General

Question 1

Trade Secret

Answer 1

Requirement:

1) Secret
2) Commercial value
3) The reasonable step is taken by the company to protect this secret

we have the legal framework:

• PC article 10 bis
• TRIPS article 39
• In EU Directive 2016/943

Question 2

What is the difference between the patent and trade secret?

Answer 2

most of the time paten has 90% of value in the company. they have two choices or paten or trade time.

• limited in time, a trade secret is not limited to time. e.g. Coca-Cola. Paten is limited to time.
• no registration. (Trade Secret does not involve in registration. paten take much time to register it.
• Automatic protection. is protected as such. the same as copyright.
• no disclosure. Paten needs to be disclosure.

disadvantages:

• difficult to enforce comparing to patent (you need to prove requirements above and on circumstances copying trade secret on the unfair way)
• patented by so one, when someone discovers trade secret, he can patent trade secret, and he will get the right and etc.

when someone discloses a trade secret - they lose the status of the secret. it’s not anymore a secret.

Question 3

trade secret cases

Answer 3

formula 1 (racing contest, Ferrari, Mercedez) they always invent new kinds of the engine.)

case Ferrari v Mercedez
Facts: one of the employees wanted to quit the Mercedez and after he wanted to go to Ferrari team. Where he disclose some information. The court deciding was it disclosing the trade secret or not.

American
trade secret was accessible to the public so it can not be a secret anymore.

Conclusion:

• the very high asset to IP protection.
• sometimes company prefer trade secret than patent
• it is intangible, not tangible
• limit the secret info to his employes.
• document of the secret non-disclosure agreement

Question 4

IP and Internet

Answer 4

1) Hyperlinking what is authorized and what is not?

2) Digital Exhaustion

Question 5

Hyperlinking

Answer 5

1) linking - Hyperlinking. it is a technique to redirect a user from one hyperlinking website to another targeted website. it is done by a link of homepage or hyperlink to the deep page of the targeted website.
2) Framing and Embanning (the user will be redirected to the targeted website, difference the content of targeted website already displayed, appears within hyperlinking website, there is redirection but the content is already displayed on the new website.)

in terms technical aspects or similarities all of those techniques. the targets websites steels stores and controls the content,
remember the user is always redirecting, the targeted website maintains the control over the initial content, the e.g if the initial website will decide to remove the targeting content, even so, hyperlinking doing the redirect to this content, then this content will disappear and won’t be any more accessible. so target websites remain the control over the content. and linking website just display, redirect to the content to the internet user. then due to this technic, its done every day on the internet. Usually, it is done daily by newspapers. news aggregator which provide links to social media. questions were raised by ICJ, is it lawful copyright act or not?

the act of communication (copyright act)
because it is freely

two cases with respect to hyperlinking and framing: Svenson and BestWater.

Svenson (Swedish journalist) sued a newspaper aggregator for hyperlinking to his website, to his content. he thought it was the unlawful act to redirect his content to news aggregators.

Best Water has the same question. BestWater was a company for water filtration. Who sued the third party competitor for framing their videos coming from YouTube. Initial company was providing video on YouTube. And competitors framed this video on their own website. REMEMBER the contents is remains on the initial resource. Youtube remains the content.

In both cases claimant wanted to sue for infringing their copyright rights, but the court said it was not the unlawful act that shall be prohibited. in those both cases court said:

1) its an act of communication. (to do hyperlinking or framing)
2) new public.

it’s not lawful because the content is freely accessible. so there was not a new public.

in both cases, there was not fulfilled new public, because the content was freely accessible.

in GSM Media the content was not freely accessible. it was with the consent of an initial owner.

GSM Media was dutch company website provides scandal news. people news aggregation. they received information from Australian website where to find a picture of naked dutch women (celebrity), where copyright was owned by Playboy magazine. When Playboy magazine discover that GSM Media redirecting this copyright content they sad please remove this redirection, because of we never accept, we will never consent to access to this content of pictures.

GSM Media refused, they thought they are on the right side, because hyperlinking is lawful. GSM is said opposite that in cases in Stevenson and BestWater, that there is a new public, GSM is expanding

because this consent was not made freely accessible, there is a new public, GSM Media is expanding to the public and their

to be unlawful with a knowledge with unlawful content.

GSM need to know that is the unlawful content. and only with this knowledge it will be prohibited act. where is the financial case there is presumption knowledge?

if you share a link to website like a Piratebay it will be unlawful act.

Question 6

Digital exhaustion

Answer 6

any right holders has the right to distribute the product and decide when and where to put the product on the market. and once it on the market there is the right to distribute its exhaustion. another words anyone can buy it and resell it

international exhaustion

it for tangible goods. when once it on the market its exhausted.

in the question of the digital exhaustion, where someone buying a digital file e.g: software, music file. once use is buying shall he also resell it ? cause there should be also the exhaustion of right holder.

there are two case one in Europe and second in US.

