Editorial publié dans La Lettre des Juristes d'Affaires (LJA) du 10 mars 2008
La spécialisation des juridictions a été renforcée dans deux domaines importants et d’une grande technicité : le droit de la concurrence et la propriété intellectuelle. S’agissant du droit de la concurrence, la loi NRE avait attribué les litiges relatifs aux articles L.420-1 à L.420-5 du Code de commerce et 81 et 82 du Traité CE aux tribunaux de grande instance et tribunaux de commerce de 8 villes désignés dans un décret entré en vigueur le 1er janvier 2006. En matière de propriété intellectuelle, la loi sur la lutte contre la contrefaçon de 2007 a prévu une spécialisation des tribunaux de grande instance. Le décret qui désignera les tribunaux compétents est attendu.
Si les raisons ayant inspiré ces spécialisations sont louables –il s’agit notamment de faire de la France une place de droit efficace et attractive, avec une justice d’excellence et hautement spécialisée–, leur réussite dépend non seulement des moyens qui seront mis en œuvre (formation des juges, réorganisation interne, création de pôles de propriété intellectuelle, stabilisation des magistrats…), mais aussi, en amont, de la cohérence des textes instituant la spécialisation. Or, on est frappé par les difficultés d’ordre procédural laissées en suspens, notamment lorsque la compétence spéciale est invoquée par voie d’exception ou dans le cadre de procédures complexes.
On peut ainsi se demander si, en matière de concurrence, lorsqu’une action sera introduite sur un double fondement devant un tribunal non visé par le décret, et dans le cas où le défendeur soulèverait l’exception d’incompétence, il devra être fait application de l’adage selon lequel l’accessoire suit le principal (comme cela a été fait récemment par le Tribunal de commerce de Nanterre). Cette solution permettrait à la juridiction initialement saisie de conserver l’affaire et d’éviter une instrumentalisation des nouvelles règles à des fins dilatoires. Doit-on au contraire, de manière plus cohérente, appliquer la règle selon laquelle les exceptions s’interprètent strictement, dans la mesure où les règles instituant la spécialisation dérogent au droit commun ?
En tout état de cause, lorsqu’une affaire est introduite devant un tribunal qui n’est pas visé par le décret, et si le défendeur ne soulève pas in limine litis l’incompétence, il semblerait que l’affaire doive rester devant cette juridiction. La Cour d’appel de Paris, devenue juridiction unique d’appel à compétence nationale, et qui a donc désormais un rôle unificateur dans l’application des principes du droit de la concurrence, verra alors, semble-t-il, lui échapper les affaires traitées (à tort ?) par les juridictions non spécialisées de première instance.
La nouvelle loi sur propriété intellectuelle pose également des questions de cohérence. Alors que la volonté du législateur était de transférer à un petit nombre de TGI, à l’exclusion des tribunaux de commerce, les contentieux pour tous les droits de propriété intellectuelle, s’agissant du droit d’auteur, la loi a limité le nombre de TGI, tout en maintenant la compétence de l’ensemble des tribunaux de commerce (l’art. L.331-1 al. 1 CPI n’est pas abrogé). Doit-on considérer qu’il s’agit d’un oubli, et exclure la compétence des tribunaux de commerce ? Ou a-t-on considéré que le droit d’auteur peut être appliqué par n’importe juge consulaire, alors que le magistrat professionnel doit lui être spécialisé ? Par ailleurs, la nouvelle loi ne donne pas de précision s’agissant de la situation dans laquelle une même affaire mêlera, comme c’est souvent le cas, droit d’auteur et droit des dessins et modèles.
Il est à craindre que tant qu’il n’aura pas corrigé ses incohérences, le législateur n’atteigne pas le but poursuivi.
BRAD SPITZ
www.bradspitz.com
IPIT NEWS FROM FRANCE, by YS Avocats law firm, www.ys-avocats.com
Thursday, 13 March 2008
Thursday, 14 February 2008
Google Adwords Condemned Again For Trademark Infringement
Court of Appeal of Paris (4th Chamber, Section B), 1 February 2008, De Dietrich, Electrolux, and others v. Google France and Google Inc.
