NEW DOMAIN DISPUTE RESOLUTION PROCEDURE IN ESTONIA
Estonian domain name reform1 will bring a new procedure for resolution of .ee domain disputes. A special dispute resolution body – the Domain Disputes Board (DDB) – will be established within the Estonian country code top-level domain manager, the Estonian Internet Foundation (EIF). The purpose of the DDB is to offer a fast, efficient and cost-effective alternative to civil court procedure by resolving conflicts related to registration and use of .ee domain names.
On 5 July 2010, Estonia switched to a new domain system which brought a number of important changes: individuals and foreign nationals are now able to register .ee domain names and one person can register more than one domain name. These changes will probably result in a significant increase in the number of domain name registrations: in the first two days after the reform, 1,329 new domains were registered according to the EIF2 and so far the number of new registrations has exceeded 4,000 (compared to 10,000 registrations per year under the old rules).
Together with the rising number of registrations, an increase in the number of disputes related to registration and use of domain names may also result as some people may view the reform as an excellent opportunity to make a quick fortune by hijacking domains and extorting money from prior right holders such as trademark owners.
Previously, in such cases prior right holders could only file a claim with the civil court, usually time-consuming and expensive. However, with establishment of the DDB prior right holders can now file a complaint with the DDB to challenge speculative or abusive registrations more efficiently.
Prior rights include trademarks valid and registered in Estonia; names of individuals; names of entities registered in Estonia; names of the state, local authorities and their agencies; and names of international and intergovernmental organisations.
It is possible to challenge any .ee registration in which:
- the domain name is identical or misleadingly similar to a prior right; and
- the registrant has no legitimate interest in the domain name or the domain name has been registered or is used in bad faith.
On receiving a complaint, the DDB asks the registrant for explanations concerning the disputed domain name. If the DDB decides in favour of the complainant, the board can annul registration of the domain name or transfer the right to the domain name to the complainant, depending on the relief sought.
It will take approximately two to four months for the board to resolve a conflict compared to over a year for a decision from a court of first instance.
According to present information, the DDB will start receiving complaints in August.
1 For further information about the reform, please visit the following page: http://www.sorainen.com/legal/newsflash/ee-intellectual-property-june-2010/en-print.html
WHY PAY FOR MUSIC IN YOUR OFFICE OR SHOP?
It is normal to hear recorded music in a shopping centre, in your favourite restaurant, even in the office where you work. But this music does not come for free. Business owners are paying not only for CDs or other records but are also under a duty to pay copyright and related rights levies to the creators of the music. Although this is nothing new, the duty still often causes surprised questions from business people due to lack of clarity as to why, to whom and how much to pay.
Let us start with the rationale for payment. Every piece of music is created by a smaller or larger number of people. A typical pop song may initially have a composer and creator of the lyrics. These are the authors owning the copyright to their creation. Then, actual performance needs someone to play the music and sing the words: often, a band with a lead singer. These are the owners of so called related or neighbouring rights. Creation of the song usually also involves a music phonogram, and the phonogram producer has related rights, too. All these people have contributed to the song you are listening to in your grocery store. And under Latvian Copyright Law, as in other European Union Member States, all of them have rights to allow or prohibit use of their work and to receive copyright levies every time their song is publicly performed. Public performance of a piece of music takes place when music is played beyond the normal family circle. This includes all situations involving playing music recordings in public: in shops, warehouses, factories – even in your office.
Clearly, it would be impossible to contact each and every owner of copyright and related rights of all the songs in order to obtain their permission to play the song and to agree with them on the amount of royalties. Therefore the Copyright Law provides that rights to public performance are managed on a collective basis. This means that a collecting society is established by the authors or owner of related rights to represent the interests of the authors towards those who want to use their works. As to collection of royalties for public performance of music, this is the right of only a single collecting society in each country for each type of right owner. This is to ease life for both authors and music users – you have only a one stop shop to get a license.
In Latvia, these one stop shops are: AKKA/LAA, which represents the rights of authors, and LaIPA, which represents the rights of related rights owners. In order to play music absolutely legally on your business premises, you have to conclude licence agreements with bothof them. This has recently surprised some clients, as AKKA/LAA has already been active in the market for several years and business people have already got used to it – not to mention its sometimes rather aggressive methods in collecting royalties. On the other hand, LaIPA has become more visible only recently as it received a license to collect royalties only in 2004.
As to the amount of royalties, under current Latvian Copyright Law collecting societies must agree tariffs with users of works or in some cases with associations of users. Many claims have been voiced by users that the tariffs are unfairly high, including complaints to the Latvian Competition Council, but little practical success has been achieved. Although the Competition Council did once establish that the tariffs applied by AKKA/LAA for public performance are unfair, the decision was overturned by the first instance court and final judgment is still pending. It is also possible to ask the court to set tariffs if users and collecting societies cannot agree but this option has not been widely used due to the length of litigation.
