Widening the Net: Providers Dot Shabaka’S Journey

MArch 2014

TBTRADEMARKS & BRANDSO ONLINE newsletter news and intelligence from Trademarks & brands online

highlights in this issue: 5 US government to leave ICANN contract

8 Facebook hit with “trademark bullying” claim

18 Copyright in the EU: pre-judging the issue?

Page 14 20 The duties of online service Widening the net: providers Dot Shabaka’s journey

Other contents >> Donuts Full PageA4.pdf 1 2/27/14 1:14 PM

donuts Domains Protected Marks List (or "DPMl") provides the essential service of protecting trademark holders against cybersquatting at a fraction of the cost of defensively and individually registering the terms across all Donuts TLDs. .COMPANY

.fail .support .FINANCE .business .MEDIA

Affordable! Significantly less than defensive registration and less Powerful! Protects trademark than the cost of one UDRP. C and keywords containing mark.

CY Flexible! Protects all Donuts TLDs now, unblock and register Simple! Protects for five years. CMY in future.

Terms and conditions apply. Please visit www.donuts.co/dpml for details. © Donuts Inc. 2014 TBO Newsletter 03:14 editor’s letter/contents 3

MARCH 2014 Fresher and slicker TBTRADEMARKS & BRANDSO ONLINE NEWSLETTER Welcome to Trademarks & Brands Online, the new name for Trademarks Brands NEWS AND INTELLIGENCE FROM TRADEMARKS & BRANDS ONLINE and the Internet. We feel the new title is snappier and describes the content better. HIGHLIGHTS IN THIS ISSUE: 5 US GOVERNMENT TO LEAVE ICANN We hope you like it. While TBO continues as a quarterly magazine, we are now CONTRACT publishing a monthly newsletter. In this inaugural issue, we speak to Yasmin Omer, general manager of Dot Shabaka, 8 FACEBOOK HIT WITH “TRADEMARK BULLYING” which manages the generic top-level domain (gTLD). Pronounced ‘shabaka’ ةكبش CLAIM and meaning ‘web’ in Arabic, it was the first gTLD in a non-Latin script to go live on the internet. The project has personal roots for Omer, whose vision was to provide

18 COPYRIGHT IN THE Arabic users with a “first class” internet experience and build a sturdy domain name EU: PRE-JUDGING THE ISSUE? industry in the Middle East. Over in Europe, all eyes are on the European Commission’s review of copyright. Page 14 20 THE DUTIES OF The commission, seeking to make the rules relevant in the digital age, asked ONLINE SERVICE Widening the net: PROVIDERS stakeholders 80 questions in its consultation. As thousands of responses flooded in, Dot Shabaka’s journey the commission extended the deadline earlier this year, and is now considering the answers. Adam Rendle of Taylor Wessing LLP assesses the consultation’s potential OTHER CONTENTS >> implications for rights online. Trademarks & Brands Online is published by: Then, along with our comprehensive news section, we hear from Susan Kayser of Newton Media Limited Kingfisher House, 21-23 Elmfield Road, Bromley, law firm Jones Day, who analyses when online service providers might be found BR11LT, United Kingdom liable for trademark infringement. Is a host or sponsor of online content obliged to +44 203 301 8200 Director police itself to prevent third-party counterfeiting? If yes, what is the extent of that Nicholas Lipinski duty? And how much is enough? These are just some of her questions. Publisher John Haley We hope you enjoy reading her article and all the others in this first TBO monthly Telephone: +44 203 301 8205 newsletter. Email: [email protected] Managing editor Ed Conlon, editor Martin Essex Telephone: +44 203 301 8211 Email: [email protected] Editor Ed Conlon Contents Telephone: +44 203 301 8210 Email: [email protected] 5 News Sub-editor 5 US government to leave ICANN contract Ros Bromwich 6 Political ad blocked for Simpsons reference Journalists Leonie Mercedes, Max Walters 6 Amazon to appeal against Lush ruling Editorial assistant 7 Canyon Bicycles wins first new gTLD UDRP case David Brooke Senior project manager 8 Facebook hit with “trademark bullying” claim Andrew Mitchell 9 French football league suffers UDRP defeat Telephone: +44 203 301 8217 Email: [email protected] 10 Arabic UDRP provider turns on the lights Production and design 10 Microsoft criticised over rebranded SkyDrive Fisherman Creative ©Newton Media Limited 2014 11 Google and Viacom settle copyright dispute All rights reserved. No part of this publication may be 12 Rimmel UDRP panellist blasts “monkey business” reproduced, stored in a retrieval system, or transmitted in any form or by any means, electrical, mechanical, 13 ICANN gTLD auctions set for this summer photocopying, recording or otherwise without the prior written permission of the publisher. 13 TMCH sends more than 500,000 cybersquatting warnings The views expressed inTBO are not necessarily those shared by the publisher, Newton Media Limited. 14 Big interview: new gTLDs Wishing to reflect the true nature of the market, we have included articles from a number of sources, Widening the net: the first Arabic gTLD and the views expressed are those of the individual contributors. No responsibility or liability is accepted by 18 Legal update: Newton Media Limited for any loss to any person, legal or physical, as a result of any statement, fact or figure Copyright in the EU: pre-judging the issue? contained in TBO. This publication is not a substitute for advice on a 20 Case study: specific transaction. The publication of advertisements does not represent endorsement by the publisher. The duties of online service providers Trademarks & Brands Online (TBO): ISSN 2049-2359 (Print)

www.worldipreview.com 4 editorial panel TBO Newsletter 03:14

Ben Safir Anand, Edward Elisa Allgrove, partner, Chatterton, Cooper, partner, Anand & partner, DLA senior Baker & Anand Piper director of McKenzie product LLP marketing, MarkMonitor

Stuart Fuller, David Green, Marie- Brett director of head of Emmanuelle Heavner, communications, global digital Haas, head partner, NetNames marketing, of the internet Finnegan, KPMG committee, Henderson, ECTA Farabow, Garrett & Dunner LLP

Susan Roland Igor Motsnyi, Gretchen Kayser, LaPlante, partner, Olive, director partner, Jones chief Motsnyi Legal of policy Day marketing Services & industry officer,Afilias affairs, CSC Digital Brand Services

John Olsen, Flip Petillion, Adam Kristina partner, partner, Rendle, Rosette, Edwards Crowell & associate, of counsel, Wildman Moring LLP Taylor Covington & Palmer LLP Wessing LLP Burling LLP

Bob David Taylor, Stéphane David Samuelson, partner, Van Gelder, Weslow, vice president Hogan Lovells managing partner, Wiley of sales and International director, Rein LLP marketing, LLP Milathan Donuts Inc

Catherine Nick Wood, Wolfe, managing With thanks to the members of the partner, Boult director, Trademarks & Brands Online editorial board. Wade Tennant Valideus Contact Ed Conlon, the editor, for more information.

