IT/IP: Google and brand searches

first_imgA landmark decision from the European Court of Justice will have brand owners checking whether, and how, third parties use their brands as internet search terms. When a point of law is so significant that judgment on it hits the national press, you can be sure that lost in the excitement will be that most fundamental of questions for practitioners: what does this mean for my clients? Such is the case in the much-anticipated Google AdWords decision of the ECJ (Google France SARL, Google Inc. (C-236/08 to C-238/08), 23 March 2010). When an internet user types words (a ‘search term’) into a search engine such as Google, the search engine ­displays the sites which appear best to correspond to the search term, in decreasing order of relevance. These displays are known as the ‘natural’ results of the search. Alongside the natural results, search engines also display sponsored links that are relevant to the search term. Type ‘holiday’ into Google and a number of sponsored links appear above and to the right of the natural results, the lead one being ThomasCook.com. Next to each link will appear a couple of sentences of advertising, designed to encourage you to click on the link. Sponsors pay Google a ‘maximum price per click’ for a sponsored link. Sponsored links appear ranked in order, depending on which sponsor has agreed the highest maximum price per click, the number of previous clicks on the link, and the quality of the sponsor’s advertisement. But what happens if your search term is also a trademark? Type in the trademark Interflora, and a sponsored link for Marks & Spencer Flowers Online will appear. The problem with this from Interflora’s point of view is that users might then click through to the M&S website, and not to the Interflora website, to buy their flowers. A worse threat to brand owners is sponsored links that might tempt away users with copycat products. All over Europe, brand owners have been trying to stop third parties from using their brands as sponsored search terms, by bringing claims for trademark infringement against Google and against the sponsors that used their brands in this way. A number of these cases were referred by the national courts to the ECJ to determine certain key points, and the ECJ has answered four of these – from France and Austria – together. The first question before the ECJ was whether Google itself was primarily liable for trademark infringement, on the grounds that it was storing the trademark names as search terms, and profiting from that storage. The answer from the court was a clear ‘no’. The relevant provision (article 5 of Trade Marks Directive, 89/104) states that for a party to be said to have infringed a trademark, they must themselves have ‘used’ that trademark. The ECJ held that for Google to have created the technical conditions for third parties to use a trademark did not mean that it was itself using the trademark. That was the case, even if it profited from those conditions. The next question for the ECJ was whether the third party advertisers were liable for trademark infringement, on the grounds that they select the trademark as a key word, and use it to generate sponsored links to websites offering identical goods and services. The ECJ’s answer draws up the battlelines for future litigation and so stands to be quoted in full. The ECJ said that third party advertisers could be liable, ‘in the case where the ad does not enable the average internet user, or enables that user only with difficulty, to ascertain whether the goods and services referred to therein originate from the proprietor of the trademark or an undertaking economically connected with it or, on the contrary, originate from a third party’. So, the question of whether an advertiser will be liable for trademark infringement will hinge on whether the average internet user can tell that the goods advertised in a sponsored link do not come from the trademark holder or anyone ‘economically connected’ to them (for example, trademark licensees). As to where the line should be drawn on this point – that is, how in practice an advertiser might phrase its sponsored link and accompanying advertisement so that it will not confuse the user – the ECJ did not say. The view at M&S seems to be that labelling its sponsored link Marks & Spencer Flowers Online/Blooming Flowers and Plants at M&S is enough to avoid confusion with Interflora, since that is the wording that still appears when you type Interflora as a search term. On the other hand, if you type M&S into Google, then the M&S website will appear, but not a single third party sponsored link. M&S’s competitors seem to be nervous of using the M&S trademark as a search term at all. Although the ECJ held that Google could not be held primarily liable for trademark infringement, Google can only half exhale. In some European jurisdictions it may incur a secondary liability, should it be regarded as an accessory to trademark infringement by an advertiser. With this in mind, the ECJ considered a third question, on whether Google could rely on a defence under article 14 of the E-Commerce Directive (2000/31). Article 14 provides that the provider of an ‘information society service’ cannot be held liable for data which is stored at the request of a user. So, for example, internet service providers have a defence under the directive to claims in defamation for comments that users might publish through their services. The question for the ECJ was whether sponsored links constitute an ‘information society service’ and so fall into this protected category. The ECJ held that they do, so long as the service provider has not played an active role of such a kind as to give it knowledge of or control over the data stored. That is not the end of the story for Google, because the article 14 defence falls away if the provider becomes aware of the unlawful activities, for example because of information supplied by an injured party, and then fails to expeditiously remove or disable access to the data. In other words, it seems that if a search engine is given notice of an advertisement that infringes a trademark, and fails to act expeditiously to remove it, then it could still find itself liable. So what happens now? Although these decisions were major successes for Google and brand owners, they weren’t quite the full marks that they might have scored. There is scope for further litigation between brand owners and competitors that continue to use their brands as search terms, as to whether or not the sponsored link and accompanying advertisement sufficiently distinguishes the competitor from the brand owner. There is also scope for litigation between brand owners and Google, should brand owners notify Google of a perceived infringement and Google disagrees with them. The judgment also leaves open some important questions: is the legal position different for natural search results? Is the position stronger for well-known trademarks, which enjoy a special protection against a third party taking unfair advantage of their reputation or distinctive character (article 5(2))? Some guidance on the practical application of the principles set out by the ECJ may come from national courts. In the UK, for example, the litigation between Interflora and M&S is still live. But, on the internet, custom and practice often come to count for as much as hard law. For all that the world wide web is hard to govern, it is a surprisingly consensual place. A pattern of dos and don’ts for sponsored links may well start to emerge. Richard Taylor, DLA Piper, Yorkshirelast_img read more

