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Za-Za-Zooming In On A Brand
How to keep your portfolio ticking over
Copyright Reform
Content portability and beyond
Google Books
Fair to whom?
Turkish Trademarks
Modernising the law
Online Disputes
Choosing an arbitration centre
Intellectual Property
in an Innovative World
Latest News
Contents
Baidu to collaborate with publishers
to tackle copyright infringement
China. This memorandum of understanding
today represents a great step towards this,
creating a collaboration which will lead
China’s largest search engine, Baidu, has to faster and streamlined approaches to
signed a memorandum of understanding for tackling a global problem.”
Bob Barchiesi, president of the IACC,
copyright protection collaboration with the
provides an update on the fight against
International Publishers Copyright Coalition Luxury brands unperturbed by threats counterfeiting and piracy
(IPCC), in a bid to reduce online infringement. to intellectual property online
p6
IACC Update
The agreement sets out a programme of The threats posed to data, online
collaboration to tackle the shared issue of transactions and intellectual property are
online infringement.
largely underplayed as perceived challenges
to luxury brands, Taylor Wessing has claimed
Emma House, director of public relations at in a new report.
the UK Publishers Association, said of the
agreement: “As one of the sponsors of the The Luxury Barometer is aimed at predicting
IPCC, we warmly welcome the memorandum trend forecasts in the market, to help aid
of understanding with Baidu signed during businesses. The underlying research was
UK-China Copyright Week.”
conducted by YouGov.
“This demonstrates Baidu’s commitment to
working with global rights holders to tackle
copyright infringement for mutual benefit.”
Dr Ros Lynch, director of copyright and
enforcement at the UK Intellectual Property
Office, witnessed the signing as part of her visit
to China to understand cooperation activities
on copyright protection and enforcement.
Lynch planned to meet Chinese government
and law enforcement counterparts, and was
accompanied by Detective Chief Inspector
Peter Ratcliffe of the City of London Police
Intellectual Property Crime Unit (PIPCU).
She heard discussions covering exchanging
enforcement best practices, including
online copyright initiatives such as PIPCU’s
Infringing Website List and cross-border
joint operations to tackle counterfeit goods.
New gTLDs
Lexsynergy, the TMCH and fTLD Registry
Services outline how trademark attorneys
should approach brand protection in the
new gTLD programme
p8
RPM Review
An ICANN working group is reviewing the
rights protection mechanisms of the domain
name system
When the firm asked luxury brands what
p12
challenges their business might face in the
next 12 months, only 2 percent mentioned
intellectual property.
Tips for selecting the most appropriate
arbitration and mediation centre for disputing
Both cyber crime or data security was only domain name registrations
considered a threat for 8 percent of luxury
p16
brands surveyed.
UDRP/URS
Naming Strategy
The UK luxury market is worth around £32 For those brands interested in aligning their
billion. When questioned, luxury brands put corporate intangible assets, there are some
their faith in online channels rather than key points to consider
their own retail stores, at 61 percent and 37
p18
percent, respectively.
Cross-Border Copyright
The firm said luxury brands are embracing The proposed EU Content Portability
online and mobile technology as an Regulation may not alone revolutionise the
opportunity for growth, but without European content licensing market
acknowledging the risks of operating in an
p24
online market.
Google Books
“For some businesses, this unbridled An entertainment and new media attorney
“In the UK, we recognise that government optimism could itself create risks that unpicks the US Supreme Court’s decision to
and legislation can only reach so far. It is challenge business growth plans.”
let Google Books stand
important that rights holders and internet
p28
platforms work together to help protect IP,” Tom Carl, senior associate at Taylor
Lynch said of the Baidu agreement.
Wessing, said counterfeiters, copycats,
discount sellers and parallel importers are New legislation in Turkey promises a swathe of
“The benefits of an efficient and fair global “hungry” to exploit this market and its new trademark changes
IP system are huge, for both the UK and platforms and technologies.
p34
Turkish Trademarks
IPzen
3
Latest News
Carl explained: “These offer lower running costs,
no borders, and more anonymity—making them
particularly attractive for infringers and harder for
brand owners to protect and police their IP.”
Following the consultation, which attracted The changes must still be presented to
1,032 responses, it “became clear” that in parliament before they can go into effect.
order to achieve its aim, some wider changes
were also required to the offence provisions, Getty Images takes aim at Google
said the government in its response, which
“Whether or not they fully embrace the digital was published this month.
Getty Images has filed a competition law
marketplace themselves, brand owners
complaint against Google with the European
therefore also need to invest in suitably A large percentage of respondents were Commission over the internet company’s
protecting their IP and policing infringers concerned that there is currently no Images search engine.
online. Appropriate selective distribution requirement to prove an infringer has intent
arrangements should also be implemented to to cause harm, in order for them to be The complaint follows Getty’s support of the
preserve exclusivity.”
culpable of the offence.
European Commission’s investigation into
allegations that Google is distorting search
UK to increase prison term for online Under the revised changes, criminal offences results in favour of its own services.
will not apply to low-level infringement that
The UK has confirmed it will increase the causes minimal harm to copyright owners, in The new complaint accuses the internet
maximum penalty for online copyright particular where the individuals involved are company of contributing to widespread
infringement to 10 years in prison.
unaware of the impact of their behaviour.
piracy. Getty’s complaint, which was filed
with the European Commission on 27 April,
Changes have been made to scope of the Baroness Lucy Neville-Rolfe, the UK’s focuses on changes made to the image
offence following a consultation carried out minister for intellectual property, said: “The search functionality of Google Images
last year in which the government received UK is frequently cited as the world leader in IP product in 2013.
substantial criticism for the proposal.
enforcement, and as minister for IP I want to
do everything I can to preserve this standing.” In a statement, Getty Images argued
Under the proposal, online copyright
that the changes not only affected its
infringement on a commercial-scale would “The provision of a maximum 10-year sentence “image licensing business, but content
be treated with the same penalty as offences is designed to send a clear message to creators around the world, by creating
related to infringement of physical goods, which criminals that exploiting the IP of others online captivating galleries of high-resolution,
attracts a prison sentence of up to 10 years.
without their permission not acceptable.”
copyrighted content”.
SINGH
LALL
CHANDER LALL
SENIOR PARTNER
BITIKA SHARMA
PARTNER
SUDEEP CHATTERJEE
PARTNER
MEMBERS
TEJVEER SINGH BHATIA
PARTNER
RAGHAV MALIK
PARTNER
100
COUNTRIES
In addition to
India the firm has
strong
international
presence in
SAARC countries
Member Law Firm
SINGH
SETHI
COMPETITIVE EDGE
IP power house with IP Litigation
and filing and prosecution capability
Represent almost 90% of the Patent
Litigation cases and 30% of the IP Litigation
cases of the country
In‐house Litigation Capability is the USP.
In‐house developed IP Management Software
equipped to handle all aspects of IP
management, relationship management,
and transparent billing practices
PRACTICE AREAS
JYOTIDEEP KAUR
PARTNER
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PARTNER
SAYA CHOUDHARY
PARTNER
Prosecution & litigation of
matters related to Trademark,
Copyright, Patent,
Geographical Indicators,
Designs, Telecom Law and
Policy Making
INDUSTRY SECTORS
Pharmaceuticals, FMCG,
Entertainment, IT,
Beverages, Banking,
Telecommunication,
Cosmetics, fashion
& others
Widely appreciated
for quality services.
Recipient of several
national and international
accolades and
recognition in last
one decade
ANJU KHANNA
PARTNER
OFFICE: D – 17, SOUTH EXTENSION – II, NEW DELHI - 110 049 INDIA
P: +91 11 4289 9999 F: +91 11 4289 9900 E: [email protected]
4
Many brands make light work
Bob Barchiesi of the International AntiCounterfeiting Coalition provides an update
on the fight against counterfeiting, and previews the Spring Conference in Florida
IACC Update
Mark Dugdale reports
What are the most pressing issues that brands are facing when
protecting and enforcing their trademarks online?
working with Alibaba Group to offer IACC MarketSafe to participating
members, the IACC will continue to pave the way, building bridges
with different parties to develop innovative solutions to counterfeiting.
Online counterfeiting continues to be a problem. Because of it, brands
get victimised twice: they lose sales and sustain damage to their brand
equity. The problem persists. In fact, the Organisation for Economic
Co-operation and Development’s recent report, The Economic Impact
of Counterfeiting and Piracy, speaks to the increasing importance of
internet and ecommerce in international trade.
We are currently working on a number of major initiatives that will
be some of the most innovative anti-counterfeiting programmes to
date. We are looking forward to sharing the news with our members.
What will your message be for members at the Spring Conference
in Orlando?
On the one hand, we need greater coordination and communication
between government agencies and brand owners. Counterfeiters
operate in a complex network that spans borders and works both online
and offline. The only way to enforce IP protection is to have governments
speak with one another and work hand-in-hand with brand owners to
ensure that goods shipped across borders are legitimate products.
Counterfeiters are evolving, and our ways to combat them should,
too. This includes engaging with and working with all industries and
agencies, increasing cooperation on current enforcement initiatives and
ensuring that we all continue to be innovative in our approach to anticounterfeiting. As the leading global anti-counterfeiting organisation,
the IACC will continue to build bridges and lead IP enforcement.
On the other hand, we need to work across industries and sectors to
develop more effective and innovative ways to stop counterfeit goods
from being sold online. One way to accomplish this is by bringing
intermediaries to the fold and working closely with these companies
on developing solutions to this issue.
Is the counterfeit fight being won?
Counterfeiting is a complex and ever-evolving problem. Counterfeiters
are sophisticated and adapt to successful anti-counterfeiting efforts
and technology. The key for rights holders and governments is to
continue to also adapt, work together and use innovative tools and
partnerships to combat counterfeiting.