Google Inc is incorporated in the US and exploits a programme called Adwords, which displays banner advertisements (‘commercial links’) when a particular search term is entered in the Google search engine. Google France was incorporated in France in 2002.
GIFAM, a trade association in the field of household equipment, and the holders of trademarks (such as De Dietrich, Electrolux, Hoover, etc…), brought an action on the grounds of trademark infringement against Google Inc and Google France, which was dismissed by the High Court of First Instance of Paris (12 July 2006, GIFAM and others v. Google France).
The plaintiffs argued that the Adwords system infringes on their trademarks as it uses a keyword generator and broadcasts advertisements that may lead the public to believe that the advertisers are related to the companies who own the trademarks. Moreover, they claimed that the Google companies infringed on their rights to their corporate names and their domain names, and committed acts of misleading advertising by using ‘commercial links’ and carrying out classifications of the trademarks that lead consumers to misrepresent the relationships that the companies may have with the sites of the advertisers who use their trademarks illegally. They lodged an appeal against the High Court’s judgement that had dismissed their action.
The Court of Appeal, in its decision dated 1 February 2008, reversed the High Court’s judgement, stating that the Adwords system is a public service that is ‘contextual advertising’, in which the Google companies play an active role. They may not, therefore, be considered as hosting providers in the meaning of Article 6 the French Act of 21 June 2004 on Confidence in the Digital Environment (which implemented the Directive 2000/31/EC of 8 June 2000 on certain legal aspects of information society services - ‘Directive on electronic commerce’).
The Court considered that with the Adwords service, Google acts as an advertising provider, and that a large part of its profits is related to the frequency with which the advertiser’s website is consulted. Furthermore, Google is responsible for the trademarks appearing with the products or services in question on the screens of the Internet users.
The Court rejected Google’s arguments. Google’s defence was that the service works in a purely statistical way, and solely at the request of the advertisers. Indeed, the Court considered that it was Google who put this system in place, that it knew how it worked, and that it offered its use to the advertisers. Moreover, the fact that the advertisers were warned by announcements displayed on the pages of the Adwords system is irrelevant since Google chose to reproduce the trademarks.
The Court of Appeal therefore ruled that Google’s use of the trademarks breaches Article L.713-2 of the French Intellectual Property Code, which prohibits the reproduction, use or affixing of a trademark, or the use of a reproduced trademark for goods or services that are identical to those designated in the registration. The Court underlined that Google did not challenge the fact that the trademarks were identical to those reproduced in the lists provided by the keyword generator.
This is not the first French decision condemning the Google Adwords system. In a decision dated 6 December 2007, the Court of Appeal of Aix en Provence ruled that the use of the keyword ‘Remote-Anything’ (a registered trademark) in connection with the same types of products as those protected by the trademark, without the authorisation of the owner of the trademark, is act of infringement of the said trademark. The Court underlined that Google Inc and Google France had played an active role, and could not be considered as mere ‘technical providers’. Since they displayed advertising messages in the form of commercial links for advertisers who paid them for these services, they were to be held liable under trademark law. In particular, they approved the chosen keywords (a choice which is made by the advertisers with Google’s assistance) and were supposed to verify that the commercial links did not infringe any rights of third parties. Moreover, they could not allege that it was impossible to carry out such verification beforehand for supposedly material, legal and economic reasons. The Court added that even if it had been established that it was impossible to carry out such verification, Google Inc and Google France had to either simply abandon this activity or bear the consequences attached (see our blog: http://copyrightfrance.blogspot.com/2008/01/google-adwords-condemned-for-trademark.html).
http://www.juriscom.net/jpt/visu.php?ID=1021
BRAD SPITZ
www.bradspitz.com
Google Inc is incorporated in the US and exploits a programme called Adwords, which displays banner advertisements (‘commercial links’) when a particular search term is entered in the Google search engine. Google France was incorporated in France in 2002.
GIFAM, a trade association in the field of household equipment, and the holders of trademarks (such as De Dietrich, Electrolux, Hoover, etc…), brought an action on the grounds of trademark infringement against Google Inc and Google France, which was dismissed by the High Court of First Instance of Paris (12 July 2006, GIFAM and others v. Google France).