Greenwich law centre on the brink

first_imgGreenwich Community Law Centre is facing closure after the local council axed its funding. The London borough’s cabinet decided last week to discontinue an annual grant of nearly £200,000. Cash will instead be set aside for the provision of legal advice by Citizens Advice, Greenwich Housing Rights and Plumstead Community Law Centre. The decision means the charity, which employs seven legally trained staff and has around 750 open cases, only has enough money to last until the end of the month. Greenwich CLC has been running for 27 years and offers two weekly drop-in sessions and free legal advice over the phone. Julie Bishop, director of the Law Centres Federation, said the centre has a legal aid contract and will be looking to see how it can keep going. But she warned that the 10% cuts to legal aid fees that will be introduced on 1 October leave law centres ‘very vulnerable’. Of the 54 law centres, eight receive 75% or more of their funding from legal aid. Bishop warned that those centres did not have 10% margins and will struggle to survive once the cuts take effect. The federation warned in August that a third of law centres may go under as a result of government cuts.last_img read more

Sentencing

first_img Attorney General’s Reference (No 64 of 2011); R v Crawford: Court of Appeal, Criminal Division (Lords Justice Pitchford, Wilkie and Mr Justice Holroyde (judgment delivered extempore)): 14 September 2011 The offender, aged 19, then aged 18, lived, with his mother on an estate in Hammersmith, West London, that was known for drug dealing and anti-social behaviour. During the early hours of Wednesday 27 April 2011, the victim, a restaurant manager, had left work and was making his way home on foot. The street was quiet. As he was crossing the road, the offender, dressed in a black hooded top with the hood up, and black baggy trousers, approached him and took hold of his shoulder bag. The offender pointed a kitchen knife with a serrated edge at the victim. The victim attempted to pull away and he moved into the road. The offender made some jabbing motions with the knife in an apparent attempt to stab the victim to the side of his body. The victim fell to the ground and the offender removed his bag from his shoulder and made off. A member of the public witnessed the robbery and called the police, who arrived shortly thereafter. The offender was arrested near to the scene and he was found to be in possession of the knife and the victim’s bag. The offender, who had no previous convictions, was arrested. He immediately made admissions to the offence and he also did so in interview with the police. He contended that he had been returning from a friend’s home, that he had found the knife on the ground in the market area, and that he had picked it up and formed the intention to rob someone as he had needed money. The offender had a previous caution for possession of crack cocaine and cannabis. It was submitted at the sentencing hearing that the offence was a level two offence for which the recommended starting point was four years’ custody, with a range of between two and seven years’ imprisonment. A pre-sentence report noted that the offender had become involved in drug dealing for financial reasons. It assessed him as presenting a high risk of harm to the public and noted that the instant offence represented an escalation in the seriousness of his offending. The pre-sentence report recognised that the guidelines of the Sentencing Guidelines Council recommended a custodial sentence but it stated that the court might wish to consider the highly exceptional course of suspending the sentence in the light of the mitigating factors, which included: (i) the plea of