e-commerce LAW & STRATEGY - Heymann & Partner, Rechtsanwälte

More documents

Recommendations

Info

Used Licenses continued from page 2 copyright law is whether the distinction between physical incorporations and rights can still be upheld, and whether such a decision is justified in light of technical progress and the economic interests of consumers and businesses. In its thoroughly reasoned decision this year, the Munich Court of First Instance deals with these arguments in detail and says that the right-holders’ interests, for several reasons, can be properly protected only if physical works are treated differently from how license rights are treated, with one of these reasons being not only legitimate financial interests, but also necessary protection from pirated copies. Again, the judgment of the Munich Court of First Instance has been appealed, and once more it is up to the Oberlandesgericht to re-evaluate its earlier findings. It would be more than a surprise, however, if the Appellate Court deviates from its first decision and then — economic interests apparently being strong on both sides — the case certainly will go to the Federal Court and be decided soon, particularly as in Germany’s northern territories, courts have shown a partly different view. HAMBURG COURT DECISIONS ON AD FOR USED LICENSES While the Munich decisions rendered support to the software manufacturers’ position regarding transfer of software licenses, they suffered a setback in Hamburg. The First Instance Court in Hamburg (Landgericht Hamburg, June 29, 2006, Mobile Marketing continued from page 1 IS IT E-MAIL OR A CALL? Two different regulatory structures apply to mobile-marketing campaigns, depending on whether the campaign emphasizes phone or email messages. If your marketing message’s destination is an e-mail address — the traditional @ with a domain name — then treat it as an e-mail; but if a telephone number is the destination, then consider it a phone call. 6 File Number 315 O 343/06) had to decide on a case that a software dealer for Microsoft products brought against usedSoft (same defendant as in the Munich case). The plaintiff apparently felt pressured economically by usedSoft’s aggressive advertisement for the business model of used licenses, and filed for a preliminary injunction to prohibit this advertisement, which allegedly promoted a prohibited business. Microsoft was not a party to the case. In light of the Munich decisions, the Hamburg Court of First Instance surprisingly rejected the application and held that the business model of resale of “used” licenses does not infringe provisions of the copyright act. The Hamburg court applied the exhaustion principle and found that the resale of such licenses could not be restricted and does not require Microsoft’s consent. Advertisement for this business model, then, was not considered to be promoting illegal activity. The decision was confirmed by the Appellate Court (Hanseatisches Oberlandesgericht, Feb. 2, 2007, File Number 5 U 140/06), but the Court moved away from the application of the exhaustion principle and declared (probably in an attempt to avoid open collision with the Munich Court of Appeals) that the case needed only application of the provisions of fair advertisement in the law on unfair competition. Considering these provisions, advertisement for a business model could not be objected to if it fairly mentioned the legal dispute so that customers knew the potential risks. This declaration is in principle fully in line with the gener- If it’s an e-mail, then your campaign will be governed by the Controlling the Assault of Non-Solicited Porno- graphy and Marketing Act, (“CAN-SPAM”) (15 U.S.C. §7701-7713) and the Federal Communications Commission’s Wireless E-mail Rule (64 C.F.R. §64.3100). If it’s a telephone call, then it will be governed by the Telemarketing and Consumer Fraud and Abuse Prevention Act (“TCFAP”) (15 U.S.C. §6101-6108), the Telephone Consumer Protection Act (“TCPA”) (47 U.S.C. §227) and, of course, the Tele- e-Commerce Law & Strategy ❖ www.ljnonline.com/alm?ecomm al requirements of advertisement law, but it is highly doubtful whether usedSoft has really mentioned the legal disputes (at all) and in a way that informs customers about the critical issue — whether purchasing such licenses means obtaining anything at all. If the Munich decisions should be upheld, all such “used” license transactions are void, if the consent of the rightholders cannot be established. In such a case, customers would be left with a compensation claim against usedSoft but could be subject to prosecution by software manufacturers. CONCLUSION The Hamburg decisions and their contradiction of the Munich courts’ view will require the Federal Court to decide quickly, once the Munich case is handed over to the Federal Court. The legal community and the market participants eagerly await the decision. It will likely be a landmark decision on the exhaustion principle as laid down in the Software Directive. But there are more questions in the package, such as the crucial question of under which conditions the consent of software manufacturers to such transfer of license has to be declared — a subject that will depend on a competition-law evaluation of fair and equal treatment of applicants, as well as of requirements of transparency in license contracts. It’s not a certainty that the Federal Court will answer all these questions, but it is a certainty that the decision will receive interest throughout Europe. —❖— marketing Sales Rule (“TSR”) (16 CFR §310.1 et seq.), along with the Do Not Call Registry that the Federal Trade Commission (“FTC”) maintains and the Federal Communications Commission (“FCC”) enforces. E-MAIL REGULATIONS As with e-mails more generally, CAN-SPAM will govern text, or SMS (short message service) messages, and MMS (multi-media messaging services), which typically contain graphics, video or an audio continued on page 9 June 2007
