Posted by Adrian Sertl on Thu, May 20, 2010
Every four years the eyes of the world are on a 110 metre by 75 metre patch of grass as the best footballing nations of the world take to the pitch in the hope of lifting the FIFA World Cup Trophy. There were nearly 30 million (non unique) viewers of the 2006 World Cup held in Germany and it would be a good bet that there
will be somewhere around the same number watching this time around as the event makes its hosting debut on the African continent. With those kinds of TV numbers being thrown around FIFA's official partners and supporters who have spent large sums of money to acquire the advertising rights to this event are going to need assurances that no one, knowingly or not, encroaches on these exclusive Intellectual Property rights.
Now having been recently involved in monitoring I.P. rights for a different worldwide sporting event and being a lifelong supporter of the game of football, I was instantly intrigued when I saw the January/February issue of the World Intellectual Property Review had an article outlining the steps that FIFA was taking in order to keep their partners' I.P. rights exclusive; the focus here was mainly on combating "ambush marketing". The crux of the article is that in addition to having to build FIFA approved stadiums to house the matches, ensuring the necessary security for the participants, officials, and spectators, and constructing the infrastructure needed to make everything run smoothly FIFA mandated that the South African government would need to have preventative and punitive measures in place in case any of the official partners' I.P. rights were to be violated.
According to the article, the World Cup falls under the category of a "protected event" as laid out in Notice 683 of 2006 of the Government Gazette). This means that all of the provisions in Section 15 A of the Merchandise Marks Act of 1941 can and will be applied to any case of I.P. violation throughout the full duration of the tournament; from the 11th of June 2010 to the 11th of July 2010.
Since I've dealt somewhat with Intellectual Property rights in this context I can say with a fair amount of certainty that there is a lot of grey area when it comes to things like fair usage. Some people will genuinely attempt to profit from ambush marketing whereas others will unintentionally infringe. While there are what FIFA calls opportunities for local businesses and traders, they must make sure that they are not in violation of any of the paid sponsors' I.P. rights. In FIFA's own words:
The rights protection programme is aimed primarily at tackling organized ambush marketers, counterfeiters, and unauthorized traders, all of whom seek to profit from an event to which they have not contributed.
As of the writing of the article there have only been a handful of cases of I.P. violation that FIFA has needed to deal with, most of which were settled out of court. One such case of ambush marketing that occurred after the article had gone to print involved South African airline kulula, who ran an ad campaign stating that they were the "Unofficial National Carrier of the You-Know-What". That in and of itself may have been tolerated but when the airline used South African flags in conjunction with football imagery, FIFA stepped in and demanded the cease and desist of the campaign.
We can probably expect the cases of ambush marketing to increase as the event draws nearer; I am reminded of the story of the supporters of the Netherlands national football team in 2006 that were forced by game-day officials to watch a match in their underwear because they had worn orange lederhosen that were sponsored by a Dutch brewer Bavaria, complete with corporate logos and all. Since Bavaria was not an official sponsor of the World Cup, the officials confiscated the pants and the supporters were out of luck. You'll all be happy to know that Holland won the match so at least the supporters had something to cheer about, even if it was a little breezy in the stadium that day.
Posted by Rosemary Brkopac on Mon, Apr 19, 2010
Brand owners and eBay shared many a court date throughout the Aughts. In Europe, the online platform was besieged by lawsuits in France, Germany, the UK, Spain and Belgium by luxury brand owners l'Oreal, LVMH, Hermes and Rolex, while on this side of the pond a high profile case launched by Tiffany in 2004 played out in the U.S. At the end of the decade the outcomes of the cases were mixed. In France in 2008 eBay lost two cases; one to Hermes and the other to LVMH. The French courts decided in favour of the rights owners, with eBay order to pay Hermes 20,000 euros while LVMH received 38.6 million euros. eBay was found to be liable for infringement as the auction house was identified as a broker rather than a host of counterfeit goods. A contradictory ruling was made in May, 2009 in the L'Oreal vs eBay case, also launched in France, where eBay was recognized as a host, rather than a broker, and along with that status was entitled to certain exemptions. L'Oreal was found not to have proven infringement by eBay's promotional activities relating to its sale of advertising space. In the L'Oreal Belgium case the Court of Commerce decided eBay had no obligation to monitor its site for counterfeits, while the Rolex decision in Germany echoed the sentiment stating eBay was not the seller of counterfeit goods, and only had the obligation to remove them once notified. The saving grace for eBay is that they do remove auctions of counterfeit goods once notified.