www.worldipreview.com TBO Newsletter 03:14 News 5

US government to leave ICANN contract IN BRIEF The US government is to withdraw from “The timing is right to start the transition University bags firstE nglish- its contract with ICANN that allows the process,” said assistant secretary of commerce language .brand organisation to perform several internet- for communications and information related tasks. ICANN has delegated the first English- Lawrence Strickling. “We look forward language .brand gTLD to Australia-based At a press conference on March 14, ICANN to ICANN convening stakeholders across Monash University. officials said they will consult the “global the global internet community to craft an Registry operator ARI Registry Services, internet community” on how best to replace appropriate transition plan.” the US government. which helped to delegate .monash, At the press conference in Los Angeles, said that the gTLD will become a “core The government will have the final say on ICANN’s chief executive Fadi Chehadé component of the university’s digital ICANN’s proposal but said it will not accept strategy”. a government-led or an inter-governmental said ICANN is inviting governments, the Although ARI states that .monash is the organisation “solution”. private sector, civil society and other internet organisations in the search. world’s first brand gTLD, some reports ICANN carries out several functions, most have indicated that Chinese Bank CITIC notably delegating top-level domains (TLDs), ”All stakeholders deserve a voice in the was delegated its .中信 (‘Citic’) domain at under a formal relationship with the US management and governance of this global the same time as Monash. Department of Commerce. Known as the resource as equal partners,” he said. Internet Assigned Numbers Authority (IANA) contract, it was signed in 2000 and has been Stephen Crocker, who chairs the ICANN board, renewed several times. added: “Even though ICANN will continue to perform these vital technical functions, the US There have, however, been increasing calls for ICANN to become less US-centric. In has long envisioned the day when stewardship February, the European Commission said over them would be transitioned to the global it wants to establish a “clear timeline” for community. In other words, we have all long globalising ICANN and the functions of the known the destination. Now it is up to our IANA contract. global stakeholder community to determine At the time, commission vice president Neelie the best route to get us there.” Kroes explained that some people are calling According to the government, ICANN’s for the International Telecommunications proposal must have “broad” community Union to take control of key internet functions, but that “top-down approaches are not the support and address the following principles: support and enhance the multi-stakeholder right answer” and “we must strengthen the University gets there first, or does it? multi-stakeholder model”. model; maintain the security, stability, and The US government now appears to agree resiliency of the DNS; meet the needs and with this approach, saying that international expectation of the global customers and WIPO chief warns about support continues to grow for the multi- partners of the IANA services; and maintain new gTLD uncertainty stakeholder model. the openness of the internet. n WIPO’s director general Francis Gurry has warned trademark owners they face increasing disruption as the domain name ICANN’s door open to non-US stakeholders system continues to expand. ICANN has approved more than 1,400 new gTLDs, the first of which have already gone live, and new registries are expected to go live regularly for the next year. But Gurry said trademark owners have been facing “significant uncertainty” over the gTLD rollout while simultaneously working with reduced protection budgets. “The proliferation of potential web addresses ... will force trademark owners to adjust their priorities in terms of registration and protection choices,” he added.

www.worldipreview.com 6 News TBO Newsletter 03:14

IN BRIEF Political ad blocked for Simpsons reference A YouTube video referencing cartoon show Lim Bee Yi heads to Tay & The Simpsons which was used in a US political Partners campaign has been blocked on copyright grounds. Malaysian law firmT ay & Partners has hired Lim Bee Yi as a partner in its IP and The advertisement was released by incumbent technology practice. Illinois state governor Pat Quinn in an effort to discredit his political rival Bruce Rauner, Lim is experienced in dealing with IP rights, a businessman hoping to succeed Quinn at including trademarks, copyright, patents elections later this year. and industrial designs. Newspaper Chicago Sun-Times reported that During her career she has handled domain- the advertisement compared Rauner to the name disputes, licensing agreements and “evil, miserly ‘Mr Burns’ character” in an effort personal data protection. to show both men’s “affinity for bragging about Politicians must take care their millions”. Seagull moves to Los Angeles The voice and image of Mr Burns, a well- known Simpsons character, had appeared in But Quinn’s campaign responded in a light- the video. hearted manner. Within an hour of the advertisement’s release “Looks like Fox took it down,” a spokesman on March 20, the link became inactive and told the Sun-Times. “Rauner must have called was replaced by a statement saying the video Mr Burns and complained.” “contains content from Fox, who has blocked it The paper said it wasn’t the first time Quinn on copyright grounds”, according to the paper. had used the Mr Burns character in his A Fox spokesman told the Sun-Times that political messaging. the company does not allow campaigns to In a January email to his supporters, Quinn use characters, voices or footage from the said Rauner and his three Republican primary animated series. opponents at the time “have all the compassion “Fox doesn’t authorise use of Simpsons imagery of C. Montgomery Burns” because none in any political campaign,” the spokesman said. Song flies to BlankR ome nest supported raising the minimum wage, the According to the paper, Rauner’s campaign paper said. Seagull Song has joined Blank Rome LLP as mocked the slip-up. of counsel in the firm’sL os Angeles office. Quinn, a Democrat, has been in power since “Looks like Pat Quinn is running his campaign 2009. Rauner was picked as the Republican Song, who lands in the IP and technology as poorly as he’s running the state,” a Rauner candidate to oppose him at elections in group, will also serve as a member of the spokesman said. November. n Asia practice. She was previously a visiting associate professor of law at Loyola Law School in LA. Amazon to appeal against Lush ruling A specialist in Chinese IP law, she focuses on trademarks and copyright, as well as Amazon is to appeal against a High the goods from Amazon’s search results were IP licensing, domain name protection and Court ruling that it infringed trademarks “not the goods of, or connected with” Lush. belonging to cosmetics company Lush. trade secrets. Judge Baldwin added: “The right of the public The online retailer was accused by UK-based to access technological developments does UK High Court wields axe on Lush of returning results for ‘Lush’ in its not allow a trader such as Amazon to ride four more ‘pirate’ websites search engine despite not selling any of its roughshod over IP rights, to treat trademarks The UK High Court has ordered the products. such as ‘Lush’ as no more than a generic country’s major internet service providers Lush also claimed that, through the use of indication of a class of goods in which the to block access to four websites alleged to Google AdWords, someone searching for consumer might have an interest.” be hosting copyright infringing material. ‘Lush bath products’ would be redirected to Falling under the axe are Megashare, the Amazon website and would be shown An Amazon spokesman confirmed to TBO on Viooz, Watch32 and Zmovie, which are all alternative products. February 20 that it was planning an appeal. movie streaming websites. Issuing the judgment at the UK High Court, In August last year, sister publication WIPR The order will demand that BT, Sky, Virgin Judge John Baldwin found that the average reported exclusively that Lush had filed a Media, O2, EE and TalkTalk cut off access. consumer would generally not realise that complaint. The case was heard in December.

