In 2007, the engineering company applied to register a trade mark for OMEGA in the UK in classes 9 and 14 on the trade marks register. Class 14 of the register covered several things including watches. It was the application in that class that the watch company officially opposed with the trade marks registry. Whilst the parties were battling it out on that front, the manufacturing company applied to the High Court for summary judgment against the watch company’s breach of contract for opposing the trade mark application.

The High Court agreed with the manufacturing company. The court said that the words in the original agreement were sufficiently clear and it did not matter which classes on the register the use or application were in – classes on the register were purely for the registry’s administration purposes. It was the specification for which the goods to be used that mattered. The High Court added that someone who had consented to another’s use of the trade mark in a particular way could not later oppose that use or registration, unless they agreed something different.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of Upload-IT, comments: ‘This case shows that courts will enforce trade mark co-existence agreements between businesses that have overlapping brands. Parties should also ensure that the agreements are not specific to any particular class of goods or services but are described in terms of the goods or services themselves. They should also seek to ensure the agreements are future proofed, where possible, because co-existence agreements entered into a long time ago can have an impact many years down the line, as the watch company found out to its cost here.’

But some comedians find this no laughing matter when their livelihoods depend on the uniqueness of their scripts. This is not the first time comedians have threatened legal action against others for copyright infringement.

And one of the biggest comedians to suffer was the winner of the funniest joke award at the Edinburgh Festival Fringe in 2009, Dan Antopolski. His joke was so funny that it ended up posted all over the Internet. He was not given attribution for the gag. If he would have tried to use it again, people might have thought he was ripping someone else off or copying someone else’s material! In any event, it would not have been funny because it had become so notorious that it would not have been funny the second time. Then the only joke would have been on him!

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of Upload-IT, told the Trusted Reviews web site at www.trustedreviews.com the following:

‘If music is shared without the copyright owner’s permission, the copyright owner has the right to ask people who have distributed or obtained the music without their authorisation for money to cover their losses, costs and expenses. Even if the copyright owner is mistaken about some of the alleged infringement activity, there is nothing to stop them sending the letters. Copyright is different from some other intellectual property in this regard, such as trade marks and patents, where people have to take greater care before making claims.

‘Equally, there is nothing to stop anyone receiving these letters from simply ignoring them. It is up to them what they decide to do, as few, if any, of these sorts of actions have actually reached the courts to date. However, if their case does get to court, any person found to have done wrong may have to pay more, which is why some people simply pay up to take away the worry.

‘As frightening as it may be to receive these letters, especially for people who have done nothing wrong, they do not simply have to pay up. It is for the person making the claim to be able to prove what has happened. A recipient of the letter could deny it and question the evidence alleging the infringement. If the case is contested, recipients of the letter may wonder how likely it would be that the person sending them the letter would be prepared to obtain sufficient evidence and attend a trial, considering the relatively small sums involved in fighting each contested case. To be able to feel confident of winning their case, the claimant would either want to be in possession of a written admission of wrongdoing or the hard drive of the computer. 

‘The implementation of the recently passed Digital Economy Act could make the position more concerning for households. The Act allows for the Government to introduce new laws that would put the onus on people with an Internet connection if it can be shown that copyright infringement had occurred through that connection, regardless of who actually did the infringement. This could affect people sharing a home or people whose Internet connections have been used by cybercriminals. Those new laws have not been introduced yet and would have to undergo Parliamentary scrutiny first, but there could well be pressure to do so if the music industry continues to suffer lost revenues as a result of continued peer-to-peer file-sharing.’

To go to the Trusted Reviews article, click here: http://www.trustedreviews.com/multimedia/news/2010/07/19/Ministry-of-Sound-Gets-Legal-on-Downloaders/p1

In this particular case, Portakabin made and supplied mobile buildings. It owned a registered trade mark for ‘PORTAKABIN’, Primakabin sold and leased new and second-hand mobile buildings, some of which were owned by itself and others by other suppliers such as Portakabin. Primakabin sponsored ‘Portakabin’, as well as similarly spelt words such as ‘portocabin’, with Google so that Primakabin would appear prominently in response to a search engine query for those terms. Its advert was headed ‘used portakabins’. Portakabin objected and claimed that this was an infringement of its registered trade mark rights. The case worked its way through the Dutch courts, which made a reference to the ECJ to rule.

