Intellectual Property Law in the Information Society

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Emery McDonald
5 years ago
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1 Intellectual Property Law in the Information Society IP Law and Linking and Search Engines Jarle Roar Sæbø

2 Overview 2

3 Search Engines Legal sources Directive 2008/95 Trade Mark Directive (Directive 2009/207 Community Trade Mark Regulation) Directive 2000/31/EC Directive on electronic commerce Directive 2004/48/EC Directive on enforcement of intellectual property rights Joined Cases C to C Google vs Lois Vuitton Case C Interflora vs Marks & Spencer 3

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6 Adwords Various kinds of use? HP buying HP as an adword to generate traffic to HP s sites Competitor buying HP as an adword to generate traffic to competitor s sites Retailers buying HP as an adword to sell HP products Retailers buying HP as an adword to sell competitor s products Competitor buying HP as an adword to slander Third parties buying HP as an adword to sell counterfeits Dissatisfied customer (hypothetically) buying HP as an adword to slander search engine provider (Google etc.) making money regardless. 6

11 Adwords What is the problem? Is Google infringing the trademark of LV by selling LV as an adword? Can Google evoke e-commerce directive on non-liability? Are third parties infringing LV s trademark by buying LV as an adword? 11

12 Trademark Directive article 5 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark. [ ] 12

13 Adwords Google Case 1. There has to be a use of the trademark 2. That use must be done in the course of trade 3. Identical or similar signs and products/services (w/likelihood of confusion) 4. Adverse effect on the functions of the trade mark 13

14 Google Infringing Trade Marks? Did Google infringe the trademarks of Louis Vuitton? Clearly Google operated in the course of trade But did Google use the trade mark in the sense of the Trade Mark Directive? Para 56 use implies, at the very least, that that third party uses the sign in its own commercial communication. Did Google use LV in its own commercial communication? No, and hence Google did not infringe on the Trade Mark of LV 14

15 Adwords Other laws Though Google s sale of LV is not a trademark infringement, it can be a breach against other regulations. Is Google breaching The Fair Marketing Act, and is Google liable for that? Is Google contributing to third parties infringement, and is Google liable for that? What do you think? 15

16 E-commerce directive Object is to ensure free movement of information society services Absence of clear and harmonized liability rules hampers internal market Section 4 therefor harmonizes liability rules for ISSP Establishes principles of non-liability for the following categories Mere conduit Chaching Hosting Rules on non-liability, not on liability These rules of fundamental importance for ISSPs 16

17 E-commerce Directive article 14(1) 1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that: (a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or (b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information. 17

18 E-commerce Directive article 14(1), cont Is Google Adword an information society service? Term defined in Directive 98/34/EC and Directive 98/84/EC ECJ found that Google Adword is an information society service (para 110) Is Google an intermediary service provider? Term discussed in Recital 42 Application to Google discussed in Para 120 Is Google Adword a hosting service as defined in article 14? Article 14 does not prohibit an injunctive relief On the requirement of knowledge and on acting expeditiously 18

19 What about the advertisers? Do advertisers infringe the trademarks of Louis Vuitton? There has to be a use of the trademark Yes That use must be done in the course of trade Yes Coincidence between the markets Liable to have an adverse effect on the functions of the trade mark What are the functions of the trademark? Adverse effect on the advertising function No (para 98) Adverse effect on the function of indicating origin May or may not be the case does the advertiser suggest an economic connection (para 82 90) May or may not be the case 19

20 82 The essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him to distinguish the goods or service from others which have another origin (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28, and Case C-120/04 Medion [2005] ECR I-8551, paragraph 23). 83 The question whether that function of the trade mark is adversely affected when internet users are shown, on the basis of a keyword identical with a mark, a third party s ad, such as that of a competitor of the proprietor of that mark, depends in particular on the manner in which that ad is preented. 84 The function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party (see, to that effect, Céline, paragraph 27 and the case-law cited). 86 Still with regard to adverse effect on the function of indicating origin, it is worthwhile noting that the need for transparency in the display of advertisements on the internet is emphasised in the European Union legislation on electronic commerce. Having regard to the interests of fair trading and consumer protection, referred to in recital 29 in the preamble to Directive 2000/31, Article 6 of that directive lays down the rule that the natural or legal person on whose behalf a commercial communication which is part of an information society service is made must be clearly identifiable. 89 In the case where a third party s ad suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on the function of indicating origin. 90 In the case where the ad, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trade mark. 20

21 Jarle Roar Sæbø

Review. Opinion of Advocate General in Google Adwords trade mark infringement reference. Commercial & Dispute Resolution

Review. Opinion of Advocate General in Google Adwords trade mark infringement reference. Commercial & Dispute Resolution September 2009 Review Commercial & Dispute Resolution Opinion of Advocate General in Google Adwords trade mark infringement reference Advocate General Poiares Maduro has given his opinion in the three