The IACC’s RogueBlock initiative goes after the money—how
effective has this programme been since its inception?
Finally, can you confirm the keynote speakers you have lined up
for the Spring Conference?
Since launching RogueBlock five years ago, more than 5,500
merchant accounts have been terminated that were affiliated with
over 200,000 websites. The key to fighting counterfeiters is to take
the profit out of their trade, and RogueBlock does exactly that. We are
pleased that our partnership with major the credit card companies
and payment providers has been helpful to our members.
This year we’re honoured to have a number of high-level speakers
participate in our opening ceremony. Jack Ma, executive chairman
of Alibaba, will deliver the keynote speech at the Spring Conference.
Ma will address the importance of ecommerce, the industry coming
together to collectively fight counterfeiting, and Alibaba’s efforts to
protect IP rights on its platforms.
China remains a top priority and the IACC was ahead of the
game in collaborating with Alibaba—what more do you need the
intermediaries to do to fight online counterfeiting?
The US ambassador to China, Max Baucus, will speak to the US
government’s efforts in China to promote strong protection and
enforcement of IP rights and to combat counterfeiting and piracy by
bringing industry (both rights holders and intermediaries) together
in order to collaborate to find new, practical, and effective solutions
to this shared problem.
We are pleased that our partnership with Alibaba Group has produced
positive results for members who participate in the IACC MarketSafe
programme, which identifies and removes counterfeit listings on Taobao
and Tmall. To date, the programme has removed more than 170,000
infringing listings and banned more than 5,000 seller storefronts from
Taobao and Tmall platforms. The programme results in a 100-percent
takedown rate when companies stand behind their claims. We recognise
that more needs to be done. The IACC will lead a call to action and build
a coalition of the willing. One company or one marketplace cannot fight
counterfeiting alone. It will take a collaborative effort by intermediaries and
brand owners sharing best practices and implementing sound policies.
This is why the IACC created the
general membership category. General
membership is reserved for companies that
are not directly or substantially affected by
counterfeiting, but whose industry position
or policies make them a potential partner
with the IACC in its mission to combat
counterfeiting and piracy. Companies such
as Alibaba, The RealReal Inc and Wish.com
have already joined, and we invite other
intermediaries that are committed to being
part of the solution to participate.
Lastly, the White House’s intellectual property enforcement
coordinator, Danny Marti, has been invited to speak at the
conference’s second-day opening ceremony. This year’s conference
will be the most exciting one yet. We are looking forward to seeing
everyone in Orlando. IPPro
IACC is working on a number of
major initiatives that will be some of the
most innovativeanti-counterfeiting
programmes to date
How is the IACC working to develop
more of these collaborations?
From collaborating with major credit card
companies to develop RogueBlock to
Bob Barchiesi, President,
International AntiCounterfeiting Coalition
7
A new internet domain, a new era, a new strategy
Daniel Greenberg of Lexsynergy, Peter Van De Wielle of the TMCH
and Craig Schwartz of fTLD Registry Services outline how trademark
attorneys should approach brand protection in the new gTLD programme
New gTLDs
Whether you agree or disagree, domain names are intertwined with
trademarks. The vast majority of trademark law firms offer services
relating to domain names or have assisted clients in resolving
domain name disputes.
secure a domain name matching a trademark before the internet
extension is opened to the general public.
Each new internet extension launches with a sunrise period, which
provides the owner of a validated trademark with a priority to secure
an identical domain name within a specific extension. In order to
qualify for the sunrise period, a mark must be submitted to the
Trademark Clearinghouse (TMCH) for validation.
The impact of new internet domain name extensions, such as .adult,
.bank, .insurance, .london and .sucks, is significant, creating ‘new
real estate’ and marketing opportunities for brand owners to employ
and for infringers to exploit. Ignoring the risks or overreacting is not
a solution. It is advisable for attorneys to adopt a strategic approach
making use of the various mechanisms available to trademark
owners. This will ensure their clients are comprehensively protected
or, at the very least, informed of the opportunities and risks that stem
from new gTLDs.
The TMCH is the body that manages the centralised database of
verified trademarks and is connected to each new internet extension,
confirming the validity of registered trademark rights.
Only registered trademarks of national effect can be validated
with the TMCH. The validation is not only a trademark’s ticket
to the sunrise, but also includes a watch service (called Claims
Notifications) that notifies the trademark owner when a third party
registers a domain name that matches its trademark. It only requires
a single submission in the TMCH to coverage and access to the
myriad new internet extensions.
Registered versus unregistered trademarks
The starting point is to identify which marks a client wishes to protect
and to which degree. The mark can be registered as a domain name
or blocked. Further, the mark holder can be notified if someone else
registers the matching name. If a mark is a registered trademark,
the validated route should be followed, and if unregistered, the nonvalidated route is the only option.
After a trademark is validated, the TMCH issues a signed mark data
(SMD), a type of password file that is used by the trademark owner
to register a domain name during the sunrise period. The single SMD
file is valid for all sunrise applications during the registered period in
the TMCH.
Validation route
The validation route is intended to provide trademark owners with
the least congested route to secure domain names that match their
trademarks. This route (highlighted in blue on the flowchart below)
provides a trademark owner with a priority during which they can
Example: Validating the trademark ‘Lexsynergy’ will allow Lexsynergy
to register the exact match ‘lexsynergy.domains’ during the sunrise
period. It will also forewarn anybody trying to register, for example,
9
New gTLDs
‘lexsynergy.london’, that the trademark is a registered mark and notify
the mark holder if that registration is completed. To be notified when
a third party activates ‘lexsynergydomains.vegas’, Lexsynergy could
submit that variation of its label to the TMCH.
it should understand the risks and that it could lose out on securing
its desired domain names. Registering and/or blocking your mark in
all internet extensions is challenging, both from a administrative and
financial perspective. However, the rights protection mechanisms for
mark holders doesn’t stop there.
Block services
Watch services should be considered as part of a brand protection
strategy since they identify identical and confusingly similar
domain name registrations. Eliminating squatting is impossible,
but knowing what infringements exist is valuable and allows for
proactive domain name recovery based on the priority of the
particular infringement.
Three companies that collectively applied for approximately one
third of all new gTLDs offer a blocking service. Donuts and Rightside
have named their blocking service the Domains Protected Marks
List (DPML), while Minds + Machines calls its service the Minds +
Machines Protected Marks List (MPML).
A trademark with a valid TMCH SMD file can block the identical
match of the trademark in approximately 300 new gTLDs.
If a name is considered to be infringing specific rights, the Uniform
Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid
Suspension (URS) system are the dispute resolution mechanisms
available to trademark owners that fall victim to squatting.
It is also possible to block keywords that contain the mark (minimum
three characters). The registration term for a block is five years.
The right protection strategy
Example: The validated trademark ‘Lexsynergy’ will block an
identical match across all of the TLDs covered by the block. The
block can be extended to ‘LexsynergyDomains’ but will require a
separate, additional five-year subscription.
The domain name industry is expanding drastically with several
new extensions launching each week.
The five-year block covering the three registries’ TLDs reduces the
per-unit cost for each domain name, making it an affordable option
for brands that are susceptible to cybersquatting. The block reduces
the size of a domain name portfolio and the administration that is
associated with managing a large number of domain names.
It is advisable to assess all the extensions to determine which are
relevant to a particular trademark and monitor the launch dates,
so that the registrant is prepared to submit its application on time
and during the appropriate period. The new gTLD process can be
complex and time consuming for trademark attorneys in that the key
launch information is not always readily available.
A block results in a domain name that does not resolve, meaning that
it cannot be used or registered to an entity, but merely is prohibited
from registration.
A law firm should therefore consult and collaborate with a corporate
domain name registrar to provide the required advice to trademark
owners and to process domain name registrations.
If a trademark owner wishes to use/register a domain name it blocked,
it can be overridden, on a per-TLD basis, by paying an override fee
for that specific domain name and submitting the matching SMD file.
A TMCH-certified agent such as Lexsynergy can validate your clients’
core trademarks and thereafter develop a domain name strategy so
that the launch dates for each relevant new gTLD are monitored,
allowing the client to submit its application during the sunrise and
to make provision for TLDs that have local presence requirements or
that are restricted to a specific industry.
A block can also be overridden, on a per-TLD basis, by another trademark
owner that has a matching trademark validated with the TMCH.
Example: ‘Lexsynergy’ has purchased a DPML and it has blocked
the .careers extension. If on a later point in time, the human resources
department wants to launch a ‘lexsynergy.careers’ section, it will
need to pay an override fee and submit its SMD file to register the
domain. The block will still cover the remaining TLDs.
The rules and regulations of each new gTLD may differ and early
preparation will ensure that the specific requirements are met. Some
of the most popular new gTLDs among brand owners are industryspecific, including .bank, .insurance, .law and .pharmacy.
Many of these industry-specific gTLDs carry strict eligibility
requirements that add another step to the registration process.
Non-validated route
Example: The gTLD .insurance launched its sunrise period on 9 May
2016, and is restricted to licensed insurance companies, agents,
brokers, associations, regulators and select service providers.
Clients that are eligible for a .insurance domain name are required
to submit specific contact and company information during the
application process. Each application is then verified by Symantec
(a third-party provider) to ensure compliance with the eligibility and
name selection requirements.
If a mark is unregistered (common law mark) then the non-validated
route will have to be followed, which usually starts after the TMCH
sunrise period. As each internet extension defines its own launch plan,
these can vary on a per extension basis. Most commonly, a sunrise
period is followed by ‘landrush’ and lastly, ‘general availability’.
The landrush period is open to the general public, but domain
names are sold for a premium price. The rules for each landrush
period may differ between the different extensions. A landrush
period can operate on a first-come, first-served basis or via an
application process (the domain name is allocated at the end of
the period, with multiple applications for the same domain being
resolved via auction).