The ECJ stated that use of a third party trade mark as a keyword would infringe that trade mark unless the advert made it clear that the advertised goods or services do not come from the trade mark owner or licensee. Where this was not clear, European Union trade mark law would not normally provide a defence on the grounds of a mere description of the goods. Trade mark owners can stop unauthorised use of their marks as keywords if the advertising does not enable average Internet users or only with difficulty to ascertain whether or not the advertised goods or services originate from the trade mark owner.

The ECJ also said that legitimate resellers should have special protection. They could not be prohibited from reselling second-hand goods of the relevant trade mark owner, alongside other goods, unless the sale of those other goods risked seriously damaging the image of the proprietor’s trade mark.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of Upload-IT, comments: ‘This judgment reinforces the recent Louis Vuitton ruling, which can be found here: http://www.mablaw.com/2010/03/european-court-of-justice-gives-eagerly-awaited-ruling-in-google-keyword-search-terms-trade-mark-cases-google-v-louis-vuitton/. Keyword advertisers are treading on thin ice if they sponsor another trade mark to generate search results for their websites, unless they can show that users are not confused as to the commercial connection. Meanwhile, this latest case also enables legitimate use of trade marks by resellers.’

In this case, looking at things in the eyes of a reasonable businessman of BB who received the letter with knowledge of the relevant background, the High Court said that the letter in itself was enough to be construed as a threat. However, that must be examined in the overall context. The letter was part of a negotiating process and was also asserting a strong starting negotiation process in response to BB’s letter. Sending the letter in the terms done by BB in that context was therefore not unlawful in this situation.

The US District Court for the Southern District of New York disagreed with Viacom. District Judge Louis Stanton said: ‘Mere knowledge of prevalence of such activity in general is not enough. The provider need not monitor or seek out facts indicating such activity.’ As such, Google was entitled to the safe harbour protection as it had had insufficient notice of any particular infringements. The ruling said that the case showed how well Google’s take-down facility worked, because Viacom had accumulated 100,000 videos over several months and nearly all of them were disabled the day after Viacom had notified Google of them. Responsibility to find and identify infringing material was the copyright holder’s and not the online service provider’s.

Google has described the victory as important not just for itself but also its millions of users around the world who want to enjoy the benefits that Web 2.0 brings.

This case surrounds an action brought by L’Oréal for trade mark infringement against Bellure. Bellure sold look-alike/smell-alike perfumes – perfumes that looked and smelt like some of L’Oréal’s established fine fragrance brands. This case was not about the fact that the perfumes smelt similar but about the get-up of the infringing articles and use of the brand names in comparison lists. The High Court had ruled in favour of L’Oréal. The defendants appealed, and the Court of Appeal referred questions to the European Court of Justice to answer so as to interpret EU trade mark law.

The ECJ came down in L’Oréal’s favour, particularly that the general get-up took unfair advantage of the more famous brands and free-rode on the coat-tails of that brand. The ECJ also said that using comparison lists could amount to trade mark infringement. Comparative advertising may be trade mark use, but could not be stopped by a trade mark owner if it satisfied the list of conditions in Article 3a(1) of the Comparative Advertising Directive. However, that list included not taking unfair advantage of the reputation of a trade mark, and not presenting goods or services as imitations of goods or services bearing a protected trade mark. The ECJ said that the Directive prevented an advertiser from stating or suggesting in comparative advertising that the product or service was an imitation or replica of something with a well-known mark. That would take unfair advantage of the reputation of that mark. The ECJ said use of a competitor’s trade mark in comparative advertising was allowed where the comparison objectively highlighted differences and did not give rise to unfair competition. Unfair competition arose because the imitator was effectively free-riding on the coat-tails of the more famous brand and benefiting from its reputation, despite no one actually being confused.

The Court of Appeal has applied that decision in its own judgment. It had no option but to rule that Bellure had infringed L’Oréal’s trade marks because it had used the brand names in respect of identical types of goods in advertising and, on the ECJ’s analysis, that was trade mark (rather than purely descriptive) use which could not be justified under comparative advertising law, even though there was no question of customers being confused. Lord Justice Jacob criticised this. He said that the comparison lists merely gave consumers buying perfumes at the lower end of the market an opportunity and informed choice as to which perfumes smelt a bit like the much more expensive branded products. Referring to someone else’s trade mark in that way when no one was confused and simply telling the truth that a product was a much cheaper imitation was a positive thing, he thought. He felt that trade mark law now effectively stopped people from telling the truth about comparing someone’s products with those of their competitors in a non-confusing way, and this could have a chilling effect on being able to compete.

