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LimeGreenIP News

CJEU: Online commerce – Provision of contact details clarified

The European Court of Justice (CJEU) has ruled that online sales platforms are not necessarily obliged to always provide consumers with a contact telephone number in order to meet statutory obligations. Other means of communication via which the consumer can communicate quickly and efficiently with the company may also be sufficient.

Background

The plaintiff, a German consumer protection association sought a declaration before German courts that an online sales platform was violating its statutory obligation to provide consumers with an efficient means of making contact. In particular, the association alleged that consumers were not informed in a clear and understandable manner of the platform’s telephone and fax number. According to the association, the callback service that was set up did not fulfil the duties to provide information as many steps were required to contact with the company. It stated that, under German law, a businessperson was obliged to always provide a telephone number before concluding a consumer contract in cases of distance or off-premises selling.

The German Federal Court of Justice sought clarification from the CJEU on whether Consumer Rights Directive 2011/83/EU precludes a provision of national law such as this and whether an online sales platform can rely on other means of communication such as online chat or a call-back system.

Ruling Continue Reading

Privacy and Cybersecurity KnowledgeShare event: Sept 19, London

Join us on Thursday 19 September for our Privacy and Cybersecurity KnowledgeShare in London. We’ll share our latest thinking on the key privacy and cybersecurity issues faced by those with data protection responsibilities within organisations. Our all-day event will cover a lot of ground through incisive quick-fire presentations, Q&A panels and hands-on workshops.

Topics will include:

  • Nailing the basics – Fast insights into key issues such as lawful grounds for processing, people’s rights and DPIAs.
  • Enforcement – What the risk-based approach truly means.
  • Privacy challenges of the digital economy – AI, life sciences, biometrics, facial recognition, IoT and product development.

The workshops will focus on key compliance topics such as incident response, international data transfers, privacy litigation, Brexit, CCPA and e-Privacy.

For the full programme, speaker information and registration, please contact Joshua Prietzel.

We look forward to seeing you!

It’s Official: Foreign Trademark Applicants Will Need a U.S. Attorney

On July 2, the United States Patent and Trademark Office (“USPTO”) published a final rule in the Federal Register requiring all non-U.S. individuals and businesses seeking a trademark registration be represented by a U.S. attorney.  See our earlier posts here and here. The rule comes in response to the uptick in the number of fraudulent pro se trademark applications received by the USPTO; particularly from China.  The new rule mirrors similar requirements in other countries, such as the European Union and Japan.

What do you need to know about the new rule?

The final rule will go into effect on August 3, 2019, and applies to individuals and businesses whose permanent legal residence or principal place of business is outside of the United States.

The rule will also apply retroactively to pending applications filed with the USPTO prior to August 3rd.  Non-U.S. applicants with pending applications who have not retained U.S. counsel will be informed in an Office action that appointment of a qualified U.S. attorney is required.  The applicant will have the usual six-month period to respond to the Office action and identify U.S. counsel.  Failure to comply will result in abandonment of the application.

Additionally, U.S. attorneys representing clients in trademark matters before the USPTO will be required to confirm that they are an active member in good standing of their bar and to provide information concerning their bar membership, as well as other information.

What Next?

Foreign applicants are still allowed to directly file applications and continue prosecution matters with the USPTO without U.S. counsel until August 3rd.  However, foreign applicants should prepare for the rule change by retaining qualified U.S. counsel to prevent any prosecution interruptions at the USPTO.

CJEU: Sweet victory for well-known trademark against registered design

In its judgment C-693/17 earlier this year, the CJEU confirmed a decision of the GC in design invalidity proceedings, in which the proprietor of a trademark protecting the image of product packaging successfully took action against the filing of a design featuring similar packaging filled with coloured sweets.

Background

The plaintiff manufactures coloured oval sweets and in 2007 filed a Community Design for the packaging shown below for “comfit boxes and containers”.

The intervener at first instance, known internationally for manufacturing sweets packaged in small, transparent boxes, among other products, filed an application for a declaration of invalidity of the design, based on its registered figurative trademark shown below.

The Cancellation Division and the Board of Appeal of the EUIPO granted the invalidity application.

The action to overturn the Board of Appeal decision, brought before the GC, was unsuccessful. The GC supported the Board of Appeal in all points at issue under substantive law. Among other things, the plaintiff pointed out that the overall impression of its design filing was determined primarily by its rounded edges, the prominent logo on the label and the coloured oval sweets that can be seen in the photographs included with the filing. In all these points, the plaintiff contended that the design in question differs from the trademark of the opposing party. The GC was unable to find anything legally relevant in any of these arguments. On the contrary: it took the view that the overall impression of the opposing product packaging is not determined by the (rounded) edges and that the logo is not of any consequence, since the label in its basic form – extending from the front of the box over the lid to the back – is similar and that the relevant group of consumers are generally not expected to pay much attention to confectionary packaging. The court found that the fact that the photograph shows the packaging filled with coloured sweets is also irrelevant as the design was filed precisely only for “comfit boxes…”, i.e. the packaging of the actual product, and not for the product itself.

