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Crocs has been handed yet another loss in its fight to protect the design of its plastic clog footwear. The European Union General Court has dismissed Crocs’ appeal against the European Union Intellectual Property Office (“EUIPO”) to cancel legal protection of its shoe design. In doing so, the court has upheld a 2016 decision from the EUIPO that declared that Crocs’ design registration is invalid because the footwear lacks the requisite level of novelty.

The case got its start back in 2013 when French footwear company Gifi Diffusion filed a formal opposition with the EUIPO contesting Crocs’ EU design registration, arguing that EU law states that a design cannot be made public more than one year before filing. According to Gifi, Crocs first showed the design at issue in 2002 — two years before filing its design mark in the United States, and thereby, ruining its chances of filing for protections after 2003.

In a decision in 2014, the EUIPO’s Invalidity Division dismissed Gifi Diffusion’s request, asserting that the company had failed to present sufficient proof that Crocs had released the designs prior to the one-year time period. Responding to the EUIPO’s pushback, Gifi Diffusion ultimately provided more evidence, and in 2016, the Crocs design was ruled invalid by the EU’s trademark body, prompting Crocs to lodge an appeal.

Fast forward to this month and the EU General Court has sided with Gifi on the basis that Crocs’ footwear lacks the requisite level of novelty. In a statement responding to the ruling, a rep for Crocs stated, “The decisions are not final and Crocs is considering further appeal options where appropriate. One decision relates to the decision-making procedures of the EUIPO and does not call into question the Registered Community Design at issue. The second decision relates to validity challenges against a legacy Registered Community Design which have been ongoing for the last ten years.”

“Crocs’ business has not been significantly impacted by this ongoing issue during that period and it is not expected that the latest decision will have any immediate material adverse consequences for Crocs,” the spokesman asserted, also noting that Crocs’ Registered Community Designs are valid and enforceable during the appeals process.

In other Crocs-related intellectual property news, in its largest anti-counterfeiting effort ever, the Ecuadorian IP Office recently seized nearly 40,000 imitation Crocs items, including shoes and packaging. The action followed Crocs’ filing of an administrative infringement action in Ecuador, which sought and won an injunction against infringement of its registered marks there.

If you’re one of the billions of people around the world who followed the 2018 Winter Olympics in PyeongChang, South Korea or the Summer Olympics in Rio de Janeiro, Brazil in 2016, you saw some a wide array of spectacular performances. In PyeongChang, the American women’s hockey team win over Canada, clinching gold medals, which is something they had not managed to do in 20 years. Meanwhile, 17-year old Chloe Kim snowboarder took home a gold medal, after winning the women’s halfpipe, where she landed a near-perfect score of 98.25. In Rio, the takeaway moment for Americans was Simone Biles confirming her spot as the world’s best gymnast.

In addition to such striking levels of athleticism, you may also have noticed a flood of social media posts using Olympic-ralted hashtags – from #Rio2016 and #PyeongChang2018 to #Olympics and #TeamUSA. Given that the respective Olympic Games had both been dubbed the “most watched and talked-about Games on social media yet,” this isn’t surprising. What may be, though, is the silence of most companies regarding the games.

Whether on television or the internet, the vast majority of businesses are have to walk a fine line when it comes to their advertising activities in connection with the Olympic Games – whether in conjunction with promoting their own products or even just saluting their national teams. The reason for such strict rules is rooted in U.S. trademark law and other laws around the world created solely to protect the Olympics, and the International Olympic Committee (“IOC”)’s aggressive tactics when it comes to its rights.

Olympic properties under lock and key

The IOC, which organizes the Olympic Games, owns many Olympic-related trademarks – commonly referred to as the “Olympic properties.” These include the interlaced ring symbol, flag, anthem, motto, emblems, mascots, the word “Olympic” and other Olympic-related terminology for use on an sweeping array of products and services in various countries across the globe.

In the U.S., alone, the IOC’s registered trademarks include the Olympic rings, torch designs, the words “Olympic,” “Paralympic” and “Pan American,” as well as any other word or symbol that suggests an association with the USOC, the American team or the Olympic Games themselves. A recent search of the United States Trademark Electronic Search System reveals more than 200 trademarks, including “Olympian,” “future Olympian,” “road to Rio,” “rumble in Rio,” “train like an Olympian,” “let the games begin” and “go for the gold.”

In addition to relying on national trademark laws to protect its valuable assets, the IOC has also obtained unique, heightened protections that do not extend to other companies. First, a 52-country international agreement guards the interlaced ring symbol against commercial use without the IOC’s consent. Each signatory nation can receive a portion of the revenues generated domestically if the IOC does consent to specific uses of the symbol. Between the 1988 Seoul Games and 2004 Athens Games, more than $300 million was generated in licensing royalties, some of which went to the host countries.