The plaintiffs argued that the Adwords system infringes on their trademarks as it uses a keyword generator and broadcasts advertisements that may lead the public to believe that the advertisers are related to the companies who own the trademarks. Moreover, they claimed that the Google companies infringed on their rights to their corporate names and their domain names, and committed acts of misleading advertising by using ‘commercial links’ and carrying out classifications of the trademarks that lead consumers to misrepresent the relationships that the companies may have with the sites of the advertisers who use their trademarks illegally. They lodged an appeal against the High Court’s judgement that had dismissed their action.
The Court of Appeal, in its decision dated 1 February 2008, reversed the High Court’s judgement, stating that the Adwords system is a public service that is ‘contextual advertising’, in which the Google companies play an active role. They may not, therefore, be considered as hosting providers in the meaning of Article 6 the French Act of 21 June 2004 on Confidence in the Digital Environment (which implemented the Directive 2000/31/EC of 8 June 2000 on certain legal aspects of information society services - ‘Directive on electronic commerce’).
The Court considered that with the Adwords service, Google acts as an advertising provider, and that a large part of its profits is related to the frequency with which the advertiser’s website is consulted. Furthermore, Google is responsible for the trademarks appearing with the products or services in question on the screens of the Internet users.
The Court rejected Google’s arguments. Google’s defence was that the service works in a purely statistical way, and solely at the request of the advertisers. Indeed, the Court considered that it was Google who put this system in place, that it knew how it worked, and that it offered its use to the advertisers. Moreover, the fact that the advertisers were warned by announcements displayed on the pages of the Adwords system is irrelevant since Google chose to reproduce the trademarks.
The Court of Appeal therefore ruled that Google’s use of the trademarks breaches Article L.713-2 of the French Intellectual Property Code, which prohibits the reproduction, use or affixing of a trademark, or the use of a reproduced trademark for goods or services that are identical to those designated in the registration. The Court underlined that Google did not challenge the fact that the trademarks were identical to those reproduced in the lists provided by the keyword generator.
This is not the first French decision condemning the Google Adwords system. In a decision dated 6 December 2007, the Court of Appeal of Aix en Provence ruled that the use of the keyword ‘Remote-Anything’ (a registered trademark) in connection with the same types of products as those protected by the trademark, without the authorisation of the owner of the trademark, is act of infringement of the said trademark. The Court underlined that Google Inc and Google France had played an active role, and could not be considered as mere ‘technical providers’. Since they displayed advertising messages in the form of commercial links for advertisers who paid them for these services, they were to be held liable under trademark law. In particular, they approved the chosen keywords (a choice which is made by the advertisers with Google’s assistance) and were supposed to verify that the commercial links did not infringe any rights of third parties. Moreover, they could not allege that it was impossible to carry out such verification beforehand for supposedly material, legal and economic reasons. The Court added that even if it had been established that it was impossible to carry out such verification, Google Inc and Google France had to either simply abandon this activity or bear the consequences attached (see our blog: http://copyrightfrance.blogspot.com/2008/01/google-adwords-condemned-for-trademark.html).
http://www.juriscom.net/jpt/visu.php?ID=1021
BRAD SPITZ
www.bradspitz.com
Thursday, 24 January 2008
Google Adwords Condemned for Trademark Infringement
Court of Appeal of Aix en Provence (2nd Chamber), 6 December 2007, TWD Industries v. Google France, Google Inc
Google Inc is incorporated in the US and exploits a programme called Adwords, which displays banner advertisements (‘commercial links’) when a particular search item is entered in the Google search engine. This activity generates a major part of a search engine’s income. Google France was incorporated in France in 2002.
TWD commercialises a software product under the name Remote-Anything, a name that it registered as a trademark in 2005. TWD Industries sued Google Inc and Google France, claiming that when a research is carried out with the keywords ‘Remote-Anything’, commercial links are displayed which send the users to websites of companies that commercialise identical and competing products. The High Court of First Instance of Nice dismissed TWD Industries’ action. They then lodged an appeal.