Internet Expands Trademark Infringement Novel Trademark Claims Spring from e-Commerce By Jonathan Bick It should strike no one as a surprise that the fluidity of using trademarks on the Internet expands the incidence of trademark-infringement claims and lawsuits. And along those lines, novel Internet trademark claims spring from the innovative but unlawful use of trademarks in e-<strong>commerce</strong>. Logically, then, it follows that Internet domain names, hyperlinks, meta tags and framing marks enlarge the number of trademark-infringement opportunities. While it’s true that as an information conduit, the Internet reduces the likelihood of confusion by allowing the buyer to approach an online purchase with more sophistication, the technology also bolsters the likelihood of confusion among consumers using the Internet by allowing new, unlawful uses of trademarks. Also, the traditional use of a mark on the Internet (to identify the source of goods) is likely to amplify certain trademark characteristics, including: • The strength of a mark; • The proximity of the products or services to a geographical location; and • Actual confusion. TRADEMARK PARTICULARS Trademarks connect a name or symbol with a good or service. They benefit owners by allowing them to profit from the goodwill associated with the mark. On the other side of the potential or actual transaction, trademarks benefit consumers by Jonathan Bick is of counsel to WolfBlock Brach Eichler of Roseland, NJ, and is an adjunct professor of Internet law at Pace Law School and Rutgers Law School. He is also the author of 101 Things You Need To Know About Internet Law (Random House 2000). He can be reached at bickj@bicklaw.com. memorializing a level of quality. U.S. trademark law is designed to prevent confusion in the marketplace and is enforced by preventing fraud through deception. The elements necessary to prove trademark infringement are well established under federal and state case law. These elements apply to Internet and traditional trademark infringement. A plaintiff in a trademark-infringement matter has the burden of proving that the defendant’s use of a mark has created a likelihood of confusion about the origin of the defendant’s goods or services. This proof is achieved by the plaintiff first showing that it has developed a trademark right worthy of protection, and then showing that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake or deception — or a combination of these misapplications — among the consuming public. Poloroid Corp. v. Polorad Elec. Corp., 287 F.2d 492 (2d Cir. 1961), details eight factors that a court must evaluate prior to finding that an entity has used a trademark in such a way that would result in a likelihood of confusion in the mind of a consumer regarding the source of a product. They are: 1. The strength of the plaintiff’s mark; 2. The degree of similarity between the plaintiff’s mark and defendant’s mark; 3. The proximity of the products or services; 4. The likelihood that the plaintiff will bridge the gap; 5. Evidence of actual confusion; 6. The defendant’s good faith in adopting the mark; 7. The quality of defendant’s product or service; and 8. The sophistication of the buyers. The Lanham Act (Federal Trademark Act of 1946) also provides rights for the trademark holder. In particular, the Act allows mark holders to take action to end deceitful practices in interstate <strong>commerce</strong> involving the misuse of trademarks. Marks, for instance, gain rights when used. The Internet allows marks to be used in nontraditional ways that expand the use of the marks as well as the likelihood of confusion and, along with that increased or actual likelihood of confusion, an increase in infringement claims. The use of trademarks on the Internet has four major forms of alternative use besides their traditional form of use as a publication: 1. Domain names; 2. Meta tags; 3. Hyperlinks; and 4. Framing marks. MAJOR INTERNET ALTERNATIVE TRADEMARK USES Domain Names A domain name, of course, is the registered identifier that generally replicates a firm name, product or phrase. To acquire an Internet address, an entity need only pay a nominal fee to an Internet registrar, such as Network Solutions Inc., and file for a name not previously registered. Due to the ease with which domains can be registered, many trademarked domain names were initially registered by enterprising entities known as cybersquatters who knowingly reserved a trademark as a domain name merely to sell it for profit. Typo-squatting is another form of cybersquatting that relies on erroneous user input. Typo-squatting occurs when an entity registers a famous mark with misspellings, reversed letters or other common typos built into the domain name in an attempt to redirect an Internet user to the cybersquatter’s own Web site. Alternatively, a cybersquatter might try to get the famous mark’s owner to pay to redirect the mistyped Web address to the mark owner’s Web address. Another potential trademark issue involving domain names is those names that more than one person or entity could claim. In Nissan Motor Co. v. Nissan Computer Corp., 89 F. Supp. 2d 1154 (C.D. Cal. 2000), the Nissan car company (which was first to register its trademark) brought suit against the Nissan computer company (dubbed after the owner’s surname) for trademark infringement after the computer firm registered continued on page 8 June 2007 e-Commerce Law & Strategy ❖ www.ljnonline.com/alm?ecomm 7
Page 1 and 2: LAW JOURNAL NEWSLETTERS On the Razr
Page 3 and 4: When the CEO Wants His ‘Hotmail
Page 5: ‘Hotmail’ continued from page 4
Page 9 and 10: Mobile Marketing continued from pag
Page 11 and 12: M OVERS & SHAKERS PHILLY E-COMMERCE

e-commerce LAW & STRATEGY - Heymann & Partner, Rechtsanwälte

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?