Second, countries that host the games often create new, special laws to safeguard the Olympic properties above and beyond other existing laws. These laws prohibit certain marketing tactics by companies that are not official sponsors. These new laws typically provides much broader protection than basic trademark law and makes it easier to stop unauthorized activities. One day before Rio de Janeiro was chosen to host the 2016 Olympic Games, Brazil enacted the Olympic Act; it includes language that specifically protects the Olympic properties from unauthorized uses.

Don’t cross the IOC

Like the National Football League, which regularly and aggressively enforces its rights in the “Super Bowl” trademarks, the IOC is similarly notorious for its aggressive protection of the Olympic properties. Its stated purpose for this fierce vigilance stems from a desire to make sure “the integrity and value of the Olympic properties are respected.” 

This stance also extends to country-specific Olympic organizations. The United States Olympic Committee (“USOC”), for example, has stated that it is intensely protective of its Olympic properties because it does not receive federal money to support athletes; it is left to generate funds primarily through licensing, sponsorships and partnerships based on the properties. Unlike in other countries, American Olympic athletes are not financially supported by the government. There are no comprehensive statistics about how much these athletes get paid from the USOC, but media report their salaries are paltry. (One study found that half of elite American track and field athletes make less than $15,000 a year).

Fierce patrolling of the Olympic trademarks has led to significant clashes between the IOC, USOC and the public. In perhaps the most famous American case, the USOC successfully sued San Francisco Arts & Athletics, Inc. in 1982 to stop it from using the word “Olympic” in its Gay Olympic Games. The USOC has also threatened lawsuits against and forced name changes for the Ferret OlympicsRat Olympics and Olympets, among others.

So, who can actually use Olympic properties legally? Regular people, news entities and official sponsors are in the clear. TV companies paid more than $4 billion to broadcast the 2016 Olympic Games. The summer games’ 11 official sponsors were poised to make more than $9 billion in marketing revenue, and much of this value comes from keeping everyone else out.

Depending on how they are using the Olympics marks, other businesses and brands, including an athlete’s individual sponsors, may be severely restricted. The IOC did change its rules this year to allow athletes, for the first time, to tweet about their unofficial sponsors and do generic commercials that do not refer to the Olympics or use any Olympic properties. Olympic track star Allyson Felix, for example, has tweeted her ad for Bounty paper towels in this manner.

But despite the IOC’s aggressive tactics, unofficial sponsors and other businesses might also be in the clear. While the IOC may have trademark registrations for an array of Olympics-related terms, including ”Olympic,” it does not have the power to control all uses of the term. Just as the National Football League cannot prevent companies from using “Super Bowl” in a descriptive (i.e., non-trademark) manner, the same is true for the IOC and its Olympics marks.

Cease and desist your tweets

Even with these changes, the IOC and USOC make it difficult for non-sponsoring businesses. Just weeks before the 2016 Olympic Games began, ESPN revealed that the USOC sent reminder letters to businesses that had endorsement deals with Olympic athletes, but which are not official sponsors of the games. The letters reiterated that such companies “may not post about the Trials or Games on their corporate social media accounts,” including using “hashtags such as #Rio2016 or #TeamUSA.” In addition, the IOC asserted that unless the company is news-oriented, it is not allowed to speak about Olympic results, share photos taken at the Olympics, or retweet or share anything from official Olympic social media accounts.

Oiselle, an athletic wear company, is one unofficial sponsor that found itself at odds with the USOC. It received a takedown letter from the USOC after posting a photo of Kate Grace, a runner with an Oiselle endorsement deal, when she won the 800-meter race at the summer trials. According to the company’s CEO, such behavior is frustrating for smaller companies who contribute to individual athletes but cannot afford to be an official Olympic sponsor – that club is limited to 11 deep-pocketed multinationals including McDonald’s and P&G. It also harms athletes without big endorsement deals, who could better capitalize on their success if the boundaries were relaxed.

Shontavia Johnson is a professor of Intellectual Property Law at Drake University. (Edits/additions courtesy of TFL)

YouTube, Facebook, Twitter, and countless other online platforms are used to share all sorts of information, including video clips, pictures, art, poems, and other copyrighted works. A vast majority of the time, users upload and share copyrighted works without permission from the copyright owners. In some cases, the copyright owners may not object to these uses of their copyrighted works even though such uses may infringe their rights. In other cases, however, copyright owners adamantly object to any unauthorized use of their copyrighted works.