The Court of Appeal of Aix en Provence first states that Articles L.713-2 and L.713-3 of the Intellectual Property Code prohibit 1- the reproduction, use or affixing of a mark or the use of a reproduced mark for goods or services that are identical to those designated in the registration, and 2- if there is a likelihood of confusion in the mind of the public, a) The reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration, and b) The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration. The Court ruled that the use of the keyword ‘Remote-Anything’ in connection with the same types of products as those protected by the trademark, without the authorisation of the owner of the trademark, is an act of infringement of the said trademark.
In the present case, the Court of Appeal underlined that Google Inc and Google France played an active role, and may not be considered as mere ‘technical providers’. As they displayed advertisement messages in the form of commercial links for advertisers who pay them for these services, they may be held liable under trademark law. In particular, they may be held liable, as they approved the chosen keywords (a choice which is made by the advertisers with Google’s assistance). They are supposed to verify that the commercial links do not infringe any rights of third parties. Moreover, they may not allege that prior verification is impossible for supposedly material, legal and economic reasons. The Court adds that even if it were established that it is impossible to verify, Google Inc and Google France would have to either simply abandon this activity or bear the consequences.
In fact the Court of Appeal reversed the High Court’s decision, ruling that Google Inc and Google France had committed acts of infringement of the trademark in question. The Google companies were condemned to pay 15.000 euros in damages to TWD Industries.
http://www.legalis.net
BRAD SPITZ
www.bradspitz.com
Google Inc is incorporated in the US and exploits a programme called Adwords, which displays banner advertisements (‘commercial links’) when a particular search item is entered in the Google search engine. This activity generates a major part of a search engine’s income. Google France was incorporated in France in 2002.
TWD commercialises a software product under the name Remote-Anything, a name that it registered as a trademark in 2005. TWD Industries sued Google Inc and Google France, claiming that when a research is carried out with the keywords ‘Remote-Anything’, commercial links are displayed which send the users to websites of companies that commercialise identical and competing products. The High Court of First Instance of Nice dismissed TWD Industries’ action. They then lodged an appeal.
The Court of Appeal of Aix en Provence first states that Articles L.713-2 and L.713-3 of the Intellectual Property Code prohibit 1- the reproduction, use or affixing of a mark or the use of a reproduced mark for goods or services that are identical to those designated in the registration, and 2- if there is a likelihood of confusion in the mind of the public, a) The reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration, and b) The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration. The Court ruled that the use of the keyword ‘Remote-Anything’ in connection with the same types of products as those protected by the trademark, without the authorisation of the owner of the trademark, is an act of infringement of the said trademark.
In the present case, the Court of Appeal underlined that Google Inc and Google France played an active role, and may not be considered as mere ‘technical providers’. As they displayed advertisement messages in the form of commercial links for advertisers who pay them for these services, they may be held liable under trademark law. In particular, they may be held liable, as they approved the chosen keywords (a choice which is made by the advertisers with Google’s assistance). They are supposed to verify that the commercial links do not infringe any rights of third parties. Moreover, they may not allege that prior verification is impossible for supposedly material, legal and economic reasons. The Court adds that even if it were established that it is impossible to verify, Google Inc and Google France would have to either simply abandon this activity or bear the consequences.
In fact the Court of Appeal reversed the High Court’s decision, ruling that Google Inc and Google France had committed acts of infringement of the trademark in question. The Google companies were condemned to pay 15.000 euros in damages to TWD Industries.
http://www.legalis.net
BRAD SPITZ
www.bradspitz.com
Monday, 21 January 2008
Amazon.fr Condemned For Selling Books Without A Delivery Charge
High Court of First Instance of Versailles (3rd Chamber), 11 December 2007, Syndicat de la Librairie Française v. Société Amazon.fr (obs. J.-B. Auroux, in RLDI 2008/33, n° 1118)
The 10th August 1981 Act (‘Loi Lang’) obliges book retailers to fix the sale price of books at a price between 95 and 100% of the price set by the publisher or the importer. This means that a bookstore may not reduce the price of books by more than 5%. The French Association of bookstores took action against Amazon.fr (Amazon in France) for selling books on its website without a delivery charge, and for having offered gift tokens to its clients for opening an account. The Association claimed that Amazon.fr infringed the 1981 Act and that its behaviour constituted unfair competition.
