Saunders & Dolleymore LLP

A New York court has sided with Google (the owner of the video sharing website YouTube) in a claim by Viacom of “massive intentional copyright infringement”. Viacom sued Google seeking over $1 billion in damages and an injunction to prevent further copyright infringement. The case centered on YouTube’s hosting of 62,637 infringing video clips. However, the New York court held that YouTube met the requirements for protection under the Digital Millennium Copyright Act as they swiftly removed infringing material as soon as they were notified of such material.

Google has said that the ruling also applies to a number of similar cases involving The Football Association Premier League in England. 

Viacom has said that it is confident that it will prevail on appeal.

Please contact Andrew Marsden for further information on this case or any issues involving copyright.

Janice Trebble was interviewed on BBC Radio Oxford’s Breakfast Show, by Malcolm Boyden.  You can listen to the interview here: 

http://www.bbc.co.uk/iplayer/episode/p007ys4m/Malcolm_Boyden_27_05_2010/. (It starts about 28 minutes into the show).

As of today (28 May 2010), patent applicants can request accelerated examination in the UK national phase if their international application has received a positive International Preliminary Report on Patentability (IPRP).

In order to qualify for this service, all claims present in the application on entry to the national phase must have been examined and found to meet the requirements for novelty, inventive step and industrial applicability in the international phase.

If you require further information please contact Rupert Knights or your usual conatct at Saunders & Dolleymore LLP.

The European Court of Justice (ECJ) has answered the questions referred to it from joined cases C-236/08 - C-238/08. The answers provided clarify that Google as an ‘internet referencing service provider’ is not using keywords in a trade mark manner and so long as it is not playing an ‘active role’ in connection with the ‘knowledge of, or control over the data stored’ it cannot be held liable for the data which it has stored at the request of an advertiser. The exception being if it becomes aware of the unlawful nature of data and it does not then act expeditiously to remove or disable access to the data.

Essentially this decision appears to be clearing Google’s liability for trade mark infringement in these cases but as this is a complicated and ever developing area there will likely be more twists and turns ahead.

For more information please contact Andrew Marsden at Saunders & Dolleymore LLP.

The European Parliament has voted by a substantial majority in favour of a resolution requiring more transparency in the European Commission’s negotiations over the Anti-Counterfeiting Trade Agreement (ACTA).  ACTA has been controversial, not least because the negotiations between countries have been kept secret, but mainly because it seeks to introduce provisions that are contrary to EU laws on personal and data privacy.  The MEPs have asked for full clarification of clauses within ACTA which, amongst others, allow for warrantless searches by border and customs authorities enabling the confiscation of information storage devices such as laptops, mobile phones, MP3 players etc., and whether the agreement allows for persistent file sharers to be disconnected from the internet.

The European Parliament has stated that it is prepared to take legal action against The European Commission if it does not disclose the details of ACTA.  The European Commission has yet to comment on the passing of this resolution.

The UK Intellectual Property Office (UK-IPO) has released the details of a study conducted by London Economics quantifying the delay in processing patent applications as costing the global economy £7.65 billion each year.  In light of this the UK-IPO and the US Patent and Trademark Office (USPTO) have agreed to work together to develop an action plan to reduce patent backlogs in the UK and US.  The intention is for the UK-IPO and USPTO to utilize each other’s work, where possible, for patent applications that are filed at both offices thereby reducing the amount of time required for examination.  A review into all the areas in which the two Offices can utilize each other’s work is due to be completed by the end of 2010.

As a direct result of delaying filing its case, Internet video service company BLINXX has lost its trade mark infringement case against BLINKBOX.

UK High Court Judge Mr Justice Floyd stated "Blinxx had known since at least 2008 that Blinkbox was providing an on demand media service through its website but had taken no earlier steps to issue proceedings despite that knowledge". "It was wholly unreasonable and completely unjustified for Blinxx to wait to issue proceedings".

Blinxx began operating in 2004, Blinkbox filed CTM applications in 2008 for marks including the word BLINK, Blinxx wrote to Blinkbox but did not issue proceedings until 2010.

This case highlights the importance of taking action as soon as you become aware of infringing activity.

If you require further information please contact Andrew Marsden or your usual conatct at Saunders & Dolleymore LLP. 

The World Intellectual Property Organisation (WIPO) ruled last week that over 1500 domain names held by a German individual should be transferred to the InterContinental Hotels Group (IHG).  IHG brought an action before WIPO under the Uniform Dispute Resolution Policy which allows for one case to be used to settle a number of related disputes. 

Daniel Kirchhof was found to hold around 70,000 domain names, 1500 of which IHG claimed were identical or confusingly similar to its trade marks.  WIPO upheld IHG’s complaint deciding that Kirchhof’s use of IHG’s trade marks to attract internet users to goods and services in competition with those of IHG cannot be considered bona fide use and that he was acting in bad faith.  IHG has managed to take control of a substantial number of domain names, used in a manner that infringed its rights, based on the strength of its trade marks.  

The trial of the man accused of operating the illegal downloading site has begun in the UK Crown Court. Oink at one time had 200,000 members and the site facilitated the sharing of thousands of music albums often before their official release. The operator of the site denies the charges of conspiracy to defraud the music industry claiming that he did not break the law, he claims that it was the members who chose to download the music thereby breaking the law.

In a recent review of Civil litigation, proposals to reform the Patents County Court look likely to be implemented. The proposals make changes to the way in which lower value Intellectual Property cases are heard, the court will be renamed the Intellectual Property Court, hearings will be limited and trials restricted to one or two days. Recovery of costs will be capped at £50,000 for Patent cases and £25,000 in other cases. Financial remedies will be limited to £500,000. If implemented the changes should promote access to justice at a proportionate cost for SME’s and other parties in lower value IP disputes.

The UK Company Names Tribunal issued its first decision in December 2008 finding in favour of The Coca-Cola Company in its case against the company name registration Coke Cola Limited. There have now been over 60 Decisions issued by the Tribunal and although most of these involve well known or relatively famous company names the Tribunal is a useful tool for any company to consider if it encounters problems with an identical / similar company name registration. The circumstances must meet the requirements of the Tribunal which are essentially that a party has a similar name with attached goodwill and that use of the third party company name would be misleading.

The advocate general at Europe’s highest court has given his opinion in the pending cases before the ECJ between Google and a number of brand owners. Somewhat surprisingly the opinion is in favour of Google, backing the sale of adwords which use third party trade marks.

The advocate general has said that Google has not committed trade mark infringement by allowing advertisers to select in adwords, keywords which correspond to trade marks. Such use is not deemed to be use in relation to goods/services as nothing is being sold to the general public. Similarly advertisers do not commit trade mark infringement during this process. Furthermore, the advocate general stated that the links displayed by the keywords do not constitute trade mark infringement.

This is only the latest development in the cases concerning keywords and until the ECJ delivers its judgment, which is expected early next year, the position regarding adwords remains uncertain.