IPPro The Internet Issue 140

ISSUE140 17 April 2018 

www.ipprotheinternet.com 

Power to the enforcers 

An update on Alibaba’s enforcement actions 

Pandora’s Box 

Copyright reform could cause 

unexpected troubles 

O Canada 

Upcoming changes to Canada’s 

trademark law 

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Lead News Story 

US-China trade war intensifies 

China has filed a complaint with the World 

Trade Organization (WTO) over US tariffs on 

Chinese goods that were imposed last month. 

According to its complaint, the measures 

exerted by the US appear to be “inconsistent 

with the relevant provisions of the WTO’s 

covered agreements”. 

Specifically, China claims that the tariffs would 

be in excess of the US’ bound rates and are 

inconsistent with Article I.1, and Article II.1(a) 

and (b) of the General Agreement on Tariffs 

and Trade, and article 23 of the Dispute 

Settlement Understanding. 

Last month, alongside $50 billion in tariffs 

imposed on China, the US filed a complaint at 

the WTO to “address China’s unfair technology 

practices that run counter to WTO rules”. The 

US said that China was breaking WTO rules 

by denying foreign patent holders, including 

US companies, basic patent rights to stop 

Chinese entities from using the technology 

after a licensing contract ends. 

The move sparked fears of a trade war, which 

are slowly being realised, as China proposes 

its own retaliatory tariffs, and US President 

Donald Trump considers $100 billion in new 

tariffs against China in the coming weeks. 

3 IPPro The Internet

Contents 

www.ipprotheinternet.com 

@IPProTI 

Acting Editor: Becky Butcher 

beckybutcher@blackknightmedialtd.com 

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Senior Reporter: Barney Dixon 

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Junior Reporter: Ben Wodecki 

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Designer: James Hickman 

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Contributors: Ned Holmes and Jenna Lomax 

Marketing and Sales Support: Paige Tapson 

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IP Portfolio Manager: Serena Franklin 

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Account Manager: Brenda Shanahan 

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Published by Black Knight Media Ltd 

Copyright © 2018 All rights reserved 

Take Two 

Take-Two’s request to dismiss a copyright 

lawsuit has been denied 

p.5 

Copyright Reform 

The EU could be about to open the Pandora’s 

Box for copyright 

p.11 

Case Report 

Nathalie Dreyfus explains the consequences 

of the result in US DOJ v Microsoft 

p.16 

UDRP Decisions 

Facebook, Paddy Power, Deutsche Lufthansa, 

and Red Bull have appeared in domain disputes 

p.9 

Country Profile 

Grant Lynds explains upcoming changes to 

Canada’s trademark law 

p.13 

Alibaba Update 

Alibaba’s Matthew Bassiur gives an update on 

the company’s enforcement efforts 

p.19 

House_IPPRO_Patents_QP.indd 1 06/03/2018 12:32 


News Round-Up 

Man sentenced for Nike Counterfeits 

A man has been sentenced to four months 

in prison followed by a three year supervised 

release for selling counterfeit Nike shoes 

online. James Pepion, of Portland, Oregon, 

was convicted after a probe by the US 

Immigration and Customs Enforcement 

(ICE) Homeland Security Investigations and 

IRS Criminal Investigation. Pepion sold rare 

Nike shoes on his website, getsupplied.com, 

and other related businesses, including via 

Instagram, eBay, and Shopify. 

According to ICE, some of the shoes sold 

were bought through legitimate channels, but 

Pepion also imported counterfeit versions 

from black market sources in China and sold 

them as authentic Nike shoes. 

Take-Two NBA fair use judgement dismissed 

A judge has rejected Take-Two’s request 

to dismiss a copyright lawsuit over the 

depiction of tattoos in its NBA 2K video 

game series. 

Laura Swain of the US District Court for 

the Eastern District of Texas said the 

court needed more time to understand 

the disputed material because of the 

“difficulties inherent in conducting a 

Solid Oak Sketches, which owns the 

rights to the tattoos of various NBA 

players, including LeBron James, had 

sued Take-Two for the depiction of the 

body art featured in the NBA video 

side-by-side comparison of the video 

game and the tattoos, further evidence 

must be considered in connection 

with the fact-intensive question of 

applicability of the fair use defense”. 

game series. 