Preparation for a TLD such as .insurance takes time as the client
needs to provide the required information, which may be pre-verified
prior to submitting the application.
It is essential for trademark owners to secure their domains within
these industry-specific gTLDs as early as possible. Brands from
around the globe will be competing for their desired .insurance
domain names making the sunrise period very valuable to trademark
owners. IPPro
Common law marks should be secured during this period.
General availability is the last of the launch periods and the point at
which most squatting activity begins. If a client waits until this period,
10
Stillwaters Law Firm
ADDRESS & CONTACT DETAILS
2nd Floor 11, Awolowo Road, Ikoyi
P. O. Box 56161, Ikoyi 101008, Lagos, Nigeria
Tel: +234 (0) 1 454 7179, +234 (0) 1 460 5471
Mobile: +234 (0) 803 324 8860
Fax: +234 (0) 1 460 5470
Email: [email protected]
www.stillwaterslaw.com
STILLWATERS is an award winning law firm in Nigeria that specializes in intellectual property law,
corporate and commercial, taxation and litigation. The firm operates from the commercial cities of
Lagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Douala in Cameroon.
Professionalism, flexibility and innovation are the hallmark of our practice. We value professional
excellence, outstanding result and realize they both require creativity and hard work. We strive to gain
every legal advantage for our clients while upholding the principles behind the practice of law. Over
the years, we have acquired considerable experience and an enviable reputation for rendering quality
legal services in our areas of specialization.
Practice representative clients include over 660 foreign multinationals, publicly-quoted companies,
private companies, financial institutions, government institutions, industrial medium size businesses
and individuals. Our practice is adequately equipped and well positioned to meet the challenges of
legal practice in an ever-changing technological age.
People . Integrity . Service
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Trademarks Patents Designs
Copyright Anti-counterfeiting
Border Enforcement Measures Domains
Data Protection IP Litigation
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IP Due Diligence Annuities
Transfer of Technology Piracy
Licensing Distributorship Franchising
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Point and fix
An ICANN working group is reviewing the rights protection mechanisms of the
domain name system. Joe Alagna of 101domain considers the size of the task ahead
The Internet Corporation for Assigned Names and Numbers
(ICANN) recently organised the PDP Working Group to catalog all
rights protections mechanisms (RPMs) in place now and to review
developing policy for RPMs in all gTLDs in the future. When I first
heard about this working group, I couldn’t help but ask: Aren’t we
there yet? At what point do we have a good set of RPMs? There
have been countless discussions and policies created regarding
rights protection. I’ve always been an advocate of a minimalist
approach to policy since these processes can go on forever and
often just for the sake of justifying their own existence.
However, upon consideration and after listening to a few of the
first meetings (I am an official observer), I agree that a review of
all these mechanisms is a good idea and needs to be done. After
all, most of the existing policies were created right along with the
creation of new gTLDs and there were no observable actions in
place related to new gTLDs until the past year or two. So this is a
good idea. ICANN and this working group should be credited with
doing a good job of following up.
As an example, there are critics of the relatively new Uniform Rapid
Suspension (URS) system. The Internet Commerce Association,
which represents domain name registrants from around the world,
issued several statements that point out shortcomings. In June,
2015, it wrote “that the URS could be converted into a low-cost,
fast-track version of the UDRP with more opportunities for
domain hijackers and less due process for domain registrants”.
The association also pointed out a weakness in the policy that
domains remain with cybersquatters rather than being transferred.
The National Law Review reported: “Under the URS, a prevailing
mark owner is entitled only to suspension of the domain name.
While this means that a registrant infringer can no longer use
the domain name, it also prevents a mark owner from exercising
control over the disputed domain. Thus, if a mark owner wants to
obtain an infringing domain name for its own use, the URS is not
a viable option.” URS is simply a fast track to take down a domain
that obviously infringes, but the domain is not transferred to a
trademark holder.
This review may be an opportunity to reduce the number of
processes in place or possibly improve them.
Leadership of the working group is almost set. Phil Corwin, a
Washington DC attorney, is the interim chair. Other chairs are
J Scott Evans, who has been involved in both ICANN and the
International Trademark Association for many years, as well as
Kathy Kleiman, a telecoms law firm attorney.
There are 133 members on the committee and 76 observers. The
committee has held two meetings so far, beginning 21 April, and
are planning to meet weekly until the work is completed.
The work they are doing will be completed in two phases. The first
phase is to review:
•
Sunrise and trademark claims: These services provide
trademark holders with an advance opportunity to register
domain names and a method of warning potential infringers
that a potential claim may exist on domain names that they
are registering.
•
URS: This is a complement to the UDRP and provides
trademark holders with a quick and low-cost process to
suspend domains under the new gTLDs.
•
Trademark Clearinghouse (TMCH): The TMCH is a global
database of verified trademark information to support
rights protections.
•
Post-delegation dispute resolution procedures (PDDRPs):
This is a mechanism that provides alternative avenues for
trademark holders that believe they are harmed by the
conduct of a registry operator in the new gTLDs.
RPM Review
The second phase will be for the working group to review the
UDRP, which was created in 1999 and provides an alternative
dispute resolution procedure to resolve disputes between
trademark holders and domain name registrants.
•
•
•
•
The UDRP is more tried and true than the RPMs to be reviewed in
the first phase, but it has never been reviewed before.
•
Working group leaders expect to complete phase one by the
middle of 2017 and have not estimated a time for completion
of the second phase. Once it is over, however, they believe that
another review won’t be required for at least a decade or more. So
the work is meant to be comprehensive and long-lasting.
•
•
•
•
•
In its charter, the group listed more than 100 questions to
consider. These questions were made by the community
regarding improvements or modifications to the RPMs in question
and should form part of the discussions of the working group.
The working group may decide to address all, some or additional
issues to these. Some of the questions include:
•
Do the RPMs collectively fulfil the objectives for their creation?
•
Are the UDRP’s current appeal mechanisms sufficient?
•
Should there be a limit to the time period allowed (for example,
similar to a statute of limitation) for bringing UDRP complaints?
•
Are free speech and the rights of non-commercial registrants
adequately protected in the existing policy?
•
Under what circumstances (if any) should/could UDRP
proceedings be made anonymous?
•
Should there be an introduction of a ‘loser-pays’ scenario?
•
Should filing fees be lower?
•
Should repeat and serial offenders be blacklisted from
obtaining new registrations?
•
Are the critical concepts of ‘fair use’ fully reflected in the
UDRP, URS and TMCH rules?
•
Are generic dictionary words being adequately protected,
available for all as allowed under national laws?
•
Is the URS’s ‘clear and convincing’ standard of proof
appropriate for the proceeding?
•
Is the current length of suspension to the balance of the
registration period sufficient?
•
Has ICANN done its job in training registrants in the new
rights and defences of the URS?
•
How can the appeals process of the URS be expanded and
improved upon?
•
Should the trademark claims period be extended beyond
90 days?
•
Should the trademark claims period continue to apply to all
new gTLDs?
•
•
•
•
Should the Abused Domain Name Label service be continued?
Does a trademark claims period create a potential ‘chilling
effect’ on genuine registrations?
Is the protection of the TMCH too broad?
Is the TMCH and the sunrise period allowing key domain
names to be cherry-picked?
How can the TMCH provide education services for registrants
and potential registrants?
What is the effect of the 90-day trademark claims process?
Is the notion of ‘premium names’ relevant to a review of RPMs?
Should sunrise periods continue to be mandatory?
Should there be an additional or a different recourse
mechanism to challenge rejected trademarks?
Should the TMCH matching rules be expanded, for example,
to include plurals, ‘marks contained’ or ‘mark + keyword’,
and/or common typos of a mark?
Do the RPMs work for registrants and trademark holders in
other scripts/languages?
Do the RPMs adequately address issues of registrant
protection such as freedom of expression and fair use?
Is there a policy-based need to address the goal of the
Trademark PDDRP?
Is ICANN reaching out properly and sufficiently to the multistakeholder community?
You can see that their work is cut out for them. The first two calls
of the working group had over 50 people participating and all
participants are required to file a statement of interest on ICANN’s
website. They discussed principles of openness and transparency.
Chairs and co-chairs will have off line discussions, but they do
not make decisions. Decisions will be made after all discussions
have been made, papers filed, and public comments considered.
Once the work is completed, the working group will issue a draft
report for review by the ICANN community and then, after a public
comment period, will issue final recommendations.
ICANN staff provided two excellent presentations in these initial
meetings, one as a background review to bring all members up to
date on how we got to where we are as a community, and another
the following week to lay out typical structures for action. They are
going to do weekly calls at 60 or 90 minutes. Most of the comments
and discussion so far have had to do with introductions, sharing
background information and setting rules of order.
If you want to get more information or follow their progress, you
can do so via community.icann.org IPPro
Once it is over, the working group
believes that another review won’t be required for
at least a decade or more. So the work is meant
to be comprehensive and long-lasting
Joe Alagna, Vice president, channel development, 101domain
14
Domain Disputes
UDRP/URS proceedings: Where do you go?
Nathalie Dreyfus of Dreyfus in Paris offers 10 tips for selecting the most appropriate
arbitration and mediation centre for disputing domain name registrations
Uniform Domain Name Dispute Resolution Policy (UDRP)
proceedings were established in 1999 to fight cybersquatting.
More than 31,800 disputes have already been handled thanks to
its efficiency. Five centres are entitled to receive UDRP complaints:
the World Intellectual Property Organization (WIPO), the Czech
Arbitration Court (CAC), the National Arbitration Forum (NAF), the
Asian Domain Name Dispute Resolution Center (ADNDRC) and the
Arab Center for Dispute Resolution (ACDR).
adhered to the UDRP proceedings. Other special proceedings
regarding specific domain names will be governed by specific
alternative dispute resolution proceedings by centres different from
those mentioned above, for example, the SYRELI proceedings
administered by the registrar AFNIC for .fr.