The plaintiff proceeded to appeal before the CJEU, arguing among other things that the GC had incorrectly treated the trademark as a three-dimensional trademark and not as a pure figurative trademark. In addition, it stated that the court had ignored characteristic design features of the design filing; the coloured oval sweets shown in the photographs and the logos on the product packaging.

Decision Continue Reading

Dutch Court of Appeal gives further guidance on FRAND license negotiations

The Court of Appeal of The Hague has again given guidance on the interpretation of the CJEU decision in Huawei v ZTE and the standards for assessing FRAND defences under Dutch law. In its decision of 2 July 2019, less than two months after its Philips v Asus decision of 7 May 2019 (read our newsflash here), the Court of Appeal awarded Philips another injunction, this time against Wiko. Although it was not in dispute that Philips was entitled to initiate the proceedings because Wiko had initially not acted as a ‘willing licensee’, Wiko also failed to show that it had subsequently become a ‘willing licensee’ and that Philips had abused its powers by not negotiating in good faith during the proceedings.

The Court of Appeal reiterated its opinion in Philips v Asus that the CJEU in Huawei did not issue a strict set of rules: if the SEP holder has not precisely and fully complied with any of the steps, this does not immediately and necessarily imply that enforcing its SEP would constitute an abuse of a dominant position. The CJEU rather provided guidelines for good faith negotiations between the parties about a license.

Wiko did not dispute that it had not acted as a ‘willing licensee’ in the period leading up to the infringement proceedings, as Wiko had not responded to Philips’ notification and standard license offer. The Court of Appeal held that under those circumstances Philips was not even required to make a license offer and that Philips was free to initiate the proceedings.

Wiko finally made a counteroffer ten months later. Wiko then alleged in the proceedings that Philips’ initial offer was not FRAND, that Wiko had become a ‘willing licensee’ and that Philips had abused its position by not making a FRAND offer and by refusing to negotiate with Wiko on the basis of Wiko’s counteroffer during the proceedings.

The Court of Appeal considered that making a counteroffer during the proceedings could at most lead to the SEP holder having to negotiate in good faith with the SEP user, but this cannot lead to the conclusion that the initiation of the proceedings would – in retrospect – constitute an abuse or that the SEP holder would have to suspend such proceedings. This would open the door to delaying tactics by the SEP user. Continue Reading

EU General Court on industrial designs: Porsche 911 car model lacks individual character

This post is a translation from the original on our German blog from June 24 – here

On June 6, 2019, the General Court (GC) declared two designs filed for the famous car model Porsche 911 in 2004 null and void, and thereby confirmed the EUIPO’s decision that the later models of the 911 lack the registrable individual character, since they do not sufficiently differ from the predecessor model already protected in 1996.

Background

A cancellation action was filed with the EUIPO by the Nuremberg model construction company Autec against two designs of the 911 series by the car manufacturer Porsche. Autec essentially argued that the contested designs lacked both novelty and individual character, which would eventually prevent them from being capable of protection. Autec claimed that the design and layout of the newer model would not visibly differ from the Porsche 911 models which have been on the market since the original version of the 911 model from 1963. In particular, Autec referred to two designs already protected in 1996. The EUIPO’s Cancellation Division upheld Autec’s application and declared the contested designs invalid due to lack of individuality. The subsequent appeal filed by Porsche in 2016 was dismissed by the EUIPO’s Board of Appeal.

In the present proceedings before the General Court, Porsche sought annulment of the contested decision and dismissal of Autec’s application for annulment.

Decision Continue Reading

Join us for the latest Innovation Lounge in D.C. on July 17

We are delighted to be hosting the latest Innovation Lounge at our Washington, D.C. office on 17 July 2019. The Innovation Lounge is an associate-driven quarterly networking event highlighting innovative business and technology leaders during an interactive panel discussion. Senior Associate Keith O’Doherty will chair the event and moderate the discussion.

The panel is comprised of:

Please register here. If you have any questions, please reach out to Keith O’Doherty or Tara Hanley.

EU Advocate General Opinion in Spedidam: rights of performers

On 16 May 2019, the CJEU Advocate General delivered his opinion in Spedidam, following the request for a preliminary ruling from the French Supreme Court on whether the French legal framework allowing the French National Audiovisual Institute (“INA“) to use the performances of performers without their written agreement is in compliance with European law. The Advocate General concludes that a presumption of a license may, in principle, comply with EU law but an implied transfer of rights would not.

Existing derogation in favour of the INA

The INA is a commercial State body which is responsible for conserving and enhancing the audiovisual archives of national broadcasting companies.

Pursuant to Article L. 212-4 of the French Intellectual Property Code, the signature of a contract between a performer and a producer for the making of an audiovisual work implies the authorization to fix, reproduce and communicate to the public the performance of the performer.