www.worldipreview.com TBO Newsletter 03:14 News 7

Canyon Bicycles wins first new gTLD UDRP case

Bike-maker Canyon Bicycles has recovered a cybersquatted domain name that was registered seven seconds after it became publicly available. The dispute, involving “canyon.bike”, is the first to be resolved under the Uniform Domain Name Dispute Resolution Policy (UDRP) in the new gTLD space. German company Canyon sells racing, mountain and triathlon bikes, with agents in 10 countries and subsidiaries in six countries including the Netherlands, where the respondent is based. Although he registered “canyon.bike” under a privacy service, the respondent was discovered to be Rob van Eck. The cyclist and web designer registered it on February 5 at 16:00:07 UTC, Canyon Bicycles refuses to back pedal over domain name dispute seven seconds after the .bike gTLD opened for public registration. cybersquatting. He said many companies have admitted background as a web developer with The domain points to a website parking page been content with his actions. interests in the cycling industry.” that features sponsored listings, including one entitled “Mountainbikes”. Ruling on the dispute, which was published Lothian also noted that the pay-per-click links on March 17, the panellist Andrew Lothian are evidence of intent for commercial gain. In its complaint, filed in February, Canyon said rejected the respondent’s arguments. it is inconceivable that van Eck was unaware The central feature of the case, he concluded, is of its ‘Canyon’ trademark when he registered In particular, he said, van Eck’s emailed that van Eck registered the domain in the “clear the domain and that he was trying to mislead response to Canyon’s complaint indicates that knowledge” of Canyon’s trademark rights and internet users. he was looking to be “financially compensated” in “no doubt that he had not received the for the domain. complainant’s permission to do so”. The respondent said he registered the domain to enlarge his network and “get in (friendly) “Furthermore, the respondent’s statement that “In the panel’s view, the absence of such contact with Canyon”. A lot of people in the he wished to ‘enlarge his network’ discloses permission or indeed any bona fide basis for cycling industry don’t know about the new a deliberate and intentional commercial the respondent’s actions means that on the gTLDs, he argued, and so he registered some purpose behind the registration of the facts of this case the respondent’s alleged good domain names “to protect companies” from disputed domain name, given the respondent’s faith intent is irrevocably tainted,” he said. n

delivery services did infringe trademarks belonging to an existing flower delivery company of the same name. Originally set up in 1994, Lush now operates more than 800 stores in 51 countries. It produces and sells handmade cosmetic products, including soaps, shower gels and shampoos. Since the judgment, Lush has announced it acquired a trademark in 2012 for a new range of toiletries branded ‘Christopher North’, the Tension bubbles in Lush ruling name of Amazon’s managing director. Lush did not respond to requests for comment. The dispute has similarities with the Interflora Mr Justice Arnold found that retailer Marks & Lush was represented by Lewis Silkin LLP, v Marks & Spencer High Court ruling in May Spencer’s use of ‘Interflora’ Google AdWords while Amazon was represented by Edwards last year. that produced search results for its flower Wildman Palmer LLP. n

www.worldipreview.com 8 News TBO Newsletter 03:14

IN BRIEF Facebook hit with “trademark bullying” claim US holds first DMCA review meeting A pet-themed social network has accused The US Department of Commerce was due Facebook of being a “trademark bully” after a to host the first of several discussions on dispute over the ‘Facepets’ trademark. improving the Digital Millennium Copyright Facepets.com, based in Nashville, is also Act (DMCA) on March 20. seeking clarification that it does not infringe Led by the department’s internet policy Facebook’s trademarks. task force, the meeting was to be held The company, whose site allows users to at the headquarters of the USPTO in discuss and post pictures of their pets, applied Alexandria, Virginia. More meetings will for the ‘Facepets’ trademark in the US last year. follow. After the trademark was published in In July 2013, as part of wider review of August 2013, Facebook asked the US Patent digital copyright, a government Green and Trademark Office (USPTO) to extend Paper called for talks on improving the the deadline for opposing the mark until DMCA, which requires website owners to December 25. The request was granted. remove copyright-infringing content. Between August and the December deadline, Neustar buys .CO Internet Facebook contacted Facepets.com and claimed that the ‘Facepets’ mark would cause US registry Neustar has bought .CO confusion with Facebook’s. The social network Internet, which manages .co domain told Facepets.com that it should abandon the Facebook is fighting a similarly names, for around $109 million. trademark. named site The .co extension was the country-code Counsel for the two companies later agreed TLD for Colombia until 2010 when it that Facebook could have until February 23 to rebranded as a gTLD, targeting small oppose the ‘Facepets’ mark. TTAB the remedy is whether the mark should businesses in particular. be registered, and in the court it is whether the Facepets.com filed the claims in a lawsuit at Since then .CO Internet has worked closely mark can be used in commerce. the US District Court for the Middle District with Neustar, which provides back-end of Tennessee. “Because those are so different, there is not a registry support to the company. There are circumstance that would warrant staying one now 1.6 million .co domains. Facebook has since opposed the mark at the Trademark Trial and Appeal Board (TTAB), of the proceedings,” he said. Neustar operates the .biz and .us TLDs but the papers were filed on February 24, a day and is supporting nearly 350 new gTLDs. Given that Facepets seems to be a small, local later than the agreed deadline. The company itself applied for .neustar. group in Nashville, said Kenney, it could In its opposition, Facebook claimed that seem that Facebook is aggressively pursuing ICANN process “flawed”: BBC ‘Facepets’ is likely to cause confusion and dilute that group in an unwarranted way. On the The slow and uncertain pace of ICANN’s its “famous” trademarks. To show that its marks other hand, he said, Facepets has applied for a new gTLD application process is a major are “famous”, Facebook argued that they enjoy a trademark that would give it nationwide rights, high degree of consumer recognition and that its challenge for businesses, according to so Facebook “would have to do something to service has an “enormous and loyal user base”. BBC IP lawyer Diane Hamer. ensure that that didn’t become a nationwide Hamer said ICANN’s application process In its suit, filed before the February 24 registration”. for new gTLDs “makes it hard to get opposition, Facepets.com is seeking “The issue in trademark law is not just stakeholder engagement”. clarification that it does not infringe or dilute Facebook’s trademarks and that the social confusion as to source, but also confusion as to The UK broadcaster, which has applied network is a “trademark bully”, a term used affiliation or sponsorship, so it’s very possible for the .bbc gTLD, has encountered to describe companies that use their rights to that someone seeing the Facepets site (and “many pitfalls along the way” and these harass other businesses. trademark) might think that although it’s not “have been generated by ICANN to a Facebook itself, it’s very possible that they are large extent”, Hamer told delegates at the TTAB papers show that Facepets.com has until Institute of Trade Mark Attorneys Spring April 5, 2014 to respond to the opposition. affiliated with, or sponsored by, Facebook,” Conference 2014 in Westminster. Both the lawsuit and the TTAB case can Kenney said. “The Trademark Clearinghouse (TMCH) proceed simultaneously, said Bob Kenney, Bone McAllester Norton PLLC is representing is extremely flawed, although ICANN partner at Birch, Stewart, Kolasch & Birch LLP. Facepets.com and Cooley LLP is acting for deserves credit for trying,” she added. “The types of facts that a court would look at Facebook. Neither firm responded to a request are broader and the remedy is different—in the for comment. n

