Tag Archives: infringement

Azrights IP One – Intellectual Property Made Easy

 

image_ipone_product_launch

There is no one size fits all when it comes to the actions you need to take to secure your IP. Protecting IP might involve doing some due diligence searches, registering rights, using appropriate documentation, and more. Your IP protection strategy will depend on your business plans, and overall objectives. For example, a business with a product like C-Pen will need patent advice, among other things. On the other hand, an author setting out to write a book, such as JK Rowling of Harry Potter fame,  What JK Rowling Needed to Know About Intellectual Property will need advice on copyright primarily. Both might want advice on trademarks too.

IPOne

So, we’ve introduced a new service: IPOne to offer SMEs the strategic IP advice they need regardless of their business or IP profile. The prices are fixed. We’re working on a tech version of this, which when launched, will give start ups on a shoe string budget access to the IP advice they need before they start up. This will be released later in 2017.

Why we created the IPOne service

We created the IPOne service because clients sometimes asked us for a comprehensive review of their IP position, and we had no specific service offering with clear deliverables to propose to them. Another reason we created the IPOne was that occasionally we noticed businesses that seemed to be focusing their IP expenditure on the wrong IP protection. For example, in one  case, an SME with a successful operation in the EU and USA, with no trademark protection in place at all, decided to  spend a considerable amount of money on filing a US patent for a business process that was unlikely to result in a strong patent, if it succeeded at all. With proper advice this business would have known to get some trademark protection, strategically maximising its budget.

Another reason we introduced the service was when we noticed how many SMEs were registering a trademark without first commissioning any searches, or  using IP without doing due diligence checks.

The problem

Invariably our most popular service is trademark registration. Trademarks have, to some extent, become a commoditized service due to the large number of service providers, many of them unqualified, who offer low cost trademark services. Businesses are even encouraged to believe  trademarks are simple enough for them to draft themselves.

As a law firm we were conscious of the risks clients faced in requesting a single service like trademark registration, when they had a host of other IP issues they were not even aware of. Yet the going rate for trademark registration was insufficient to allow scope for incidental advice on other IP rights.

Whenever it was clear that a client needed to take wider advice, we would highlight this to them. However, as the IP needs of businesses vary so much depending on the business model, IP advice doesn’t lend itself to being addressed in passing. It’s necessary to understand the client’s business model and aspirations in order to give relevant advice.

Intellectual Property also often involves a large element of education. So, it’s time consuming to communicate IP issues to SMEs, and advise on how they should structure their processes to be protected on an ongoing basis. The other problem we had is how to offer a price so clients would know in advance how much they would need to pay for holistic IP advice regardless of whether their business model would require a focus on patents, trademarks, designs, copyright, trade secrets, or database rights.  Giving an hourly rate and estimating the number of hours involved to advise isn’t straightforward to do when you don’t yet know enough about the client’s business model.

Who’s it for?

The IPOne service is for small businesses of fewer than 10 staff, be they pre-start up, early stage, or established. Every business that is aiming to build value or who simply wants to avoid some of the unpleasant consequences that can befall the unwary if they infringe on the rights of third parties, needs the IPOne.

When you have a good idea for a product or service, what you’re doing when you bring it to life is that you’re creating intellectual property. Virtually every decision you make in the early days of a project, from choosing a name, having a website or logo designed for you, writing content, creating a data plan, or taking some other creative action, has IP implications.

If you wait till you’re successful before taking IP advice it can be too late. IP needs to be taken account of early on if you want to avoid the need to undo ill considered actions later on. By then you might have already built something successful, and if its foundations are shaky it could have very serious consequences for you. So if you want to wait to address IP issues till your business has taken off, then consider whether it is possible to make all your decisions temporary ones? If not, it could be too late to leave IP advice till your concept is proven. Prevention really is ten times cheaper than a cure.

What’s different about the IPOne service?