guilty; (ii) the offender’s lack of intent to excuse his behaviour; (iii) his regret and remorse for committing the offence; (iv) his lack of previous conviction; (v) his relatively young age; and (vi) his developing maturity, including the fact that he had enrolled on an NVQ course on motor vehicle maintenance repair. In addition to the mitigating factors highlighted by the author of the pre-sentence report, was the offender’s obvious frankness in interview with the police and with the probation officer. The aggravating factors were: (i) that the offence had been committed at night, in an apparently deserted area; and (ii) the persistence with which the offender had waved the knife at the victim, causing the victim to believe he would be stabbed. The offender’s behaviour was of concern to his mother and the sentencing court had sight of her letter expressing that concern and her support of the offender’s efforts to reform his life. In the event, the judge accepted the offender’s explanation of how he had come by the knife in question and, having taken account of all aggravating and mitigating factors and of the guidelines, he sentenced the offender to 12 months’ imprisonment, suspended for two years, with a supervision requirement and an order that the offender do 200 hours of unpaid work. The attorney general sought leave, pursuant to section 36 of the Criminal Justice Act 1988, to refer the sentence to the Court of Appeal, Criminal Division, as unduly lenient. Leave was granted. There was evidence before the Court of Appeal that the offender, who attended the appeal hearing in person, had attended appointments as ordered for some eight weeks, that he had completed some 65 hours of unpaid work, that he was imminently expecting a baby with his girlfriend, and that he had not committed further offences. The attorney general submitted that the sentence was unduly lenient and fell outside the appropriate sentencing range for the instant type of offences. The court ruled: In the instant case, taking all factors into account, there had been no justification for the judge adopting a starting point of less that three years’ detention in a young offenders institution. The offender was entitled to a discount of 12 months in the light of his guilty plea. Accordingly, the appropriate sentence was one of two years’ detention. It followed that the sentence of 12 months’ imprisonment imposed upon the offender was unduly lenient. Nevertheless, the Court of Appeal was required to make a judgment as to what was the appropriate sentence against a backdrop where the offender had responded well to the suspended sentence order and where he appeared to have turned a corner. He had appeared in court to listen to the appeal and to what he had to have realised was his probable fate, namely to return him to custody for a period of about 18 months’ detention in a young offenders institution. However, the question for the court was whether its duty to the public required it to take the course in wholly exceptional circumstances, given the pre-sentence report and the court’s conviction that to send the offender to custody now would snuff out the chances that his rehabilitation would be completed. In all the circumstances, it was not in the interests of justice to return the offender to custody. In the exercise of the court’s discretion, the court declared that the suspended sentence was unduly lenient but the suspended sentence would not be quashed. R v Macpherson [2009] EWCA Crim 1285 considered. Non-custodial sentence – Suspended sentencecenter_img Samantha Yelland, solicitor advocate (instructed by Farrell Matthews & Weir) for the offender. Alison Morgan (instructed by the Treasury Solicitor) for the attorney general.last_img read more