www.worldipreview.com TBO Newsletter 03:14 News 9

French football league suffers UDRP defeat

French football’s premier division has lost In the ruling, published on March 10, the a cybersquatting dispute against a radio- panellist Martine Dehaut said the domain does controlled car enthusiast. match the ‘Ligue 1’ trademarks—registered a year before ‘ligue1.org’—and that Thioux had The Ligue de Football Professionnel (LFP), no legitimate interest in the domain name. which manages the League 1 competition, complained about the ‘ligue1.org’ domain But Dehaut said the domain had not been name, registered in 2003. registered in bad faith. She said an internet search for ‘League 1’ revealed a radio car It claimed the domain name is identical to its competition of the same name, organised by ‘League 1’ trademarks, that the owner had no the French federation of radio-controlled French league loses the ballgame right to the use it and that he had registered cars (FFVRC). The respondent, Thioux, had and used it in bad faith. participated in this league. Although the site is inactive, the LFP in connection with the Ligue 1 radio car Dehaut added that the domain was registered said the respondent had registered the competition. more than 10 years ago, which raises several domain either to sell it to the LFP or for questions, including whether the football “For these reasons, the panel finds that the commercial gain. competition was well known enough at that evidence of bad faith registration of the The registrant, Patrick Thioux, of Aulnay- time for the respondent to be aware of it. But disputed domain name is not provided,” sous-Bois, did not respond to the complaint. she also questioned why the domain name was she said, explaining that the domain was not registered to harm the football league’s The complaint was filed under the UDRP on inactive. interests. January 7, 2014, but was settled on February In an attempt to clarify these issues, Dehaut 26. The case was heard at the World Intellectual visited the website’s archives, which showed There are 20 teams in League 1, with Paris Property Organization (WIPO). it had been used in the past, as early as 2004, Saint-Germain currently on top. n

event group THE ASIA PACPAC DIGITALDIGITAL MARKETINGM & gTLDLD STRATEGYSTRATEGY CONGRESSC + THE INTERNET OF NAMES

In association with Co-organizers Asian Domain Name Dispute Resolution Centre - a charitable institution limited by guarantee registered in Hong Kong ADNDRC For existing TLD owners (Generics + Brands) legal counsel & prospective round two applicants MAY 14-15, 2014 | REGUS - HONG KONG CENTRAL PLAZA | HONG KONG

To register visit our website www.momentumevents.asia or email [email protected].

PROSPECTIVE APPLICANTS Avoid costly missteps and get the full picture from existing TLD owners & expert counsel. EXISTING APPLICANTS Optimize for success by benchmarking your application & launch strategy against other applicants. • Aﬁlias • .CLUB • DomainDiction • Brand Registry Group • DotAsia • .Kiwi • .Kyoto • Dot Chinese Online (.在线) • .Quest • Brandma • Baidu • Dot Chinese Website (.中文网) • .世界

www.worldipreview.com 10 News TBO Newsletter 03:14

IN BRIEF Arabic UDRP provider turns on the lights Dot Berlin clarifies The Arab Center for Dispute Resolution trademark list (ACDR) is up and running, becoming the fifth provider of UDRP services. The registry behind the .berlin gTLD has clarified the purpose of a list of trademarks ICANN approved the centre to handle that it published by mistake. cybersquatting disputes in May last year, three years after it first applied. The ACDR later Dot Berlin accidentally leaked about revised its proposal in light of public comments. 50,000 names, including trademarks for Google and Microsoft, before removing The ACDR, a joint venture between two them from its site. Arabic IP institutes, had been expected to go live on January 1 this year. Dispute resolution opens in Observers were unclear what the list was the Middle East for, with one suggesting it might be a Trademark owners must pay $1,500 to document from the TMCH. complain about one or two domains; three to five domains will cost $1,700. There are further will in the long term decide the success of any Dot Berlin spokesman Johannes charges for more names. operator,” he said. “If the new ACDR handles Lenz-Hawliczek told TBO the list was a cases in a swift and complete manner then “registry-reserved names list” but despite The World Intellectual Property Organization, I can see it becoming a viable ‘rival’ to the that statement confusion remained. the leading UDRP provider, charges $1,500 for a dispute over one to five domains. existing providers.” Lenz-Hawliczek then sent the following The remaining providers are the National The new gTLD programme is likely to increase statement to TBO: “We are disappointed Arbitration Forum, based in the US, the Asian online infringement across the world, Fuller with the poor acceptance of the TMCH so Domain Name Dispute Resolution Centre continued, so “a more local presence for the far, which we believe can be attributed mainly and the Czech Arbitration Court Arbitration Arab world is a good thing”. to insufficient outreach towards small and Center for Internet Disputes. medium-sized enterprises in particular. He added: “I am not sure whether we will After approving the ACDR last year, ICANN’s initially see a major take-up of services relating “Therefore, we began to develop some board said that having the first UDRP operator to Arabic names—we only have to look at the ideas to extend trademark protection in the Middle East enhances ICANN’s measures beyond the sunrise, but ultimately launch of the .shabaka domain to see that only “accountability to the internet community 1 percent of the total new gTLD registrations neglected these ideas because of the unclear as a whole” and provides choice for UDRP consequences regarding our policies. has gone for an Arabic internationalised complainants. domain name. But that number will grow “So we are talking about ideas which were With the ACDR going live, there is expected to and it will provide a vital local service in the discussed—and rejected—internally, and be some price competition, said Stuart Fuller, growth of the internet in the Arab world.” only leaked by mistake,” he said. director of commercial operations at brand which means ,(ةكبش) Alongside .shabaka protection company NetNames. Beastie Boys and GoldieBlox ‘web’ in Arabic, ICANN received gTLD and (يبظوبا) settle copyright row “But because, essentially, this is a legal service, applications such as .abudhabi n .(برع) it is the quality that is more important and .arab A US toy company has settled a lawsuit with rap group Beastie Boys over a promotional video that parodied of one of the band’s Microsoft criticised over rebranded SkyDrive songs. Microsoft is facing fresh trademark The dispute over SkyDrive started last year California-based GoldieBlox has agreed to infringement claims over its newly-named when Microsoft was ordered to change the issue an apology to Beastie Boys and pay a settlement fee to charity, it told TBO on cloud service after a Danish web-hosting name of the programme by the UK High March 18. company said the new model was too Court. similar to a programme it runs. GoldieBlox, which makes building block toys The court said its name infringed trademarks for girls, used a version of the Beastie Boys The tech company announced that it had belonging to satellite broadcaster BSkyB in the song ‘Girls’ in a promotional advert. However, rebranded its SkyDrive service as OneDrive, UK and Europe. but the move has been criticised by Danish it used different lyrics that turned the original Justice Asplin ruled on June 28 that use of the company One.com. The service is now live. composition on its head. word ‘Sky’ was likely to confuse customers and Instead of the words in the Beastie Boys’ One of One.com’s programmes, Cloud Drive, that evidence had shown there had already version, about girls cooking and washing up, offers similar features to the Microsoft model. been instances of confusion. it said girls are bored with receiving the same It provides data backup and makes files In a statement, Danish-based One.com said gifts and want to make new discoveries. available for access and also includes file the new name was “very close” to its own and sharing features. “will lead to confusion”.