Usoft case. it was a company who was selling second hand softwares. So they found that many companies have bought the softwares but they were not anymore using it. and they decided to take them and resell it to third parties. second hand sells of softwares.

is it first right holders loses the right once he sold the software?

ECJ we need to apply the same principle of the tangible goods to the digital world. because the way of selling is exactly the same if it was the selling of the tangible goods,

but to apply the same principle of selling a tangible good as to digital good. it shall be first 1) purported linceses where the soft will require forever by the purchaser
2) for remuneration equal for sale

and if these is fulfilled will be the same as a tangible good.will apply to the distribution right and then will be exhausted

Question 7

What is Copyright Treaty WCT?

Answer 7

is a special agreement under the Berne Convention that deals with the protection of works and the rights of their authors in the digital environment

Question 8

what are two subject matters to be protected by copyright??

Answer 8

1. computer programs, whatever the mode of form of their expression;
2. compilations of date or other material (databases), in any form, which, by reason of the se selection or arrangement of their contents, constitute intellectual creation. (database does not constitute such a creation, it is outside the scope of this Treaty)

Question 9

What is this treaty also grants ?

Answer 9

1. the right of distribution
2. the right of rental
   3 a broader right of communication to the public.

Question 10

What is the right of distribution ?

Answer 10

is the right to authorize the making available to the public of the original and copies of a work through sale or other transfer of ownership

Question 11

What is the right of rental?

Answer 11

is the right to authorize commercial rental to the public of the original and copies of three kinds of works:

1) computer programs )excepts where the cpmputer program itself is not the essential object of the rental
2) cinematographic works (but only in cases where commercial rental has led to widespread copying of such works, materially impairing the exclusive right of reproduction_
3. works embodied in phonograms as determined in the national law of Contracting Parties (except for countries which, since April 15, 1994 have had a system in force for equitable remuneration of such rental

Question 12

What is the rights of communication to the public?

Answer 12

is the right to authorize any communication to the public, by wire or wireless means, including “the making available to the public of works in a way that the members of the public may access the work from a place and at a time individually chosen by them. the quoted expression covers, in particular, on-demand, interactive communication through the Internet.

Question 13

What states in the article 6 the right of distribution?

Answer 13

1) authors of literary and artistic works shall enjoy the exclusive right of authorizing the making available to the public of the original and copies of their works through sale or other transfer of ownership.
2) Nothing in this treaty shall affect the freedom of contracting parties to determine the conditions, if any, under which the exhaustion of the right in paragraph (1) applies after the first sale or other transfer of ownership of the original or a copy of the work with the authorization of the author.

Question 14

±

Answer 14

the word “Copy” is tangible goods
the word “duplicate” for digital goods

so we

Question 15

±

Answer 15

RDG US case
was s company who wanted to resell digital songs and they asked any internet user who bought iTunes songs to pass on this platform to resell the digital song.

the same question: the claimant (recording industry try to say RDG doing infringement because distribution right does not apply to the digital environment. US court said it is unlawful act, shall be not applicable a distribution right, because every time when RDG reselling a digital file there is a new copy made by purchaser. and once there is a new copy . What is the copy of digital file, specific copyright, when im downloading a song what copyright act im doing? - right of communication one who uploading, and person who downloading doing right of reproduction.

RDG said that the exhaustion of the distribution right is irrelevant in this case because overtime when the purchaser downloading the file, he is doing reproduction right which is not not cover with exhaustion of the distribution right. thats why its prohibited act.

Question 16

Case study

Answer 16

1) PhoneCorp company based in Japan (Japanese manufacture mobile phones.) which are sold worldwide under thename CoolPhones (for which they register an international trademark. this trademark was worldwide. )

then came counterfeited CoolPhones which were offered for sell on the website associated with the domain name coolphone.com which was register with an Australian register by a Panamean company, the server of which were located in the South Africa, and the website www.coolphones.com target exclusively customers in North America

Mr. Business original from Switzerland who bough the original “CoolPhones from North America and resold them in EU through its own shops, irrespective the elusively distribution of network of PhoneCorp.

Basic General Jurisdiction

201 (1) ALI states that PhoneCorp (is the resident) can sue counterfeiter in Panama for any phone sold worldwide, Panamean court can say phones sells worldwide, damages accesses in US, Canada or in another country,

Principle of international private law:

1) jurisdiction, where PhoneCorp can sue the third party.
2) applicable law
3) how judgment enforced abroad
4) what is the enforcement measures can be asked by the claimant.

lecture 3

Question
1) where PhoneCorp can sue for a counterfeiting: North America (because it is targeted jurisdiction.) ALI principles 204:2

language may be relevant, but english is already worldwide spoken, so english maybe wont be relevant. also currency, domain name, .com the same problem like english.
specific:
phone numbers, currency, languages, domain name .es .ua

tangible ships are shipped the delivery of the tangible goods

Question 17

What is the Factors for Determining Commercial Effect in a Member State?