Swain commented: “The visibility and 

Take-Two and 2K games argued that the 

incorporation of the tattoos falls under 

fair use, as the tattoos are only displayed 

when “specific players are selected and 

prominence of the tattoos on screen are 

affected by countless possible game 

permutations that are dependent on 

individual players’ choices.” 

that even when the tattoos do appear, 

they only appear as small images”. “At this stage of the proceedings, there 

The video game developer had 

is no objective perspective as to how 

[Take-Two’s] video game is generally 

previously won a dismissal of statutory 

damages of as much as $150,000 per 

copyright infringement in the legal battle 

with Solid Oak. 

played, or to what extent certain game 

features can be or are actually utilised, 

that would allow this court to make 

determinations about the choices and 

subsequent observations of the ‘average 

Solid Oak had described 2K’s use of the 

disputed tattoos as a way of “enthralling 

lay observer,’ or about the observability 

and prominence of the tattoos.” 

consumers to the realism of the games”. 

The motion for a judgement on the 

In her order denying Take-Two’s motion 

for judgement on the pleadings, judge 

pleadings was denied for renewal at a 

later stage of the proceedings. 

Pepion wired nearly $175,000 to sellers in China 

between June 2013 and September 2016. 

Microsoft announces shared 

innovation initiative 

Microsoft has launched a ‘shared innovation 

initiative’, aimed at helping its customers 

grow their businesses through technology. 

The initiative is based on a set of principles 

designed to address co-created technology 

and intellectual property issues, and give 

Microsoft customers “clarity and confidence” 

regarding their work with Microsoft. 

These include not imposing contractual 

restrictions that prevent their customers 

from porting to other platforms, as well as 

a pledge that Microsoft will contribute any 

licensed code to the open source projects of 

its customers. 

On top of this, customers, rather than Microsoft, 

will own any patents and industrial design 

rights that result from shared innovation work. 

According to a blog post from Brad Smith, 

president and chief legal officer at Microsoft, 

technological advancements like artificial 

intelligence, cloud-based services and data 

analytics could “accelerate” business operations. 

“As collaboration like this between technology 

companies and their customers increases, so 

5 IPPro The Internet www.ipprotheinternet.com

News Round-Up 

will the questions regarding who owns the 

patents and resulting IP. 

He added: “There is growing concern that 

without an approach that ensures customers’ 

own key patents to their new solutions, 

tech companies will use the knowledge to 

enter their customers’ market and compete 

against them—perhaps even using the IP that 

customers helped create.” 

La Liga and Belgian Pro League 

join forces 

The Spanish and Belgian football leagues have 

entered into an agreement to counter piracy. 

The agreement between La Liga and the 

Belgian Pro League will see the two share of 

human and technological resources to fight 

piracy, including tools that La Liga has used 

for the past four years. With two of the biggest 

teams in world football in their league, La Liga 

said it has become the “global frontrunner in 

the field”, with over 268,000 infringing videos 

removed, 500 URLs featuring removed, and 

over 10,000 card-sharing servers disabled. 

The Pro League has also entered into an 

agreement with Google, using YouTube’s 

Content ID tool in its anti-piracy campaign. La 

Liga works with Facebook’s Rights Manager, 

which will be made available to the Pro League. 

Pierre François, CEO of the Belgian Pro 

League, commented: “The interest in the 

Jupiler Pro League is bigger than ever. This 

unique cooperation with La Liga shows our 

determination to tackle the pressing issue of 

piracy. Because by harming our business model, 

piracy harms our league, our clubs, our sport.” 

Leander Monbaliu, a lawyer at the Pro League, 

added: “La Liga’s expertise and outstanding 

track record was a decisive element to choose 

La Liga as its partner for this campaign.” 

Federal Circuit reanimates 

Oracle v Google 

The billion dollar copyright infringement 

lawsuit between Oracle and Google has been 

revived after the US Court of Appeals for the 

Federal Circuit overturned a previous jury 

verdict in favour of Google. 

Oracle had sued Google for copyright 

infringement in 2010, accusing the search 

engine giant of illegally using Oracle’s Java 

APIs when creating their Android smartphones. 

In May 2016, a jury at the US District Court 

for the Northern District of California ruled in 

favour of Google, declaring that its use of Java 

in the Android operating system was fair use. 