Needless to say, Qualtex thinks the ruling is rubbish. However, at least the result has meant that Henry ended up happy and was able to smile once more.

According to the Voltage Pictures website, the business made $150 million through film sales and acquisitions over the last three years.

Asda has been able to legitimately buy goods from the EU for sale elsewhere in the EU, but as Tesco found out when it lost its battle to stock Levi jeans in 2002 it is an unlawful use of trade marks to buy goods from outside the EU for sale in the EU unless the brand owner has agreed to this.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘Umbro could be in trouble if they are found to be abusing a dominant position in the market by refusing to supply customers and this keeps the price artificially high for consumers. However, it may be that Asda has sold the shirts at low or negative profit in order to prove a point and make a case, and that Umbro is merely making a reasonable level of profit.’

• Change copyright law to increase digital trade between Member States of the European Union. The European Commission wants EU citizens to enjoy commercial services and entertainment, but it is concerned that people are being held up by barriers between different countries. It would like to see simpler copyright clearance, management and cross-border licensing. It may also consider having easier electronic payments and invoicing and a simple online dispute resolution system.
• Strengthen data protection laws in order to create more trust when people use online services. Currently, laws applicable to telecoms providers require them to notify customers if there has been a data security breach. The European Commission is considering extending that data security breach notification law much more widely to other sectors, including web sites.

These are early days in the European Commission’s plans, so watch this space to see what actually happens.

Google is also well on the way to gathering enough digital content to make Google Editions really work well. Its Google Books Library Project has so far scanned 12 million books and it hopes to reach 18 million. That Library Project aims to enable people to have the opportunity to scan a massive library of books to search for particular content and see a snippet of that content in context. If users like what they find on the search, they will be able to buy or borrow the book – which Google presumably hopes will be from its digital bookstore.

The Google Books Library Project has proved controversial. Google is in the middle of fighting class legal actions by various bodies of copyright owners. However, assuming those actions are settled, digital books through a good search engine could enable copyright owners to have a greater reach to more potential readers, and the copyright owners could share in Google’s revenues from its service. No doubt the cost of sharing the royalties will be passed on to users, but an electronic database of such a huge library in a very useful searchable form could move the information age on to the next level and be a really useful tool for Internet users.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘This case does not directly affect the UK. However, any case involving the rights and wrongs of web site scraping is interesting because there have been so few of them. Many people, particularly search engines and comparison web sites, scrape other people’s sites. They run a risk of being sued, but the law is not 100% certain in this area as many sites don’t want to have the negative PR of be seen to challenge people’s access to their sites. In Europe, though, Ryanair has been throwing its weight about to try to stop online travel agents from scraping its site which it says contravenes its site terms of use, but there is as yet no definitive ruling that is binding on England.’

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘English courts have not yet ruled on this issue. Although a case like this from Germany or the US will not bind English courts, it may be seen as persuasive. It is an open issue whether search engines’ use of material on web sites is free for them to use for search engine purposes. Copyright arises automatically without a web site operator having to do anything to protect it, and there would ordinarily be no automatic licence for anyone wishing to use copyright material. However, it seems that courts are willing to imply a licence to enable search engines to use web site material in order to facilitate the working of the world wide web.

‘If there is a licence, it can be revoked by the copyright owner, but it is unclear how far the copyright owner would need to go in order to revoke that licence – for example, would it be sufficient for the prohibition to be in clause 39 in the web site terms of use which could be found on the site, or would it be too onerous to expect search engines to have to pay attention to and read all those documents on the web? The issue largely does not arise, because many web site operators are more than happy for Google to take snippets from their sites in order to drive traffic there.’

However, the High Court said that FDL benefited from having database copyright in creating the underlying fixture list. Unlike other forms of copyright which protect any creative work which involves ‘sweat of the brow’, database copyright needs to have the higher standard of constituting the author’s ‘intellectual creation’ in order to benefit from protection. The High Court ruled that in order to determine whether database copyright applied, you had to identify the relevant data at the heart of the database, analyse the work going into the creation of the database by collecting and arranging the data, consider whether the selection and arrangement was the author’s own intellectual creation and particularly whether it involved the author’s own judgement, and ask whether the work was big enough to attract copyright protection.