The IPOne service is a fixed price service to give you holistic IP advice. It includes deliverables that SMEs invariably need, such as legal agreements, and a letter of advice, as well as a one to one consultation to ensure you take steps that are appropriate to your unique business requirements. A few key actions will set you up with strong foundations, giving you 80 per cent of the protection you need, short of registering your IP rights. All our IPOne services include advice on the steps to take in order to obtain this wide ranging IP protection on an ongoing basis.

What will clients get at the end of it?  

After you’ve had advice and holistic IP guidance your business can proceed to determine its strategy for securing its IP. Some SMEs may be better placed to obtain a legal monopoly, create new income streams or otherwise use IP to grow profit margins and protect their market share. You will be more able to protect the effort you put into building your business by knowing how to prevent competitors from copying you in damaging ways.

What Next?

The IPOne service responds to a market need for tailored IP advice giving a holistic view on the IP issues pertinent to any small business.

We want to change the way business protects its IP so SMEs are properly aware of the implications of their decisions when implementing their ideas, and know what to do on an ongoing basis to be protected.

IP Law Makes Waves In Piracy

Online Piracy Doesnt Hurt SalesOr Does ItShireen Smith, intellectual property law expert and founder of London based law firm Azrights , has expressed her concern about the ongoing battle the games industry faces over piracy issues.

Writing in MCV (The Market for Computer and Video Games) 4 December issue, Shireen discusses how the digital revolution has bought IP law to the fore of every modern business and how the computer and video games industry is “experiencing an intellectual property revolution.”

UK games companies on average grew by 22% between 2011 and 2013 according to Ukie with digital game sales larger than digital video and music sales combined.  Given the commercial significance of the games market, Shireen believes that the computer and video games industry need to take a more serious overview of intellectual property law.

Commenting on Nintendo’s recent high profile legal breakthrough against circumvention devices, Shireen explains that IP issues are threatening large corporations as well as entrepreneurial firms.

“In an ongoing legal battle, Nintendo has made a breakthrough against circumvention devices with the case reaching Europe’s highest court in January 2014.”

“The ‘first instance criminal decision against the defendant puts an international spotlight on what is the legitimate use of devices such as mod chips, which can have non-infringing uses as well as infringing ones.”

“It is likely that similar cases across Europe will soon follow suit as anti-piracy campaigns continue to grow.  It also means that national courts in all EU member countries have a framework to assess whether security measures are protected – a huge success for the international computer and video games industry.  The high profile nature of the case has EU-wide implications on independent software developers, as well as gamers.”

Shireen, who recently launched her new book Intellectual Property Revolution  also provides some guidance for smaller businesses.

“Entrepreneurial businesses may have some misconceptions regarding the approach to IP law.  The advice in employing an IP expert is the earlier the better.  Nowadays SMEs are exposed to a global audience in ways that simply did not occur in the industrial era.  We have more businesses today than we’ve ever had before.”

“In a market which is constantly flooded with innovative concepts, smaller businesses can find themselves at a serious risk of losing out if IP infrastructure is not put in place.  There is greater risk in both the short and long run as smaller businesses often don’t have the time or resources to overcome a legal setback.”

It is not just the video and computer games market that is effected – the intellectual property revolution is happening across industries.

“In the fashion industry, the Kering group (who own Gucci), have recently challenged Alibaba on piracy issues.  There is also ongoing problems faced by the music and film industries with illegal downloads and streaming.”

Shireen’s MCV article titled “IP law clamps down on pirates” can be found here.

Azrights website

Azrights on YouTube

Azrights on Twitter

Intellectual Property Revolution on Amazon

Games Industry Must Ensure it Takes IP Law Seriously

Facebook users mourning the removal of scrabulousAccording to Ukie , the trade body for the games and wider interactive entertainment industry, the UK games industry was worth over £3.9 billion in consumer spend in 2014 and the sector is expected to grow at an annual rate of 8%.