For example, Viacom (the owner of Paramount Pictures, MTV, Comedy Central, etc.) sued YouTube for $1 billion in damages because YouTube users had uploaded more than 150,000 clips of Viacom programming, which had been viewed more than 1.5 billion times. Thanks to the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”), YouTube was able to settle the case without paying any damages to Viacom.

The safe harbor provisions of the DMCA limit copyright infringement liability for online service providers that store information on systems or networks at the direction of their users if the service providers meet certain criteria. To be afforded the protections of the safe harbor, a service provider (i) must not have actual knowledge of the infringing material or activity, (ii) must not be aware of facts or circumstances from which the infringing activity is apparent, or (iii) must act expeditiously to remove or disable access to the infringing material upon learning of it.

Additionally, if the service provider has the right and ability to control the infringing activity, the service provider must not receive a financial benefit directly attributable to the infringing activity. 

The DMCA clearly places the burden of policing copyright infringement squarely on the shoulders of copyright owners. When a copyright owner finds that her copyrighted work is being infringed online, she can provide a take-down notice to the applicable service provider in order to have the infringing work removed. For the notice to be adequate under the DMCA, it must identify the copyrighted work, identify the infringing work with sufficient specificity that the service provider can locate the infringing work, provide contact information for the copyright owner and a statement regarding the copyright owner’s good faith belief that the complained of material is not authorized, and the notice must be signed under penalty of perjury. 

While the DMCA offers protections to online service providers, such service providers should take affirmative steps to ensure that they fall within the safe harbor provisions. For instance, any online service provider should consider providing instructions on its website for submitting copyright infringement take-down notices, including to whom the notices should be sent. Online service providers should also have procedures in place to promptly address such take-down notices, including procedures for expeditiously removing or blocking access to infringing works.

Copyright owners should also take advantage of the relatively simple take-down procedure provided for in the DMCA. The DMCA take-down procedure can enable a copyright owner to protect her copyrighted work without the time and expense of sending a demand letter or engaging in litigation.

J. Dustin Howell is an IP attorney and shareholder at Workman Nydegger. 

The term ‘the Streisand Effect’ was coined by Mike Masnick of Techdirt in 2005. It takes its name from Barbra Streisand whose ill-fated attempt to have photos of her Malibu home removed from an environmental activist’s website caused the photos to be spread more widely than before proceedings had been filed. Streisand’s lawsuit, which was ultimately dismissed, brought in more than a million visitors to the relatively obscure website. Since this incident the Streisand Effect has claimed many victims, most commonly in cases involving defamation, breach of privacy and copyright infringements.

The consequences that can result for copyright holders were further highlighted by an April 2012 decision of the High Court of the United Kingdom. In a decision in the case, which was filed by major record labels, including EMI and Sony, the High Court ordered British internet service providers, Everything Everywhere, O2, Sky, TalkTalk and Virgin Media, to block access to The Pirate Bay, a file-sharing website that allows users to illegally download content, including movies and television shows. While the immediate outcome of the case, which came just months after Sweden’s Supreme Court upheld the prison sentences of the four founders of The Pirate Bay, appeared to weigh on favor of the record labels, there was more to it than that. 

“This will just give us more traffic, as always. Thanks for the free advertising,” a spokesman for The Pirate Bay said on the heels of the court order, which would take weeks to come into effect. And The Pirate Bay rep was right. In the wake of the High Court’s headline-making decision, The Pirate Bay recorded a record amount of traffic, with the number of unique visitors to The Pirate Bay increased by a whopping 12 million.  

The practical outcome of the case creates concern for both companies and individuals about how to avoid similar fates.

How to avoid the Streisand Effect

By virtue of the public nature of court proceedings ensure, a matter appears on the public record. If the matter is even vaguely controversial, it tends to be picked up by news outlets and disseminated widely. With this in mind, and given the rate at which news is shared thanks to the rise of digital and social media, when a case does not absolutely necessitate it, legal proceedings should be avoided, especially when it comes to public-facing brands that stand to suffer reputation damage as a result. Instead, brands are generally encouraged to engage in a more subtle, less aggressive approach in order to deal with the matter at hand.

Such an approach can include engaging legal services to navigate the matter using alternative dispute resolution in order to avoid publicity and the excessive costs associated with litigation.

Where does this leave you?

Nobody wants to be a victim of the Streisand Effect and unfortunately for rights holders, trying to avoid it can feel like a catch 22. Leaving the material in question undisturbed on the internet can feel grossly inadequate. But the Streisand Effect demonstrates that using the wrong methods to try and have the material taken down will only draw more unwanted attention.