www.worldipreview.com TBO Newsletter 03:14 News 11

Google and Viacom settle copyright dispute IN BRIEF Google and global media company Viacom Man arrested over fake have settled a seven-year billion-dollar Rosetta Stone software copyright dispute over clips uploaded to UK police have arrested a man for selling video-sharing website YouTube. pirated Rosetta Stone software after the The out-of-court settlement, announced on company referred him to the authorities. March 18, brings to a close a dispute that first The 25-year-old man, based in Forest Hill came to the fore in 2007. in London, was found selling the software Viacom, which owns the Paramount film through online marketplaces as well as on his studios and cable networks including MTV, own website. He was arrested by the Police filed a lawsuit accusing Google, which owns Out-of-court settlement over YouTube Intellectual Property Crime Unit (PIPCU). YouTube, of violating its copyright by allowing Head of PIPCU, detective chief inspector users to upload unauthorised clips of its films After each hearing, Google and YouTube were Andy Fyfe, commented: “PIPCU is dedicated and TV shows. deemed to have complied with US copyright to combating intellectual property crime, and Viacom was seeking a $1 billion dollar payout law under the Digital Millennium Copyright today’s operation shows just one of the many from Google, claiming that shows including Act by removing infringing videos when asked ways we disrupt and prevent this type of The Daily Show with Jon Stewart and South to do so by a rights holder. crime across the UK.” Park had been uploaded to YouTube without The case was first dismissed by New York Rosetta Stone is a US-based company that authorisation and viewed hundreds of District Court Judge Louis Stanton in 2010. sells language-learning software in more than thousands of times. 30 languages. Viacom appealed against the decision and the But, in a statement on the Viacom website, case was referred to the US Court of Appeals. it said the two companies had “jointly That court agreed with Stanton but referred the UK IP police target piracy announced” a resolution. case back for further consideration after ruling “This settlement reflects the growing that emails between executives at the company collaborative dialogue between our two could lead a jury to find that YouTube was companies on important opportunities, and aware of infringing activity. we look forward to working more closely But, in a decision published in April last together,” the statement said. year, Stanton dismissed the argument as The terms of the deal were kept secret but “extravagant” and said that as more than 24 the BBC reported it believed no money had hours of content is uploaded to YouTube each changed hands. minute, it would be impossible to be aware of It brings to a close a dispute that has been the subject matter. heard in the US courts three times in three Viacom was expected to appeal against that years. decision before the settlement. n

Microsoft criticised over rebranded SkyDrive Frederiksen would not comment on whether the company was going to open OneDrive raises SkyDrive concern litigation proceedings. “One.com is one of Europe’s leading web hosting companies, offering a cloud service for the last three years where you can sync personal files in the cloud. OneDrive, from Microsoft, is a similar product with a similar name that will lead to confusion,” the statement added. “It was a big surprise to me that Microsoft has “For me it’s important to protect our brand and decided to name its cloud service OneDrive,” company name. I would have expected that A spokesman for Microsoft said it worked said Thomas Darré Medard Frederiksen, chief Microsoft would have done a more thorough to ensure it had obtained “all the necessary operating officer at One.com, in a statement research, before releasing its new name. It is rights” to OneDrive around the world to TBO. after all, one of the big players in the market.” during the rebranding process. n

www.worldipreview.com 12 News TBO Newsletter 03:14

IN BRIEF Rimmel UDRP panellist blasts “monkey business” Brazilian football body in row with Hyundai over Cosmetics brand Rimmel has failed to transfer World Cup advert rimmel.com in a cybersquatting case in which Brazil’s football federation says an the arbitrator described the respondent’s advertising campaign by Hyundai that plays conduct as “monkey business”. on the nation’s chances of winning a sixth Rimmel’s owner, Coty, had filed a complaint World Cup infringes its IP rights. under the UDRP over the domain, created in The Brazilian Football Confederation (CBF) 1997. has complained about the advert because The company uses rimmellondon.com as its Hyundai is not an official sponsorship main website. partner of the federation. Since its registration in 2005, rimmel.com South-Korea based Hyundai is an official has been used to provide pay-per-click links partner of FIFA, the World Cup governing and, later in that year, for a business called body, but the CBF’s partner is German Name Magic. But otherwise it has nearly manufacturer Volkswagen. always yielded a blank page or simple Google Hyundai is allowed to market its advertising search bar. around the tournament but the CBF claims Coty alleged that because the domain had not it cannot refer to Brazil’s national team. been used for a long time and that its owner The advert is a play on the Portuguese word Peter Colman is “a serial cybersquatter”, the Monkey business ‘hexa’, meaning ‘sixth’—and promises domain had been registered in bad faith. to change the warranty on models sold The respondent, calling himself Thomas between January 1 and July 13 from five Marks, said he is the domain’s owner, having Corporation v Nuclear Marshmallows. years to six if Brazil, the host nation, wins acquired it in 2007 to develop a fan site for The panel in Telstra concluded that in the the competition for a sixth time. “the well known cinematography grip Kurt circumstances of that case, non-use of a Rimmel”. domain name did demonstrate bad faith Getty gives half its images Richard Lyon, who ruled on the January 20 registration and use. away for free dispute, which was published 10 days later, But Lyon said he could not rely on Telstra, Online photograph supplier Getty Images explained that Colman has been found guilty which had found that the complainant’s has released around 33 million photos from of cybersquatting in four reported UDRP trademark has a “strong reputation and is its 60 million-strong portfolio for free. decisions. widely known, as evidenced by its substantial With a new embedding tool, website But, Lyon said, the evidence is “insufficient use in Australia and in other countries”. owners, bloggers and social-media users to conclude that Mr Colman is behind this Lyon said: “The respondent in Telstra resided can share the images for non-commercial registration”. in Australia, and the panel, a professor at an purposes. People on sites such as Twitter He said the respondent had submitted a Australian law school, found the domain name and WordPress are expected to benefit. statement signed by Tom Marks, which said: at issue was found to be ‘widely known’ there But embedded images will credit the “I can confirm that I have at no time had as the principal brand of the nation’s dominant relevant photographer and link to Getty’s any business relationship either formal or telecom provider. website, allowing them to be licensed informal, oral or in writing with Mr Peter “The same cannot be said of the disputed commercially. Colman.” domain name in this case. Although long a It is the first time Getty has opened up its But Lyon said he is “troubled by the possible brand and registered trademark, ‘Rimmel’ database for free. cyberflight, concealed identity, unexplained has not achieved the same sort of everyday Shots of US president Barack Obama and ownership transfers, and incomplete recognition even in its home country, the UK,” former president John F Kennedy are some information furnished to the registrar”. Lyon claimed. of the newly-available images. “Such monkey business does, as the Despite rejecting Coty’s complaint, Lyon said complainant asserts, raise a suspicion that the the company “is not without recourse”. Getty opens up photo shop respondent has been less than candid with the “Mr Marks has provided an address in the panel, and that the omissions are material to UK, and the registrar [in this case] is located this dispute. The policy, however, requires the in the US. The courts in those jurisdictions panel to act on the evidence, not suspicion or allow disclosure and discovery that should suggestion.” enable the complainant, should it choose to do Coty’s main argument for finding bad faith so, to probe further into the ownership of the in the case relied on a case called Telstra disputed domain name.” n

