Keyword advertising raises interesting questions beyond the run-of-the-mill trademark infringement and unfair competition issues typically discussed. For instance, if a sponsored ad can be clicked in three separate countries, can the Courts of each of those countries take jurisdiction to hear and determine a dispute? The Court of Justice of the European Union has given a strange answer to this question, which you’ll probably want to know about if you, or your competitors, do any business online. Continue reading »
Further to my copyright post here, I’ve set out below a list of recent trade mark articles and quotes, with links where possible. A list of my recent copyright publications is here, and there’s a full list of all publications here.
- “National Use Neither Proves Nor Precludes Finding of Genuine Use of a Community Trade Mark,” Edwards Wildman Palmer LLP Client Advisory, July 2012.
- “Onel Opinion Sparks Debate On CTM Genuine Use,” quoted, Managing IP, July 2012. Continue reading »
I haven’t been able to write here for some time, but I have been writing elsewhere. Here’s a list of my recent copyright articles, with links. A list of my recent trade mark publications is here, and there’s a full list of all publications here.
Microsoft has recently tested a new system of advertising whereby ads are not placed on top of the organic search results, nor to the side, nor on a colored background, but actually within the list of organic results. Is this a smart move? Will Microsoft find itself on the end of a (meritorious) lawsuit for trademark infringement or unfair competition? Probably not. Continue reading »
While the Wall Street Journal (initially, at any rate) declared outright victory for Google’s AdWords service after the Court of Justice of the European Union (“ECJ” or “CJEU”) ruled that the sale of keywords to advertisers did not constitute “use” of those keywords within the meaning of the Trade Marks Directive (89/104/EEC), most of us were more cautious from the outset.
For my own part, I wrote in the World Trademark Review that Continue reading »
Simply opening a webpage on a computer can infringe copyright, according to The Newspaper Licensing Agency Ltd & Ors v. Meltwater Holding BV & Ors  EWHC 3099 (Ch). If followed, Proudman J’s ruling could have a radical impact on free social media services, such as Twitter, LinkedIn and Facebook, as well as free monitoring services such as those offered by Google and Bing.
On the positive side, several arguments were not pursued before Proudman J, and could form the basis of a successful appeal to the Court of Appeal.
The single issue before the Judge was whether individuals and businesses (“End Users”) could lawfully “receive and use” e-alerts that contained headlines and extracts (256 characters or less in total) of online news articles without first obtaining permission of the Publishers of those online news articles. See paragraphs 6 and 22.
The articles in question each had to be posted online before forming part of an e-alert, and were not behind paywalls. The Publishers’ websites contain small links to terms and conditions in their footers that prohibit the commercial re-use of articles posted on those sites. Each of these sites could be browsed and read regardless of whether the user had even seen the terms and conditions.
The e-alerts complained of by the Publishers are the same type of news alerts offered to the public by commercial search engines such as Google and Bing. The Publishers argued that Meltwater’s e-alerts damaged their businesses by diverting web users away from their sites, although for reasons not disclosed they did not object to the copying, parsing and processing of their articles, and the subsequent emailing of extracts from those articles, by any search engine, even if such acts were carried out at the behest of and for the benefit of End Users. See paragraph 20. The Publishers also argued that recipients of these e-alerts who did visit their website would be doing so in breach of their terms and conditions.
The statute governing this case is the Copyright, Designs and Patents Act 1988. The starting point is sections 16-18 an 23.
(1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom—
(a) to copy the work (see section 17);
(b) to issue copies of the work to the public (see section 18);
and those acts are referred to in this Part as the “acts restricted by the copyright”.
(2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright.
(3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it—
(a) in relation to the work as a whole or any substantial part of it, and
(b) either directly or indirectly;
and it is immaterial whether any intervening acts themselves infringe copyright.
(4) This Chapter has effect subject to—
(a) the provisions of Chapter III (acts permitted in relation to copyright works), and
(b) the provisions of Chapter VII (provisions with respect to copyright licensing).
(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows.
(2) Copying in relation to a literary … work means reproducing the work in any material form.
This includes storing the work in any medium by electronic means.
(6) Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work.