From a pragmatic perspective, going to court to defend copyright or privacy rights, for instance, can create more problems than it solves. If the matter is something relatively trivial or just simply embarrassing, it may be worthwhile for brands to consider waiting for the issue to be overshadowed by something more controversial, which is often a short window of time thanks to the sped-up nature of the news cycle. 

When the matter involves a serious violation of privacy or infringement of intellectual property rights, legal advice should be sought on how to approach the situation using alternative dispute resolution processes rather than pursuing aggressive and costly court proceedings.

Katrina Mawer is a Principal Lawyer at Crown Law Queensland and is based in the Brisbane office.

It is a well-established principle that owners of EU trademarks “with reputation” can claim a broader scope of protection than owners of EU trademarks that are not deemed to have a similar status. However, questions abound as to what exactly the “broader scope of protection” that such marks enjoy actually entails. The recent opposition brought by the owner of the trademark ‘NINA RICCI’ against the application for the word/device trademark ‘Roméo has a Gun, by Romano Ricci’ provides insight into what this broader scope looks like. Novagraaf’s Frouke Hekker sets out the key points of the ruling.

The registration of a trademark is only the first step in the effective use of a chosen brand, company or product name. In order to ensure valuable marks are protected and enforced, brand owners also need to monitor new applications to ensure that those potential new trademarks don’t infringe or potentially damage their existing rights. Where potential conflicts are identified, owners of earlier marks can raise an opposition (or challenge) to the newer trademark on the basis that it is identical or confusingly similar to their own rights.

To establish whether there is likelihood of confusion, the trademark registry will assess the visual, phonetic and conceptual similarity of the relevant trademarks, account being taken, in particular, of their distinctive and dominant components.

Broader protection for trademarks with reputation: EU trademarks “with reputation” enjoy a broader level of protection under European trademark law. Brand owners that are able to show that their EU trademarks are known to a large portion of the public cannot only act against younger identical and confusingly similar trademarks that are used for similar goods or services, but also against younger similar trademarks for goods/services that are not similar.

However, this higher level of protection is only applicable if the use of the allegedly infringing trademark is without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier EU trademark.

Does it take ‘unfair advantage’? Case law from the Court of Justice of the EU (“CJEU”) shows that a third party can be said to make unfair advantage of a trademark: “where [it] attempts, through the use of a sign similar to a trademark with a reputation, to ride on the coattails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of its own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark”.

Is it ‘detrimental’ to the earlier mark’s distinctive character or reputation? Detriment to a trademark’s distinctive character – also known as ‘dilution’ – relates to the risk that the third party’s use of the mark or similar marks would negatively impact the earlier trademark. The stronger the earlier mark’s distinctive character and reputation, the easier it will be to prove detriment.

When can a mark be considered to be a trademark with reputation? In order to qualify as a mark with reputation, an EU trademark owner must be able to show that the mark has a reputation in a substantial part of the EU. In practice, this means that there must be a certain degree of knowledge of the mark among the relevant public; however, CJEU case law states that this degree of knowledge can not be translated into a specific percentage. Instead, when examining the question of reputation, the relevant facts of the case needed to be taken into consideration; in particular, the market share held by the trademark, the intensity, geographical extent and duration of its use and the size of the investment made by the undertaking in promoting it.

Nina Ricci versus Roméo has a Gun, by Romano Ricci: In the opposition proceedings between the owner of the EU trademark ‘Nina Ricci’ and applicant for the word/figurative mark ‘Roméo has a Gun, by Romano Ricci’, the Board of Appeal of the EU Intellectual Property Office (EUIPO) ruled that the similarity between the marks was remote – the only similarity between the trademarks being the element ‘Ricci’. However, the word/figurative mark ‘Roméo has a Gun, by Romano Ricci’ was requested for identical goods, such as perfumes and clothing. Moreover, the reputation of the Nina Ricci brand was successfully proven.

The Board of Appeal concluded, therefore, that the trademark application for ‘Roméo has a Gun, by Romano Ricci’ had to be refused on the basis that applicant was attempting to profit from the reputation of the earlier mark. In addition, the phrase ‘has a gun’ was deemed detrimental to the reputation of the Nina Ricci trademark.

The applicant of ‘Roméo has a Gun, by Romano Ricci’ appealed to the CJEU without success. That court agreed with the ruling and added that the element ‘Roméo has a Gun’ could be understood as a specific product of the brand ‘Romano Ricci’. The CJEU also held that, because Nina Ricci is known for the use of flowery, romantic and classical themes for its products and the applicant of the word/figurative mark also chose flowery and romantic elements, the attempt to take unfair advantage by the applicant of the word/ figurative mark was underlined.

Frouke Hekker is the head of the Competence Centre, Novagraaf’s internal knowledge centre in the field of intellectual property.