Answer 17

(1) [Factors] In determining whether use of a sign on the Internet has a commercial effect in a Member State, the competent authority shall take into account all relevant circumstances.

Circumstances that may be relevant include, but are not limited to:

Use of a sign on the Internet shall constitute use in a Member State for the purposes of these provisions, only if the use has a commercial effect in that Member State as described in Article 3.

(a) circumstances indicating that the user of the sign is doing, or has undertaken significant plans to do, business in the Member State in relation to goods or services which are identical or similar to those for which the sign is used on the Internet.
(b) the level and character of commercial activity of the user in relation to the Member State, including:
(i) whether the user is actually serving customers located in the Member State or has entered into other commercially motivated relationships with persons located in the Member State;
(ii) whether the user has stated, in conjunction with the use of the sign on the Internet, that he does not intend to deliver the goods or services offered to customers located in the Member State and whether he adheres to his stated intent;
(iii) whether the user offers post-sales activities in the Member State, such as warranty or service;
(iv) whether the user undertakes further commercial activities in the Member State which are related to the use of the sign on the Internet but which are not carried out over the Internet.
(c) the connection of an offer of goods or services on the Internet with the Member State, including:
(i) whether the goods or services offered can be lawfully delivered in the Member State;
(ii) whether the prices are indicated in the official currency of the Member State.
(d) the connection of the manner of use of the sign on the Internet with the Member State, including:
(i) whether the sign is used in conjunction with means of interactive contact which are accessible to Internet users in the Member State;
(ii) whether the user has indicated, in conjunction with the use of the sign, an address, telephone number or other means of contact in the Member State;
(iii) whether the sign is used in connection with a domain name which is registered under the ISO Standard country code 3166 Top Level Domain referring to the Member State;
(iv) whether the text used in conjunction with the use of the sign is in a language predominantly used in the Member State;
(v) whether the sign is used in conjunction with an Internet location which has actually been visited by Internet users located in the Member State.
(e) the relation of the use of the sign on the Internet with a right in that sign in the Member State, including:
(i) whether the use is supported by that right;
(ii) whether, where the right belongs to another, the use would take unfair advantage of, or unjustifiably impair, the distinctive character or the reputation of the sign that is the subject of that right.

(2) [Relevance of Factors] The above factors, which are guidelines to assist the competent authority to determine whether the use of a sign has produced a commercial effect in a Member State, are not pre-conditions for reaching that determination. Rather, the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in paragraph (1), above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed in
paragraph (1), above.

Question 18

what article determines the factor of commercial effect in the Member states?

Answer 18

it is the article 3 of Joint Recommendation Concerning Provisions on the Protection of Marks,
and Other Industrial Property Rights in Signs, on the Internet

Question 19

Principle of target?

Answer 19

Pable beach US court wanted to limited a jurisdiction to targeted market.
Mikel Kadi british citizen was owning a website BnB and the trademark owner in the US did not create a jurisdiction because there have not been a targeting activity in the US market, only BnB in UK

there was not targeting market in US, only in UK.

What happen in EU? what is the principle in the EU?

Decision in Peter Pinckney v. KDG Mediatech

copyrighted songs where sold on the website in the UK for the court was the fact that the website was accessible in France in Toulouse this could create a jurisdiction.

So they said as apposed to the targeted principle they said accessibly principle is enough to create a jurisdiction.

WIPO Recommendation

Question 20

What is principles of Jurisdiction (result = Minimum contact)

Answer 20

• Defendant’s domicile (ALI art 201 (1)
• Choice of court, but:
  + imperative jurisdiction for consumer
  + validity of standard agreement in mass market contract
• Place of harm:
  + place of the event giving rise” to the damage (=act) or “place where the damage occurred” (=result) Art 5 LC
  + substantial or preparatory activities in a specific State (art. 204 (1) ALI
  + activities directed to a specific State (Art. 204 (2) ALI
  +Commercial effect in a State (art 3 WIPO recommendation
• Country of IPR registration for validity of registered IP-Rights

Question 21

What is the Basic General Jurisdiction?

Answer 21

ALI art 201 (1)

Question 22

What is applicable law (result = Territoriality vs concentration)?

Answer 22

• Law where the protection is sought/ IP - Right registered (possible multiple laws), unless
  + Choice of law; or close connections
  + Mandatory rules / Order public

Question 23

What is recognition/Enforcement (result=Still uncertain)?

