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LimeGreenIP News

Adblocking reloaded: No unfair competition, says German Supreme Court

Germany’s highest civil court signs off on the business model behind AdBlock Plus

The popular adblocking software AdBlock Plus, and the underlying business model of Eyeo GmbH, do not fall foul of German unfair competition rules. On 19 April, the German Federal Supreme Court (BGH) handed down its landmark ruling on the legality of adblocking (BGH, file number I ZR 154/16). Given that AdBlock Plus is highly popular throughout the world, the decision will have repercussions for online advertising and for publishers of online content far beyond the borders of Germany.

If you missed our previous blog posts on the adblocking battles raging in Germany since 2015, you can catch up here.

Online advertising vs adblocking

Both digital advertising and its counterpart, adblocking, have been on the rise for years. Revenue from digital advertising has been forecast to grow by some 12 percent annually, to nearly 240 billion USD in 2019, according to PWC. And the flip side of the equation: According to the 2017 PageFair Report, 11% of the global internet population is blocking ads, and those numbers are increasing. Researchers expect that even if content publishers took all available countermeasures, adblocking would still cost them 16 billion USD globally by 2020. Should they take no action, these losses could increase to as much as 78 billion USD, says Ovum, the research arm of Informa Group.

In our digitally driven economy, the business stakes are clearly high. Just as publishers and advertisers vye for the attention of internet users, adblockers meet conflicting demands to be spared from overly intrusive and annoying ad content. Today, adblocking features are available for all major browsers – either inbuilt or available as add-ons, such as Adblock Plus. By and large, users are increasingly unhappy about the ways that advertising can affect their online experience; and by activating adblocking, they take action to change that.

The German position: Free and fair competition Continue Reading

EU: Cross-border parcel delivery – Council approves final text of regulation

The Digital Single Market, as pushed forward with increasing speed by the European institutions, does not end with the click of a “purchase” icon. Goods ordered and bought online need to find their way to the purchaser, be it a consumer or a corporation. This is why the Commission, as part of its overall DSM strategy published a draft regulation on cross-border parcel delivery on 25 May 2016 (COM (2016) 285). The Commission’s main objectives were to

  • Improve the market’s efficiency through effective regulatory oversight and increased competition, and
  • Improve the price transparency to reduce unjustified tariff differences as well as the prices overall.

On 15 March 2018, we reported that the European Parliament had adopted a final version of the new regulation.

Meanwhile, the Council has also concluded its considerations. It approved the Parliament’s amendments and thereby the final text of the regulation on 18 April 2018. The respective press release, includes the following statement from Ivaylo Moskovski, Bulgarian Minister for Transport, Information Technology and Communications:

These rules will make information about different parcel delivery options more readily available – including track and trace services, which are important for e-commerce. The adoption of these rules means that another key element of the EU’s digital single market is in place.

The Regulation will be published in the Official Journal by the end of this month and will come into force twenty days thereafter. According to Article 13 of the new regulation, the Member States will have to adopt “effective, proportionate and dissuasive” penalties, which they should notify to the Commission within eighteen months.


For further information on the Digital Single Market and its practical impact, please visit our website www.dsmwatch.com.

China: Has the dust settled on OEM trademark infringement?

China’s SPC reaffirms that OEM does not infringe on Chinese trademarks

In a recent landmark decision, the Supreme People’s Court (“SPC”) reversed the remarkable appeal decision in the Dongfeng trademark case about Original Equipment Manufacture (“OEM”). The SPC reiterates its view expressed in its November 2015 landmark ruling in the Pretul case, holding that branded products produced through OEM generally cannot infringe upon Chinese trademarks, as long as the goods are not put into commercial circulation within China, and are exported to the trademark owner abroad.

This SPC judgment furthermore cleared up confusion about the “reasonable duty of care” for OEM producers, imposed by the reversed judgement issued in December 2015 by the Jiangsu Higher People’s Court. The reversed judgment came only one month after the SPC’s ruling in Pretul, and held that the respondent committed trademark infringement because it failed to meet its reasonable duty of care in reviewing the status of the marks affixed on the OEM products ordered by the brand owner abroad.

The SPC disagrees that the OEM producer in the Dongfeng case failed to meet its reasonable duty of care, and arrives at a non-infringement ruling, reaffirming that pure OEM use of trademarks is not deemed trademark use.

Please click here to read the full article.

Blockchain podcast interview: “The taxman cometh” to cryptocurrency transactions

Ted Mlynar and Ira Schaefer from our Blockchain-Smart Contract IPMT Working Group return to the Fordham Intellectual Property, Media & Entertainment Law Journal podcast series following their first episode in November 2017.