The games industry is relatively new and therefore 95% of companies are microbusinesses or SMEs.  Leading intellectual property (IP) lawyer Shireen Smith thinks that many of these companies could be at risk of losing out as a result of an IP dispute, if they don’t take the necessary steps to protect themselves.

“If names are chosen without involving a trade mark expert, the business is at risk of losing out.  A poor choice of name can lead to a constant loss of value or difficulty in securing registration either in the UK or in other countries.

“An IP expert should always be consulted at the early stages of launching a new business or product.

“Otherwise, as soon as a new business starts up, the business owner might receive notice that it is infringing on another brand.  This can have serious consequences for those that have invested significantly in their branding and search engine optimisation.  Sadly for some, they don’t have the time or resources to overcome such a setback.”

Shireen Smith, who is the founder of London-based law firm Azrightscontinues to give an example.

Scrabulous was an app, created by two Indian brothers, which allowed people to play a Scrabble-like game online with friends anywhere in the world.  It was a huge hit – attracting 600,000 users per day – when in 2008, Hasbro, the owner of the Scrabble trademark, shut it down because their name suggested to the market that this was a similar game to Scrabble.  As trademark law helps to prevent piggybacking off the success of others’ brand, Scrabble was able to get Facebook to pull the Scrabulous app even though it was extremely popular.

“The founders had even applied to register a trademark for their name, clearly unaware of the wide scope of protection that trademarks give.  Had they taken advice before using the name they would have realised the choice was unwise.

“The fact that their app had gone viral did not stop Facebook from simply removing it.  This paved the way for Zynga to create what is now a highly successful app: Words with Friends.  The brothers’ advantage of being the first to build a Scrabble-like app on Facebook was lost, and we will never know how big Scrabulous would have been today if it had opted for a better name.”

Shireen Smith has recently launched a new book called ‘Intellectual Property Revolution’, published by Rethink Press which is all about how to successfully manage IP assets, protect brands and add value to your business in the digital economy.  It is written in plain English and is helpful for business owners and ‘brand guardians’.

A video explaining more about how the digital economy is changing IP can be found here

 

Azrights website
Azrights on You Tube
Azrights on Twitter

 

Leading IP Law Firm Goes Digital

buying the sucks.com version of your brandIn order to raise the profile of her London-based firm Azrights, her book and the importance of intellectual property (IP) as a whole, lawyer Shireen Smith has put her faith in video.

She enlisted the help of London-based video production company Element 26  to produce an animated film  that explains how essential it is for small businesses to protect their IP.

Azrights specialises in helping owners of businesses in the digital economy to use legal frameworks to create intangible assets.  When properly protected, these assets can often become more valuable than the products or services that the business sells

Shireen Smith said, “Lots of people don’t understand the value of IP because they can’t see it or hold it.  To address this, we asked Nathan Haines, Managing Director at Element 26, to produce a video to increase understanding of this vital area of the law.  In the digital economy, IP is changing rapidly and small business owners need to prioritise it to avoid pitfalls.

“By educating business people of the importance of IP law, the video Nathan pro
duced encourages them to approach Azrights for advice or to read my recently launched book ‘Intellectual Property Revolution’.”

Such was the interest in ‘Intellectual Property Revolution that it was a bestseller in its category on Amazon before it had even been launched and continues to be so a week after the launch.

Written in plain English, it explains to business owners and brand ‘guardianshow to successfully
manage IP assets, protect brands and add value to businesses in the digital economy.

Shireen Smith adds, “The new currency in our digital economy is information, know-how, brands, systems and data. Whether people are building a brand identity, launching a new product or service worldwide, or even a start-up business, they’re also creating intellectual property.

“The value and safety of intellectual property has become more important than ever before.  Do it right and the intangible assets you create could be worth more than the products or services themselves.  Do it wrong and you could miss vital opportunities, have your true value stolen or find yourself on the wrong side of an intellectual property dispute.