Answer 23

• Broad recognition
• No enforcement in certain cases (e.g. unfair judgement)
• Public policy (e.g. punitive damages)
• Declaration of invalidity

Question 24

Applicable law

Answer 24

North American proceeding:
- US court will apply American law (targeted market is)
register right applicable law is the law where the IP is register. us trademark law.

Panama (competent general jurisdiction):

art 321 ALI ibicvitus infringment to chose one law with closes connection criteria:

• parties resist
• investment made by parties
• relationship
• targeted market

Enforcement:
Once PhoneCorp has a decision in and wants to enforce it in Panama, because the counterfeiter is located in the Panama, lets assume that US decision is giving important damages, How PhoneCorp can enforce decision in Panama?
Can they enforce this decision in Panama?
- ALI 401: principle of enforcement, basically all decision shall be enforce. if principles of ALI was followed correct:
- fair process,
- correct jurisdiction
- etc

if the principle have been followed and the judge showed enforce and recognize foreign judgment, monetary relief should be accepted to the amount of each state would have to be awarded.

Question 25

Types Enforcement measures

Answer 25

What PhoneCorp can ask ?

• Criminal
• Civil
• Administrative

1) boarder measure
2) lost profit, reasonable royalty, unfair profit.

Seizure - is

Question 26

What is the purpose of enforcement ?

Answer 26

it may be:

• the payment of a specific sum of money
• the handing-over of a particular item
• the obligation to do smth
• refrain from doing smth

Question 27

What kind of measures

Answer 27

• seizure mesure Administrative and civil
  saisie-contrafacon in France
• anton pillar order in UK ,
• injunction to stop infringement, - then for damages seizure

unfair profit will be easier to proof that lost of profit. without infringing they would buy this product.

if someone will buy a Rolex for 1000$ and the profit usual 10000$ so its difficult to profit the lost of profit.

Criminal measures

Question 28

What we will do with Mr, Business in PhoneCorp case?

Answer 28

Mr Business buying the original product from US and bring it to EU.

What would you claim if you want to stop him?

is it exhausted ?
on which applicable law?- European Trademark law

• ip right is register ALI 301: A for each party register
  1) you need understand what is applicable law (EU law) regional exhaustion.

in North America it respected to those countries but not in EU, so PhoneCorp can sue him.
what type of measures you would ask? - injunction 
 lost of profit ? 
What is the condition for conjunction? 
- urgency 
- preliminary injunction 
- balance of the rights
What is the condition ? 
What is the conditions for damages? 
causation principles 

What about criminal measures?

• commercial activity
• intention
• negligence

administrative measure

• to stop
• prevent to sell

Question 29

Case 3

Answer 29

• jurisdiction: domicile UK
• applicable law: UK law
• infringement patent in Patria1
  Can court enforce the judgment in Patria 1 and 2

What type of infringement is here? - copyright, trademark, patent.

Patent right infringement:

• applicable law 301:1 (A) register right
• in Patrian law

Trademark infringement 
- in UK law
- sent a seizure letter to E-pod 
- every country where e-pod was sold apple can ask for damage lost of profit.  
not the same product and service ipod 

is ipod trademark valid - yes
descriptive trademark
descriptive itself. describe his product it self.

trademark always protect unless it is well no trademark.

Copyright infringement 
what is applicable law of copyright infringement law ? 
- resident or display there work
ALI 304:1 (B) ?????
the law where the protection is sought 

in Patria 1 can they claim the infringement. no trademark, copyright infringement (they do not have any services there) only paten infringement

Question 30

Case 1 “PhoneCorp”

Answer 30

Facts:

• PhoneCorp is a japanese manufacturer of mobile phones which are sold worldwide under the name “CoolPhones” (for which an international trademark has been registered)
• Counterfeited “Coolphones” (difference in letter p n P) telephones are offered for sale on the website associated with the domain name www.coolphones.com (which was registered with an Australian registrar by Panama company, the server of which is located in South Africa). The website www.coolphones.com targets exclusively customers in North America

Mr. Business, resident in Switzerland, buys original “CoolPhones” in North America and resells them in EU through its own shops, irrespective of the exclusive distribution network of PhoneCorp.

Issue:

do we have an infringement of trademark between CoolPhones and Coolphones?

What is the jurisdiction ?
What is the applicable law?
What is enforcement?

Question 31

What is the exhaustion ?

Answer 31

The term “exhaustion” refers to the generally
accepted principle in intellectual property law
that a right owner’s exclusive right to control the
distribution of a protected item lapses after the fi rst
act of distribution. In many countries, once the item
has been put on the market by or with the consent
of the right owner, the exclusive distribution right
is “exhausted” (the principle is referred to in some
jurisdictions as the “fi rst-sale doctrine”) and further
circulation of that item can no longer be controlled
by the right holder.