28 February, 2017

Pretty Cheesed - Will GIs Remain Protected in the UK After Brexit?

With the impending Brexit launch date looming in only two months, the repercussions of the UK's possible decision to leave the EU casts a shadow over nearly every aspect of the law in the country. While the nuances of its effects remain largely unclear at this moment, despite the government's white paper published earlier this month, and this leads to a wealth of speculation, even in the field of IP law. This writer recently came across the article below by the Guardian that discussed Brexit's impact on geographical indications (more on which here), and clearly, there could be some interesting issues presented should this not be resolved during the negotiations.

By way of exposition, Geographical Indicators (including PGIs and PDOs for the sake of simplicity) protect the specific origins or specifications of goods in the EU, allowing only those who comply with the specifications of a given GI to use the name in conjunction with their product (i.e. acting as a form of provenance of legitimacy). For example, Parmigiano Reggiano and Feta can only be used for cheeses that follow the specifications, i.e. have been produced in a particular region using particular milk. These are protected, among international treaties, under the GI Directive.

What remains interesting is that over 60 British products, such as Stilton blue cheese and the Cornish Pasty, will remain protected under EU law even after the UK's departure from the EU (as no membership is required); unless the Union will amend its laws or simply rescind protection for UK GIs.

Peter was unsure what to do with
all of his faux "parmesan" after Brexit
On the flip-side of this conundrum, all of the EU GIs would be free to be used in the UK, provided that the legislation that remains does not reflect the EU position as it was prior to Brexit. Even though individuals could make Birmingham "Champagne" or Newcastle "Parma Ham", the goods would not be allowed to enter the EU market (or those with reciprocal agreements with the EU, such as Canada under the Comprehensive Economic and Trade Agreement). Internal competition in the UK could lead to branding issues for GIs, but it seems unlikely that many domestic producers would willingly go against prior practice and laws.

An additional twist to the tale are the various conventions that the UK is party to, including the TRIPS Agreement and Madrid Agreement, would still remain in force, protecting GIs in the UK outside of EU legislation.

Although Brexit will present its challenges to the UK and EU economies, this writer doubts that GIs will be an issue, and that business will continue as usual, with protection being extended to GIs both in the UK and the EU. Reciprocal protection will most likely be extended to intellectual property rights in negotiations, or at least conversions, where needed, would be provided to those wishing to retain their rights, and equivalent legislation will nonetheless have to be introduced as a part of international obligations outside of the EU.

The hypothetical scenario of a lawless GI landscape in the UK is an entertaining one, but is very much a near impossibility should the UK want to remain relevant in the global market.

Source: The Guardian

23 February, 2017

Walking the Online Plank - Advocate General Szpunar Sets the Scene for Blocking Infringing Websites

Peer-to-peer file sharing has had its enemies since its very beginning, especially when used for sharing either protected or non-protected works online. A particular offender in the former category is the infamous Pirate Bay website, which shares hyperlinks to files known as 'torrent' files, which contain metadata on the files, linking a variety of peers (i.e. file sharers) with others wishing to download said file, and deliver pieces of the file using the P2P protocol. The fight against the Pirate Bay as an intermediary has been going on for a very long time, and the matter has been winding its way through the EU courts as well. While the CJEU has yet to rule on the matter, Advocate General Szpunar handed down his opinion before the CJEU's determination on this long-standing matter.

The case of Stichting Brein v Ziggo BV concerned Stichting Brein, a Dutch organization that focusses on combatting the illegal exploitation of copyright protected works, and to protect the interests of rights holders. Ziggo BV and the other defendant, XS4ALL Internet BV, are Dutch internet service providers who largely control the Dutch market. Stichting Brein took the ISPs to court, applying to compel the ISPs block all internet access to the Pirate Bay under the Dutch transposition of Article 8 of the InfoSoc Directive.