“Once IP is on the business owners’ radar, it’s crucial for them to consult an IP lawyer in the early stages.  So often, people in business commit to brand names, website URLs and costly designs before speaking to an IP specialist, only to find that their so-called assets lack value.  The video that Azrights had produced will educate start-up owners before they reach this stage.”

Nathan Haines said, “We’re thrilled that the video we produced has been such a success for Shireen and the team at Azrights.  At Element 26, we believe every business has a special story which makes them unique.  As a company we make it our mission to understand our clients’ objectives by collaborating early on in the process, which ensures that the messages to be conveyed are tailored to their specific target audience, not just any audience.

“When Shireen asked us to work with her on the production of her film, we were very excited because animation is more vibrant and colourful than the more traditional interview-led videos.

“By commissioning a film, Shireen is leading by example and has proven that she really believes in the importance of creating intellectual property.  We are proud that this film will be one of the intangible assets that contributes to Azrights’ ongoing success.”

The video, which explains more about how the digital economy is changing IP, can be found on YouTube here.

 

 

Azrights website

Azrights on You Tube

Azrights on Twitter

Element 26

Intellectual Property Revolution on Amazon

FTC ruling on blog paid reviews

Intellectual Property Value – Do You Need Specialist Skills to Value IP?

What Is Your IP Worth?As intellectual property (IP) becomes more recognised as an asset class, interest in it is increasing – so much so that apparently according to the IPKAT Hong Kong property surveyors have been trying to break into assessing the intellectual property value in a business.

They recently called upon overseas bodies (for example, the Royal Institution of Chartered Surveyors to promote the virtues of having surveyors perform IP valuations.

As the IPKAT says, the question is whether

  1. IP valuation is a sub-category of business valuations or a self-contained professional endeavor; and
  2. (ii) in either case, to what extent must an IP valuation professional understand the legal context of IP rights?

The starting point is to consider what we mean by IP

What is IP?

The term IP is generally associated with registrable rights like trademarks, patents and designs.  However, SMEs also have many non registrable IP issues to consider, such as copyright, know how, trade secrets, database rights, organisational knowledge and more.

Unless an SME takes advice to identify, manage, and protect its IP assets it could be seriously exposed because intangibles are a poorly understood asset class.

There is no one size fits all when it comes to determining a business’s risks and opportunities. Even  two businesses in the same industry, with similar business model, may have different issues to address depending on how they develop their businesses and what contracts and other arrangements they have in place, For one business copyright may be the critical asset, while for another it may be the database or a patent.

They will not necessarily be equally desirable to an investor as their value on exit would be impacted by a number of factors unique to each business.

Why have an IP valuation?

One issue a valuation will consider is whether there is key IP underpinning a company’s competitive advantage. If so, another question is whether that competitive advantage is adequately protected.

Banks and investors may accept IP assets as valuable security to finance an SME’s growth if the business can demonstrate that those IP assets underpin revenues and forecasts, and impact cash flow.

How the strength of the IP asset is critical

A fictional example may help convey how IP works.

Say a company has developed an innovative solution that becomes well known in its industry. That competitors will copy a good idea is inevitable. So, if a company’s asset isn’t protected with a patent or other barrier to entry, it is more vulnerable to copy cats.

However, where there are no patents to protect the product, it is a mistake to assume there is little you can do to prevent a competitor stealing market share. You may not be able to stop them creating similar products but you may be able to protect your competitive position and create barriers to entry through the name you choose for the product.

The name is a potential barrier to entry because it can stop competitors using similar ones to identify their offerings – but only if it is a name that the business can uniquely use.

If the business chooses a generic name (that is, one that describes what the product does, rather than an actual name), the name will not be capable of protecting the company’s asset. This is so even if the company registers that name as a trademark combined with a logo. Such a registration would effectively only protect the logo where the name is generic.

So the upshot is that the business has a product that gives it a competitive advantage. It has a valuable asset, but not as valuable as it would be if the name was capable of stopping competitors stealing market share when providing ‘me too’ solutions.