Those criteria were satisfied here. FDL spent considerable time and money in a long and complex process by which FDL communicated with the different clubs and others (such as the police) and consulted other events to ascertain the possible permutations for holding particular fixtures on particular dates. Although the computer selected particular fixtures at random, there was clearly a lot of intellectual creation expended by FDL in collecting and arranging the underlying data which formed the fixture list.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘This decision will come as a massive relief to anyone who invests a lot of time and money in creating their own data. The 2004 case had cast doubt on the ability of people to protect databases where they spend a lot of time and money compiling the underlying data rather than the database. This case shows that many databases may qualify to obtain database copyright protection even if the separate database right is not available.’

• notify a subscriber (i.e. an internet user) if an internet protocol (IP) address associated with that subscriber (i.e. a person’s ‘address’ on the Internet) is reported by a copyright owner as being used to infringe copyright;
• keep track of the number of reports about each subscriber; and
• on request by a copyright owner, compile – on an anonymous basis – a list of those subscribers who are reported to be copying - if a subscriber passes a certain threshold level to be set in that initial obligations code.

A copyright owner can then, after obtaining a court order to obtain personal details of who a subscriber is in the real world, take action against anyone included in that list.

What is described above is the initial obligations on ISPs. However, if the initial obligations on ISPs prove insufficient to reduce significantly the level of online copyright infringement, under the Act, the government is allowed to impose further technical obligations on ISPs. These would be imposed on the basis of reports from OFCOM no sooner than 12 months after the code about ISPs’ initial obligations enters into force. These technical obligations would require ISPs to take measures to limit internet access to certain subscribers – but these technical measures can only be used against subscribers who meet the threshold for inclusion in a copyright infringement list under the initial obligations. (Technical measures would be likely to include bandwidth ‘capping’ or ’shaping’ that would make it difficult for subscribers to continue file-sharing, but other measures may also be considered. If appropriate, temporary suspension of broadband connections could be considered too.)

To safeguard the interests of consumers, the provisions also require appeal processes to be set up as part of the underpinning codes. These include the right to appeal decisions of ISPs to impose technical measures. Appeals are required to be to a person independent of OFCOM, with a further right of appeal to what is known as a “First-tier Tribunal” in the case of technical obligations. No technical measure can be imposed if an appeal is in the process of being considered.

Watch this space…

They treated their supplies as exempt from VAT on the basis that they were insurance intermediaries and did not register or account for VAT. HMRC issued a ruling that the companies were not within the definition of an ‘insurance agent’ partly on the basis that there was no negotiation with customers – rather the websites provided click through services.

HMRC therefore ruled that they were required to register for VAT and account for output tax on their supplies.

The companies appealed, contending that they were acting as ‘insurance intermediaries’ and that their supplies qualified for exemption. The Chancery Division accepted this contention and allowed the appeal, and the Court of Appeal upheld this decision. On the evidence, the companies were providing services which were characteristic of an insurance broker or agent, and which were vital to the process of introducing those seeking insurance with insurers. Accordingly, the supplies qualified for exemption.

For Labour, they will further change intellectual property law if they win, and they will create a few tax incentives for niche areas such as video game publishers. They would also look to use monitoring and surveillance technology including CCTV and the national citizens database and ID card scheme.

As for the Conservatives, they are committed to making efficiency savings in the public sector, such as stopping the ID card scheme. Crucially for anyone working with the public sector, they are looking to renegotiate large contracts and introduce more oversight and accountability into the public procurement process. They also want to increase the powers of the Information Commissioner’s Office to deal with public authorities that misuse people’s personal data.

This case contrasts with different results in a similar recent case brought against eBay in France by Louis Vuitton. That case is reported here: http://www.mablaw.com/2009/12/ebay-louis-vuitton/. eBay has also had mixed success in other cases brought against it around Europe by the luxury brands. In a case brought by L’Oréal last year in the High Court, eBay was able to show that it was not responsible for counterfeit products sold by its users; but the Court went on to refer questions to the European Court of Justice to rule on whether use of L’Oréal’s brand in sponsored links to direct users to listings for infringing goods on its site constituted trade mark infringement and, if so, whether eBay had a defence under the E-Commerce Directive for acting as a mere host without actual knowledge of the infringing activity. We await that decision from the European Court.