The Association argued that the gift tokens constitute an illegal sale with incentives to purchase as well as a rebate exceeding the maximum 5% reduction authorised by the law, and unfair competition for the independent bookstores that comply with the legislation. The Association also claimed that free delivery constitutes an illegal sale with incentives to purchase, and possibly a sale at a loss, and in any event unfair competition.
Amazon.fr argued that it had stopped offering gift tokens in 2003 in order to appease the situation, and that free delivery does not constitute an incentive, but is a normal way to commercialise its products, the very essence of the attractiveness of its business.
The High Court of First Instance of Versailles considered that the 5 euro gift tokens, offered to welcome new clients buying goods for an amount of at least 10 euros, constitutes a price rebate exceeding the rebate authorised by the law, where the purchase price amounts to less than 100 euros.
With regard to the free delivery, the Court recalls that Article L.121-35 of the Consumer Code provides that ‘All sales or offers for sale of goods or any provision or offer to provide services made to consumers and giving entitlement, free of charge, immediately or at the end of a fixed period, to a bonus consisting of products, goods or services, if these are identical to those forming the subject of the sale or the service provision, are prohibited.’ The Court considered that the free delivery generates a sale at a loss for the books sold at a low price, and constitutes unfair competition for traditional bookstores. The Court therefore ruled that the operation is illegal, and ordered Amazon.fr to cease selling the books without a delivery charge, with a 1.000 euros daily fine for delay in performance. Amazon.fr was also condemned to pay the Association damages.
In an email sent to its clients, Amazon.fr explained that the irony of this condemnation is that the aim of the 1981 Act is to preserve cultural diversity and to give the bookstores the means to offer a wide selection of books, and not only best-sellers. Amazon.fr also notes that France is the only country in the world in which Amazon has been condemned for such practices. It announced that it has lodged an appeal against the judgement and that in the meantime it would continue to deliver books free of charge. It has also put a petition and a newsgroup on the matter online.
BRAD SPITZ
www.en.bradspitz.com
The 10th August 1981 Act (‘Loi Lang’) obliges book retailers to fix the sale price of books at a price between 95 and 100% of the price set by the publisher or the importer. This means that a bookstore may not reduce the price of books by more than 5%. The French Association of bookstores took action against Amazon.fr (Amazon in France) for selling books on its website without a delivery charge, and for having offered gift tokens to its clients for opening an account. The Association claimed that Amazon.fr infringed the 1981 Act and that its behaviour constituted unfair competition.
The Association argued that the gift tokens constitute an illegal sale with incentives to purchase as well as a rebate exceeding the maximum 5% reduction authorised by the law, and unfair competition for the independent bookstores that comply with the legislation. The Association also claimed that free delivery constitutes an illegal sale with incentives to purchase, and possibly a sale at a loss, and in any event unfair competition.
Amazon.fr argued that it had stopped offering gift tokens in 2003 in order to appease the situation, and that free delivery does not constitute an incentive, but is a normal way to commercialise its products, the very essence of the attractiveness of its business.
The High Court of First Instance of Versailles considered that the 5 euro gift tokens, offered to welcome new clients buying goods for an amount of at least 10 euros, constitutes a price rebate exceeding the rebate authorised by the law, where the purchase price amounts to less than 100 euros.
With regard to the free delivery, the Court recalls that Article L.121-35 of the Consumer Code provides that ‘All sales or offers for sale of goods or any provision or offer to provide services made to consumers and giving entitlement, free of charge, immediately or at the end of a fixed period, to a bonus consisting of products, goods or services, if these are identical to those forming the subject of the sale or the service provision, are prohibited.’ The Court considered that the free delivery generates a sale at a loss for the books sold at a low price, and constitutes unfair competition for traditional bookstores. The Court therefore ruled that the operation is illegal, and ordered Amazon.fr to cease selling the books without a delivery charge, with a 1.000 euros daily fine for delay in performance. Amazon.fr was also condemned to pay the Association damages.