(1) The issue to the public of copies of the work is an act restricted by the copyright in every description of copyright work.
[F1(2) References in this Part to the issue to the public of copies of a work are to—
(a) the act of putting into circulation in the EEA copies not previously put into circulation in the EEA by or with the consent of the copyright owner, or
(b) the act of putting into circulation outside the EEA copies not previously put into circulation in the EEA or elsewhere.
(3) References in this Part to the issue to the public of copies of a work do not include—
(a) any subsequent distribution, sale, hiring or loan of copies previously put into circulation (but see section 18A: infringement by rental or lending), or
(b) any subsequent importation of such copies into the United Kingdom or another EEA state,
except so far as paragraph (a) of subsection (2) applies to putting into circulation in the EEA copies previously put into circulation outside the EEA.]
[F2(4)References in this Part to the issue of copies of a work include the issue of the original.]
The copyright in a work is infringed by a person who, without the licence of the copyright owner—
(a) possesses in the course of a business,
(b) sells or lets for hire, or offers or exposes for sale or hire,
(c) in the course of a business exhibits in public or distributes, or
(d) distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright,
an article which is, and which he knows or has reason to believe is, an infringing copy of the work.
SUBSISTENCE OF RIGHTS
Is the reproduction of headlines an infringement of any of a Publisher’s copyrights? (paragraphs 57-72)
Here the issues to be resolved were whether the reproduction of a headline could infringe the article to which it attached, and whether there could be a separate, independent copyright in a headline alone. It was accepted by the litigants that headlines were sometimes the result of independent skill and labour, written by different authors, and for a different purpose, than the article to which they attached.
Proudman J made three findings.
- First, a headline is capable of being a copyright work independent of its article depending on the process of its creation and the level of skill and labour that has gone into creating it. The headline would have to be “independently and separately produced” by someone other than the author of the article. See paragraphs 71-72 and 84. This isn’t really surprising.
- Second, if the headline is not sufficiently original to be an independent work, but was written by the author of the article, then the work to be considered is the headline and article together. Could a reproduction of the headline infringe the copyright in such a work? To answer this question, Proudman J relied heavily, at paragraph 68, on the judgment of the ECJ in Infopaq to hold that the reproduction of any extract, whether a headline or snippet, is the reproduction of a part of the copyright work “if that extract contains an element of the work which, as such, expresses the author’s own intellectual creation” (Infopaq, at paragraph 48), meaning that “the various parts of a work thus enjoy protection under Art 2(a) of Directive 2001/29, provided that they contain elements which are the expression of the intellectual creation of the author of the work” (Infopaq, at paragraph 39). Under this test, reproduction of a headline which summarizes the article may well amount to an infringement.
- Headlines that lack sufficient originality to be independent works and are written by third parties probably can be reproduced without fear of infringement. See paragraph 72.
None of this is really surprising, though perhaps it will be a rare case where a headline can meet this test.
Text extracts (paragraphs 73-86)
For articles in which copyright subsists (which will be the norm), the question here was whether the reproduction of (and possibly other acts in relation to) short extracts from these articles could infringe the copyright in those articles. The question focusses on whether the extracts appropriate the skill and labour used by the author to make it an original copyright work (paragraph 83).
Put simply, if it includes “an expression of the intellectual creation of the author”, or, to restate it more poetically, “if it demonstrates the stamp of individuality reflective of the creation of the author or authors of the article”, then there is an infringement. See paragraphs 74, 77 and 83. This is sometimes referred to as the Infopaq test, but is really just a way to determine whether the extract contains a qualitatively, rather than simply a quantitatively, substantial reproduction of the underlying work. (I’m not really sure why the judge refers to part of the extracts being “significant and striking” in paragraph 84. This seems to be irrelevant, and a potential distraction to the real test.)
Clearly search engines, which copy not just all the words of the page but all the meta data contained in the page’s HTML, have the most to lose on this head since the UK has no fair use defence such as exists in the USA.