Oracle had been seeking more than $9 billion 

from Google, encompassing $475 million 

in damages and $8.9 billion in apportioned 

profits from Google’s sales. 

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News Round-Up 

This latest ruling by the Federal Circuit will see 

the case return to the district court for a trial 

deciding how much Google should have to 

pay in damages. 

The court found that “the parties stipulated 

that only 170 lines of code were necessary 

to write in the Java language. It is undisputed, 

however, that Google copied 11,500 lines of 

code—11,330 more lines than necessary to 

write in Java. That Google copied more than 

necessary weighs against fair use.” 

“Even assuming the jury accepted Google’s 

argument that it copied only a small portion 

of Java, no reasonable jury could conclude 

that what was copied was qualitatively 

insignificant, particularly when the material 

copied was important to the creation of the 

Android platform.” 

The court noted: “If we ignore the record 

evidence, and assume that Oracle was not 

already licensing Java SE in the smartphone 

context, smartphones were undoubtedly a 

potential market. Android’s release effectively 

replaced Java SE as the supplier of Oracle’s 

copyrighted works and prevented Oracle 

from participating in developing markets. This 

superseding use is inherently unfair.” 

PUBG seeks win in copyright lawsuit 

PUBG Corporation has filed a copyright 

infringement lawsuit against a mobile phone 

game developer over its PlayerUnknown’s 

Battlegrounds video game. 

According to the complaint, filed at the US 

District Court for the Northern District of 

California, NetEase allegedly violated PUBG’s 

copyright by creating a mobile version of its 

Battlegrounds video game that looks and 

feels closely similar. NetEase’s game, Rules 

of Survival: Knives Out, features nearly 

identical in-game items, including supply 

boxes, health-restoring energy drinks and a 

“substantially similar” island map, according to 

PUBG. PUBG has also accused NetEase of 

using similar features like the ‘Circle of Death’, 

character customisation, as well as the idea 

of dropping from a cargo plane to start the 

game and a pre-game loading lobby, that are 

nearly identical to PUBG. PUBG requested 

the court to order a removal of the game from 

app stores, as well as seeking damages. 

Counterfeit CD seller sentenced to 

16 months 

A man has been sentenced to 16 months in 

prison for selling counterfeit CDs, which made 

profits of over £4 million. An investigation 

by the City of London Police’s Intellectual 

Property Crime Unit (PIPCU) led to the arrest 

of Michael Hargreaves of Lancashire, who had 

imported, distributed and sold high-quality 

counterfeit music CDs from artists such as 

Adele, the Foo Fighters and The Beatles. 


News Round-Up 

Hargreaves imported large shipments of 

CDs from Hong Kong and delivered them to 

various locations throughout the UK. 

City of London Police staff investigator and 

officer in charge of the case, Charlotte Beattie, 

commented: “More fake goods, which are 

often of bad quality, are now being sold online 

He added: “We hope this verdict gets the 

message out that selling or using these 

devices is simply not worth the risk.” 

and spotting copies is becoming much harder.” 

“The many things fans enjoy about the Premier 

“Buying fake goods affects legitimate League, like the ability that clubs have to 

businesses as counterfeit sales drive the 

profit away from the genuine manufacturer 

which could result in job losses and in turn 

affect the economy.” 

develop talented players, to build and improve 

stadiums, and to support communities, is all 

predicated on being able to market, sell and 

protect rights. We are pleased the courts have 

recognised that in this case.” 

Kiaron Whitehead, BPI’s general counsel, 

said: “This was one of the largest imports of 

counterfeit CDs in recent years. Hargreaves 

imported fake CDs of popular artists such as 

Ed Sheeran, Paloma Faith and The Beatles and 

sold them to unsuspecting fans who believed 

they were buying the genuine product.” 

Premier League set top box 

sellers jailed 

seller is forced to cease trading because 

the law has caught up with them, or their 

broadcast signal has been interrupted by our 

enforcement measures.” 

Trim: 92(W) x 120mm (H) 

CEO of FACT, Kieron Sharp, added: “This 

result is an excellent example of how serious 

an issue illegal streaming is.” “TV boxes and 

sticks that allow consumers to illegally stream 

sports, such as Premier League matches, 

not only have a huge effect on the content 

owners and broadcasters but the thousands 

of people working tirelessly behind the scenes 

to put the sport on our screens.” 