www.worldipreview.com TBO Newsletter 03:14 News 13

ICANN gTLD auctions set for this summer

ICANN will begin hosting auctions to settle There are more than 200 remaining contention 2015, but said the schedule could be changed. duplicated bids for gTLDs on June 4. sets, with duplicated bids including .poker and The first of 10 planned auctions will start at Auctions are seen as a last resort for .merck. Private actions have already settled 13.00 UTC (universal time) on June 4. some disputes. resolving “string contention sets”—in which The auctions, run by Power Auctions LLC, will more than one company has applied for ICANN plans to auction 20 gTLDs each be conducted online. Each auction will have a a gTLD. month, running from June this year to March number of rounds, using an ‘ascending clock’ format. Each round will have a start and an end time, between which bids must be submitted. The results of each round will be posted during the break at the end. Before the auctions begin participants must submit a deposit, which forms the basis for their bidding limit. If the deposit is less than $2 million the bidding limit will be set at 10 times the deposit; if it is $2 million or higher, the threshold will be deemed “unlimited”. ICANN has notified all applicants that are eligible for auction and they must confirm their participation within 28 days In a private auction in February this year, gTLD applicant Top Level Domain Holdings gTLDs up for grabs said it won .wedding and .green at a combined cost of $2.23 million. n TMCH sends more than 500,000 cybersquatting warnings

The Trademark Clearinghouse (TMCH) has issued more than half a million pre- registration warnings to internet users, it has revealed. Of the pre-registrations targeted, 95 percent have not become active, the TMCH said. In a statement, it added that this figure showed the “deterrent is working”. The trademark database sends warnings to internet users seeking to register a domain matching a TMCH record. If a domain is then registered, the TMCH warns the relevant rights holder. Earlier this month, the TMCH said it had Trademark owners get the heads-up sent around 17,500 warnings to trademark owners. The latest figures—which show that Jan Corstens, project director of the TMCH, and is the first line of defence and the most 5 percent of warnings have been ignored— said any trademark owners that have yet to cost-efficient way before taking any litigating would suggest that around 25,000 notices record their marks in the database should step,” Corstens said. have now been sent to rights holders. “come forward as soon as possible”. To date, fewer than 70 of about 1,400 new The TMCH, which has been open for a year, “Together with the URS (Uniform Rapid also revealed that it contains more than Suspension System) and UDRP, the TMCH gTLDs are live. Around 350,000 registrations 28,000 trademarks. completes ICANN’s right protection toolbox in those domains are believed to be active. n

www.worldipreview.com 14 big interview: New gTLDs TBO Newsletter 03:14

www.worldipreview.com TBO Newsletter 03:14 big interview: New gTLDs 15

Widening the net

Dot Shabaka is operating an Arabic-language generic top-level domain, the first in a non-Latin script. TBO spoke to general manager Yasmin Omer about why the project is so important.

f you’re an Arabic-speaking internet trademark attorney in Australia but a native user, the chances are that your online Arabic speaker and now a Middle East resident. experience could be described as second “To us it was a no-brainer: it’s a project of class: you rely on search to navigate passion that allows me to give back to the the web and there are few top-level domains I community, providing a tool to those who (TLDs) in your language. If you’re an English speaker, on the other hand, using the internet have been previously marginalised by the use is easy—it speaks in English—and that’s of English on the internet,” she says. something you take for granted. There are already Arabic domain names So says Yasmin Omer, general manager of Dot representing countries such as Qatar and the generic United Arab Emirates, but they are targeted .ةكبش Shabaka, which is operating the TLD. Pronounced ‘shabaka’ and meaning ‘web’ only at residents of those nations. In contrast, domain is not restricted to a country .ةكبش in Arabic, it was the first gTLD in a non-Latin the script to go live on the internet. or even the Middle East region itself—it’s “The internet in Arabic is referred to as aimed at anyone who speaks Arabic. ‘shabakat al internet’, which means the ‘internet “It really is about the language,” Omer explains. web’, so there is an instant recognition between “There are Arabic-speaking people are all over ‘shabaka’ and the internet, to the point where the world, and while we are based in Dubai people now just say ‘shabaka’ to refer to the and focused on the Middle East region, we internet,” Omer explains. are targeting all Arabic-speaking internet Aimed at “reinstating” the use of Arabic online, the users. There are about 300 million—it’s a huge project has personal roots for Omer, a registered market.”

www.worldipreview.com 16 big interview: New gTLDs TBO Newsletter 03:14

Because English is written from left to right East region that is able to provide a full end- but Arabic flows right to left, Dot Shabaka to-end Arabic interface. Registrars need to accepts website registrations only in Arabic, be accredited to ICANN and sign the 2013 as “otherwise, from a usability point of view it agreement, which is quite new, so there is a wouldn’t work”, says Omer. As a result, Western certain level of education ICANN needs to do,” brands seeking to protect their trademarks Omer says. under . had to submit them in Arabic to It’s very important to build an Arabic-only“ ةكبش the Trademark Clearinghouse (TMCH). interface, and our biggest challenge is that we sunrise period was open, don’t have that right now. Even if we were to have ةكبش When the from October to December 2013, there were it in the next six months, we still only have about about 17,000 records in the TMCH. Of those, two or three [Arabic] gTLDs in the pipeline. about 20 were in Arabic, says Omer, which There is a huge need to build capacity in the “hugely reduced the number of registrations region and I want to help do that,” she says. we could get”. It is a noble aim, you might say, and Omer Five brands including Google, Rolex and “a claims that by tapping the “tremendous” couple of others” then took the next step of potential in the Middle East, Dot Shabaka and sunrise, others can cement a strong Arabic identity in ةكبش registering their marks in the she says. the region. “The TMCH wasn’t really promoted locally, “Obviously we need the support and so it was a combination of the market and a understanding of the regulator (ICANN) and marketing problem,” she explains of the lack of governments, but we need to step up and build brand registrations. capacity because if we don’t we won’t own the The sunrise period was a mandatory rights- region—someone else will. The potential is protection mechanism (RPM) for all gTLD there, and someone else will definitely come in registries to observe, but some registries have and fill that gap.” gone further by adopting additional tools. Dot Of course there are other motives behind Shabaka, however, has not followed this trend, this drive to build capacity—financial ones. with Omer saying the existing mechanisms for Without the support of its sole audience, the dealing with cybersquatting are “robust”. Arabic market, Dot Shabaka would be a failure. She adds: “It’s quite difficult to come up “There are lots “Companies like mine have to make it a with RPMs for an Arabic internationalised success, we have to invest. It’s not an option. domain name (IDN) and it’s quite tempting to of registrars If we don’t invest in it then I won’t be here in a apply other RPMs used by ASCII (American internationally but year,” Omer says. Standard Code for Information Interchange) registries. It’s a completely different market. we still don’t have “The injection of new blood into the domain name industry in the region will lead to “We are committed—it’s in our best interests— a registrar from the building a robust industry; our existence as an to minimising cybersquatting. It’s important Middle East region organisation ultimately depends on it.” to note as well that we might be liable if we consistently engage in behaviour that doesn’t that is able to provide a There are other gTLDs in Arabic, such as but Omer ,(برع) and .arab (يبظوبا) respect the legal rights of others,” she argues. .abudhabi full end-to-end Arabic says that the difference is that .abudhabi is a With the registry now selling domain names geographical term and .arab relates mainly to a to the public, Omer says she is on the brink interface.” culture, not necessarily a language as well. of implementing a “multi-million dollar” marketing campaign. Supporters of the gTLD programme often cite “We made a point not to implement this before “It’s broader than just having a huge number of IDNs as a major justification for expanding the sunrise or the landrush period, because the registrations,” she says. the internet’s address book: they provide new opportunities to hundreds of millions message is too confusing and there were already Building such an “end-to-end” experience— domain, although in its ةكبش lots of obstacles to overcome,” she explains. of people. The starting from the Dot Shabaka registry and infancy, is part of a mission to open up the Broader aims working down to a registrant—requires having internet to Arabic speakers and simultaneously a middle entity, a registrar, to sell domains. build a strong system to support that market. Omer does not have any specific sales targets That sounds obvious, but one of the biggest in mind, because that’s “not how we define With a target audience of 300 million challenges facing Dot Shabaka is the lack of success”. Instead, her mission is to help build people and perhaps years before any major Arabic-only registrars in the market. ةكبش an environment that provides an Arabic- competitors arrive on the scene, the speaking internet user with an “end-to-end “There are lots of registrars internationally but domain may earn Dot Shabaka a sizeable experience”. we still don’t have a registrar from the Middle financial reward for its efforts. n