That not all names are equally effective at containing IP value is not generally well understood

Shifting value of IP

IP value is rarely static. Intellectual property rights can change in value over time for a variety of reasons. For example, when you first patent something, it’s possible you have a unique solution to a problem so that your patent provides a strong competitive advantage. But then as other solutions to the problem emerge, the value of your patent may be reduced. On the other hand, if you have successfully marketed your product, despite your patent becoming less critical to your competitive advantage, your trademark may have gained value as your name recognition has increased.

So, failing to give a product a distinctive name that is capable of functioning as a trademark, or not checking whether other people’s rights might prevent use of the chosen name long term impacts the value that is generated, and that would inevitably depress the value of your IP.

IP value is impacted by the choices you make

The above example is designed to illustrate how the IP in question, or the choices you make impact IP value. You need to be ready to make changes if needs be. However, names are not the sum total of IP. There are so many other issues that impact IP value.

There are a number of IP actions required in order to build value and wealth. Implementing effective contracts is a hugely important, but misunderstood aspect of IP protection.

Because it is never possible to foresee what problems and scenarios might arise for a business in the future, it is prudent to secure its IP rights to the fullest extent, so the business has adequate protection to protects its position in the market.

Therefore, identifying IP rights, and protecting and managing them, is essential for any ambitious business.

Conclusion

Clearly IP valuation is not an area in which surveyors would have appropriate transferable skills.

IP and business are closely intertwined. In practice, you need to take both into account. That is why it requires the combined skills of business and IP experts to get the most effective IP valuation and strategic advice.

In a future post, I will explore the different methods for valuing IP.

Brand and Trademark

Crocodile Wars – Lacoste’s Latest Victory On Brand And Trademark Over Polish Company’s Use Of Caiman Mark

Crocodile War - Logos

Brand and TrademarkBrand and trademark establishment is of central importance to any successful business. Maintaining a brand’s image is essential, and using trademark law to protect business reputation is an important component of that. One way of doing so is through opposition of trademark applications as demonstrated by a recent case between French retailer Lacoste and Polish clothing company ‘KAJMAN’.

The ruling of the EU General Court agreed with Lacoste’s view that there is a risk that the use of the caiman would cause confusion amongst consumers, resulting in a potential loss of prestige. The opposition against the Polish company’s application to register the sign for leather goods, clothing and footwear was therefore upheld.

Confusion can arise as a result of visual, phonetic and conceptual similarity. The Court agreed that from a conceptual perspective there was an average degree of similarity. However, visually, any such likeness was in fact very minor. Despite clear differences between the two logos, it was nevertheless necessary to appreciate the possibility of the public “recognizing and retaining a memory of the imperfect representation”. Considering that both ‘KAJMAN’ and Lacoste provide similar services the focus was on the risk that the two companies may in fact be perceived to be variants of one another.

Brand And Trademark Dispute

One of the arguments put forward by ‘KAJMAN’ was that allowing the Lacoste mark such extensive protection would result in an “unjustified monopoly” on all crocodile marks. However, the General Court was keen on recognizing the importance of being able to oppose a trademark registration specifically where there is concern over damage to a brand’s reputation.

It is interesting to note that this is not the first brand and trademark dispute in which the French company has attempted to seek exclusivity with regards to its use of the crocodile on the basis of potential confusion for its consumers. The longest lasting dispute involves Singapore based rival Crocodile International, with Lacoste attempting to assert trademark rights in China and, as of recently, in New Zealand.

In 2008, it further targeted a Gloucestershire dental practice on the basis that they registered the logo of a grinning reptile to be used on their welcome sign. Shortly after, clothing supplier Baker Street Clothing became another one of its targets after registering the mark ‘Alligator’. In both cases Lacoste was unsuccessful. The decisions were important in what seemed to be a move to limit the scope of the Lacoste trademark monopoly.