Ted and Ira open this podcast with a brief account of Bitcoin’s background and give an overview of the current cryptocurrency landscape. They go on to discuss the following issues related to tax:

  • The 2014-21 IRS notification and how the IRS views cryptocurrency
  • Related implications such as tax on trading, mining and capital gains tax
  • Tax strategy for reporting and blockchain’s limitations for record keeping
  • IRS investigations and related customer data protection / access issues within cryptocurrency wallet companies such as Coinbase
  • Government acceptance of cryptocurrecy for payment obligations such as tax payment
  • Development of cryptocurrecy and the question of “forks” such as Bitcoin Cash and Etherium
  • US tax reform and interpretation of IRS regulation of “like-kind” transfers for cryptocurrencies

Catch the podcast here


For more international information, please visit our Blockchain: Linked Ledgers topic center.

China professionalises its IP judiciary: 15 specialised IP Tribunals now open for business

Since November 2014, when the first IP courts were set up in Beijing, Shanghai and Guangzhou, China has been rapidly setting up new specialised IP tribunals throughout its vast hinterland. The IP Courts and tribunals are meant to deal with China’s booming IP caseload, which reached a total of 213,480 IP cases in 2017, an increase of 46% year-on-year. The latest additions to the growing list of IP tribunals are the IP tribunals located in Changsha (in Hunan Province, southwest China) and in Xi’an (in Shaanxi Province, northwest China). China now has a total of 15 IP tribunals (see map below) and 3 IP courts. It is hoped that the establishment of these new specialised IP Tribunals will also improve the quality and professionalism of IP litigation outside of China’s main metropolises.

Note: this map only includes the IP tribunals and excludes the IP Courts.

Unlike the three IP Courts, which are fully independent, the IP Tribunals are established within the existing structure of the provincial Intermediary Courts. The judges constituting the bench of the IP Tribunals are generally picked from the ranks of Intermediary Court judges with at least 10 years of experience in IP litigation.

The IP tribunals generally have cross-regional jurisdiction in first instance IP cases, and their subject-matter jurisdiction essentially comprises:

  • All first-instance civil patent, trade secret and software cases;
  • All first-instance civil trademark copyright, unfair competition, technical contract cases, with claims above a certain monetary threshold;
  • All first-instance administrative IP cases;
  • All first-instance criminal IP cases;
  • Appeals against first-instance IP judgments rendered by district courts within the territory of each Tribunal.
  • All other first instance cases will be brought before the territorially competent district courts.

It is hoped that the establishment of these new specialised IP tribunals will further improve the quality of IP litigation throughout China, where IP owners (in particular foreign IP owners) are sometimes reluctant to bring claims. As the popularity of the specialised IP Courts has proven, IP owners may now feel more confident in bringing lawsuits before the specialised tribunals, which offer better knowledge of IP laws, and increased professionalism.

DSM Watch: the new Copyright Directive – recent developments on the proposed Ancillary Right for Press Publishers

The European Parliament’s Rapporteur on the draft Copyright Directive (COM (2016) 593), Axel Voss, released proposed amendments to Article 11 and its corresponding recitals at the end of March. Mr Voss’s draft, for the shadow Rapporteurs on the Parliament’s Committee on Legal Affairs (JURI), introduces a number of remarkable suggested changes, which diverge significantly from the Bulgarian Presidency’s compromise proposal debated by the Council’s Working Party on Intellectual Property the same day.

The idea itself of an ancillary right for press publishers is being widely questioned following the setbacks experienced by press publishers in Spain and Germany after those countries introduced similar legislation. Those laws are generally regarded as having failed, and the economic basis for the new right has been called into question by the Commission’s own research centre (read our earlier blog on this here). However, and despite the divergent views about the path to follow (we previously wrote about a recent discussion paper of the Council Presidency considering possible solutions), Mr Voss seems committed to proceed with the creation of such a right, despite the fact that he has been quoted (by Julia Reda, also an MEP on the JURI committee) as saying in a February 2018 interview that the extra copyright for news sites was “maybe not the best idea – but I think it’s the only one before us that makes at least some progress.

A new beneficiary on the horizon

The Rapporteur’s latest proposal would see news agencies added as beneficiaries of the ancillary right, along with press publishers (amended Article 1). Recital 31 seeks to justify this addition by stating that news agencies are a stakeholder worth supporting in the light of the threat represented by misinformation (fake news) – not at all the start point for the original proposal of the Commission, in 2016 (see Comment below). His draft also suggests that the ancillary right would reinforce the news agencies’ negotiating position vis-à-vis “the powerful platforms” active in the digital environment.

In addition to the reproduction right and the right of making available to the public (Article 2 and 3(2) of the 2001 InfoSoc (Copyright) Directive), Mr Voss’s draft would amend the Commission’s proposal to include the exclusive rental and lending right (Articles 3 and 9 of Directive 2006/115), as well as the distribution right, within the press publishers’ and news agencies’ new rights.