www.worldipreview.com patpol fullpage'.pdf 1 4/9/13 1:12 PM

CMY

K 18 legal update TBO Newsletter 03:14

With the European Commission’s consultation on copyright underway, Adam Rendle assesses its potential implications for rights online.

In December 2013, the European It is a curious approach to take: seemingly pre- To the extent that significant practical Commission launched a consultation on the judging the consultation’s outcome. It seems problems are identified, the commission EU copyright regime. It aims to ensure that to overlook that digital marketplaces and should allow the solution to match the the copyright system “remains appropriate business models are still rapidly evolving. The problem and be practical rather than and is adapted to the new environment biggest players (eg, Spotify, Amazon, Google, legal (apart from where existing laws, ... ensuring that it stays fit for purpose in etc) have been providing their current digital such as competition law, allow for specific the digital environment”. It left almost no copyright services for a relatively short time administrative interventions). Licensing stone unturned and asked for responses and business models are still evolving, against rather than legislation should, at least in on 80 questions, taking into account issues the short-to-medium term, be a generally the backdrop of piracy undercutting their including cross-border licensing, the preferred way of reforming how the internet offerings. ‘making available’ right, exceptions and operates. private copying. The approach also downplays the significance The premise of a number of the commission’s of the legislative changes the commission Cross-border availability questions is that there are problems with seems to pre-suppose are required. Without The commission asked why it is “not possible how copyright operates in the digital convincing and widespread evidence justifying to access many online content services from environment, and it is asking for examples of reform, the commission should be very wary anywhere in Europe”. Copyright remains and reasons for them. of upsetting the copyright status quo. territorial in the EU, enabling rights holders

www.worldipreview.com TBO Newsletter 03:14 legal update 19

to license services on a territory-by-territory The approach the court has taken to these basis. As a result, a particular member state’s questions is as clear and easy to apply as online service is unlikely to be available “Licensing rather we could hope for, without undertaking a simultaneously in other member states. than legislation substantial reassessment of the nature of the The commission has, in fact, opened an ‘making available’ right, which has not been antitrust investigation concerning the cross- should, at least in proposed and would probably need treaty border provision of pay TV services, which the short-to-medium reform. Legislation will inevitably struggle to illustrates the problems the consultation find a solution that would apply satisfactorily is looking to identify. That investigation term, be a generally and predictably to all factual situations. is assessing the restrictions in agreements between film studios and pay TV broadcasters preferred way of What is less clear from the case law is the that ensure the films licensed by the studios reforming how the extent to which a licence covering one are shown exclusively in the member state member state is sufficient to cover acts in where each broadcaster operates. The internet operates.” other member states. There appears to be a agreements, in the commission’s view, conflict between Svensson, which provides prevent access by subscribers who are located that the making available happens when a outside the licensed territory. While that result might be consistent with new public may access a work, and Football If problems identified in the consultation a wide reading of some of the logic and Dataco, which says that it happens at least are sector-specific and economically and reasoning behind the FAPL/Murphy decision, where that access is targeted. culturally insignificant, legislation applied it should not be introduced without a A single act, which may happen detailed consideration of its boundaries and to all sectors in a blanket way would be simultaneously in more than one member inappropriate. If this were the case, it would implications. A licensed act in member state state, may therefore require licensing more prove very difficult to legislate in a way that is A would, in effect, automatically license the than once (ie, at source where the access is proportionate to, and accurately targeted at, equivalent act in member state B without provided and at destination where the access the identified problems. reference to the rights holder in that territory (who might be different). is targeted). This result appears inconsistent Nevertheless, if the commission does with the nature of the single market. The determine that the problems justify The conceptual and practical implications of commission could therefore introduce legislation, the required legislation could that result are significant. Licensing solutions legislation that says if a single act has been be radical. Resulting legislation might would be better suited to bringing about this licensed in one member state, it should not prohibit the means through which digital result, assuming there is sufficient economic cross-border sales that do not actively target demand for them. The commission should need licensing again in another member the particular territory in which the cross- investigate whether rights holders experience state. However, the commission should be border sale happened—known as passive sufficient consumer demand for cross-border slow to legislate in a way that removes the sales—are restricted, unless those means access to make it worthwhile developing control of a rights holder’s copyright in one were objectively justified. The effect would licensing models that meet that demand. member state as a result of actions taking be an active/passive sales distinction in the place in another. If there is insufficient demand, then it’s no digital copyright marketplace. wonder that rights holders have not developed The two possible legislative developments The following example illustrates how such products for it—why should legislation be discussed above that could conceivably result a reform could operate in practice. If an introduced to meet a theoretical problem, from the commission’s consultation would on-demand movie service were available in especially as that legislation could unpick the need considerable evidence to justify their and targeted at member state A, the rights territorial nature of copyright? introduction and would, if the evidence holders and service providers could not justified them, radically alter how copyright take any measures (contractual, technical or The scope of the ‘making operates on the internet in the single market. otherwise) to prevent a citizen in member available’ right state B from passively accessing that service, The ‘making available’ right is the exclusive It is for the commission to determine provided that citizen accessed the service right that underlies digital copyright whether such an upheaval is warranted in on the same basis as did the citizens in exploitation. The commission is concerned light of the still-maturing online marketplace member state A (for example, by paying the that the right is not sufficiently clear in cross- for digital content. It might be too soon for appropriate fee). border situations. For example, what is covered such a result, without allowing licensed It would also have to be provided that such by the right and where does the act take place? solutions the opportunity to develop to meet passive access did not infringe any copyright The commission’s concerns seem misplaced any concerns and consumer demand. n in member state B if it did not in member and should become increasingly outdated, References are available on request to the author. state A. The service provider could, however, particularly in light of Court of Justice of the be restricted from actively marketing the EU decisions in cases such as Football Dataco Adam Rendle is an associate at Taylor Wessing LLP. service in member state B without a licence. v Sportradar and Svensson. He can be contacted at: [email protected]

www.worldipreview.com 20 case study TBO Newsletter 03:14

The duties of online service providers

Is a host or sponsor of online content obliged to police itself to prevent counterfeiting by third parties using its services? If yes, what is the extent of that duty? And how much is enough? Susan Kayser investigates.

www.worldipreview.com TBO Newsletter 03:14 case study 21

“Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.”