The Premier League has recently ramped 

up its copyright protection programme, 

most recently by securing a High Court 

blocking order that compels internet service 

providers to block illegal streams of Premier 

League matches. 

The Premier League has scored a victory in 

the fight against piracy with the sentencing of 

two sellers of illegal set top boxes. 

Jason Richards and John Dodds were 

arrested and both sentenced to four and a half 

years in jail after the Newcastle Crown Court 

found them guilty of conspiracy to defraud. 

A joint operation by the Premier League 

and the Federation Against Copyright Theft 

(FACT), along with several other North 

Eastern English bodies, caught the two 

selling set top boxes that enabled their 

customers to view Premier League football 

through unauthorised access to Sky Sports, 

BT Sport and illegal foreign channels. 

Kevin Plumb, Premier League director of 

legal services, commented: “This is a hugely 

significant judgment as it provides further 

evidence that selling these devices is illegal 

and can result in a prison sentence.” 

“We have seen several reports from people 

who have purchased illicit streaming devices 

only to be left with no service when the 


Whose Domain Name Is It Anyway? 

UDRP Decisions 

Facebook, Paddy Power, Deutsche Lufthansa and Red Bull have all 

appeared in UDRP at the World Intellectual Property Organisation and 

Alternative Dispute Resolution in recent months 

Red Bull has won the rights to an infringing domain in a World 

Intellectual Property Organization Arbitration and Mediation 

Centre dispute. 

Irish bookmaker Paddy Power has recovered a disputed domain 

in a World Intellectual Property Organisation (WIPO) Arbitration and 

Mediation Centre dispute. 

The energy drink company, who also own sports teams around 

the world, alleged that redbullmlsstore.com is near identical to its 

registered trademark for Red Bull. 

Paddy Power alleged that paddypower.ro was registered in bad faith 

as the original registrant of the domain, Petrin Milenco Daniel, was 

using Paddy Power’s trademark for financial gain. 

Sole panellist Nick Gardner found that the infringing domain name 

was registered in bad faith to mislead users into thinking that they 

had accessed the New York Red Bulls Major League Soccer team 

online store. Gardner said: “The overall impression created by the 

respondent’s website suggests that the disputed domain name was 

registered by the respondent in order to establish an online business 

which deceived Internet users into believing that the website was an 

officially approved website offering merchandise relating to the New 

York Red Bulls major league soccer team.” 

Prior to filings its complaint at WIPO, Paddy Power had sent Daniel a 

cease and desist letter. 

Daniel offered the domain name up for €5 million on the attached 

website, but removed all content on the website after he received the 

cease and desist letter. 

Sole panelist Beatrice Jarka ruled that the disputed domain should be 

transferred to Paddy Power as the domain was registered in bad faith. 

Gardner ruled that the disputed domain should be transferred to 

Red Bull. 

Deutsche Lufthansa has claimed a domain in a UDRP dispute at the 

Alternative Dispute Resolution Forum. 

The German airline claimed ownership of lufthansaemployment.com 

from Frank Panno, who originally registered the domain name. 

The disputed domain name diverted users to a fraudulent version of 

the Lufthansa website, which the airline claimed was used to phish 

for user’s details. 

Sole panellist Bruce Meyerson found that the domain name was 

confusingly similar. He said: “The domain name is identical or 

confusingly similar to Complainant’s mark as it merely appends the 

generic term ‘employment’ and the generic top-level domain term 

‘.com’ to the fully incorporated trademark.” 

Meyerson also found that the domain was being used in bad faith 

and that Panno was using the domain name “in connection with an 

email phishing scheme for commercial gain”. 

He added: “Accordingly, the panel agrees that [Panno] disrupts 

Lufthansa’s business and attempts to commercially benefit off the 

Complainant’s mark in bad faith.” Meyerson concluded that the 

disputed domain should be transferred to Lufthansa. 

Jarka said: “The fact that the disputed domain name was advertised 

for sale to the general public on its webpage, and subsequently 

changed as a result of receiving a cease and desist letter, shows 

that [Daniel] was not intending to use the disputed domain name in 

connection with a bona fide offering of goods and services, as his 

primary intention appears to have been to profit from the sale of the 

disputed domain name to the complainant.” 