An inalienable right Continue Reading

UK/US unjustified threats – LimeGreen Live webinar recording

On 10 April we held the second webinar in the LimeGreen Live series which focused on UK unjustified threats. We presented the perils and challenges of pre-action communications and how it may affect your later litigation options are often under-estimated.

The UK unjustified threats regime, which can fix both the writer of a cease and desist letter and their employer or client with liability, has caught many an unwary lawyer. We discussed how you can avoid pitfalls associated with the regime, and position yourself best to take advantage of your IP rights before any litigation can start.

Background – differing approaches across the Atlantic

Even where it is possible to avoid liability by, for example, showing how your IP right is infringed, this can have adverse consequences on your later strategic options in litigation. In the US, avoiding unwanted litigation in the form of declaratory judgment actions may likewise influence your approach to cease and desist communications.

Recent changes to the law in the UK have made it easier and safer to send clearer pre-action communications in the UK or which may relate to the UK, which may include online use that targets the UK. In the US, creative approaches to more traditional cease and desist activity may help you preserve the best possible position and strategic outlook while minimizing the risk of declaratory judgment action.

If you missed the webinar, you can now catch the recording here


LimeGreen Live – Our LimeGreen Live series of webinars provide further insight into some of the topics covered in our Global Intellectual Property Outlook 2018. Please register your interest in further LimeGreen Live webinars here.

European Copyright Reform: Final Vote by JURI postponed to June 2018

The copyright reform is one of the core pillars of the EU Commissions endeavor to create a real Digital Single Market within the European Union. However, despite of the first draft of the new Copyright Directive (COM (2016) 593 final) having been published some time ago (14 September 2016) the EU institutions seem to have difficulties in getting to terms with the final wording.

In Brussels as well as in Strasbourg we see a multitude of differing views on how the new law shall be phrased. This week, the Committee of Legal Affairs of the European Parliament (JURI) has once again postponed its final vote on the respective report determining the Parliament’s view and suggested amendments to the Commission’s draft. Instead of having this on the agenda for the meeting on 23/24 April 2018 it has now been moved to 20/21 June 2018. The report by JURI will serve as the basis for Parliament’s position in the following trialogue with the Council and the Commission.

Issues at stake include in particular the introduction of a neighboring right for press publishers (Article 11) and monitoring obligations for platform operators (Article 13). Only recently a compromise proposal was presented by the Council (see our blog post). A number of other documents that have been leaked over the last few weeks also provide a good insight into the discussion that JURI currently has (compromise proposal on Articles 11 and 13 and other Articles). In order to be able to conduct this discussion thoroughly, the Committee has now time until mid-June.

Trademarks 111: Our 2018 guide to the trademark application process around the world

For the 4th year running, our IP group offers this comparative guide which outlines the trademark application process in 111 countries around the world, broken down into regions, and covering areas such as Application, Examination, Opposition, Cancellation, and Renewal.

 

Click the link below to register for your free copy of the full guide.

 

Trademarks 111

 

 


This guide and other IP reports are accessible on our free platform LimeGreen IP Know-how under Resources

Europe: New Obligations for Platform Operators – Where Do We Stand?

The reform of European Copyright law is at the heart of the European Commission’s efforts to create a true Digital Single Market. The new draft Directive on copyright in the Digital Single Market (“Copyright Directive“, COM (2016) 593) dates back to 14 September 2016. Whilst with many provisions of the draft Directive the final wording has been already agreed upon, the views on how to shape Article 13 of the draft Directive, which is one of the core provisions, are still highly contradictory (see also our previous blog posts here and here). The article concerns the obligation of certain platform service providers to implement protective measures to prevent copyright infringements on their websites. Meshing this aim with the so-called safe harbor principle set out in the eCommerce Directive 2000/31 is causing particular difficulties.

At the end of March, the EU Council took a step forward and issued a compromise proposal on the entire Directive. Almost at the same time, a revised version of the European Parliament’s position as drafted by rapporteur Axel Voss was “leaked”. Both papers appear to suggest a common effort to reach a proposed final text before long, to allow the legislative process to proceed.

Which platform operators are affected?

Both of the currently debated versions restrict the scope of application as the circle of affected service providers is narrowed down. According to Article 2(5) of the Council’s draft, an “online content sharing service provider” should now be defined as:

a provider of an information society service whose main or one of the main purposes is to store and give the public access to a large amount of works or other subject-matter uploaded by its users which it organizes and promotes for profit-making purposes“.

Several exceptions are also planned, including for non-profit online encyclopedias (such as Wikipedia), online marketplaces and Internet access service providers. Axel Voss does however not (yet) list the latter exception.

Communication to the public Continue Reading