Tiffany ended the decade waiting out a decision of their appeal of a 2008 lower court ruling against them. They had alleged direct trademark infringement, contributory infringement, false advertising, unfair competition and direct and contributory dilution on the part of eBay. The decision was four years in the making, and the District Judge Richard Sullivan said "The court is not unsympathetic to Tiffany and other rights holders who have invested enormous resources in developing their brands, only to see them illicitly and efficiently exploited by others on the 
Internet, nevertheless, the law is clear: it is the trademark owner's burden to police its mark." Tiffany appealed the decision, but a few days ago, any hopes they had of a hail mary breakthrough were dashed as the 2nd U.S. Circuit Court of Appeals agreed with the prior lower court ruling clearing eBay on the trademark infringement allegations.
So, with disparate decisions on the books, is eBay a saint, providing a much needed service to the public with 100 million listing appearing at any one time, or are they a sinner, a willing participant in the sale of counterfeit goods and responsible for tarnishing the image of iconic brands around the globe? In my role at BrandProtect I've had the opportunity to work with eBay and their VERO program for a few years. We continually sweep the site with a view to removing unlawful listings selling replicas of our clients' products as well as listing that use unauthorized copies of their copyrighted images.
Amongst the redeeming qualities I think eBay has are they:
Communicate rules of conduct
eBay has a user agreement that each user must read and accept prior to using the service. The agreement requires users refrain from violating laws, including those concerning third party rights. eBay imposes sanctions such as cancellation of listings and account suspensions in cases where users may have violated these rights. There is a section concerning intellectual property rights that includes information on what users may list and sell
Are compliant with their policies - they close down the culpable -quicky!
eBAY's commitment is that 70-80% of listings are removed within 12 hours and 75% of them removed within 4 hours. My experience has been that once notified, the auction house makes every effort to remove these infringing items quickly.
Are cordial, clear and concise in their communications
Enough said!
As of this writing what IS certain is that Tiffany and eBay will be heading back to court yet again. The appeals court is returning Tiffany's lawsuit to the trial court for further action on a false-advertising claim. On the infringement issue, however, Tiffany Chief Executive Officer Michael J. Kowalski said in a statement "eBay knew that counterfeit merchandise was being sold on its site -- and eBay took no effective steps to stop it. eBay deliberately misled consumers for profit, and unfortunately the court has justified its actions." Tiffany said it may appeal this decision to the U.S. Supreme court. So it looks like this decade may look very much like the last, with trademark owners continuing to battle it out with eBAY.
Posted by Adrian Sertl on Fri, Feb 12, 2010
A short while back I wrote a piece on "Anti-Counterfeit measures and the potential impact to user's web surfing rights". In it I briefly mentioned "a French law" that was created to combat online copyright infringement; it essentially gave ‘infringers' three strikes before their access to the internet would be revoked. The latest version of the bill added that a judicial review is required before any person's internet access can be shut off, which was present in the older versions of the law. This law is now effective in France as of January 1st, 2010, I could not find any cases in which it has been put into practice so far. Then again it has only been a month.
Now while this change is seemingly beneficial to web users, the law can still be viewed as somewhat harsh especially in cases where it is unclear who is actually doing the infringing. A potential infringer could be using an innocent party's unsecured wireless signal to download or seed pirated material or there could be a single party infringing on a machine with multiple users without anyone else knowing. With no criminal or civil trials involved in these instances, at least in France, the possibility exists that innocent parties could have their internet access shut off becau 
se of the actions of others.