Contract

first_img The claimant was a Gibraltarian company, controlled by M, a resident of Angola. M also controlled another company, Angoil SA, which entered into an aircraft purchase agreement (the APA) with the defendant company to buy a new Challenger 605 aircraft, built to a limited edition specification. The APA had an express choice of law clause choosing English law. In April 2007, the APA was assigned to the claimant by an agreement to which the defendant was also party. It was the claimant’s contention that the jet was to be M’s personal private jet and that the companies were merely vehicles through which, as their alter ego, he acted. It was agreed that the jet was formally delivered to the claimant in March 2009 and that he wrote a letter of rejection in July 2010, whilst the jet was at the defendant’s premises in Hartford, Connecticut, for investigation following an incident with one of the twin engines, which had led to an unscheduled landing. The claimant later brought proceedings seeking a declaration that it had validly rejected the aircraft and was entitled to a refund or damages. The claimant alleged that the aircraft did not correspond with description, was not of satisfactory quality and was unfit for purpose within the meaning of sections 13 and 14 of the Sale of Goods Act 1979 (the 1979 act) as amended. The defendant relied on the terms of the APA as excluding such liability under statute and replacing it with warranties set out in the APA (the relevant terms of the APA are set out in [8] of the judgment), and denied it had breached any of the latter. Moreover, the defendant contended that the problems of the aircraft did not breach any term implied by statute, but rather represented the sort of issues which could arise with a highly complex piece of machinery. The claimant contended that the relevant parts of the APA were in breach of the Unfair Contract Terms Act 1977 (the 1977 act). It was agreed that the issues under the APA, the assignment agreement, the 1979 act and the 1977 act could be determined on the assumption that the claimant’s case on the technical aspect was sound, though that case remained disputed at all material times. When considering the 1977 act, regard was had to its antecedents, including the Uniform Law on International Sale of Goods (ULIS) scheduled to the Uniform Laws on International Sales Acts 1967. It was common ground that the APA and the assignment agreement fell within section 26(3)(a) and (b) of the 1977 act, being a contract of sale of goods made by parties whose places of business were in the territories of different states. Issues arose however as to whether or not the requirements of section 26(4) of the 1977 act were satisfied because, if they were, by section 26(1) and (2), the limits imposed by the statute on the extent to which liability might be excluded or restricted by contract and the requirement of reasonableness under sections 3 and 4 of that act would not apply to the APA.  The court ruled: (1) Early authorities established that liability could not be excluded for a breach of a condition implied by the 1979 act by exclusions which referred merely to ‘warranty’ or ‘guarantee’, even if those words were cross-referenced to statutes or rules of law, which would otherwise give rise to an implication of such terms. Those authorities required any term excluding a condition implied by the 1979 act to be in ‘apt and precise words’, if it was to be effective, for the clause ‘expressly or by necessary inference’ to negative such a condition and for sufficiently clear words to be used to achieve that result.  Recent authority held that there was no difference between lines of authority on approaches to construction, one of which required clear express words whilst the other favoured the natural meaning of the words used. Any clause in a contract had to be construed in the context in which it had been found, meaning both the immediate context of the other terms and the wider context of the transaction as a whole.  