While waiting for additional clarity from the legislator, we may console ourselves with the thought that music authors and performers are creative people who deserve fair remuneration for their creations which we and the clients of our businesses enjoy. Even if we are sometimes dissatisfied with the tariffs applied by collecting societies, the right approach still should be to obtain a license for public performance of music. But the fight for fairer tariffs and a transparent collection system should also go on, and the legislator should be continuously urged to balance the rights of authors and users of their works.
Currently, the Saeima (Latvian Parliament) is reviewing changes to the Copyright Law which should result in the system for agreeing tariffs becoming more economically reasonable and transparent. The amendments propose that tariffs should be economically grounded, should be publicly accessible, and that associations of users will be able to challenge them so that collecting societies will be obliged to reconsider their tariffs. However, the final instance in the case of dispute will remain the court, as it is at the moment.
BIOTECHNOLOGY IN LITHUANIA
In the context of Lithuanian Innovation Strategy for 2010-2020 approved by Government Resolution No 163 on 17 February 2010, development of intellectual property in Lithuania is expected to increase. One of the strongest targeted areas is industrial biotechnology. It is important to remain aware of the legal implications of acquisition, management and enforcement of intellectual property rights during all stages of technology development end exploitation.
Since 2007 Lithuania has been fulfilling the governmental Programme of Industrial Biotechnology Development for the Period 2007-2010. Several diverse projects have been pursued by academic institutions implanting scientific inventions in the biotechnological industry. Reports for the period 2007-2009 show successful development of 23 new technologies and 14 products, 274 scientific articles and registration of 9 new patents of Lithuanian inventors. One of the most notable achievements may be development and release to the market of a 25-35% cheaper cancer medication (which is just as effective as an existing version) by Sicor Biotech.
A new Programme of Industrial Biotechnology Development in Lithuania for 2011-2013 is currently under consideration. The draft Programme stresses the existence of all necessary conditions in Lithuania for development of industrial biotechnology: some of the most sophisticated biotech companies in Central and Eastern Europe, such as Fermentas, Sicor Biotech and Biocentras, qualified scientists, sufficient supply of necessary resources, plus over ten academic institutions carrying out research in biotechnology. Responsibility for implementing the Programme is transferred from the State Studies Foundation to the Agency for Science, Innovation and Technology. Projected financing for implementation of the Programme is up from LTL 30 million (approx EUR 8.7 million) in 2007-2010 to LTL 50 million (approx EUR 15.5 million) for 2011-2013. The main tasks were supplemented with development of products for pharmaceutical and veterinary purposes.
The expansion of industrial biotechnology, like development of other innovations, is firmly associated with issues relating to protection of intellectual property rights. One of the more specific developments in this regard was adoption by the Minister of Education and Science of Recommendations for Science and Education Institutions concerning Rights Arising from the Results of Intellectual Activity on 1 December 2009. One of the main goals of the Recommendations is to create a model ensuring that partners in scientific projects commercialise the results of intellectual activity to the fullest extent possible, stressing the vital need to protect intellectual property rights arising from scientific inventions. Scientific and educational institutions are encouraged to conform to local strategy on protection of intellectual property rights and clearly determine how to use results of intellectual activity and how to properly secure intellectual property rights.
The Recommendations were prepared with an understanding that biotechnological innovations offer a high commercial potential; however, to ensure and maximize profitability it is essential to secure intellectual property rights, especially in view of the generally slow return on investment in the scientific field. The most problematic and often disputed issues from our experience as legal advisors in this field are:
- transparent and clear allocation of intellectual property rights plus distribution of profits in case of collective inventions and joint venture projects;
- provisions on intellectual property rights in employment agreements plus agreements with independent contractors;
- non-compete agreements;
- right clearance, which ensures absence of conflicts with existing prior intellectual property rights;
- proper choice of form of protection: while some innovations would be best protected by patents, some would benefit more from remaining as confidential information;
- early and non-secured disclosure of an invention, which may later prevent obtaining patent protection.
These and other issues should be clearly defined in the relevant company documents. Performing an intellectual property due diligence and subsequent troubleshooting plus development of a comprehensive internal intellectual property policy has proven very successful.
These recommendations apply equally to the biotechnology industry as well as to other fields based on intellectual activity.
SIGNIFICANT AMENDMENTS TO BELARUSIAN LAW ON TRADEMARKS
Trademark regulation in Belarus recently underwent substantial revision. Changes mainly concern the Law on Trademarks and developing legislation. On 25 January 2010, the following significant amendments to the Law on Trademarks entered into force:
List of symbols which can be registered as trademarks becomes non-exhaustive. Formerly the Law on Trademarks contained an exhaustive list of signs that can be registered as trademarks. The new edition of the law allows registration of non-listed types of signs if registration is allowed by other legal acts.