The Bill contains these provisions:

• To allow the Government to make laws that could require Internet service providers to cut off the Internet connections of suspected copyright infringers and impose other technical measures on them. The burden of proof would be on the copyright owner to prove that the Internet user’s connection had been used for copyright infringement, and the Internet user would then have a right to appeal, but he would then have to show that he did not commit the infringing act or he took reasonable steps to prevent other people from committing the infringement via his Internet connection. Any introduction of this provision into law would require further scrutiny from Parliament first. The effects would be severe, particularly for whole households who would suffer because of the actions of one teenager or another person living there. People may also suffer if other people use their Internet connection for unlawful activity without their knowledge.
• The courts to have the power to grant orders to ensure that certain web sites are blocked if they satisfied that the sites have been used or are likely to be used in connection with copyright infringement. However, this new measure can only be introduced if Parliament has approved it and if the Government is satisfied that using the Internet for copyright infringement activities has a serious adverse effect on businesses or consumers and the sanctions are not a disproportionate measure. Blocking a particular site would be reserved for the most serious offenders.
• The right for copyright owners to notify ISPs if they suspect that copyright material has been infringed, and to have the right to receive anonymised lists of the Internet Protocol addresses (ie the web addresses) of the computers at the centre of the notifications.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of Upload-IT, comments: ‘Interestingly, this long-awaited measure for the benefit of the entertainment industry may be a matter of shutting the door after the horse has bolted. In this cat and mouse game, the copyright infringers are already ahead of the game. They may become ever more immune to the measures in this new legislation by increasingly using private networks that do not need a public web site in order to facilitate the file-sharing, and by the use of so-called proxy servers that hide the real identities in order to avoid detection.’

Newzbin provided indexing and search services for the Usenet Internet discussion system. Usenet enables people to upload and view messages on a public bulletin board. Usenet was not designed for big files such as films, which need to be split into thousands of small parts. Any user who wants to see the film needs to piece all those bits together. Newzbin made that process much easier for users. They compiled an index of films, had 250 editors who compiled reports of the films and links to other information about the films, and provided a one-click mechanism that enabled premium paying members to readily assemble the work from its component parts without having to spend days doing so. Newzbin claimed that it was ‘content agnostic’ by indexing the entire content of Usenet with providing links where possible and any unlawful activity was done by a user of the hyperlinks.

The High Court had little time for Newzbin’s arguments. It described terms and conditions saying that its editors must not do any act to enable, incite or encourage any unlawful acts and similar terms and conditions for its users as being ‘entirely cosmetic’ and a ‘superficial attempt’ to conceal Newzbin’s purpose. Newzbin’s functionality and categorisation of content and encouragement given to editors to report films meant it had been aware for many years that copyright in the vast majority of films accessed through Newzbin were being infringed.

Newzbin had authorised the infringement. Authorisation went beyond mere enablement, assistance or even encouragement. It meant purporting to grant a right to do something, and that could be express or implied from the relevant circumstances. The circumstances included the nature of the relationship with the primary infringer, whether material supplied was used for the infringement, whether infringement was inevitable, the degree of control retained by the supplier, and whether any steps had been taken to stop infringement. Newzbin fell foul of all of those criteria. A reasonable member would have concluded that Newzbin purported to have the authority to grant the required permission and had sanctioned, approved and countenanced the copying. Newzbin provided a searchable and user-friendly facility for premium paying members, it must have known what users were doing and took no steps to stop it; instead, any contractual restrictions were window dressing.

Authorisation the infringement was sufficient to have liability to the film industry, but the High Court went further and said that Newzbin had also procured the infringement or had a common design to infringe. It went beyond mere facilitation and extended to being so involved with the infringement as to be jointly responsible. The Court said that Newzbin operated a web site designed and intended to make infringing copies of films readily available to premium members, the service was structured so as to promote infringement and inevitably did so, editors had been encouraged and induced to make reports of films, it had encouraged its members to give advice to each other about how to do it, and it had profited from the infringements.