The court was unlikely to be satisfied that a party to a contract had abandoned valuable rights arising by operation of law, unless the terms of the contract made it sufficiently clear that that had been intended. The more valuable the right the clearer the language would need to be. Similarly, the more significant the departure from obligations implied by the law or ordinarily assumed under contracts of the kind in question, the more difficult it would be to persuade the court that the parties had intended that result (see [16], [26] of the contract). In the instant case, the clause at issue could only be read as saying that the defendant’s obligations were to be found exclusively in the APA and its appendix. It made clear that resort was not to be had to any other obligation or liability of any kind which arose in law. Unlike the preceding authorities to which the court had been referred, the instant case was one in which the words used did encompass contractual conditions implied by law. There was no ambiguity (see [27] – [31] of the judgment). Hong Kong Fir Shipping Co Ltd v Kawasaki Kisen Kaisha Ltd [1962] 1 All ER 474 considered; Kendall (Henry) & Sons (a firm) v William Lillico & Sons Ltd [1968] 2 All ER 444 considered; Newton v Cammell Laird & Co (Shipbuilders and Engineers) Ltd [1969] 1 All ER 708 considered; Baldry v Marshall [1924] All ER Rep 155 considered; Wallis, Son and Wells v Pratt and Haynes [1911-13] All ER Rep 989 considered; Stocznia Gdynia SA v Gearbulk Holdings Ltd [2009] 2 All ER (Comm) 1129 considered; KG Bominflot Bunkergesellschaft fur Mineraloele mbH & Co v Petroplus Marketing AG, The Mercini Lady [2011] 2 All ER (Comm) 522 considered. (2) Section 26(4)(b) of the 1977 act provided that a contract would only fall within section 26(4)(3) if the acts constituting the offer and acceptance had been done in the territories of different states. It referred to the totality of the acts which constituted the offer and acceptance, including both the making and receiving of each. Whilst there was no provision such as article 1(4) of ULIS, explaining how the section was to be interpreted in the case of offer and acceptance by correspondence, the effect was the same. It was hard to imagine a relevant distinction which had depended on the form of communication adopted (letter, email or fax) when what was at issue was the ‘international’ nature of the contract. Section 26(4)(b) was intended to exclude cases where there was an international element in the formation of the contract, so that all elements of the offer and acceptance had to occur in the same state if the provision of the act were to apply (see [66], [82] of the judgment). In the instant case, both the APA and the assignment agreement had been formed in England and Canada. If both were considered together then if any act was performed in different territories for either contract, the rights and obligations of both would fall outside the 1977 act (see [83]-[87] of the judgment). Amiri Flight Authority v BAE Systems plc [2004] 1 All ER (Comm) 385 applied. (3) English law was the law of the contract because of the express choice of law clause. Otherwise it would have been governed by the law of Canada, or more particularly Quebec, the place of performance. For all those reasons the APA and the assignment agreement had to be seen as international supply contracts. It therefore mattered not whether the claimant had been a consumer for the purposes of the 1977 act and the reasonableness test in section 11 of that act had no application (see [108] of the contract).  (4) Had it been necessary to decide, the claimant would have been held not to have dealt as a consumer in entering into the assignment agreement. As to reasonableness, the issue depended upon a comparison of the obligations under sections 13 and 14 of the 1979 act, as compared with article 4 and the warranty in appendix A to the APA. Having reached the conclusion that, as a matter of construction, the provisions of the APA were sufficiently clear to exclude the implied conditions in the 1979 act and to substitute for them the provisions of the warranty, in circumstances where the parties were of equal bargaining power, where the excluding terms of article 4 were set out in capitals and where the terms of the warranty were specifically drawn to the purchaser’s lawyer’s attention, it was hard to see why the court should conclude that the terms were unreasonable in the context of a bargain made by parties to a commercial purchase agreement (see [121], [133] of the judgment).  The defendant had therefore established that the relevant terms of the APA did comply with the statutory test of reasonableness, even if the APA and assignment agreement were not international supply contracts (see [135] of the judgment). Air Transworld Ltd v Bombardier Inc: Queen’s Bench Division, Commercial Court (Mr Justice Cooke): 20 February 2012 Unfair terms – Exclusion of liability for negligencecenter_img Stephen Kenny QC and George Woods (instructed by Stocker Brunton) for the claimant; Michael Crane QC and Tom Weisselberg (instructed by Jones Day) for the defendant.last_img read more