Trademarks can be owned by organisations that are not legal entities. Under the previous edition, only natural persons and legal entities could own trademarks. Now organisations that are not legal entities can also apply for registration of trademarks in their name.
Grounds for refusal of registration of trademark are supplemented. The Law on Trademarks provides for absolute and other grounds for refusal to register a trademark. The amendments touch on both of these. The new edition of the law prohibits registration of a trademark that consists solely of signs or designations used to indicate means of production or distribution of goods. Other grounds for refusal are supplemented inter alia with identical or almost the same trademarks which are confusingly similar to business names provided that a right to the business name has emerged before the date of priority of the trademark.
Chapter on well-known trademarks is introduced. The previous edition of the law mentioned the concept of well-known trademarks but did not specify how to recognise a trademark as well-known. A new chapter specifies that the body responsible for recognition of well-known trademarks is the Appellate Counsel being a special department of the National Centre for Intellectual Property.
Use of rights on trademarks is extended. The new edition of the law allows mortgage of rights on trademarks alongside assignment of rights and license of trademark.
Term for early termination of trademark registration is shortened. Formerly the Law on Trademarks allowed an interested party to claim early termination of registration due to disuse of a trademark for more than five years in a row, whereas the new edition of the law shortens the period of disuse to three years in a row. On expiry of three years, an interested party may apply to the Supreme Court for termination of trademark protection.
No registration of trademark related agreements is needed. One of the major changes in trademark regulation is abolition of mandatory registration of agreements on assignment, license and mortgage of trademarks. Now the parties to these agreements need only notify the patent body of conclusion, modification or termination of an agreement. Notification should be filed in one of the forms approved by Resolution of the State Committee on Science and Technology as of 12 January 2010 No 1.
Definition of counterfeit goods is incorporated. The new edition of the Law on Trademarks specifies that goods, labels and packages containing illegal reproduction of a trademark or other designation confusingly similar with the trademark are considered counterfeit.
Thus the new edition of the Law on Trademarks reflects the main trends in improvement of trademark regulation. Some secondary legislation has been recently adopted to implement the changes.
Successful case against lookalike product in Estonia
SORAINEN Estonia formed part of the team advising and representing Mast-Jägermeister in its successful trademark infringement litigation against an Estonian producer of alcoholic drinks imitating the client’s legendary Jägermeister trademark. The label of the opponent’s product Ürdimeister was found to infringe the trademark rights of Mast-Jägermeister. Jägermeister and Ürdimeister target a similar clientele, as both are herbal liquors with high alcohol content. Harju County Court (the court of first instance) granted the claim, ordering the opponent to cease use of the infringing label and to refrain from using it in the future. This is one of the very few successful cases against lookalike products in Estonia.
SORAINEN registers almost 10% of all new domain names in Estonia at the start of the reform
SORAINEN Intellectual Property Practice in Estonia has gained valuable experience from the start of the .ee domain names reform on 5 July 2010. New rules abolish restrictions on the number of domain names and allow natural persons and foreigners to register domain names under .ee. Within the first two days of the launch of the new domain rules SORAINEN registered almost 10% of all new domain names in Estonia on behalf of clients.
New rules and new dispute resolution body for settling domain disputes in Estonia
SORAINEN Estonia drafted the Rules of the Domain Disputes Board – a newly established alternative dispute resolution (ADR) body for settling .ee disputes. It is expected that together with the rising number of .ee registrations, the number of disputes related to registration and use of domain names will increase. The Estonian ccTLD manager, the Estonian Internet Foundation, decided to establish a new ADR process for .ee disputes to enable prior right holders to challenge speculative or abusive registrations more efficiently. SORAINEN was chosen to draft the rules for settling disputes.
Copyright dispute over a well-known Latvian musical play
SORAINEN Latvia is representing a client in a copyright dispute related to claims by a young Latvian writer that he wrote the script for the musical play “Vadonis” currently being staged at the Latvian National Theatre. The case has caught wide public attention due to the popularity of the play and public discussion of the copyright dispute before the claim was brought to court. The co-defendant in this case is the Latvian National Theatre which along with the poet has been sued by the young writer. The case involves fundamental copyright issues in the field of music and musical plays. The case is currently pending.
You have received this e-mail with the Intellectual Property Legal Update because you are in the SORAINEN database.
If you are not interested in receiving our Intellectual Property Legal Update in the future, please reply by clicking here.
Please note that this legal update is compiled for general information purposes only, free of obligation and free of legal responsibility and liability. It does not cover all laws or reflect all changes in legislation, nor are the explanations provided exhaustive. Therefore, we recommend that you contact SORAINEN or other legal advisor for further information. Electronic versions of SORAINEN legal updates are available and can be subscribed to on the SORAINEN website – www.sorainen.com.
© SORAINEN 2010
All rights reserved