Related to this is the issue of making a file available to be shared on a network; does it necessarily qualify as copyright infringement, and in the case of internet users in France could it cause you to lose access to the internet? The owner of the machine hosting the pirated material may be unaware that this is happening at all. Are they, or should they be held responsible?
The debate over this is still ongoing but international precedent seems to indicate that yes they are responsible; the two cases that come to my mind instantly are the Pirate Bay torrent website and of Jammie Thomas-Rassett, which I'll mainly focus on here. In Capitol v Thomas the defendant was sued for copyright infringement for downloading and sharing music. The defence attorneys tried to claim that "Ms. Thomas" computer was hacked", and that the defendant was perhaps the victim in all of this but the judge quickly dismissed it and eventually the defendant was found liable for the damages. Interestingly the case was re-tried in 2009 based on new interpretations of what "making available"should mean. While a similar verdict was reached, the fine was reduced from $1,920,000 USD originally to $25,000 USD. She is currently appealing this ruling.
Using the new HADOPI law and the ongoing Capitol v Thomas case as examples it is fairly obvious that the when it comes to file sharing the onus lies with web users to monitor their own online activities. If you are engaging in these acts you must be prepared to deal with the consequences if and when they arise. It will be very interesting to see how the landmark copyright infringement case in the United States finally concludes and what implications it will have for the future. As interesting will be the first applications of the HADOPI law in France. One thing is for sure, owners of Intellectual Property are making their voices heard, and lawmakers are listening loud and clear.
Oh and one very interesting side note on the HADOPI law. Apparently the font used in the logo by the HADOPI agency "was used without the prior consent of the trademark owner", who created the font for the sole use of France Telecom. If there is a more perfect definition of irony I haven't heard it yet.
Posted by Michael Kiefer on Thu, Nov 26, 2009
Companies when seeing Internet infractions on their brand need to cache a copy if they really want to go the distance. Recent rulings like SP Techs., LLC v. Garmin Int'l., Inc. have made admissible stored images as evidence. Having a service that stores infraction images and the associated forensics makes cases....
http://www.chicagoiplitigation.com/2009/11/articles/inequitable-conduct/internet-archive-website-is-admissible-evidence/
Internet Archive Website is Admissible Evidence Posted on November 13, 2009 by R. David Donoghue
SP Techs., LLC v. Garmin Int'l., Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Sep. 30, 2009) (Pallmeyer, J.)
Judge Pallmeyer denied defendants' motion for summary judgment of inequitable conduct in this patent infringement case. Plaintiff SP Technologies ("SPT") asserted a patent for a touch screen keyboard that cannot be moved, resized or closed by a user. Defendants argued the patent should be held unenforceable based upon the inventor's alleged failure to disclose to the Patent Office twenty lines of code for disabling a close button allegedly copied from a website and used in the patent, as well as certain alleged prior art Palm Pilot devices.
Intent to Deceive
The Court held there were questions of fact as to the investor's alleged intent to deceive the Patent Office as to both alleged pieces of prior art. With respect to the code, there was evidence that the inventor believed there was no need to submit any evidence about a portion of the code because only the entirety of the code was relevant to patenting. Regarding the Palm devices, the inventor believed he had disclosed the Palm Pilots because they were mentioned in articles submitted to the Patent Office.
Materiality
Regarding the allegedly copied code, the Court noted that few inventors could be considered the sole inventor of every aspect of their invention. Almost all inventions include some known components. And defendants did not prove that the single component of the invention represented by the allegedly copied code was central to patentability. The Court did, however, note that it appeared the code was likely copied as it was identical to that on the website and in other manuals, down to a misspelling. The Court accepted as evidence a printout of a copy of the website at issue from the relevant 1999 date. The copy of this website was maintained by the Internet Archive, or the Way Back Machine. The printout was authenticated by an Internet Archive employee that explained the Internet Archive's process of maintaining historic copies of websites.
Similarly, defendants did not present sufficient evidence of the materiality of the Palm devices. Defendants offered only pictures without proof, such as a manual, that a user could not move, resize or close the keyboard.