Just my opinion …

first_imgStay at the forefront of thought leadership with news and analysis from award-winning journalists. Enjoy company features, CEO interviews, architectural reviews, technical project know-how and the latest innovations.Limited access to building.co.ukBreaking industry news as it happensBreaking, daily and weekly e-newsletters Subscribe to Building today and you will benefit from:Unlimited access to all stories including expert analysis and comment from industry leadersOur league tables, cost models and economics dataOur online archive of over 10,000 articlesBuilding magazine digital editionsBuilding magazine print editionsPrinted/digital supplementsSubscribe now for unlimited access.View our subscription options and join our community To continue enjoying Building.co.uk, sign up for free guest accessExisting subscriber? LOGIN Subscribe now for unlimited access Get your free guest access  SIGN UP TODAYlast_img read more

Hansom

first_imgStay at the forefront of thought leadership with news and analysis from award-winning journalists. Enjoy company features, CEO interviews, architectural reviews, technical project know-how and the latest innovations.Limited access to building.co.ukBreaking industry news as it happensBreaking, daily and weekly e-newsletters Subscribe now for unlimited access Subscribe to Building today and you will benefit from:Unlimited access to all stories including expert analysis and comment from industry leadersOur league tables, cost models and economics dataOur online archive of over 10,000 articlesBuilding magazine digital editionsBuilding magazine print editionsPrinted/digital supplementsSubscribe now for unlimited access.View our subscription options and join our community To continue enjoying Building.co.uk, sign up for free guest accessExisting subscriber? LOGIN Get your free guest access  SIGN UP TODAYlast_img read more

My safety record is clean …

first_imgStay at the forefront of thought leadership with news and analysis from award-winning journalists. Enjoy company features, CEO interviews, architectural reviews, technical project know-how and the latest innovations.Limited access to building.co.ukBreaking industry news as it happensBreaking, daily and weekly e-newsletters To continue enjoying Building.co.uk, sign up for free guest accessExisting subscriber? LOGIN Get your free guest access  SIGN UP TODAY Subscribe to Building today and you will benefit from:Unlimited access to all stories including expert analysis and comment from industry leadersOur league tables, cost models and economics dataOur online archive of over 10,000 articlesBuilding magazine digital editionsBuilding magazine print editionsPrinted/digital supplementsSubscribe now for unlimited access.View our subscription options and join our community Subscribe now for unlimited accesslast_img read more

What are you implying?

first_imgStay at the forefront of thought leadership with news and analysis from award-winning journalists. Enjoy company features, CEO interviews, architectural reviews, technical project know-how and the latest innovations.Limited access to building.co.ukBreaking industry news as it happensBreaking, daily and weekly e-newsletters Subscribe to Building today and you will benefit from:Unlimited access to all stories including expert analysis and comment from industry leadersOur league tables, cost models and economics dataOur online archive of over 10,000 articlesBuilding magazine digital editionsBuilding magazine print editionsPrinted/digital supplementsSubscribe now for unlimited access.View our subscription options and join our community Get your free guest access  SIGN UP TODAY Subscribe now for unlimited access To continue enjoying Building.co.uk, sign up for free guest accessExisting subscriber? LOGINlast_img read more

The bitter taste of success

first_imgGet your free guest access  SIGN UP TODAY To continue enjoying Building.co.uk, sign up for free guest accessExisting subscriber? LOGIN Subscribe to Building today and you will benefit from:Unlimited access to all stories including expert analysis and comment from industry leadersOur league tables, cost models and economics dataOur online archive of over 10,000 articlesBuilding magazine digital editionsBuilding magazine print editionsPrinted/digital supplementsSubscribe now for unlimited access.View our subscription options and join our community Stay at the forefront of thought leadership with news and analysis from award-winning journalists. Enjoy company features, CEO interviews, architectural reviews, technical project know-how and the latest innovations.Limited access to building.co.ukBreaking industry news as it happensBreaking, daily and weekly e-newsletters Subscribe now for unlimited accesslast_img read more

Guilt by association

first_imgTo continue enjoying Building.co.uk, sign up for free guest accessExisting subscriber? LOGIN Stay at the forefront of thought leadership with news and analysis from award-winning journalists. Enjoy company features, CEO interviews, architectural reviews, technical project know-how and the latest innovations.Limited access to building.co.ukBreaking industry news as it happensBreaking, daily and weekly e-newsletters Subscribe now for unlimited access Subscribe to Building today and you will benefit from:Unlimited access to all stories including expert analysis and comment from industry leadersOur league tables, cost models and economics dataOur online archive of over 10,000 articlesBuilding magazine digital editionsBuilding magazine print editionsPrinted/digital supplementsSubscribe now for unlimited access.View our subscription options and join our community Get your free guest access  SIGN UP TODAYlast_img read more