Also, according to UDRP rules, the complaint may involve several
domain names, provided that they have all been registered by the
same person. The URS proceedings (and some UDRP centres,
namely the CAC) allow group actions against the disputed domain
name holder but only if the applicants are related.
The launch new domain name extensions in 2013 gave birth to a
new alternative dispute resolution process: the Uniform Rapid
Suspension (URS) system. Three arbitration centres have jurisdiction
to decide URS cases today: Italy’s MFSD, the ADNDRC and NAF.
Geographical location of the centre: Thanks to the many authorised
UDRP and URS centres spread worldwide, selecting a centre, which,
due to its geographical location, will be better suited than another for
a specific case for reasons such as location of the dispute, different
time zones, language and bank transfer costs, is wise. Moreover,
the ADNDRC is itself composed of four centre located in Asia. The
applicant is free to opt for the centre of its choice.
Each proceeding is administered according to the guidelines
enacted by the Internet Corporation for Assigned Names and
Numbers (ICANN). The policies constitute a common set of rules for
all arbitration centres to follow. They refer to a set of supplemental
rules that are defined by the centres themselves, and govern the
points that have deliberately not been covered by ICANN.
Complaint formalities: Complaints are sent by electronic means to
the chosen centre. The ACDR is the only centre that still authorises
parties to file a complaint by post or fax. The new UDRP proceeding
rules provide that the centre itself will be responsible for sending
the complaint to the defendant. Some UDRP and URS centres allow
parties to submit new documents after receiving the defendant’s
response. This is generally accompanied by financial compensation.
For example, a review in URS proceedings costs $300 at the ACDR.
The centre, such as NAF, may even allocate an additional time if
required by the proceedings, against remuneration. Special attention
should be paid to the drafting and sending of the complaint.
As a result, each centre has adopted its own rules, which evolve over
time. Which proceedings do you choose: URS or UDRP? And which
centre do you go for?
Here is a list of key points to take into consideration when choosing
the most appropriate centre:
Domain name extension: Depending on the domain name extension,
it is important to choose between the UDRP or URS proceedings.
Legacy TLDs such as .com, .org, and .edu are not eligible for the URS
proceedings. They only apply to new TLDs. Moreover, only some
country-code TLDs can be the object of a UDRP complaint, if the
entity responsible for the concerned country-code TLD voluntarily
Length of the complaint: The common UDRP rules allow the
centres the freedom to set themselves the maximum number of
16
Domain Disputes
words or pages that a complaint may contain. So, most centres
limit the number of words to 5,000 (ACDR, CAC and WIPO). Only
3,000 words are allowed for a complaint filed with the ADNDRC.
NAF accepts complaints containing a maximum of 15 pages
(including appendices). However, each centre provides a standard
complaint form allowing the applicant to gain time and efficiency.
URS complaints are all limited to a maximum of 500 words by the
common rules (Article 1.2.7).
parties, and so on. It may therefore be interesting to consult the list
of experts before opting for a centre.
Length of the proceedings—suspension: The duration is set by
the rules established by ICANN in order to ensure a speedy process
and foreseeable deadlines. The response time, or that relating
to the appointment of the panel, the decision-making, or even
the publication, does not really differ from one centre to another,
regardless of the type of proceedings.
Communications: The parties cannot contact panel members
directly. An administrative officer is provided by every centre to
whom all papers and documents relating to the dispute will be
forwarded throughout the proceedings. However, the administrative
officer does not have any decision-making powers. Therefore, this is
a similar factor in all centres.
The suspension of ongoing UDRP proceedings is an option open
to the parties to enable them to find an amicable settlement. The
terms and conditions regarding this point vary according to centres.
NAF allows parties to seek a suspension of up to 45 days after filing
the complaint and before the panel of experts is appointed, while
the CAC allows a 14-day suspension upon written request by both
parties, which can be renewed twice.
Language of the complaint: Depending on the centre, the
language of the complaint may vary. Theoretically, it shall be
the language used in the registration contract of the disputed
domain name(s), unless otherwise agreed by the parties or
otherwise decided by the panel. Moreover, it may be ordered
that any document submitted in a language other than that of the
proceedings be accompanied by a translation into the language of
the administrative proceedings (to WIPO, for example).
Appeal: It is not possible to appeal UDRP decisions, but a lawsuit
remains possible. All URS centres provide a right to appeal and such
proceedings are regulated in the same way. The only significant
difference would be the costs of appeal. There is a fixed price for
NAF, based on the number of domain names, and on the number of
panel members for the ADNRC and the MFSD.
Cost: The cost of proceedings is probably the most significant
factor in distinguishing centres from one another. Indeed, for UDRP
proceedings, depending on the centre, on the number of members
in the panel and the number of domain names involved, the cost of
proceedings can vary greatly.
However, NAF adopts a stricter requirement compared to other
centres by requiring that the language of the proceedings shall only
be the language used in the domain name registration contract. URS
complaints must always be drafted in English and will be translated
into the language of the country of the holder by the centre. This
question regarding the language of the proceedings is essential as it
might significantly increase the costs of proceedings.
Therefore, costs need to be carefully considered. UDRP proceedings
involving five domain names and a panel of three members will cost
$2,900 before NAF, $3,300 before the ADNRC, $4,000 before WIPO,
$3,700 before the ACDR and $3,100 before the CAC.
Identity of panel members: Each centre provides a list of its experts
publicly available on its website. At the very least, their names and
qualifications must appear. This transparency gives information on
the members who have been chosen by the centre to arbitrate on
the dispute, and it allows the verification of any conflict of interest,
as well as their impartiality.
Moreover, when a panel of three experts is requested by the parties,
the latter can, under certain conditions, propose three experts from
the centre’s list to arbitrate the dispute. However, where only one
expert is requested, the choice will be made by the centre.
For URS proceedings involving five disputed domain names, they will
cost the applicant $375 before NAF, $225 before the MFSD and $360
before the ADNDRC. However, the MFSD will take into account, in its
pricing structure, the type of applicant (individual, public or private
company, association, and so on), and the price varies according to
this criterion. Finally, we must not forget that additional costs may be
charged due to a suspension request, a re-examination of the case
or an appeal from the URS decision.
The number of experts available for each centre depends on the size
of the centre and parties can make the best choice based on the
expert’s experience, the nature of the dispute, the language of the
Selecting an arbitration centre can therefore be tricky and requires
careful deliberation in each case according to the context of the
dispute. IPPro
It isn’t possible to appeal
UDRP decisions, but a lawsuit remains
possible. All URS centres provide a right to
appeal and such proceedings are regulated
in the same way
Nathalie Dreyfus, Founder, Dreyfus, Paris
17
Trademarks and domain names: breaching the great divide
For those brands interested in aligning their corporate intangible assets,
Catherine McGirr and Andy Churley of Nameshield have some points to consider
With the coming of the internet, the ability to have a virtual
presence in almost every country on the planet and the capability
to do business globally, transformed the way we see and approach
the world of commerce almost overnight.
The reality is that not everything in business has changed in such
a rapid and revolutionary fashion due to the internet. In the world
of intellectual property, things have carried on pretty much as
normal. The availability of the internet and the nature of domain
names actively lend themselves to global commerce and active
protection of a global online territory. However, the trademark
system, and other IP frameworks, continue to provide the same
jurisdictional legal defence as they did pre-internet.
While this may function adequately for now, compared to things
happening on the internet, the world of trademarks seems to
operate at a velocity that mirrors that of geological movements.
Two sides of the same coin
There are striking similarities between trademarks and domain
names. When considered as separate facets of the same brand
strategy, both mechanisms show synergy when supporting each
other with the common aim of promoting economic growth
through commerce.
Both trademarks and domain names expire and require renewal,
reinforce brand strategy, provide protection, and facilitate freedom
and the ability to operate.
But while trademarks and domain names have similarities, there
are also marked differences between them.
Tactical versus strategic
Trademarks can be considered strategic in nature. They provide
the trademark owner the right to use a mark and accord a level
of protection (underwritten by a legal framework) restricting third
parties from using that mark.
A trademark provides the ‘boundaries’ within which a brand can
safely apply its business strategy—for example, a UK trademark
in Class 12 applies to the UK jurisdiction and “apparatus for
locomotion by land, air or water; wheelchairs; motors and engines
for land vehicles; vehicle body parts and transmissions”.
A domain name is more tactical in nature. If a domain name is
registered, no-one else can use it.
It is not simply that a third party is not permitted to use it, the
same domain name cannot physically be used because it is under
the control of the registrant.
So if Ford Motor Company has a trademark for ‘Ford’ in Class
12 in the UK, this provides a strategic territory within which to
operate that mark. However, nothing physically stops a third party
from using that mark illegally.
If Ford also possesses ford.uk, then that domain name cannot be
used by anyone else, no matter what trademark class they are
operating in. Similarly, if Ford possesses cars.uk, it prevents any
other vehicle manufacturer (or anyone else) from owning it.
Domain names are a tactical measure to control the online
space for a brand owner and should closely reflect the
trademark policy.
Effect on loss
One other key difference between these important intangible
corporate assets is the effect on the brand owner should it let the
asset lapse.
If a trademark lapses, there is no discernable effect on business
operations in the short term. There is no immediate loss of revenue,
no change in customer behaviour and competitors are unlikely to
use the fact against the brand owner even if they are aware.
If a domain name lapses, the brand owner immediately loses its
online presence. If the website behind the domain name is set up
to permit online sales, this affects revenues immediately. The loss
of online presence is noticeable by all stakeholders, customers,
competitors, suppliers, press and investors. Corporate reputation
is affected.
Naming Strategy
trademark or a domain name lapse
and so keep renewing legacy
trademarks and domain names.