Judging from the recent victory over ‘KAJMAN’ however, it is clear that the French company remains undeterred and it seems that the Courts have begun to take on a more strict approach in what they deem to be potential trademark infringements.

For more details on the recent Lacoste victory see the article here.

Branding is IP

Trademark Infringement Ruled Following Costco’s Selling Of Counterfeit Tiffany Rings

Trademark Infringement: What's in a Name?Trademark Infringement by Costco – the largest US warehouse club chain, was ruled by a Manhattan federal judge recently. Costco has allegedly sold counterfeit diamond engagement rings using the luxury retailer Tiffany’s name on the ring’s case signs.

Recently, we wrote about another high profile trademark infringement disputes E-Commerce Giants Sued For Online Selling Of Counterfeit Goods. Costco was selling counterfeit goods as well, but just not online.

Trademark Infringement Case

The famous dispute ironically dates back to the Valentine’s Day of 2013 when Tiffany & Co filed a lawsuit against Costco, saying the chain’s customers have bought hundreds (or maybe even thousands) of engagement rings in the erroneous belief that they were authentic Tiffany products.

The recent ruling had Costco send a letter to customers who bought the rings offering a full refund if they were unsatisfied. It would be interesting to know how they were able to trace all their client’s personal details and communicate this effectively.

Likelihood Of Confusion

Costco tried to argue that Tiffany’s trademark was invalid because, as reported by the American Genius, it prevented anyone from describing the ring setting. Nevertheless, after roughly 30 months, the judge found that Costco’s actions violated Tiffany’s brand by wilfully infringing its trademarks. The federal court judge, Laure Taylor Swain explained that “Despite Costco’s arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark”.

Following this judgment, Tiffany can now take Costco before a jury to seek damages. These might include a recovery of the profits made following the sale of all engagement rings as well as punitive damages (i.e. deterring Costco from engaging in similar conduct again).

What’s In A Name?

Following Robert M. O’Connell’s interesting analysis, there are a few tips that everyone should bear in mind when it comes to choosing names for businesses and products.

1) Distinctive Names

Tiffany & Co was founded by Charles Lewis Tiffany in 1837 and since then it has become the world’s best known jeweller. The general rule under US trademark law is that one cannot protect a surname as a trademark as this would be unfair to others and restrain them from using that name simply because their surnames coincide. However, a name acquires distinctiveness through long-term exclusive use and establishes itself as a brand. It is then easy for consumers to recognize this name and relate it to the goods or services in question. The name, which previously was simply a surname, is now equivalent to a particular brand and gains a secondary meaning as a mark which could be protected. This is also how Tiffany has got so many marks protected and why Costco was not able to claim that monopoly over a surname should be invalidated.

2) The Power Of A Name

How this lawsuit came to be is through a person shopping at one of Costco’s stores in California who complained to Tiffany that she was disappointed to see a warehouse club chain offering Tiffany diamond engagement rings for sale and promoting the offer with signs. In the information era, where nothing can be left hidden, one should be very careful how one labels products or promotes a business. Otherwise, the result could be paying a lot of damages and hefty legal fees. Costco tried to argue that the word Tiffany has already become the generic word for the ring setting in question and this is the meaning they used to promote and sell their product. Tiffany & Co., on the other hand, proved its success by introducing a survey where 9 out of 10 respondents submitted they recognize Tiffany not merely as a generic word, but as a brand. It is astonishing how powerful a name could be and from one moment onwards, it could start “working for you”.

The Tiffany and Costco case continues and another hearing is set for 30 October. The judge directed both sides to “make good faith efforts to settle the outstanding issues”. We will be following the development to find out how much Costco will have to pay for using this “generic word”.

The case is Tiffany & Co v Costco Wholesale Corp., case number 1:13-cv-01041, in the U.S. District Court for the Southern District of New York.