The Court ruled that there had been a third form of copyright infringement. The facility had enabled Newzbin’s premium members to download the films from a place and at a time individually chosen by them, and when doing so the way in which Newzbin’s service worked meant that it had been actively involved with communicating the copyright work to the public by electronic transmission without permission

It was certainly a happy ending for Twentieth Century Fox and the other film makers and distributors in this case, and they will be hoping that there is no twist in the plot in the appeal courts.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘This result is not particularly surprising. If Newzbin had been able to get away with what they did, it would have been open season for everyone. The case does not alter the best practice advice for genuine service providers on the Internet who do not wish to profit or encourage intellectual property infringement. They should have a good system in place to enable the reporting and rapid takedown of infringing material, and act on it.

‘There is still no reported UK case on whether web sites simply providing hyperlinks to other sites where infringing material can be found but without doing more or otherwise benefiting would be doing anything wrong. However, I’d be surprised if such a service provider was pulled up if they were simply facilitating a service to users and had no control or intention over what their users do.’

In this subsequent case, Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmueller (BergSpechte) owned a trade mark for travel arrangements. A competitor called trekking.at Reisen used particular marks that Bergspechte considered to be too similar to its own registered trade marks to generate paid-for ads using Google’s AdWords service. The case proceeded through the Austrian courts and the matter was referred to the ECJ to rule.

The ECJ has ruled that the EU’s Trade Marks Directive enables a registered trade mark owner to prohibit an advertiser from advertising, based on a keyword identical with or similar to the trade mark through an Internet referencing service (eg Google), goods or services identical with those for which the mark is registered, such that the advertising does not enable an average Internet user without difficulty from ascertaining whether the goods or services originate from the trade mark owner or an entity economically connected with it or instead by a third party. The selection of the keyword by the advertiser was use in the course of trade and in relation to its own goods or services, even where the mark did not appear in the advert itself. It is for the national court to decide whether the signs are sufficiently similar and also whether the average Internet user could ascertain that the advertiser is not connected to the trade mark owner.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘In other words, there is no advance from the Google / Louis Vuitton ruling. We don’t know how the national courts are going to interpret these rulings. Things are still unclear.’

The case arose from luxury goods supplier Louis Vuitton’s concerns over use of its trade marks on Google’s AdWords system by two competitors who were trying to sell competing products and by a third person who supplied counterfeit Louis Vuitton goods. The cases proceeded initially through the French courts and then ended up at the European Court of Justice. The ruling was keenly awaited because of its impact on the ability to protect your own brand and use others using the growing advertising medium that is Google. The ECJ ruled as follows:

• A trade mark owner could prohibit a third party from advertising a keyword identical to its registered trade mark where the advert does not enable a normally informed and reasonably attentive Internet user without any difficulty to ascertain whether the goods or services referred to in the advert originate from the trade mark owner or whether the parties are somehow economically connected. It is for the national courts to decide on each case whether a trade mark’s distinguishing function is affected.
• An Internet referencing service provider (such as Google) which stores a keyword identical to the trade mark and displays adverts based on that does not itself infringe the registered trade mark owner’s trade mark rights.  
• Google also has protection against someone else’s acts in misusing trade mark rights because it is a mere host of the information within the meaning of the E-Commerce Directive and did not play an active role as to give it knowledge over the data stored. The mere fact that Google’s service was subject to payment, Google set the payment terms and it provided general information to advertisers did not prevent Google from being exempt. It would lose that protection, though, if it did not act expeditiously in removing access to the data involved with the third party’s misuse of trade marks.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘This was a long-awaited ruling. Unfortunately, though, the result is not particular clear. Brand owners will be pleased that the ECJ agrees with protecting their brands; Google will be pleased that it is not responsible for third parties who pay Google money to advertise using competitors’ trade marks; and people will be pleased that they can use another party’s brand to advertise on the Internet as long as users are not left in any doubt as to the fact that the parties are not economically linked.

‘On the other hand: brand owners will be disappointed that competitors may be able to free ride on the back of their brand and push up the price that they have to pay Google; competitors will not be clear as to where the boundaries are for using someone else’s brand in search terms; and Google will be left unclear as to whether it needs to take down someone’s use of a keyword upon being told to do so by the brand owner (and failure to take down when it should have done could leave Google without a defence to being an innocent host).