The new gTLD
expansion has provided
additional relevance to the
trademark system
Catherine McGirr, Head of services, Nameshield
The added dimension of new gTLDs
•
•
•
The lack of an integrated strategy
•
Despite such a strong synergistic relationship between trademarks
and domain names, it may come as a surprise to many that there
is a huge disconnect between the management of trademarks and
domain names in the majority of companies.
•
This can be usually be attributed to some or all of the following factors:
•
•
•
•
•
Such a system works on both
a strategic and an operational
level. While this approach may
seem obvious, Nameshield’s
experience is that, in practice, it
is rarely truly implemented.
For those brands interested in aligning their corporate intangible
assets, Nameshield recommends the following steps:
This expansion has provided additional relevance to the trademark
system and now permits even closer ties between trademark and
domain name registration strategy.
•
Aligning your trademarks and
domain names to reinforce each
other provides the possibility of a
layered IP protection mechanism.
Over the past few years, Nameshield has been working with select
brand owners to develop automated technologies to support
the implementation of an integrated naming strategy and IP
management approach.
For the past 25 years, the domain name system has operated
largely on a geographical basis, with 21 notable exceptions such as
.com, .net and .tel, which are global in nature. In 2013, the Internet
Corporation for Assigned Names and Numbers (ICANN), the body
that regulates the internet naming infrastructure, expanded the
domain name system to allow almost any series of characters after
the final dot in a domain name. With nearly 2,000 applications,
these new gTLDs have opened the significance of a TLD to include
industry sectors such as .archi, .accountant or .lawyer.
•
Is now the time for a truly
integrated approach?
In many companies, obtaining a list of trademarks, domain
names and brands is not such an easy task and discovery
technologies have to be deployed.
Registered trademarks may not be supported by corresponding
domain name registrations or extensions that match trademark
classes. While often there are reasons for disparities, it is
essential that these reasons are explicit and recorded.
Use the gap analysis as a basis on which to build policy
decisions on naming rules.
If the naming and registration strategy is sound, don’t be
afraid to let valueless legacy domain names or trademarks
lapse. Don’t do it in one fell swoop but as a part of an
ongoing portfolio optimisation plan. But keep an eye on what
is happening to them for a period of time.
Corporate strategy and focus changes, products and services
are launched and others are retired, and business structures
change through mergers, acquisitions and divestments. By
ensuring your naming reflects corporate strategy you can
guarantee that your trademark and domain name portfolio
always contain the correct components to provide the
optimum active and passive defence. IPPro
Disassociated responsibility: The management of trademarks
and domain names resides in different departments.
Fragmented approach: Registering domain names by division
or operating entity, while trademarks are managed centrally.
Legacy registrations: Legacy
domain names or trademarks
have led to complex and
fragmented portfolios, which
are difficult to align.
Corporate focus: Attention is
If the naming and
on either trademarks or domain
names, but not both
registration strategy is sound,
No clear policy: Nothing for
governing domain name or
don’t be afraid to let valueless
trademark registration exists
Dearth of outsourcing providers:
legacy domain names or
A lack of external vendors exist that
trademarks lapse
have the competence, capacity
and tech to handle both trademark
and domain name portfolios.
Fear of loss: Brand owners
are often concerned about the
unforeseen effects of letting a
Andy Churley, Chief marketing officer, Nameshield Group
20
Patents | Trademarks | Designs | Copyrights | Litigation | Prosecution | Consultancy
IP Searches | IP Valuations | Portfolio Management | License Agreements
Unfair competition Lawsuits | Corporate Rights | Health Registrations.
Cordillera de los Andes #320, Col. Lomas de Chapultepec C.P. 11000, Mexico, D.F.
www.fernandezmanzo.com · [email protected]
(52)(55) 5525-5586 · 5514-5126 · (52) (55) 5207-3911 (fax)
Copyright Societies
The show must not go on
A court recently restrained an unregistered copyright society from issuing licences
on a late Ghazal singer’s music. Lucy Rana and Tulip De of SS Rana & Co report
In a recent case entitled Chitra Jagjit Singh v the Indian Performing
Rights Society (IPRS) and others, the Delhi High Court restrained
the IPRS from issuing licences with regard to the musical works of
the late Jagjit Singh, a renowned Indian Ghazal singer who passed
away in 2011.
were also directed to not hold any similar concerts in the future
without prior permission of the court.
The case is a landmark one in the sense that the court has considered
the incompetency of the IPRS in issuing licences and recovering
license fees in respect of musical works. It was imperative for this to be
clarified, as the 2014 Novex Communications decision of the Bombay
High Court had still left some room for unregistered societies, if they
could prove that they were acting as an agent, by holding that a ‘duly
authorised agent’ under Section 30 of the Copyright Act of 1957 would
not be hit by the prohibition under Section 33 of the act.
A concert was to be organised by Panache Entertainment and
the IPRS at the Siri Fort Auditorium in New Delhi on 18 March
2016, in memory of the late and renowned Jagjit Singh. The
concert, however, was entitled ‘Ek Ehsaas Jagjit Singh Live in
Concert’ and had taglines to the effect that Jagjit Singh “sings
again for charity”. The advertisements gave the overall misleading
impression that the late singer would be performing live whereas,
in reality, extracts from his various live performances were going
to be played along with the live band that had played alongside
him for more than two decades. Aggrieved by this, the late singer’s
widow, Chitra Jagjit Singh, filed the present suit.
That provision states that no person or association of persons
shall commence or carry on the business of issuing or granting
licences in respect of any work in which copyright subsists or in
respect of any other rights conferred by the act, except under, or
in accordance with, the registration granted under the act.
As a result, the IPRS continued to issue licences even though it was
no longer a copyright society registered under the Copyright Act.
Further, the plaintiff had not received any royalties from the
IPRS or the event organiser for a similar concert previously
held in Mumbai, for which the IPRS had collected a fee of INR
49,140 ($740).
Agreeing with the plaintiff, the Delhi High Court restrained the
IPRS from granting any licence in respect of the works of the
plaintiff and Jagjit Singh, and from recovering any licence fee from
any third party in respect of the works. The order was passed ex
parte with no representation from the defendants.
Subsequently, following representation from the defendants,
the Delhi High Court considered the fact that the show was
already booked, tickets were in fact sold out, and it was being
held for charity. The Delhi High Court directed the defendants to
discontinue their misleading advertisements, and stop using the
name and picture of Jagjit Singh, much less portraying him to
be “live in concert”. The court also told the event organisers to
deposit an amount of INR 500,000 ($7,530) to secure the rights of
the plaintiff on or before the date of the concert. The defendants
22
SS Rana & Co
The IPRS was not competent to grant licences for the works, in
which the plaintiff claims copyright as her own works and the works
produced by Jagjit Singh in respect of which she has obtained
letters of administration from the Bombay High Court. The attention
of the court was drawn to Section 33(1) and Section 33(3A) of the
Indian Copyright Act of 1957, and also to the letter written by the
IPRS to the Indian government in which the copyright society
claimed that it was no longer a registered copyright society within
the meaning of the act as its registration had lapsed in 2013 and it
had failed to get a new registration certificate.
Lucy Rana, Managing associate advocate,
The advertisements for the show gave the misleading impression
that Jagjit Singh would perform live, whereas the event would be
using Jagjit Singh’s voice and images from previous concerts.
SS Rana & Co
The ultimate repercussions in the Chitra Jagjit Singh case, with
regard to the competency of the IPRS, are yet to be seen. IPPro
Tulip De, Associate advocate,
The main contentions of Chitra Jagjit Singh were:
Content portability and beyond
The proposed EU Content Portability Regulation may not alone revolutionise the
European content licensing market, says Kalle Hynönen of Krogerus Attorneys
The digital world has revolutionised the way we enjoy music and
audio-visual content. People expect access to digital content
anywhere, anytime, and from any device across Europe.
The ability to impose territorial limitations and apply different prices
to different territories has, however, been at the heart of licensing
of audio-visual content for decades. Within the EU, with some
exceptions, each national broadcaster or other content distributor
has typically acquired rights only for their own territory.
This practice has allowed content rights holders to monetise their
content rights effectively, but it also has allowed national distributors
to acquire exclusive rights only for their respective territory.
In the world of territorial (and analogue) distribution networks, this
practice was largely unproblematic, as the technical distribution
means simply did not allow for a larger coverage of the transmissions.
Occasional signal overspills over national borders were an unintended
side-effect of technology.
The borderless nature of the internet, however, has changed this
and artificial borders in the shape of ‘geo-blocking’ have been
deployed. According to an issues paper published by the European
Commission on 18 March 2016, 68 percent of the responding content
providers use geo-blocking within the EU. Typically, geo-blocking is
a contractual requirement imposed by the content suppliers.
The territorial exclusive licensing has been under critical discussion
for some time and now the European Commission is beginning to
take up arms. In 2011, in the so-called Murphy case (joined cases
C‑403/08 and C‑429/08), the Court of Justice of the EU (CJEU) ruled
that EU free movement of services and competition rules prohibited
contractual provisions (and national legislation) that prevent viewers
in one EU member state from importing satellite decoder devices
from another member state in order to watch the services of a
foreign broadcaster.
While the English Premier League could still grant rights on a
territorial basis, the relevant provisions in the Premier League’s
broadcasting licence agreements against the supply of decoding
devices outside the contracted territory (in that case Greece)
were artificially making that territorial exclusivity “absolute”, and
therefore infringed Article 101 of the Treaty on the Functioning of
the EU. These restrictions could, according to the CJEU, not be
justified on the basis that they were necessary to ensure appropriate
remuneration for the Premier League.
and EU pay TV broadcasters. The commission adopted a statement
of objections in the matter on 23 July 2015 and in December last
year, almost five years after the Murphy ruling, the first concrete
legislative proposals in relation to the matter were released.