Faced with the difficulty, if not impossibility, of finding the employment contracts entered into with the performers at stake or of identifying and seeking written authorization from the performers or their successors in title , Law No. 2006-961 of 1 August 2006 on copyright and neighbouring rights in the information society enabled the INA to derogate from the exclusive right of performers, in particular by authorizing the associations representing performers to conclude agreements setting the conditions for the use of the performers’ performances in the above-mentioned archives and the related remuneration.

In this context, successors in title of a performer sued the INA for having commercialized, without authorization, videograms and a phonogram reproducing this performer’s performances which were broadcast by the national broadcasting companies.

On 11 July 2018, the French Supreme Court held that, according to Article 5 and Recital 32 of Directive 2001/29/EC (the “InfoSoc Directive”), Member States may provide for various exceptions and limitations to the reproduction right and the right of communication to the public of performers in certain limited cases, which do not include the INA derogation framework. It therefore requested the CJEU to rule on compliance of the INA’s derogation framework with EU law.

The French Supreme Court considered the solution adopted by the CJEU on unavailable books according to which, even if a directive does not preclude national legislation from pursuing an objective in the cultural interest of consumers and of society as a whole, the pursuit of this objective and of this interest cannot justify a derogation to the protection that authors are ensured by that directive (ECJ, C-301/15, Soulier et Doke, points 29 and 45), which is not provided for by EU law. However, it considered this solution is not transposable to the present case.

Implicit consent to a transfer, no; implied licence, yes Continue Reading

Pirates of the Caribbean copyright suit must walk the plank

The Central District of California recently sank a copyright infringement lawsuit against the Walt Disney Company’s Pirates of the Caribbean film franchise, finding that numerous elements of the Plaintiffs’ allegedly similar screenplay were either lifted directly from the eponymous ride at Disney’s theme parks or constituted unprotected scènes-à-faire common to all tales about pirates.

Disney’s film Pirates of the Caribbean: The Curse of the Black Pearl was an instant blockbuster when released in the summer of 2003 and spawned a franchise of four more feature films chronicling the adventures of Jack Sparrow, Captain Barbossa, and other swashbucklers. Disney developed the concept for the franchise from its wildly popular “Pirates of the Caribbean” theme park ride, which debuted at Disneyland in 1967. In August 2000, Disney had allegedly received – and turned down – Plaintiffs’ script for a film about the pirate Davey Jones and his quest for treasure on the high seas. Plaintiffs titled their screenplay “Pirates of the Caribbean.”

Plaintiffs sued Disney for multiple counts of copyright infringement in November 2017, claiming that Disney’s films copied their screenplay. On May 13, 2019, the court dismissed these claims with prejudice.

Applying the Ninth Circuit’s “extrinsic test” for determining substantial similarity, the court focused on “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events” in the Disney films and the allegedly infringed script, comparing “not the basic plot ideas for stories, but the actual concrete elements that make up the total sequence of events and the relationships between the major characters.” Noting that “scenes-à-faire, or situations and incidents that flow necessarily or naturally from a basic plot premise cannot sustain a finding of infringement” and must be disregarded, the court found no “articulable similarities” between the dueling versions of Pirates of the Caribbean.

Continue Reading

IPMT practice welcomes four new lateral partners

We are delighted to welcome four new lateral partners to our San Francisco and Boston offices – Krista Schwartz, Patrick Michael, Kristin Connarn, and Bob Underwood (officially joining later this month). Our newest additions bring our U.S. lateral hires to six in the span of six months, following the additions of Simon Roberts and Jason Leonard earlier this year.

As first-chair trial litigators based in our San Francisco office, Krista and Patrick focus their practices on IP and technology disputes. Krista handles patent, copyright, trade secret, and complex technology cases for the world’s largest technology companies. Her cases involve technologies ranging from search engines, semiconductors, cellular devices, and medical devices to EDA and operating systems software.  Patrick’s practice focuses on patent, copyright, and trade secret litigation, along with technology-related disputes. He has litigated technologies ranging from integrated circuits, electronic design automation, software, semiconductor fabrication processes/tools to computer networking, and medical devices.

Kristin and Bob, based in our Boston office, are known for working with life sciences and biotech companies on their most cutting edge technologies and innovations. Kristin focuses her practice on life sciences patent prosecution, portfolio development and management in the biotechnology and pharmaceutical sectors. She has previous experience as a research associate in the Cancer Bioscience and CNS groups at AstraZeneca R&D Boston. Bob, who will join the firm later this month, helps clients achieve business objectives by drawing on his extensive experience establishing U.S. and international IP rights, and identifying and evaluating third-party IP risks. He focuses his practice on the life sciences and chemical industries.

Welcome to Hogan Lovells, Krista, Patrick, Kristin, and Bob!

For official press releases, click here for San Francisco and here for Boston.