What the CJEU had to answer were two questions that the Court summarized as follows: "… the referring court raises in reality the matter of the liability of operators of indexing sites of peer-to-peer networks for copyright infringements committed in the context of the use of those networks. Can those operators themselves be regarded as being the originators of those infringements, which would mean they are directly liable (first question)? Or, even if they are not directly liable, can an order be made blocking access to their websites, which, as I shall explain below, requires a form of indirect liability (second question)?"

The first aspect of the larger question is whether the provision of indexed metadata relating to P2P files through a search engine is a communication to the public. As has been firmly established, a communication to the public comprises of two criteria, in essence (1) an act of communication and (2) it is made to a public.

The Advocate General first set out the basics, where an 'act of communication' emphasises the essential role of the player originating the communication and the deliberate nature of their intervention (including full knowledge of the consequences of their actions), without which the customer would not have gained access to the work and therefore does. The nature of the communication is also important, with rights holders also being able to prevent the infringement even if the communication, at the choosing of the end-user, hasn't taken place yet.

A 'public' is one where the communication is intended for an indeterminate, but fairly large number of recipients; however, as was discussed in Svensson, the public has to be a new one, and the provision content to the entire internet would not necessarily amount to a 'new' public. Even If provided for the internet at large, you still have to consider the intention of the communicator and the public it wanted to reach during the communication.  If the communication is made without the authorization of the rights holder, it's clearly made to a new public they didn't consider, making the public a 'new' one for this purpose.

Online piracy is real and scary
The AG then moved onto the actual application of the above to P2P networks. In his view, a copyright protected work would be communicated to the public via a P2P network, as; firstly, the works are made available on the computers of the network users, so any other user can download them; Secondly, the amount of users in P2P networks and using the Pirate Bay clearly would be an undefined and significant number of persons; and lastly, as no consent was given by the rights holder to share the works on these systems or websites, the works have been distributed to  a 'new public', since "if the author of the work has not consented to it being shared on a peer-to-peer network, the users of that network constitute by definition a new public". While this amounts to a clear communication to the public, the AG had to still decide, in his opinion, who the works originated from (i.e. the users or the indexing website).

The role of the indexing websites was also deemed necessary by the AG, since "...[infringing] works would not be accessible and the operation of the network would not be possible or would at any rate be much more complex and its use less efficient" without them. He also highlighted the need for knowledge by the website operators, and specified that "...from the moment that operator has knowledge of the fact that making available took place in breach of copyright and does not take action to render access to the work in question impossible, its conduct may be regarded as being intended to allow, expressly, the continuation of the illegal making available of that work and, hence, as an intentional action". The website operators' intervention is therefore necessary and deliberate (at least in the instances as detailed above), meaning the operators would be jointly with the user making the works available and thus communicating them to the public.

The AG then moved onto the second question, discussing the need to block access to websites such as the Pirate Bay (albeit only in the instance should the CJEU disagree with his answer to the first question).

In his view, Article 8 presupposes a link between the infringement and the subject of the injunction, meaning the services of the intermediary are used to facilitate the infringement happening through the website in question. He concluded that, in the light of this dependant relationship, the intermediary has to prevent access to the site to protect itself from liability.

He also added that this would not, potentially at least, impinge on the users' fundamental rights. The blocking of websites like the Pirate Bay would be proportionate to the significance and seriousness of the copyright infringements committed on that site. The block would also not prevent legitimate uses of P2P technologies, or the finding of legally shared files online. The measures themselves, ultimately, will have to be "...proportionate to the significance and seriousness of the copyright infringements committed, which is a matter for the national court to determine".

The AG's opinion sets the scene for the CJEU, and clearly will envision the decision going the way of the rights holders. Admittedly, this would seem like the most logical solution to a complex and difficult problem to tackle; however, measures would indeed have to be proportionate and non-restricting to the public at large. This writer would envision a possible avalanche of blocking injunctions being pushed after a decision to the affirmative; however, an EU-wide block seems highly unlikely, as application has to be done on a national basis.