The first step of an ambitious reform?
According to the CJEU, when licensing its rights, the Premier League
could take into consideration the actual and potential audience of
the applicable broadcaster, both in its own member state and in the
other member states in which its broadcasts could be received.
The proposal for the Content Portability Regulation was released on 9
December 2015. As explained in the relevant press release: “At present,
Europeans travelling within the EU may be cut off from online services
providing films, sports broadcasts, music, e-books or games that they
have paid for in their home country. Today’s proposed regulation on
the cross-border portability of online content services addresses these
restrictions in order to allow EU residents to travel with the digital
content they have purchased or subscribed to at home. Cross-border
portability, a new EU right for consumers, is expected to be a reality in
2017, the same year as the end of roaming charges in the EU.”
The Murphy ruling revealed the EU’s ambitions to make content truly
portable throughout the EU, and while it only addressed ‘traditional’
distribution technologies, its wider implications on internet
distribution have remained a somewhat open question. In January
2014, the European Commission announced that it had opened a
competition investigation concerning the cross-border provision of
pay TV services, particularly the use of absolute territorial restrictions
in the licensing agreements between a number of US movie studios
Essentially, cross-border portability concerns online content
services to which consumers have lawful access, or content that
they purchased or rented online in their own member state of
residence. According to Article 3(1) of the proposed regulation, the
provider of an online content service must enable a subscriber who
is temporarily present in another EU member state to access and use
such online content service that he or she has acquired in his or her
home member state.
Copyright Reform
Furthermore, according to Article 5 of the proposed regulation, any
contractual restrictions, whether between service providers and
subscribers or between content right holders and service providers,
that seek to limit this right will be unenforceable.
Therefore, while it seems unlikely that territorial exclusive licensing
and geo-blocking will disappear just yet, the local operators should
certainly be on the lookout. Contracting practices in content licensing
are notoriously slow to change, but as media companies have learned
the hard way, the digital environment may change quickly. So far,
the media landscape has been re-shaped by disruptive technologies
and business models, rather than by laws. This time, EU legislation
might, however, work as a catalyst for wider changes.
In practice, this means that a Finnish person should continue to have
access to the Finnish content service that he or she has subscribed
to in Finland while on holiday in Italy. It does, however, not mean that
a Finnish subscriber should be able to subscribe to, and access, an
Italian online content service while in Finland or another member
state. Moreover, the proposed regulation excludes from its scope
online content services that are provided without the payment
of money and whose providers do not verify the member state of
residence of their subscribers.
Amid the changes it should also be kept in mind that the
current licensing model that is based on territorial licences, as
a side-effect, protects local operators and, consequently, may
contribute to some extent to the preservation of local audiovisual culture. In the borderless world where rights are licensed
without territorial limitations, premium content rights are much
more likely to be acquired by global giants than small local
operators. A truly pan-European content market may be a tough
place for small players. IPPro
Consequently, the proposed regulation alone is unlikely to
revolutionise the European content licensing market and it does
not challenge the territorial exclusivity of licences. Indeed, the
European Commission has not yet gone so far as to say that
consumers in one member state must have free access to services
in all other member states.
However, Recital 11 in the preamble to the proposed regulation
recalls that in its judgement in Murphy, the CJEU held that
“certain restrictions to the provision of services cannot be
justified in light of the objective of protecting intellectual property
rights”. One might, therefore, ask why would such restrictions
need to be removed only for subscribers temporarily present in
a member state other than the one of their residence, and not for
all subscribers present, whether temporarily or not, in a member
state other than their own?
If these key
concepts stay as
they now stand in the
draft, it seems the
regulation may need
at least a few
CJEU rulings to
clarify the meaning
of these concepts
Furthermore, the proposed regulation seems to leave room for
interpretation. By way of example, the notion of “temporality” is
not defined in the draft regulation. Can a month be temporary
enough for the sake of the proposed regulation, while three months
would be too long? In the same vein, the concept of “habitually
residing” set forth in the definition of “member state of residence”
is equally ambiguous.
If these key concepts stay as they now stand in the draft, it seems
the regulation may need at least a few CJEU rulings to clarify the
meaning of these concepts.
A modern, more European copyright framework: what’s next?
Kalle Hynönen, Senior associate,
In the communication, which was published on the same day as
the proposal for the Content Portability Regulation, the European
Commission unveiled its vision to modernise EU copyright rules,
and the proposed regulation is, as stated by digital commissioner
Günther Oettinger, only the first step. Based on this vision, the
commission will consider legislative proposals during 2016 aimed at
further enhancing cross-border access to online television and radio
broadcasting services.
Several of these will likely be in the form of ‘soft law’ and measures
that seek to encourage cross-border availability and licensing
practices without actual legislative intervention, but at least the
review of the Satellite and Cable Directive may, later down the line,
result in concrete legislative proposals that may have an impact on
the market operators.
26
Krogerus Attorneys Ltd
The ultimate goal of the European Commission is far more
ambitious than what the Content Portability Regulation covers.
Indeed, in its 9 December 2015 communication, the commission
sets as the ultimate objective the “full cross-border access for all
types of content across Europe”.
Google Books:
Fair to whom?
Entertainment and new media attorney Jay Rosenthal unpicks
t h e S u p r e m e C o u r t ’s d e c i s i o n t o l e t G o o g l e B o o k s s t a n d
In a four-to-four year, one can excuse the US Supreme Court
for passing on one of the most controversial and interesting
copyright cases on its docket. Which it did recently when it
rejected an appeal by the Authors Guild to overturn the Google
Books case. The Court of Appeals for the Second Circuit ruled
in 2015 that the Google Books search product warranted fair
“transformative” use protection. The Supreme Court’s refusal to
take up the case means the Second Circuit ruling stands. And
that’s too bad because I would have loved to read Justice Ruth
Ginsburg’s opinion, and she would have written an opinion, on the
lower court’s unprecedented expansion of transformative fair use.
My guess is that she would conclude the ruling was unjustified.
Fair use generally allows for limited copying and use without
authority of the copyright owner when supporting First Amendment
and public policy goals (education, satire, news criticism, and
so on), and also to transform the pre-existing content into new
expressive works. The Google book scanning tool, however, does
not create new expressive works.
It’s not like a parody or satire. It’s a functional tool that allows for
massive exact copying of pre-existing books, albeit in segments,
ostensibly for the public good. The Second Circuit in the Google
Books case made a rather daring leap by using the transformative
use test not to promote expression, but to create a product or
service designed for a totally different function. That function was
to impart information, without any expressive component.
An opera lover such as Justice Ginsburg would understand the
difference between the two approaches. Artistic expression in derivative
fair use works, in the Ginsburg pantheon, would arguably warrant
much more deference than fair use applied to goods or services using
copyrightable works without authority and without paying the copyright
owner. She most likely would have expressed much more concern than
the Second Circuit did, about the damage to, and devaluation of, the
owner’s property interest.
Her concurring opinion in the 2005 Grokster decision, which reexamined the Sony fair use decision over 20 years earlier in the context
of peer-to-peer file sharing, speaks volumes about how she would
rule in this case. In Grokster, she recognised that the unprecedented
damage imposed on the music community from peer-to-peer file
sharing warranted a new look at—and perhaps even a reversal of—
Sony. Now some would argue that peer-to-peer file sharing technology,
like the Google tool, would benefit our culture.
But I don’t believe Justice Ginsburg would parse it that way. She
would most likely find that the Google Books search product
simply would not tip the balance toward Google, even if arguably it
would be in the public interest. She has other concerns—namely,
Areas of specialization
IP registrations and recordings
Patice attorneys assist in all subject matters relating to the registration of IP rights and IP disposal
contracts with the Icelandic Patent and Trademark Office. The main IP rights for registration and
recordings with the Patent Office are patents, trademarks and designs.
EP validation in Iceland
Patice attorneys have extensive experience in handling EP validation in Iceland. Patice translators
are all specialized in IP subject areas. Patice’s prices in validation cases are very competitive. The
same applies to Provisional protection of EP applications.
Copyright
Patice attorneys are experienced in handling copyright cases such as dispute settlement solutions,
court cases and enforcement of rights.
IP consulting
We offer expert legal advice, contract drafting and negotiation in IP subject matters such as use,
transfer, franchising, licensing, due diligence, import, export, distribution of goods, confidentiality and
data protection, as well as service and agency agreements, including for IP related rights use.
Enforcing IP rights – IP dispute resolution – Anti piracy initiatives
Enforcing IP rights: Patice attorneys have vast experience in protecting and enforcing IP rights,
providing legal support in negotiations and disputes.
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database rights, trade secrets and related agreements in government agencies and branches.
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the well-being of the authors and owners, and the inherent legal
integrity of their property interest that copyright law is supposed
to support. She would recognise that facilitating the development
of a free licensing market is more important than a tool created by
Google, ostensibly for the public good.
There are three big problems with the Google Books case:
•
First, it adopts an expansive fair use test that not only impacts
on the economics of the book industry and chokes any
chance of development of a vibrant licensing market for use
of search tools, but it also threatens, in fundamental ways,
the economic interests of other entertainment industries,
most importantly, the movie, TV and music industries.
•
Second, it exacerbates the damage already done to the Digital
Millennium Copyright Act (DMCA) by the 2015 Lenz decision,
further throwing into flux what it would mean to require a copyright
owner to take into consideration whether or not the unauthorised
use of its work is ‘fair’, as is now required—at least in the Ninth
Circuit—before a takedown notice is sent.
•
Third, the ruling continues an unsettling trend of cases
seeming to recognise less and less the importance of the
inherent property interest of the copyright owner. The
lower courts seem to be leading us down a path where any
functional product or service—or perhaps even an expressive
work—is subservient to the interests of the public good and
thus fair use. This is a slippery slope that will forever relegate
the author to second class property interest status in the US.