Design Registration – YSL Wins Over H&M

Community Registered Designs and Patents Design registraion is an important way in which to protect the unique shapes or surface designs that a company’s designers produce. Generally, there is no requirement to prove novelty in order to register a design. It is only when you want to rely on your design registration that it is relevant to prove novelty.So, the recent decision where Yves Saint Laurent (YSL) claimed victory over H&M because it indicates that it is not necessary for designers to come up with something radically different to what is on the market to qualify for design protection.

Overall Individual Character Wins

Last week the luxury fashion house YSL emerged victorious from a nine-year legal battle with the high-street retailer H&M over the validity of its two EU registered designs for its handbags.

H&M challenged the two registered designs, pointing to previous designs as evidence that the YSL designs lacked the required “individual character” to qualify for valid design protection. However, on the 10 September, the European General Court confirmed the previous decisions made by the Office for Harmonization in the Internal Market (OHIM) that YSL’s handbag designs had key differences from what H&M had cited as evidence. In passing the judgment the court held: “it must be held that the differences between the designs at issue are significant and that similarities between them are insignificant in the overall impression which they produce”. For a full summary of the judgment, see the official press release by the General Court of the European Union here.

YSL’s design:

YSL’s design

H&M’s evidence of prior design:

 

Trademark Infringement – E-Commerce Giants Sued For Online Selling Of Counterfeit Goods

Trademark InfringementTrademark infringement claims are on the rise with recent disputes related to the sale of counterfeit products on platforms such as eBay and Alibaba. In our previous blog post, Online Selling And Your Obligations To The Consumer, we highlighted the basic issues in relation to online selling regulations. At the heart of it, online sellers need to make sure they are in conformity with the law but, according to a recent article by Lawyers and Settlements, it seems that eBay and PayPal, as the online payment system, have failed to comply with these requirements.

Trademark Infringement Cases

A lawsuit has been filed against eBay and PayPal for trademark infringement following the sale of fake products on eBay’s platform. The filing itself notes that counterfeiting is a big business, costing retailers in the industry between $200 and $250 billion dollars each year and in addition, dilutes the trademarks of the protected products.

eBay’s Liabilities

The suit was filed by Wimo Labs – a company with many registered trademarks mainly for iPhone and Apple watch cases and alleges that as many as 2,000 eBay sellers (who are also named as defendants in the lawsuit) are using their trademarks to sell counterfeit products and deceive consumers. The way eBay and PayPal are involved in the infringing activities is that they have knowingly and deliberately facilitated and profited from the sale of the fake products. What is more, eBay is alleged to have engaged in soliciting eBay buyers to purchase fake products.

According to Deborah Klar, co-counsel with R. Rex Parris Law Firm on the claim, the claimant company has sent more than 5,000 notices of claimed trademark infringement to eBay since 2013, requesting the e-commerce giant to remove the fake products. Additionally, rather than responding to a third-party from The Counterfeit Report, eBay instead opted to change commentary on the report’s sites and blocked The Counterfeit Report’s corporate accounts.

Klar also commented that “the sale of fake products causes consumer confusion, adversely affects their brand and also means our client has lost sales.” She also adds that “as a result of the sale of these fake products on eBay, our client has suffered substantial damage.” The problem with fake products is that they are widespread on eBay and have a tremendous impact on the sellers invested in protecting their brands.

Paypal’s Involvement

Regarding PayPal as a defendant, according to Wimo’s counsel, the former eBay unit is the link between eBay buyers and counterfeit sellers. As such, the company is actually in a position to stop eBay’s practices by simply removing the ability for those sellers to get paid.

Alibaba And Their Approach

On a separate note, Chinese e-commerce giant, Alibaba, has recently been criticized for being too soft towards counterfeit sellers. As a result, Alibaba has launched a new English version of its counterfeit reporting system called “TaoProtect”. Although AliBaba has another platform called “AliProtect” which covers its other websites, TaoProtect has been developed exclusively for dealing with a range of Intellectual Property (IP) complaints such as copyright, patent and trademark infringement and unfair use of those IP rights. This reveals the scale of the problem as well as the serious steps conglomerates such as Alibaba take to ensure IP rights are effectively protected.