Posted by Shanna Gordon on Wed, Aug 19, 2009
Who would have thought that a 1-800 number could be registered as a trademark? It is almost to the point that if you are going to acquire a domain name you need to conduct a full trademark search since trademark infringement can be based on unregistered or "common law" rights, which means that a search of the trademark office might not even reveal problems. This is an area that requires great care.
Mrs. Fields' is the cookie company with over 290 locations in the U.S. It holds an incontestable trademark registration in "1-800-Cookies". The Defendants are alleged to have acquired the domain name "1800cookies.com" and are using it to divert traffic to a competing website.
The Defendants have been sued for cybersquatting, federal trademark infringement, common law trademark infringement, trademark dilution, false designation of origin, unfair competition, and common law unfair competition. Plaintiff has requested preliminary and permanent injunctive relief, an order transferring the domain name "1800cookies.com" to Plaintiff, compensatory damages, statutory damages, and treble damages.
Who is watching your marks?
Posted by Adrian Sertl on Mon, Jul 06, 2009
For three decades the Quebec-based
Rhinoceros Party ran candidates in Canadian Federal elections with a campaign platform promising the Canadian public that they would, among many other things, repeal the restrictive law of gravity, put the entire national debt on their Visa, ban those harsh Canadian winters, and count all of the Thousand Islands to make sure that the United States hadn't stolen one during the night. Not surprisingly the Rhinos never managed to win a seat in Parliament however, the same cannot be said for Sweden's Pirate Party; in fact earlier this month they
captured a seat in the European Parliament with over 7 per cent of the popular vote in Sweden. Clearly these Pirates are no laughing matter.
Formed on the first day of 2006 the Pirate Party's political focus is threefold; a complete overhaul of copyright law; total abolition of the patent system; and advocating all people's right to privacy. Although it is not clear whether the issues are specifically confined to Sweden or are to be launched on a greater scope, the fact that the party is now represented in Europe may point to the latter. In addition, that the Swedish Pirates not only advocate, but successfully assist in the creation of overseas Pirate Parties via the internet provides even more evidence of their internationality. How exactly did they manage to gain so much popularity in such a short period of time? The answer may be linked with the popularity amongst young people in Sweden of file sharing websites; the Pirate Bay in particular.
According to a contemporary article, a Swedish research firm estimates that one in every nine Swedes engages, at least in 2006 - it may be more now, in online file sharing. The Pirate Bay, launched in late 2003, as of this writing has over 3.7 million registered users worldwide, with many of these users probably originating from Sweden. So when the Swedish police executed a raid on the Pirate Bay's servers in May of 2006 the reaction from the users of the site was predictably negative; the above article reported that the day after the raid the Swedish police main website was shut down, while one day later the same happened to the Swedish government's page, apparently in retaliation. People felt that the police action was too heavy handed and caused unnecessary collateral damage as there were other websites not related to file sharing hosted on the Pirate Bay's servers that were also brought down during the raid.
The raid caused the Pirate Party's, who are related to the site in name only, ranks to swell dramatically. The immediate political payoff was not noticed as the new party garnered only a rather insignificant amount of votes in the Parliamentary elections of 2006, but the recent trial and conviction of four operators of the Pirate Bay website (they are appealing the verdict) surely played a role in increasing the party's fortunes in the EU elections that were held earlier this month. In addition, Swedish journalist Erik Palm reports that other political parties in Sweden are adopting a more pro-pirate attitude. The Left and Green parties recently voted against implementing the EU's new anti-piracy IPRED law as well the Greens are, in conjunction with the Pirate Bay, creating a fund to aid in paying the legal costs of people charged under anti-piracy laws.
One can only predict how well the Pirate Party will do in both domestic and foreign politics, especially with a platform so focussed as it is. Two things do seem certain however; the support of the rather liberal Swedish youth is rather evident, and the other parties in Sweden would do well to take note that these Pirates mean business. The warning shot across the bow has been fired.