Source: IPKat

16 February, 2017

Putting the Hammer Down - Punitive Damages Greenlit by the CJEU

Damages are a peculiar beast in the world of IP. Too little, and you effectively encourage infringement, or at least mitigate the punch after any successful infringement claims. Too excessive, and you can cause for the balance of power to excessively shift to the rights holder's hands, possibly even encouraging the misuse of those rights in the search of easy monies. Due to this, many jurisdictions elect against excessive, or in other terms, punitive damages, which seek to punish the offender and to discourage others in the process. EU law in itself does not provide for punitive damages as a must for Member States, but does that then mean you cannot introduce them as a Member State? The CJEU answered this question less than a month ago.

The case of Stowarzyszenie “Oławska Telewizja Kablowa” v Stowarzyszenie Filmowców Polskich dealt with the use of TV programming by OTK, a local television broadcaster in Poland, for which SFP, a Polish collection society, managed the rights. The two entities had a licencing agreement in place until the late 1990s; however, OTK kept broadcasting the shows even after the end of the agreement (seeking to set the fees from a third-party body, nonetheless). SFP took OTK to court for, among other things, copyright infringement, seeking twice the amount in damages that they would have gotten from a legitimate licencing arrangement. OTK took the matter forward, particularly on the point of the punitive damages, ultimately ending up with the CJEU.

The CJEU had to answer one question: "...whether Article 13 of Directive 2004/48 [Enforcement Directivemust be interpreted as precluding national legislation... under which the holder of an intellectual property right that has been infringed may choose to demand from the person who has infringed that right either compensation for the damage that he has suffered, taking account of all the appropriate aspects of the particular case, or, without him having to prove the actual loss and the causal link between the event giving rise to the infringement and the loss suffered, payment of a sum corresponding to twice or, in the event of a culpable infringement, three times the appropriate fee which would have been due if permission had been given for the work concerned to be used".

The Enforcement Directive lays down the minimum standard of protection that Member States have to have in place, but does not preclude them from setting higher, more punitive measures to do the same (in particular what was discussed in Hansson). Similarly, the Berne Convention, the Rome Convention and the TRIPS Agreement all allow for wider protection for Member States than prescribed.

Simone considered this to be cruel and unusual punishment
The CJEU therefore concluded that Article 13 does not preclude Member States from enacting provisions that are wider than what is set in the Enforcement Directive.

Even though the compensation offered through more punitive damages is not exactly the amount of loss suffered by the rights holder, it does not mean it cannot be provided for, as that characteristic is inherent in any lump-sum compensation given to rights holders (including as set in Article 13). The CJEU also pointed out that "...the fact that [the Directive] does not entail an obligation on the Member States to provide for ‘punitive’ damages cannot be interpreted as a prohibition on introducing such a measure". This makes sense to this writer, as the lack of a requirement does not necessarily mean the opposite would be true of the very same, leaving the option open to those wishing to implement it.

Finally, the CJEU emphasized that damages awarded, without being punitive, might not cover all of the costs associated with the pursuing of those damages, which possibly includes research into the infringement, other legal fees and even, as decided in Liffers, any moral prejudice suffered by the rights holder. Even if the amount would exceed all losses suffered, including the above, the Court noted that the Member States would still have the capability to regulate any possible abuses of punitive damages in court proceedings.

The decision reached by the CJEU does not in itself change much, but does affirm the capability for Member States to have punitive damage provisions, including ones in the UK. Should they wish to implement such measures in the future is also allowed; however, EU legislation, as it stands, does not impose such an obligation. This decision will delight many rights holders in Member STates with punitive damage provisions, and pushes the law a little in their favour going forward.

Source: IPKat

06 February, 2017

All the Right Words - The British Columbia Court of Appeal Decides on Keyword Advertising and Passing Off in Canada

While the Internet's vastness and accessibility seems like a given for those who've seen it grow over the years, finding what you need can still be quite the struggle, especially when you're looking for more niche or specific information or services. Search engines like Google have made this a breeze in most cases, but unbeknownst to most, there is a war going on underneath the surface of search engines and websites. Due to the sheer amount of competition in most sectors, being the top result in a search query, or at least making it to the first page and above your competitors, pushes website administrators and creators to rely on less 'nice' methods to push their results ahead of others. One way is through the use of website metadata, particularly the keywords associated with your website. In the light of this specific feature, could you use your competitors' name or trademarks in your own website's keywords? The Canadian Court of Appeal looked to settle this point after a first instance decision sometime in late 2015.