Websites as databases (paragraphs 87-92)
From para 31:
S. 3 CDPA provides that a database may be a literary work. S. 3A (introduced to give effect to the Database directive 96/9/EC) defines database for this purpose as “a collection of independent works, data or other materials which (a) are arranged in a systematic or methodical way, and are (b) individually accessible by electronic or other means”. S 3A (2) sets out a special definition of originality in relation to databases, namely “if, and only if, by reason of the selection or arrangement of the contents of the database the database constitutes the author’s own intellectual creation.”
The arguments in this section proceeded on the basis that a website could be a database for the purposes of section 3A CDPA, although PRCA denied that the sites relied on by the Publishers’ in this case met the threshold of originality to be databases. See paragraph 89.
I’m not certain that it was correct to make this concession: a website, presented on the client side (i.e. in the browser), is very different to the ordering of subfolders and files within the root folder on the server side. It seems a stretch to hold that each webpage on the client side within a website has been “arranged in a systematic or methodical way”. That would indicate that the structure of the database is simply the address of the pages in question.
Anyway, the point was not argued and is irrelevant after Proudman J held, at paragraph 91, that the scraping of articles was not copying “a substantial part of the effort that went into the structure [sic – section 3A uses the word ‘selection’] and arrangement of the articles within the website”. If a website is a database, however, I disagree with this reasoning: scraping an entire website and copying it into memory is bound to copy not just part of the effort that went into the structure / selection and arrangement of each webpage within the website, but all of it, since scraping reproduces the client-side presentation of the site under the exact same address heirarchy.
But on the basis that I don’t think the client-facing website can, by itself, be a database, I think this is the correct conclusion.
Part II of this series will look at what Proudman J held constitutes infringement of headlines and text extracts, and will be posted tomorrow.
Ever thought of applying for an intellectual property right via a Czech agency? Probably not, if you’re reading this, but in case you do then you might want to read the IPKat’s comments on WIPD, an organization whose name and logo closely resemble those of WIPO, which in addition to being a well respected organization is also an agency of the United Nations.
Of itself, WIPO says:
“The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest.”
Of itself, WIPD says:
“The World Intellectual Property Database (WIPD) is an organization whose task is to manage the world database falling within the area of intellectual property, in particular patents and trade marks.”
Should you you wish to contact WIPD using anything other than snail mail (since only a postal address is shown on the WIPD website), then you should contact David Cabal, World Intellectual Property Database s.r.o., at firstname.lastname@example.org (which appears to be a functioning email address) or at +420.606654600 (assuming that’s a real phone number). If either of these details are incorrect you can inform the domain name registrar, Joker, who are obliged to insist on WIPD providing accurate contact details (though that may eventually force them into hiding behind a privacy proxy).
In the meantime, you can compare the images above and below, and consult the relevant websites to make up your own mind about WIPD’s bona fides.
The reference to the ECJ asks whether a prohibition issued by a Community trade mark court of a Member State has effect throughout the entire European Community or whether it becomes impotent at the rendering State’s borders. Since the Opinion itself is not available in English, we’re having to make do with the Press Release for the time being. (It contains a helpful link to the list of official translations of the Opinion, which includes Greek, Latvian, Finnish and Swedish, but not English). In it, the Advocate General is reported to have opined that:
“the [Community Trade Mark] Regulation confers jurisdiction on the competent national court to declare that a trade mark has been infringed in one or more Member States, so that its proprietor may apply to a single court in order to bring the acts of infringement to an end in several [note – not “all”] Member States. The declaration of infringement relates to a trade mark granted by the European Union, whose judicial protection is entrusted to special national courts of the EU and therefore, in principle, the declaration has effect throughout the entire area of the EU.
However, where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court’s order is limited territorially. It follows that, since the prohibition is the natural consequence of the declaration of infringement, the territorial scope of the prohibition corresponds, in principle, to the scope of the infringement.”
What this appears to say is that the Courts of a Member State can make a declaration of infringement which might be limited to certain geographical areas or which might be unlimited, meaning that it is binding throughout the EC.