‘The result is therefore somewhat confusing. Who has won and who has lost? It would have been more useful to have had some more guidance such as a clear statement as to whether use of the trade mark term in the result was ok or not. Instead, we will need to await further court rulings to clarify the position which goes to the heart of doing business online. This was a good opportunity for the ECJ to give clarity in an important commercial area, and they failed to do so.’

The High Court ruled that account of profits could sometimes be claimed for breach of confidentiality, but not in this case. It all depended on the circumstances. Duties of confidentiality related to a big range of possible situations. As to whether an account of profits was available as a remedy depended on the particular type of situation and whether it would be just and equitable that the defendant should retain absolutely no profit from that particular type of situation. The nature of a duty of confidentiality could apply in the following big variety of situations:

• Akin to a fiduciary duty.
• Akin to an intellectual property right.
• Arising out of a contractual duty.
• In relation to use of private information obtained from a stranger, and therefore a situation similar to tort.

In this case, there was no fiduciary relationship or intellectual property right type situation and so an account of profits was not appropriate. The relationship was based on a contractual relationship. Therefore, damages was the appropriate remedy rather than V&P having the right to claim an account of profits.

However, the dispute has now turned nasty. YouTube is alleging that Viacom had paid at least 18 marketing agencies to open YouTube accounts with fake addresses, upload its content onto YouTube and ‘rough it up’ to make it look like it had been stolen – so as to make a claim against YouTube.

Viacom had considered buying YouTube before Google did. The law suit commenced soon after. As to who is the goodie and who is the baddie in this thriller, we’ll just have to watch on. The plot continues to thicken. Reality is sometimes stranger than fiction. It all sounds like Viacom could make a good movie about this case itself!

In the High Court action, the Court threw out the defendant’s argument that it was simply using its ‘own name’. Although there was an ‘own name’ defence that could apply to companies as well as to individuals, the defendant did not use its full company name (apart from the ‘Ltd’ bit) as it was required to do to take advantage of this defence but it instead used a much shorter version of its name. In any event, the Court said that its use had not been ‘in accordance with honest practices in industrial and commercial matters’ as it should have known of the existing registered trade mark when starting up.

On appeal, the Court of Appeal has agreed with the High Court ruling, but not with all of its findings. The Court of Appeal said that a company could claim that its trading name benefited from the ‘own name’ defence. Whether it was the company name or trading name, though, the position had to be that the use was in accordance with honest practices. The right to use one’s own name was not an absolute right. Much depended on the trading name adopted and in what circumstances it had been adopted. In this particular case, the use of the same name as the already established brand did not amount to honest practices as the infringer did not already have concurrent rights in the name, so the ‘own name’ defence was thrown out.

Avatar has grossed $2.2 billion worldwide and that figure is still rising. What if another film were to capture the same essence of that film and be released prior to Avatar, or a member of Cameron’s team leaked the script of Avatar on the internet before its cinema release?  20th Century Fox will certainly not be impressed to see their profits dwindle. After all, film-making is big business.

What is a key asset in business? Information.

You accumulate it and nurture it by cultivating personal relationships with customers and place it on a database. You may even create or invent something which can amount to a “trade secret”. Coca Cola, anyone?

But do you protect it? And if so, then how?

The theft of confidential information (i.e. information that has a quality of confidence about it and not in the public domain) does not require hi-tech equipment in order to obtain it – we are not in Mission Impossible and Tom Cruise’s Ethan Hawke does not need to be winched into some hi-tech facility to take the information!

In its crudest form, an employee can take files home and photocopy them or download information onto a disk or USB stick. They may also try and divert business opportunities to a competitor that they hope to join.

 As a business you have mechanisms to protect the information, namely:

1. Ensuring you have the proper contractual documentation: express clauses of confidentiality, intellectual property and restrictive covenants, or have a separate non-disclosure agreement;
2. Rights arising under various intellectual property rights, such as database rights;
3. Implementing practical measures, by having systems in place to prevent the downloading of information on a USB stick.

Whatever industry you are in, competition is a given; but you know what – it has to be fair.

Ask yourselves this: if you were in James Cameron’s shoes, would you be happy if, say, George Lucas made a similar film and was hailed as a ‘visionary’ of the new decade, broke all box office records, made millions in merchandising, and, come 7 March, became “King of the World”?

Identify what your confidential information is and protect it.

For further information, please contact me at krishna.santra@mablaw.co.uk