Facebook has recovered three infringing domain names in a World 

Intellectual Property Office Arbitration and Mediation Centre dispute. 

The social networking giant alleged that facebooksupport.com, 

facebookusers.com and facebookworld.com were confusingly 

similar, if not identical, to its registered trademark. 

Sole panellist Andrew Brown found that the infringing domain names 

were confusingly similar. 

Brown said: “The disputed domain names contain as a first and dominant 

element [Facebook’s] world-famous trademark Facebook, combined 

with generic and geographical terms ‘support’, ‘users’, and ‘world’.” 

He also found that the original registrant of the domains had used 

two of the disputed domains to send fraudulent phishing emails or 

to spread malware. 

Brown concluded that the disputed domains should be transferred 

to Facebook. IPPro 


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The Pandora’s Box of copyright 

As the EU continues to make movements on copyright reform with 

its copyright directive, Mozilla remains steadfast in its assertions that 

such reform could open the Pandora’s Box for copyright. Raegan 

MacDonald explains 

What is the latest in terms of article 11 of the EU’s Copyright Directive? 

The negotiations have devolved into a battle of attrition, as votes 

and substantial dialogue on key issues in the draft directive are 

repeatedly pushed back. The Parliament’s rapporteur—German 

centre-right MEP Axel Voss—has struggled to secure a compromise 

with other MEPs on two key elements, namely articles 11 and 13, 

which remain incredibly controversial issues. These elements of the 

proposal are most likely to have negative long-term implications for 

the health of the online ecosystem, including for free expression, 

innovation, and creativity. 

With respect to Article 11 in particular - the proposal to extend 

copyright protection to snippets and links of text, often referred to 

as the ‘link tax’—publishers, companies, libraries, and digital rights 

activists in Brussels are continuing to highlight the negative impacts 

of the proposal. 

A particular emphasis has been placed on dispelling the myth that this 

proposal is good for the publishing sector. For instance, at a recent 

conference in Brussels, Matteo Renzi, the vice-president of the largest 

Italian digital publishers association argued passionately that this is 

really being driven by major publishers to stamp out their competition. 

Unfortunately, many politicians have been easily convinced by the 

narrative that the ‘link tax’ is a means of strengthening publishers’ 

financial position vis-a-vis large companies like Google and 

Facebook. It is extremely frustrating this narrative remains credible in 



the Brussels political circle, given that where this has been attempted 

already—namely Germany and Spain —it failed spectacularly. Small 

publishers and startups are aware of this reality, and are trying to 

raise awareness that rather than help the publishing sector, article 11 

will only serve to further consolidate the press publishing sector and 

stifle competition. 

Is the danger of big companies stepping on the smaller companies 

reflected across the copyright directive? 

fortunes of the press sector. On the contrary, we have clear evidence 

from Germany and Spain that it will actually do serious harm. 

For instance, under the trial national laws the only online news 

aggregator that paid licensing fees in Spain is Upday, which is 

partly owned by Axel Springer, and in Germany, where trials were 

implemented in 2013, Google has yet to pay a cent, despite the fact 

that the so-called ‘lex Google’ was not-so-subtly targeted directly at 

major market players. 

Yes. It’s the same in article 13, which tries to target YouTube and 

Facebook, but casts such a wide net, the entire internet as we know 

it could be turned upside-down. This is because it would essentially 

make most online platforms liable for the actions of their users, in 

addition to requiring licence agreements and upload filters. These big 

platforms seem to be the only point of reference for the problem that 

article 13 is trying to address, but really, YouTube and Facebook are 

the only two companies that are going to be able to comply and 

survive if article 13 passes. Of course I think their services would end 

up looking very different, especially because, for instance, YouTube’s 

Content ID system is more effective for audio recordings, whereas 

the directive is clearly aimed at a wider body of copyright-protected 

works. It will open the Pandora’s Box of different kinds of rights 

claims which will require different kinds of filters. 

Small companies would be hit the hardest and, unfortunately, there 

doesn’t appear to be a payoff for artists and creators. It has never 

been clearly explained by the legacy rights holders —the music 

industry— how this article will bring the actual creators fairer 

treatment, including fair remuneration. 