The launch of the English version of TaoProtect, UK and other Western European companies would be able to access easily the counterfeit reporting system. Alibaba’s US-based senior IP protection manager commented that “because the success and integrity of our marketplaces depend on consumer trust, we have comprehensive policies and practices in place to fight IP infringement.”

The improvement in their system comes partly as a result of the lawsuit filed against Alibaba by companies like Gucci and Yves St. Laurent. The suit was filed by Kering (the fashion house which owns these brands) last May and a US District Judge in Manhattan granted to some of them an immediate order barring sales of goods on Alibaba.

Lexology commented that, generally, for brand owners having secured trademark registrations in China, the US and wherever else your business operates is the safest route to tackle online infringement.

This article aims to be an informative piece, providing you with the latest developments in the IP and commercial world. However, it is likely that your business faces similar issues. Therefore, if you need specific help to your situation, we can help. We have experience of dealing with different platforms online related to Trademark Infringement.

Copyright Infringement Laws

Copyright Infringement Is Claimed By Hacked Dating Service Ashley Madison

Copyright Infringement LawsCopyright infringement is allegedly the basis on which dating service Ashley Madison is trying to prevent the spreading of its stolen member database.

Last week, more than 33 million records of Ashley Madison users, containing information such as names, profile information and even partial credit card information were released online.

Although it has not yet been officially confirmed by the company to be legitimate records, outside investigations have indicated that they are.

Claim Of Copyright Infringement

The infidelity-focused dating service Ashley Madison is reportedly using copyright notices to persuade websites to remove the leaked data.

Motherboard journalist Joseph Cox wrote that an employee of Avid Life Media, the company behind Ashley Madison, sent a Digital Millennium Copyright Act (DMCA) takedown notice after Cox posted three tweets containing fragments of the leaked material. The notice, according to Cox, also confirmed the leaks’ veracity: “Avid owns all intellectual property in the data, which has been stolen from our data center, and disclosed in this unauthorized and unlawful manner.”

Notice Of Copyright Infringement

Copyright notices are a common way of suppressing criticism or leaked secrets, a practice that might be most strongly associated with the Church of Scientology. Filing a DMCA takedown on Twitter is as easy as filling out a short form. Anyone could theoretically send one under any name to require Twitter to investigate the submissions internally. It could only result in legal penalties.

However, tweets are hardly copyrightable materials. Emails, names, credit card details and other mere lists of information are not copyrightable unless arranged with sufficient originality invested by the author. Automatically arranging the already sorted information in a spreadsheet would not even suffice.

Furthermore, in 1991, the US Supreme Court said that the telephone directory white pages cannot be protected by copyright law.

Interestingly, experts have already commented on this issue warning users not to download the Ashley Madison database mainly because it will be considered stolen property. However, it depends on what Ashley Madison claims to be their copyright. For example, the text written in each user profile belongs to the author and owner of the profile while it is contained in a copyrighted website.

The terms of service of Ashley Madison states that:

You acknowledge and agree that all content and materials available on our Site are protected by either our rights, or the rights of our licensors or other third parties, of publicity, copyright, trademarks, service marks, patents, trade secrets or other proprietary rights and laws.

This particular section is vague, ambiguous and gives no guidance on, for example, transfer of ownership or if these terms are not signed by users.

The issue of hackers and how “invincible” they could be is well illustrated with our experience a few years ago when one of our websites was hacked. Fortunately, we were prepared and we quickly identified the nature and extent of the hack and restored the website.

Ashley Madison will allegedly claim copyright infringement against those who publish and open their database, including those who hacked into their data, however, it may be very difficult to precisely identify individuals who stole and leaked their records.

Whether an intellectual property dispute will arise or not, it is a very interesting development to keep an eye on.