In an email sent to its clients, Amazon.fr explained that the irony of this condemnation is that the aim of the 1981 Act is to preserve cultural diversity and to give the bookstores the means to offer a wide selection of books, and not only best-sellers. Amazon.fr also notes that France is the only country in the world in which Amazon has been condemned for such practices. It announced that it has lodged an appeal against the judgement and that in the meantime it would continue to deliver books free of charge. It has also put a petition and a newsgroup on the matter online.
BRAD SPITZ
www.en.bradspitz.com
Sunday, 20 January 2008
Recording Agreements: the Obligation to Promote the Albums Released
Cour de cassation (Social Chamber), 26 September 2007, n°06/42.575 (obs. Costes L., in RLDI 2008/33, n°1119)
In application of a recording agreement, the two members of a French band called ‘Native’ had granted the exclusive rights to their recorded performances to BMG France, with an obligation to record at least three albums.
The first two records, released in 1993 and 1997, were successful. One of the members of the band recorded a third album alone. Released in 2002, this album was a commercial failure. The artist brought the case before the labour court, competent to handle litigation relating to recording agreements concluded between record companies and performers. The labour court condemned the record company to the payment of 200.000 euros damages for breach of contract, considering that it had not carried out the necessary promotion when the album was released.
The Court of Appeal upheld the decision, on the basis that the record company had not accompanied the release of the album with a ‘new promotion’ and that the record was released in abnormal conditions. BMG France brought the case before the Cour de Cassation, the French Supreme Court for civil and criminal matters.
BMG France claimed that a record company, which has to perform the recording agreement in good faith, has no obligation to guarantee a result regarding the conditions in which the record is released. BMG France argued that the promotion of a record depends on whether the radio and television stations decide to broadcast the record or not. It also argued that the artist had on several occasions refused to record a single that was supposed to back the promotion of the album, thus violating its contractual obligations.
In its decision dated 26 September 2007, the Supreme Court dismissed BMG France’s arguments. The Court ruled that the Court of Appeal had rightly considered that the record company had not justified the carrying out of a new promotion operation for this third album, apart from one programme on the radio and another on television, whereas this contractual obligation was not disputed.
A record company does not have an obligation to guarantee the success of an album, but has to be able to prove that it used all necessary means to promote the album.
BRAD SPITZ
www.en.bradspitz.com
In application of a recording agreement, the two members of a French band called ‘Native’ had granted the exclusive rights to their recorded performances to BMG France, with an obligation to record at least three albums.
The first two records, released in 1993 and 1997, were successful. One of the members of the band recorded a third album alone. Released in 2002, this album was a commercial failure. The artist brought the case before the labour court, competent to handle litigation relating to recording agreements concluded between record companies and performers. The labour court condemned the record company to the payment of 200.000 euros damages for breach of contract, considering that it had not carried out the necessary promotion when the album was released.
The Court of Appeal upheld the decision, on the basis that the record company had not accompanied the release of the album with a ‘new promotion’ and that the record was released in abnormal conditions. BMG France brought the case before the Cour de Cassation, the French Supreme Court for civil and criminal matters.
BMG France claimed that a record company, which has to perform the recording agreement in good faith, has no obligation to guarantee a result regarding the conditions in which the record is released. BMG France argued that the promotion of a record depends on whether the radio and television stations decide to broadcast the record or not. It also argued that the artist had on several occasions refused to record a single that was supposed to back the promotion of the album, thus violating its contractual obligations.
In its decision dated 26 September 2007, the Supreme Court dismissed BMG France’s arguments. The Court ruled that the Court of Appeal had rightly considered that the record company had not justified the carrying out of a new promotion operation for this third album, apart from one programme on the radio and another on television, whereas this contractual obligation was not disputed.
A record company does not have an obligation to guarantee the success of an album, but has to be able to prove that it used all necessary means to promote the album.
BRAD SPITZ
www.en.bradspitz.com
Subscribe to:
Posts (Atom)