An online service provider (OSP) may refer to an easy and inexpensive means to identify or an e-commerce marketplace, internet service stop the infringement, however, not knowing provider, web host, web designer, or another the specific identity of the infringer will not OSP. The US decisions to date show that OSPs excuse a failure to stop the infringement. that have mechanisms in place to screen or The Tiffany v eBay (2010) dispute was the alert them to direct trademark infringement or first US case to apply the law of contributory counterfeiting—and use those mechanisms— infringement to an OSP—here, the ebay.com have typically been found not liable. website. Addressing the ‘knowledge’ prong, But mechanisms need to be in place the court found that generalised knowledge regardless of any notice of a claim from a that its site was being used to sell counterfeits rights owner—an OSP cannot sit back and was not sufficient. wait for specific notice. Nor can OSPs assist It said: “Some contemporary knowledge of or facilitate counterfeiting by ‘knowingly’ which particular listings are infringing or failing to prevent infringement. OSPs also will infringe in the future is necessary.” The need to ensure that their neutral customer court held that Tiffany failed to show that assistance does not facilitate counterfeiting; sales needs to communicate with the legal eBay knew or had reason to know of specific team—and vice versa. instances of infringement beyond those identified by Tiffany in formal notices of An OSP can be liable for another’s direct claimed infringement. counterfeiting or trademark infringement if it intentionally induces someone to infringe, While Tiffany v eBay may have been the or if it continues to supply its services to first case to apply the law of contributory someone whom it knows, or has reason to infringement to an OSP, it is hardly the last know, is engaging in trademark infringement. word for either brand owners or online A plaintiff must show that the OSP had both platforms. ‘knowledge’ of the infringement, and ‘direct A logical take-away from eBay is that control’ and monitoring of ‘instrumentality’ ‘generalised’ knowledge is insufficient and used to infringe. therefore rights owners must send a notice of infringing activity for every violation. Knowledge The Digital Millennium Copyright Act ‘Knowledge’ of the direct infringement (DMCA) established a notice-and-takedown includes actual and constructive knowledge. procedure that requires copyright owners to ‘Generalised’ knowledge that counterfeiting provide formal notice of online copyright may be occurring is not sufficient. If there is infringement. Many OSPs have created

www.worldipreview.com 136th Annual Meeting Hong May 10–14 Kong 2014

Expand your professional knowledge and grow your portfolio of international clients at the world’s largest and most widely attended trademark conference of the year. And whether you are a newcomer or a seasoned IP professional in Asian markets, the International Trademark Association’s Annual Meeting in Hong Kong presents the perfect opportunity to explore new opportunities in this dynamic and fast-growing region.

#INTA14 TBO Newsletter 03:14 case study 23

“There is some interplay between the ‘knowledge’ and ‘control’ factors. Where the OSP has significant control, less knowledge may be required.”

policies that also require this procedure for “knowingly supplied the services of their B2B had no knowledge of the specific affiliate that trademark claims. Some, relying on the eBay website to thousands of TradeKey members, posted the infringing advertisement. ruling, assume that a DMCA-like procedure offering for sale counterfeit goods in bulk ... Noting the ease with which the company for trademarks is sufficient to insulate them and further assisted members offering for sale could have stopped the infringement—by from contributory liability. counterfeit goods ...”. sending a blast email to all its affiliates—the However, an OSP can be liable for Control lack of knowledge as to which specific affiliate contributory trademark infringement had infringed would not preclude liability. where there is evidence of actual or There is some interplay between the “When modern technology enables one to constructive knowledge of the infringing ‘knowledge’ and ‘control’ factors. Where the communicate easily and effectively with an activity, including willful blindness or OSP has significant control, less knowledge infringer without knowing the infringer’s intentional inducement. A year after the may be required. Where there is specific specific identity, there is no reason for a rigid eBay decision, the Court of Appeals for the knowledge, less control may be required. The line requiring knowledge of that identity.” Ninth Circuit, in Louis Vuitton Malletier ease and cost of preventing the infringement This is consistent with Perfect 10, Inc SA v Akanoc Solutions, Inc, clarified that will be considered by the court. v Amazon, a 2007 case, where the the actual or constructive knowledge (‘reason For example, eBay was spending nearly $20 Court of Appeals for the Ninth Circuit, in to know’) is sufficient to show ‘knowledge’. million annually on anti-counterfeiting remanding to the district court, noted that a Merely implementing a DMCA-style measures, promptly removed reported computer system operator could be hit with procedure for trademark infringement infringing listings, provided seller information, contributory copyright liability if it has actual and solely relying on the rights owner to suspended sellers, restricted cross-border knowledge that specific infringing materials provide notice of direct infringement is not trading for some brands, and “consistently are available using its system, and can take sufficient when an OSP has ‘reason to know’ took steps to ... develop anti-fraud measures simple measures to prevent further access. about infringement. as such measures became technologically While the law defining how OSPs need In Chloé SAS et al v Sawabeh Info Servs Co feasible”, according to the Tiffany v eBay to respond to infringement claims is still et al, filed in May 2011, six luxury brands decision. eBay’s efforts and expenditures to evolving, it is clear brand owners do not sued tradekey.com (TradeKey), the second prevent counterfeiting clearly influenced the bear sole responsibility for policing online largest business-to-business (B2B) website court’s ruling. infringement. OSPs that do not take in the world, for contributory infringement. In Akanoc, a case in 2013, the court found affirmative steps to prevent infringement are The brands did not send notices of claimed that the defendant, a web hosting company, likely to face liability for the actions of third- infringement to TradeKey, which argued that had direct control over the ‘master switch’ that party infringers who use their services. n it could not be liable without a formal notice. kept the websites online and available. In 1-800 The views expressed here are those of the author In October 2013, the US District Court Contacts, Inc v Lens.com, Inc, another case and not Jones Day or any of its clients. References for the Central District of California from 2013, the Court of Appeals for the Tenth are available on request to the author. entered summary judgment in favour of Circuit held that a company could be liable for the six luxury brands, finding that they had the infringement of a competitor’s trademark Susan Kayser is a partner at Jones Day. She can “conclusively demonstrated” that TradeKey by its affiliate’s advertising, even if the company be contacted at: [email protected]

www.worldipreview.com Your website no longer has to be a dot com or dot org anymore – it can now be dot whatever you like, this is the biggest shake up since the internet began.

Visit thedotbigbang.com and nd out why this is such great news for your business and your brand. for your business.