Arguably, the lower courts took the Google Books search product
and service down a tortured, perhaps unwarranted transformative
fair use path. There were reports that other major technology
companies were engaged in negotiations with book publishers to
actually license the rights for similar search technologies. Thus,
this confusing decision not only opened the door to more confusing
fair use decisions—a result that will surely come—it also shut
the door on the development of a new market. Exceptions to the
rights of copyright owners should not be trifled with in this way.
The parameters of fair use have always been applied narrowly and
with consideration for the economic rights of pre-existing owners
balanced against the benefit to the public of incentivising new
expressive works incorporating pre-existing material.
The Second Circuit obviously did not believe that the potential
damage, if any, to book publishers deserved much consideration.
It concluded that the potential damage was not so bad—at least
bad enough to refrain from granting Google the fair use exception
it was seeking. What it did not consider was the possible impact
of the case on other entertainment industries.
Movie producers are worried that such a search engine could be
developed for motion pictures. Creating a system whereby the search
algorithms can search for actors’ names and/or images. Or by certain
types of scenes. How can this be reconciled with traditional copyright
ownership rights—and furthermore, name and likeness rights that
protect an actor’s proprietary interest in their name and likeness—
and even sometimes in their vocal performance. It’s not clear what
contractual rights are further implicated by these types of systems now
allowed by Google Books.
Record labels, artists, music publishers and songwriters should
be just as worried. Unlicensed search systems aggregating
small portions of their works—perhaps even just the lyrics—
automatically keyed to songs or performances, could deeply
impact on the economic interests of those in the music industry.
Government agencies have already opined, as a matter of public
policy, that use of small portions of music does not justify the
creation of a compulsory licence, or adoption of a fair use defence.
Copyright Concerns
Recently, the US Patent and Trademark Office, in its green paper
on digital music issues, refrained from recommending the creation
of a compulsory licence or application of fair use for samples and
mash-ups. It recognised a market developed and should continue
to develop—as it should here.
gain economically from the exploitation of their property. Our
culture can only absorb so many disincentives for artists to create
works. Otherwise, one day, they will simply stop creating. And
that is exactly what the copyright law is designed to prevent.
Unwarranted expansions of fair use—like that in the Google
Books case—harms artists much more than it helps the interests
of the public.
The DMCA regime is also clearly affected by this decision. The
Lenz case stands for the proposition that copyright owners
must take fair use into consideration before sending a takedown
notice. Arguably, the Google Books case, by implication, adds
this as an additional category of inquiry. The Lenz case dealt
with the unauthorised use of Prince’s music in a user-generated
video uploaded to YouTube.
The public good is served by artists creating art—not users
expropriating art without authority in the name of fair use. The
Google Books case needs to be reversed. The question now
is, by whom? If not the courts, perhaps Congress is the only
alternative. IPPro
Whether or not it is fair use is beside the point. It is the obligation
to consider fair use that is so challenging, and perhaps even
impossible. Fair use was always an affirmative defence. No
one has ever suggested that a copyright owner would have to
consider the fair use factors applied to someone else’s work
before a takedown notice is sent.
Now, most of the thinking regarding the impact of Lenz on the
DMCA focuses on the use of pre-existing material in expressive
works, and whether the use in the new work is fair. However,
most of the unauthorised use on the internet is wholesale use of
entire works, such as full songs and movies. This is a category of
unauthorised use that is much more immune to fair use defences,
and thus arguably not as affected by the Lenz decision.
But now with the Google Books case, that assumption is much less
certain. If Google can expropriate entire books and call it fair use,
then why can’t other users expropriate entire movies or music and
claim that copyright owners must take that into consideration as
well? In the context of Lenz, the Google Books case disincentivises
users from sending takedown notices, and incentivises users to
send counter-notices. An already complicated and anti-owner
dynamic with the DMCA has now become even more complicated
and one sided because of the Google Books case.
Jay Rosenthal, Partner,
As a final point, the Google Books case joins a number of other
fair use and DMCA decisions resulting in a devaluation of the
copyright author and owner’s property interest, and their ability to
protect their property. This is not an insignificant point. Decisions
by courts invoking the interest of the public are important. The
public good is, after all, a goal that is desirable and beneficial.
But at what cost? Clearly a balance must be reached between
the interest of the copyright owner and the users, as well as the
public. But in light of the unprecedented amount of unauthorised
use of copyright owner’s work on the internet—and the damage
this brings to the economic vitality of all artists—the trend should
be going the other way.
The artistic community does not need any other decision that
makes it harder for artists and copyright owners to protect and
Mitchell Silberberg & Knupp LLP
If Google
can expropriate
entire books and
call it fair use, then
why can’t other
users expropriate entire
movies or music
and claim that
copyright owners
must take that into
consideration as well?
Most have surmised that DMCA considerations of fair use are
essentially limited to uses of pre-existing works in expressive
derivative works. Using the Lenz fact pattern, for example, a
copyright owner must take into consideration whether the use
of its music in a user-generated video (ie, using Prince as a
soundtrack to a video of a child’s birthday party) is fair use. And if
the target of the takedown notice believes it is fair use, he or she
has the right to send a counter-notification to the copyright owner,
and then the copyright owner must file a lawsuit in a federal court
within 10 days of receipt of the counter-notice. If it does not file a
lawsuit, the work can be uploaded again.
T h e v i e w s e x p r e s s e d i n t h i s a r t i c l e a r e s o l e l y t h o s e o f t h e w r i t e r, a n d n o t o f M i t c h e l l S i l b e r b e r g & K n u p p L L P o r a n y M i t c h e l l S i l b e r b e r g & K n u p p L L P c l i e n t .
32
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Turkish Trademarks
Turkey presses ahead with reforms
New legislation in Turkey promises a swathe of trademark changes.
Dr Cahit Suluk of Cahit Suluk Intellectual Property Law Firm explains
Shortening the period of oppositions: The period for filing
an opposition to the publication will be decreased from three
months to two after the publication of the trademark application
in the Official Trademark Bulletin. This regulation decreases the
registration period as well as the opposition period.
The Turkish Industrial Property Draft Code (IPDC) was sent to the
Grand National Assembly of Turkey recently. The draft, expected
to pass in two months, will bring a number of important reforms,
particularly in trademark protection.
New trademark types: In lieu of the condition of being
represented graphically in the previous regulation, it has been
decreed that every type of sign can be a trademark provided that it
can be “represented in the registry” so as to clearly and implicitly
represent the subject matter of the trademark protection. This
is a flexible approach reminiscent of EU trademark law, so that
non-traditional signs such as audio and motion trademarks can be
registered. Signs exclusively containing the shape or any “other
characteristic” of the product resulting from the nature of the
goods will not be registered as a trademark.
Expansion of criminal acts: The IPDC will expand the statutory
definition of criminal trademark infringement beyond “produce”,
“carry” and “sell” to include those who “import or export”,
“commercially purchase”, “stock”, “transport” or “store” goods
and services that infringe a trademark. A person convicted will
be sentenced to imprisonment of one to three years and pay a
punitive fine.
Adoption of international exhaustion principle: Aside from
integrated circuit topographies, under the Turkish legislation the
national exhaustion principle is adopted. The IPDC introduces
“the international exhaustion principle” for all categories of rights.
Letter of consent: Turkish law adopts the uniqueness principle for
trademarks, which is considered within the scope of public order.
Under the IPDC, a trademark identical or similar to a previous
trademark can be registered in the name of more than one person
after the approval of the previous rights holder is given.
Effect of previously-dated rights: In practice, those of bad
faith apply for a trademark, patent, utility model or design to
benefit from the reputation of a trademark of another person
or to use the patented invention thereof. In court practice, the
subsequently granted document first should be annulled, and
then the infringement case should be filed.
Unused trademarks to be considered void: Thousands of unused
trademarks have been registered in Turkey, causing disorder in the
trademark registry. Considering this fact, the IPDC mandates the
‘cleaning’ of the trademark registry so that in case of an objection
before the Turkish Patent Institute (TPI), an applicant may request
evidence from the objector that he/she uses the trademark.
Under the IPDC, the proprietor of a trademark, patent or design
cannot plead using his/her own document in the infringement
case filed by the proprietors of previously granted rights.
The conditions for requesting evidence include: the trademark in
question must not be identical with or indistinguishably similar
to the previous trademark; five years must elapse after the
registration of the previous trademark in Turkey; the previous
trademark must not be properly used in the registered goods and/
or services for five years after the application or grant date of the
trademark in question, or there must be a legitimate reason for
non-use; and the subsequent applicant must request evidence of
use from the trademark holder.
Procedure of immediate destruction of counterfeit goods:
Sufficient samples will be taken from the illegal counterfeit
goods and the remaining goods will be destroyed if they are
damaged, there is a significant risk of losing value, or storage
of goods is laborious.
Evidence of use can be requested in cases, to be filed by the
proprietor, of trademark invalidation registered after the previous
trademark and in cases of infringement to be filed against the
person who uses the trademark thereafter.
Dr Cahit Suluk, Founder,
Administrative annulment: Another feature of the trademark
registry clean-up is administrative invalidity. In Turkish legislation,
annulment or invalidation of a trademark can only be claimed in
court. Under the IPDC, applications for annulment can also be
filed before the TPI. Thus, in a much shorter time and at a low
cost, unjustly registered trademarks can be annulled.
Reasons for annulment include: non-use for five years after the
registration; being generic; obtaining such a nature as to deceive
the public; and the use of guarantee and collective trademarks in
violation of the technical regulation.
Being a radical reform, this provision will not enter into force
until 2023. Until this date, claims for annulment can be filed
only in court.
