Archive | 2011, August | (3) posts

Look at the Clouds! It is Lightning – or is it a Silver Lining?

Look at the Clouds! It is Lightning – or is it a Silver Lining?

Outsourcing is no new invention. However, now it has taken to the skies; Apple will launch iCloud, Amazon’s music player is cloud based, and in the US on-demand-services has taken off with successful businesses such as Netflix, Hulu, Amazon, Flickr etc. This week someone predicted the death of the PC! Google has just launched their PC with no software. Everything is now on-line “in the cloud” with no need to store or install software or any information.

So, seen from an IP protection perspective is everything just excitement and glee? Looking in the crystal ball the future may hold bright skies with clouds containing all your business information, day-to-day communication and files. A bit like web based mail. Yet everybody knows what happens, when a mail service breaks down: you have no access and you are dependent on the provider (ISP) to solve your problem. And what happens with you IP-protected stuff? Are you sure that your documents, writings, works of art, trademarks, patent information and all confidential material which you are in the process of securing, is safe? And who bears the responsibility if there is a breach of security – and is it a responsibility that will cover your loss and damage (and perhaps that of your client, not to mention your customers’ loss in confidence in you and your business) sufficiently?

Ultimately, Cloud service is just another word for storage and distribution of computing services and programmes. As convenient as this may be, it also puts a very big emphasis on the relation between you and the ISP; you and your business are wholly dependent on the security of the service, response times, loss of data prevention and recovery and liability. Especially when your ISP is located in another jurisdiction it will be crucial to determine and establish where disputes may be resolved; do you have to go to a court in another country? Further, there is no uniform regulation of ISPs; most will have and change their own rules of contract and change them regularly. As an example one just has to bear in mind how often Facebook has changed their rules for using their service and how the users of Facebook have complained.

Cloud services are probably going to be something that eases the lives of most people and businesses. But as there are no common rules, and as there often are cross-border-relations and no IP-legislation covering responsibilities and rights to stored information, it will be crucial to ensure that your contractual relations with the ISP cover this. Before you enter into any alluring cloud services it will be a good idea to make sure that you are not left with a bit of cloud between your hands if things go wrong.

Thorbjørn Swanstrøm, Attorney at Law

Trademark Infringements in Social Networks

Trademark Infringements in Social Networks

Last year, in 2010, Facebook passed 500 million users. That’s more than the population of USA, Canada and Mexico put together. It is safe to say that Facebook and other social networks are very powerful and important tools of communication in many different aspects, affecting most things from your personal social life to world politics. It is also a great tool for a trademark owner to be used in brand building activities.

Most of all, the social networks are inexpensive and very speedy. A web campaign for your trademark usually costs a mere fraction of an ad campaign on TV or in other media. This is good news for the trademark owner but, regrettably, equally good news for the trademark infringer.

On the web, it is not very complicated to set up a site in a manner and quality equal to the trademark owner’s original site. As a consumer it is sometimes impossible to tell the trademark owner from the impostor. This is particularly true in social networks where the trademark owner’s communication sometimes is of a less professional quality than his communication in other media.

Naturally, trademark infringement in social networks is subject to trademark law and any legal action that is possible “in real life” is in principle possible also for the digital world. However, most social networks have their own administrative procedure and Network Administrator to handle the procedure. In order to become a user of the network you need to accept the conditions of the agreement and you are thereafter bound by the regulations.

The Statement of Rights and Responsibilities of Facebook, for instance, provide tools for a trademark owner to report infringement and request removal of infringing content. This regulation provides a quick and inexpensive alternative to court action. Of course, the only result of such action is the removal of the infringing contents, not compensation or damages, but to get the infringing trademark of the net is almost always the top priority of the trademark owner.

If you are on the other side of the administrative procedure, and you feel that content has been removed from your site by mistake, you may appeal the decision.

A trademark owner is often a strong party in “real life” trademark infringements. Often you face an infringer that is a small size entity or a private person and the trademark owner, as a large corporation, has many advantages when it comes to access to legal assistance, financial strength and endurance, media contacts etc. However, in social networks the individual has a possibility to make their voice heard, quickly and at no cost at all. Before you know it, the message of the individual can be spread around the world, sometimes with substantial effect to your image and brand. This needs to be taken into consideration before you act against a trademark infringer.

Lessons to learn for the trademark owner
1) Question your strategy on how to handle infringement
Most successful trademark owners have a good strategy on how to handle trademark infringement. However, in social networks it is particularly important to be flexible and consider that there may be different aspects to each infringement matter and the end result is more important than that you are strict in following a previously set strategy. Maybe your usual standard type warning letter is far too strict and rigid and maybe you need to examine new means of communication with your counter parties. An overall consideration is the speed of things on the web. If you want to stop the infringer, speed is of the essence.

2) Involve the legal department and the communications department
Generally a trademark infringement is handled 100% by your legal department. However, when it comes to social networks your communications department needs to be involved in the process as early as possible so that they can act against the spread of bad will and do so without delay. It is generally very important to be active in the debate. Silence is very seldom golden in social networks and it is important that the brand owner’s version of a matter is heard and presented in a sound way. Therefore, a close co-operation between the legal department and the communication department is vital throughout the process.

3) Pick your fight and accept that you are not always in control
Naturally, you need to make sure that you act strongly against infringement that is clearly of detriment to your brand. However, cases where you have a little to gain and risk a lot of bad will should be dealt with only after careful consideration and sometimes even left alone. In social networks, you risk a lot of bad publicity if you act unduly rigid and formalistic.

4) Stay true to your values and keep you promises
A good way to avoid criticism and negative campaigns is to be very careful about the values and promises that are incorporated in your brand and to stay true to these values and keep the promises. This way, you can stand tall when you enter debates involving your brand in social networks. Sooner or later, my guess is that you will have become an active user on behalf of your brand.

Kristina Fredlund, Attorney at Law, European Trademark Attorney

Playing the system: the annoyances of Russian utility models

Playing the system: the annoyances of Russian utility models

A fact: A Russian utility model must be new over all available written information. However, it is valid even if it relates to a product that was publicly available outside the Russian Federation at registration (Art. 1351, point 2, Civil Code).

A business recipe: New products are released on foreign markets. Pick one. Obtain a Russian utility model for the product. Be quick here – a patent application for the product is probably hiding somewhere and will be published within 18 months. Wait for the introduction of the product in Russia, and then let the owner know about your utility model …

The above is a flagrant abuse of intellectual property rights. But since the opportunity exists, there is always someone who will use it. This practice can in fact be observed rather frequently, as well-reputed colleagues have confirmed to us.

If your company regularly introduces new products on the Russian market, you may want to protect yourself against such frustration. Rather than going to court when presented with a fait accompli, it is probably cheaper in the long run to take the habit of creating prior art that invalidates potential utility models registered in bad faith. A published national Russian or Eurasian application (claiming priority from the first application that you file anyway) or a PCT application that has entered the national phase may be all you need to fight an annoying utility model. Whether your application leads to a patent does not matter, and you may withdraw it after publication to save costs.

Russian patent attorneys are aware of the problems associated with the present utility model legislation (see, e.g., 1, 2, 3). Many argue that public use outside Russia should also count as prior art. China made this law change in 2009. Recent achievements in search and translation technology should by far outweigh this extra burden on examining staff.

It is a pleasure to finish by referring the interested reader to the booklet “Patent System in Russia” (2010), which contains concise and up-to-date information on the subject.

Anders Hansson, European Patent Attorney, Awapatent