First, trade mark infringement actions require an assessment of the visual, aural and conceptual similarities of a mark and their impact on the mark’s essential function or the likelihood of confusion among the public. The AG’s Opinion might not have an impact on the protection of inherently distinctive marks, but what of marks that have only acquired sufficient distinctiveness to get on the register? Are Courts in any jurisdiction sufficiently well-equipped to determine whether such a mark has been infringed in a Member State where a different language and different customs exist? If not, then Courts will, no doubt, limit their declarations of infringement accordingly, and this opinion (and any subsequent judgment that follows it) won’t precipitate any real change to current practice.
Second, though, what if a Court decides that it does have competence to issue a pan-European declaration of CTM infringement? If that happens, that Member State is sure to very quickly become a hot-bed of CTM litigation. Brand owners will be certain to do what they can to secure jurisdiction in such a Court through the commencement of preemptive proceedings. In that regard, Internet sales will be an area to watch. The UK Court of Appeal has recently held that the online sale of goods into a territory is insufficient to provide that territory’s courts with personal jurisdiction (see Lucasfilm Ltd & Ors. -v- Ainsworth & Anor.  EWCA Civ 1328, summarized in my article “Not so long ago, in a courtroom not so far away…“), but not all Courts agree: California assumed the personal jurisdiction in Lucasfilm which the Court of Appeal rejected, and more recently the Court of Appeals for the Second Circuit (on an appeal from the Southern District of New York) suggested, without having to decide, that even the sale of a single item via the Internet could establish personal jurisdiction (see Chloe v. Queen Bee (full citation and links to follow)).
So, if you’re a Member State with sufficient self-interest, then perhaps you will be hoping the ECJ will follow the Advocate General, and are already preparing to react accordingly…
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A dispute has been brewing for a few months now over the issue of “genuine use” of a European Community Trade Mark (“CTM”) for the purposes of opposing a CTM application. The Beneleux Office for Intellectual Property ruled in OMEL/ONEL that use of a CTM in only one EC member state was not “genuine use” of a trade mark, and as such the mark could not be relied upon in opposition proceedings. You can read more from the IPKat here.
The decision has caused quite a stir and there are many issues at play, including whether member states can divide the Internal (Single) Market in this way and whether the decision was based on self-interest: if a business owner can protect his trade mark throughout the entire Community for around the same price as protecting it only in Belguim, the Netherlands and Luxemburg, you can guess who’s not going to be making as much money as they used to.
Various European officials have condemned the decision, and have said they are “confident” that it will be overturned on appeal (the threat of the Commission commencing proceedings against the member states involved may have provided some of that confidence). The decision has also been described as “naked self-interest”, “absolutely unacceptable”, “a fundamental attack on the basic principle of the internal market that there should be no discrimination of any kind on companies, wherever they operate in a single uniform unitary market”, “fundamentally against the principles of the European Union” and a result of “somewhat protectionist temptations”, as well as a threat to SMEs. Read more from the IPKat here.
The debate has also led to some interesting comments from non-EU pratitioners on what would be a good way forward.
“is [the] geographical extent to which a CTM should be enforceable after five years, and the ability of the original CTM proprietor to block registration of similar signs for use in regions where the prior CTM has neither been used nor made known…Personally, I’d still like to see a requirement for use in commerce between at least two EU states after five years, but that issue seems less important to me than the issue of concurrent use/registrability.”
These are interesting comments, although I’m not sure how well the “made known” requirement would translate from the application side of the Canadian trade mark system to the renewal side of the European system, since a mark is constructively made known to the entire EC as soon as it is placed on the register. (Though cf. http://www.nic.uk/digitalAssets/7986_aqualutionltd2.pdf, where the ADR Panel of Nominet, the .uk domain name registry, held (para 6.25) that “constructive notice” does not and should not apply to the Nominet DRS. This wasn’t appealed, so is of only limited precedential value.)
I’m sure there are many who would not disagree with the suggestion that some degree of inter-state trade be required in order to sustain a CTM registration. However, since that requirement is a long-standing feature of US federal registrations, I can only imagine that the absence of any similar requirement from the CTM Regulation is intentional.
Does anyone know if a Canadian mark would have its protection restricted if it was only used in, say PEI? PEI is Canada’s smallest province (0.43% of total population), and its population is almost exactly one third of Malta (which has 0.09% of the EU’s population), so it could be an interesting case study.