The case of Vancouver Community College v. Vancouver Career College (Burnaby) Inc. dealt with the use of the acronym VCC, which has been used by Vancouver Community College for some time, which had also registered the abbreviation and its full name as trademarks in Canada (marks 0910482 and 0916687). Vancouver Career College also aimed to use the same acronym with or in place of their name, in their domain name, incorporating it into their marketing materials and in social media, and also purchased the keyword advertising rights to it on Google and Yahoo. Vancouver Community College subsequently took Vancouver Career College to court under claims of passing off and trademark infringement.

The Court first dealt with the claim of passing off, which is enshrined in the Canadian Trade-marks Act in section 7. Similarly to the concept of passing off, a claim in Canada needs to consist of three components: "… the existence of goodwill, deception of the public due to a misrepresentation and actual or potential damage to the plaintiff ".

The first component is goodwill in the name 'Vancouver Community College' and 'VCC', which, putting it into more simple terms, amounts to "…the positive association that attracts customers towards the owner’s wares or services rather than those of its competitor". In particular to names, this requires specific recognition in a primary sense of the name in the relevant marketplace as distinctive to that entity. The Court rejected the notion from the Supreme Court of BC had erred in required an additional secondary meaning, as only the primary meaning would be needed to establish goodwill in 'VCC'. Having considered the evidence submitted at first instance, the Court determined that the Supreme Court had erred in their finding of no goodwill (overstating the scope of evidence to the contrary, and failing to consider a body of evidence to the positive), and that there indeed was goodwill in the acronym at the relevant time.

Keywords can be quite "persuasive" (Source: Dilbert)
The second component is confusion, i.e. deception through misrepresentation to the relevant public causing confusion in the minds of the public as a likely consequence of the impugned actions. Justice Saunders, handing down the Court's unanimous decision, saw that the Supreme Court erred in their assessment of confusion in the case, as "… confusion is fully established by proof that the respondent’s domain name is equally descriptive of the appellant and contains the acronym long associated to it". The Supreme Court determined that confusion was only achieved when the searcher arrived at the website's landing page, and not before the fact. While Justice Saunders did see that the mere existence of the acronym was enough to cause confusion, the bidding for keywords containing the full name or the acronym would not cause confusion as "… the critical factor in the confusion component is the message communicated by the defendant. Merely bidding on words, by itself, is not delivery of a message. What is key is how the defendant has presented itself, and in this the fact of bidding on a keyword is not sufficient to amount to a component of passing off".

The Court then moved on to consider damage caused to the plaintiff, which, according to Justice Saunders, can include damage to one's goodwill or loss of control of that same goodwill (i.e. there is not necessarily a need for actual monetary damage). Concluding her judgment on passing off, Justice Saunders did indeed confirm that Vancouver Community College had suffered damage to their goodwill, and that Vancouver Career College had passed off their services.

Finally, the Court looked at whether the registered trademarks had been infringed under section 9 and section 11 of the Trade-marks Act. Justice Saunders dealt with this matter briefly, and saw that "… there are too many factual determinations and outstanding issues" for the Court to determine and that the matter is best remitted back to the Supreme Court for fresh consideration.

Ultimately, the Court of Appeal issued a permanent injunction against Vancouver Career College for the use of the acronym 'VCC' and 'VCCollege' in its Internet presence. The matter of damages and the breach of the trademarks were to be looked at by the Supreme Court.

The case is quite the interesting one, and the Court's considerations in terms of confusion seems to focus on the searcher's viewing of the results page, rather than the viewing of the landing page after clicking a link. It did, however, entrench the determination that the purchasing of keywords incorporating others' marks would be wholly acceptable in Canada, which does leave rightsholders somewhat exposed.

Source: JDSupra