremy Phillips to join this project. You will read news presented by a very small but also super-extra-nice team. My friends are Birgit Clark, Frédéric Glaize Julia Holden, Ignacio Marqués and Gino van Roeyen. I am really happy to be a part of this group. I learn from them a lot. I hope you will also enjoy reading Class46.

The team behind the social BitTorrent client Tribler is responsible for the core P2P technology for the project, dubbed P2P-Next. The project received $22 million (15 million Euro) from the European Union and another $6 million (4 million Euro) is brought in by some of the partners.

More details in the article available at www.torrentfreak.com website. So it looks like after couple of years of different attempts to penalize the technology as they tried in the US, finally we see more business approaches. Quite interesting.

“I strongly believe that copyright protection for Europe’s performers represents a moral right to control the use of their work and earn a living from their performances. I have not seen a convincing reason why a composer of music should benefit from a term of copyright which extends to the composer’s life and 70 years beyond, while the performer should only enjoy 50 years, often not even covering his lifetime It is the performer who gives life to the composition and while most of us have no idea who wrote our favourite song – we can usually name the performer.”

Commissioner Charlie McCreevy. The European Commission press (IP/08/240) release on February 14, 2008.

No negative impact on consumer prices

The Commissioner stressed that the proposal should not have a negative impact on consumer prices. “Empirical studies on the price effects of copyright protection show that the price of sound recordings that are out of copyright is not necessarily lower than that of sound recordings in copyright.

No negative impact on Europe’s external trade balance

The Commission has also looked at the trade implications of a longer term of protection and provisionally concludes that most of the additional revenue collected in an extended term would stay in Europe and benefit European performers. This is good for promoting Europe’s performers and the cultural vibrancy of European sound recordings.

Hey Charlie are those all negative impacts’ factors you were able to consider?

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’), 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, Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, and Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) do not require the Member States to lay down, in a situation such as that in the main proceedings, an obligation to communicate personal data in order to ensure effective protection of copyright in the context of civil proceedings. However, Community law requires that, when transposing those directives, the Member States take care to rely on an interpretation of them which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order. Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality.

Details about this case in the judgment C-275/06, Promusicae.

There is a very interesting article available at www.laughingsquid.com website about Best Buy’s reaction regarding a criticism of their business. Best Buy’s lawyer wrote that this trademark is well-known and famous. For a comparative argument I’d point him at the CFI case T-122/01, Best Buy Concepts v. OHIM, OJ C 213, 06.09.2003, p. 30.

28.
As regards, first, the word mark best buy, the Court notes that it is composed of ordinary English words which clearly indicate an advantageous relation between the price of the services covered by the application and their market value.

29.
It is, therefore, perceived immediately by the relevant public as a mere promotional formula or a slogan which indicates that the services in question offer the best buy possible in their category or the best price-quality ratio, as noted by the Board of Appeal in paragraph 17 of the contested decision.

Update on December 13, 2007.
Best Buy officially regrets sending the C&D letter. More details at www.laughingsquid.com website.

My dear friend, great translator and interpreter and talented illustrator Artur Zawiasiński has sent me a link to www.stijlfigurant.nl website. You may also read more comments about the action against T-mobile’s trade mark/service mark at www.colourlovers.com website.

I would like to add a short legal comment on this whole issue. The US Supreme Court ruled in the case Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), that:

a color may sometimes meet the basic legal requirements for use as a trademark.

The Court of Justice of the European Communities in its judgement from May 6, 2003, in the case C-104/01, Libertel Groep BV v. Benelux Merkenbureau, OJ C 146, 21.06.2003, p. 6, ruled that:

in answer to the questions referred to it by the Hoge Raad der Nederlanden by order of 23 February 2001, hereby rules:

1. A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code.

2. In assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.

3. A colour per se may be found to possess distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing that product or service from those of other undertakings.

4. The fact that registration as a trade mark of a colour per se is sought for a large number of goods or services, or for a specific product or service or for a specific group of goods or services, is relevant, together with all the other circumstances of the particular case, to assessing both the distinctive character of the colour in respect of which registration is sought, and whether its registration would run counter to the general interest in not unduly limiting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought.

5. In assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, the competent authority for registering trade marks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the mark.