34
Cahit Suluk Intellectual Property Law Firm
In the presence of any of these conditions, an examination will be
carried out by an expert witness and the goods will be destroyed
at the beginning of the proceedings by court decision. IPPro
An interview with Stephen Beny
Bereskin & Par
Partner
Stephen Beny
How did you find the implementation and change process?
What services does Bereskin & Parr provide, and where?
Bereskin & Parr LLP is a leading Canadian full service
intellectual property law firm serving clients across all
industries around the world. Founded in 1965, the firm has
grown to be one of the largest IP firms in Canada with offices
located in major economic and technology centers. Bereskin
& Parr is made up of more than 70 lawyers and patent
and trademark agents, many of whom are recognised as
leading practitioners in their specialised fields. The firm has
established a depth of legal talent and systems to service
clients in every aspect of patent, trademark and copyright
law and IP litigation. The firm and its award-winning
professionals are consistently ranked as the benchmark for
IP law in Canada.
How long have you been a Patricia® user?
Almost eight years. Bereskin & Parr implemented Patricia® Web in
2008. We will be moving staff to Patricia Client Server this year.
How do you use Patricia® in your daily business?
We use Patricia® to manage our client, contact and file
details. In addition, we use Patricia® to track our internal
and external due dates as well as generate form letters that
auto-populate using Patricia data.
Which aspects of Patricia® do you find most useful?
There are many aspects of Patricia® that are useful. Of
particular importance to our firm is the ability to manage
firm processes through workflows/due dates as well as the
ability to store our client, contact and files details (including
track the location of our files). The ability of our administrator
to customise Patricia® to meet the needs of our firm is
especially significant. Finally, the robust search function in
Patricia® is extremely useful to all staff.
The implementation went as well as could be expected. When
we implemented Patricia®, we simultaneously changed/
improved some of our processes. This resulted in not only
a learning curve of the new software for some staff, but a
learning curve of our new processes. Patricia® enabled us to
transfer tasks (opening new files, for example) to assistants
that were once handled by a centralised department.
Patricia® has many functions and capabilities. We tried to
keep things simple upon implementation and, over time, have
been expanding our use of Patricia®. People learn quickly
and are far more adaptable than they would have you think.
We are continually looking for efficiencies in our processes
and how we utilise the system itself. Feedback from staff is
vital to the success of any implementation and we are always
encouraging and acting on feedback from staff.
Do you feel that you have received an adequate return
on your investment? Has Patricia® perhaps assisted
with bottom line profits?
Yes. The security features in Patricia® allow us to lock down
features in Patricia® to certain users, helping us reduce
risk of due date errors, for example. Since we were able to
decentralise certain tasks through the use of Patricia®, this
enabled us to avoid bottlenecks of tasks that were once
handled by one individual or department. The batching of data
and letters in Patricia® allows us to update file information
and generate letters on multiple files in a quick and efficient
manner. The ability to customise workflows allows us to
quickly adapt when there are changes to the law and to instill
best practice processes and conformity throughout the firm.
One of the main messages about how Patricia®
precisely differs from typical ‘docketing’ systems is
how it is so much more than just docketing. Patricia®
is a full practice management solution. Which other
areas of your practice does Patricia® help you with?
As mentioned, we use Patricia® to store our client, contact
and file details. We use pop-up notes to remind staff about
client-specific reporting needs/standing instructions, and so
on. We utilise the documents section to store certain key
documents for easy reference. We use the data in Patricia®
to analyse and balance workload amongst our administrative
staff as well as to look for efficiencies.
If you could give us one sentence which encapsulates
your understanding of Patrix and Patricia® and what it
does for your business, what would it be?
Patricia® is a full service IP solution for the management of
our client and file details.
Extended DMS
When your needs for document management
surpasses the functions featured in the standard
Patricia® document tab, we are happy to offer you
the Patricia® Extended DMS. Efficient document
management made accessible.
Focus
Think of all the hours spent looking for the right documents.
Now think about all the time you could save if searching for information was swifter and handling your documents was more
efficient. Discover the potential of Patricia® Extended DMS.
Sophisticated search
Patricia® Extended DMS features a full-text search function that
allows you to search for content within each document – or
across the entire case document tree. Scanned PDF images can
be transformed into text, and added to the search index. This
means you’re also able to find scanned PDF documents by searching for text they contain.
powerful preview
Bringing traditional case management into the digital world, the
preview function lets you flick through documents and view their
content – just like browsing through a physical case file. A quick
and intuitive way of finding and reviewing case documents.
>> Find your document fast, see what it contains and compare it
to other versions. Take complete control of your case documents
with Patricia® Extended DMS. <<
Versioning
Communication
Not only does this feature allow you to track previous versions of
documents without needing to access backup systems, it also
lets you see the difference between versions. Documents can include a history of which user edited the document and on what
date.
Patricia® Extended DMS also features advanced email sending
capacities: select your documents by checking their boxes and
send them via email, directly from within Patricia®. You can also
create PDF letters with your company’s letterhead (or other
templates) directly from within Patricia®.
Work where you want to
business as usual
Offline Work Mode lets you work on case documents outside the
office. You can synchronize a case document folder before leaving the office, and work on the documents while you’re away.
Then, when your laptop next connects to the office network,
the Patricia® Extended DMS automatically synchronizes any local
changes as a new version of the document to the server.
Last but not least: you can continue using Patricia® just the way
you’re used to. The advanced functionality of the Patricia® Extended DMS can be accessed when needed, but administrative staff
can continue using the standard Patricia® document tab without
needing to learn all the new features.
Secure signatures
The Patricia® Extended DMS allows application of secure digital signatures. A specified security model ensures that defined
templates can only be signed by the person responsible – not by
other Patricia® users.
EuropE TEl: +46 31 50 77 60 Fax: +46 31 50 77 66
uSa TEl: +1 703 879 48 60 Fax: +1 703 997 25 79
E-mail: [email protected] WEb: www.patrix.com
With equal knowledge of IP and IT, Patrix provides world class IP Management Software with proven
results. We have over 20 years of experience working with a wide international client base from large
law firms and corporations to individual practices and smaller firms.
People Moves
Industry appointments
Theo Savvides has become joint managing partner at Bristows
in London.
Savvides succeeds corporate partner Iain Redford, who has
stepped down from the position after serving for two terms. Redford
will return to working in his practice in the technology, media and
life sciences sectors.
Editor: Mark Dugdale
[email protected]
+44 (0)203 750 6022
Savvides is an experienced IP litigation specialist and currently
serves on the firm’s copyright and digital disputes team advising
clients in the media, technology and life sciences sectors.
Deputy Editor: Stephanie Palmer
[email protected]
+44 (0)203 750 6019
He will be working with IT and data privacy specialist and joint
managing partner Mark Watts in his new role.
Watts said: “Savvides has a clear understanding and appreciation of our
unique firm culture while also bringing a fresh perspective of the market.”
Reporter: Tammy Facey
[email protected]
+44 (0)203 750 6017
K&L Gates has added Steven Caponi as partner in its cyber
security and intellectual property litigation practices.
Contributors: Becky Butcher and Drew Nicol
[email protected]
He joins K&L Gates from Blank Rome, where he was chair of the
cyber security and data privacy practice.
Associate Publisher: Carlos Northon
[email protected]
+44 (0)203 750 6023
Caponi focuses his litigation practice on a broad range of corporate
and intellectual property matters, including patent infringement,
cyber security and data privacy.
Account Manager: Clinton Hanson
[email protected]
+44 (0)203 750 6025
Caponi’s representative matters have included obtaining a
successful defence verdict for what the firm calls “the world’s
largest social networking site” in a patent infringement action filed
in Delaware.
Publisher: Justin Lawson
[email protected]
+44 (0)203 750 6019
Marketing Director: Steven Lafferty
[email protected]
Scott Waxman, administrative partner of the firm’s Wilmington
office, said: “We are thrilled that Steve Caponi is joining us so that
our clients across the K&L Gates global platform can realise the full
benefit of having an office in Delaware.”
Designer: John Savage
[email protected]
+44 (0)203 750 6021
Richard Hooper is stepping down from his role as chairman of the
foundation behind UK licensing initiative the Copyright Hub.
Recruitment Manager: Chris Lafferty
[email protected]
+44 (0)208 663 9624
Hooper will stand down from 1 May. He will hand the role to Mark
Bide, the current adviser to the foundation’s board.
Office Manager: Chelsea Bowles
[email protected]
+44 (0)203 750 6020
The Copyright Hub has asked Hooper to become honourary
president of the foundation, which he has accepted.
Hooper said: “It has been an extraordinary time leading the
Copyright Hub Foundation as it has built the foundation of a
technology platform that will make licensing easier and cheaper for
all creators and rights holders.”
Office fax: +44 (0)20 8711 5985
Stay connected with IPPro The Internet on Twitter,
Facebook and LinkedIn
Bide said he was honoured to be asked to replace Hooper.
“Succeeding Hooper will be no easy task.”
Published by Black Knight Media Ltd
Dominic Young, CEO of the Copyright Hub, said: “It has been a
pleasure to work with Hooper over the past few years to get the
Copyright Hub in the position it is in today.”
Provident House, 6-20 Burrell Row
Beckenham,BR3 1AT, UK
Company reg: 0719464
“I am delighted that he will continue to be involved in the future.” IPPro
Copyright © 2016 Black Knight Media Ltd
All rights reserved
Have an industry appointment to shout about? Let us know via:
[email protected]
38
J. Varbanov & Partners
European and Bulgarian Patent & Trademark Attorneys
One of the oldest and leading IP companies in Bulgaria
Professional, cost effective services and quality advices
Areas of practice:
*IP Protection
*IP Enforcement
*Anti-counterfeiting
*Litigations
*Domain name registrations
*IP watches
PO Box 1152, BG-1000 Sofia, Bulgaria
South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria
Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,
e-mail: [email protected]
www.jvpatents.com