This pages provides an overview of a number of non-criminal IPR infringement cases and describes how they would be treated by the [ffii:action:ipred2 IPRED2 directive] and various tabled amendments.
A. Trademarks/Trade names
Problem
The directive proposal encompasses not only trademark counterfeiting as practiced by criminal organisations, but also regular trademark conflicts between businesses.
Solution
Properly define the kind of trademark counterfeiting practiced by criminal organisations: [ffii:action:ipred2/ITRE_Tabled_Amendments#Art2New Am 32/ITRE], [ffii:action:ipred2/LIBE_Tabled_Amendments#Art3New Am CGB11/LIBE]
Examples
1. Edmunds.com, Inc. (US) v. emunds, General Delivery (UK)
(Source)
a. Summary
Complaint: lodged by Edmunds.com, Inc against emunds, General Delivery over the domain name "emunds.com" held by the latter.
Handled by: the WIPO Arbitration and Mediation Center.
Decision: the domain name "emunds.com" was awarded to the Complainant, Edmunds.com, Inc (US).
b. Evaluation under the directive
Commercial scale: the domain name "emunds.com" was being used for business purposes by emunds, General Delivery.
Intentional: the WIPO panel concluded that emunds, General Delivery registered the domain name "emunds.com" in bad faith to divert customers looking for Edmunds.com to its own business.
Therefore this would most likely have been a criminal act under the directive, even though there is no indication that emunds, General Delivery is/was criminal organisation.
2. Deutsche Telekom AG (DE) v. Pavel Elpl (CZ)
(Source)
a. Summary
Complaint: lodged by Deutsche Telekom AG against Pavel Elpl over the domain name "tmobilepictureworld.com" held by the latter.
Handled by: the WIPO Arbitration and Mediation Center.
Decision: the domain name "tmobilepictureworld.com" was awarded to the Complainant, Deutsche Telekom AG.
b. Evaluation under the directive
Commercial scale: the domain name "tmobilepictureworld.com" was being used for commercial purposes by Pavel Elpl.
Intentional: the WIPO panel concluded that Pavel Elpl registered and used the domain name "tmobilepictureworld.com" in bad faith since T-Mobile is a worldwide known brand and since he did not respond to a cease and desist letter and email sent by Deutsche Telekom AG.
Therefore this would most likely have been a criminal act under the directive, even though the supplied evidence and arguments do not suggest that these actions were related to (organised) crime in any way.
B. Database rights
Problem
Nobody has provided any justification whatsoever to include any form of sui generis database rights infringements in the scope of the directive. The Commission publish a report last year which concluded that no beneficial effect of the database rights directive could be demonstrated, let alone the need for criminalising infringements thereupon.
Therefore, including this right in the scope of the directive results in criminalising several regular business conflicts.
Solution
Remove sui generis database rights from the scope of the directive: [ffii:action:ipred2/ITRE_Tabled_Amendments#Art11 Am 21/ITRE], [ffii:action:ipred2/LIBE_Tabled_Amendments#Art11 Am CGB6/LIBE]
Examples
1. KPN v. XSO
(Source)
a. Summary
Complaint: lodged by KPN against XSO for providing data extracted from KPN's online telephone directory on its dedicated search engine page, without referring users to KPN's site.
Handled by: President District Court of the Hague.
Decision: the original telephone directory was deemed to be a database covered by the protection granted by the database directive, and XSO was convicted for infringement.
b. Evaluation under the directive
Commercial scale: the the extracted telephone directory data was being offered as a commercial service on the Internet.
Intentional: the data was purposefully extracted from KPN's online directory.
Therefore this would most likely have been a criminal act under the directive, even though XSO was a regular search engine company and not a criminal organisation.
2. France Télécom (FR) v. MA Editions (FR)
(Source)
a. Summary
Complaint: lodged by France Télécom against MA Editions for the republishing of phone directory data available on Minitel back on Minitel and on the Internet.
Handled by: Tribunal de commerce de Paris.
Decision: the original telephone directory was deemed to be a database covered by the protection granted by the database directive, and MA Editions was convicted for infringement.
b. Evaluation under the directive
Commercial scale: the the copied telephone directory data was being offered as part of a commercial service.
Intentional: the court found the defendants guilty particularly because they had not actively sought a licence from France Télécom, and moreover the latter had demonstrated its willingness to negotiate a license for a reasonable fee.
Therefore this would most likely have been a criminal act under the directive, even though MA Editions is a regular publishing company and not a criminal organisation.