The major rightsholders believe they need this for better ‘bargaining 

power’. While there may well be a reason to discuss the interactions 

between some large platforms and the content industries, this directive 

is not the place to do so. The EU is missing the opportunity of a 

generation to update a fragmented and dysfunctional copyright regime. 

In your opinion, are there any positives to article 11? 

Our perspective—which is shared by small and competitive 

publishers, digital rights activists, and libraries—is that article 11 will 

only add more confusion, undermine media pluralism and access to 

information, without any added value to publishers and the media. 

It’s perplexing that this attrotius idea remains on the negotiating table, 

like some sort of copyright zombie. 

Why do you think that article 11 is being pushed forward despite 

its failed trials? 

For both article 11 and 13 I think, as with most IP debates, it is 

about control. You can read it all in the European Commission’s 

impact assessment for the copyright directive: the problem framing 

is that people don’t buy newspapers and that now there is a whole 

generation of individuals who consume news almost exclusively via 

digital sources. 

There are two ways of looking at this period of digital transformation: 

you can think, there is a shift happening—consumer and consumption 

patterns are changing—we’re going to have to figure out new business 

models and try to take advantage of new opportunities to reach our 

audience via digital means, or you can double down on antiquated 

business models and try to use regulation to smother market shifts. 

EU lawmakers consider themselves to be global regulatory standardsetters—just 

look at the GDPR. Unfortunately, articles 11 and 13 of 

the Copyright Reform directive could make the EU a global standardsetter 

in a new policy field and for all the wrong reasons. 

Legally and practically speaking, no. To this day there has not been 

any evidence that such a regulatory intervention would improve the 

In the coming months we’ll be working hard to ensure copyright in 

Europe doesn’t turn back the clock. IPPro 

Our perspective is that article 

11 will only add more confusion, 

undermine media pluralism and access 

to information, without any added value 

to publishers and the media 

Raegan MacDonald, head of EU Public Policy, Mozilla 


O Canada 

Grant Lynds, president of the Intellectual Property Institute of Canada 

provides an overview of upcoming changes to Canada’s trademark law 

and how brands should adapt their strategies 

Ben Wodecki reports 

What are the biggest changes coming to Canada’s trademark law? 

How will these changes affect Canadian companies? 

The biggest change we have on our horizon is the implementation 

of our legislation to implement three treaties, the Singapore Treaty 

on the Law of Trademarks, the Nice Agreement Concerning the 

International Classification of Goods and Services for the Purposes 

of the Registration of Marks, and the Protocol Relating to the Madrid 

Agreement Concerning the International Registration of Marks. The 

significant change is the implementation of Madrid Protocol into 

Canada. We’re a little bit later to the party than most people but we’ll 

get there and the current forecast is that the agreement will be in 

force by 2019. 

Products Act. We’re still working within the domain or the regime 

of that legislation, which is still fairly recent in trying to see if it has 

provisions that are effective in tackling counterfeits. 

To date, there have been very few seizures under the provisions of that 

legislation. Much of the commentary is focused on Canada having a 

less than robust regime under that legislation for intercepting and 

detaining counterfeit goods that come into Canada. 

What is the biggest problem area for Canada in terms of counterfeits? 

We’re looking at the US Trade Representative’s Special 301 Report, 

which brought some concerns to Canada over in-transit goods— 

essentially goods being shipped through Canada, not with a final 

destination of Canada, that come from another country and go 

through Canada and then onward to the US or other countries. 

Canadian companies are going to be more aware that they have the 

opportunity to use the Madrid Protocol should they choose to file 

outside of Canada, and that there’s a more cost effective and leaner 

route to engage trademark systems outside Canada and vice versa. 

The companies outside Canada that are looking to file inside Canada, 

will see that being inside Canada gives them a more cost-effective 

route to consider filing via the Madrid Protocol. 

Do the new laws hold any provisions aimed at tackling counterfeits? 

Our main anti-counterfeiting measures are still rooted in legislation 

that came into force fairly recently in 2015, the Combating Counterfeit 

That is not something that the Canadian government has the ability 

to detain and inspect under our Request for Assistance programme, 

but that is what the US government has commented on. I know 

that hasn’t changed and my only question there is whether or not is 

whether the US will continue to comment on that in its 2018 report. 

How should brands adapt their strategies to prepare for these 

legislative changes? 

Once the new legislation to implement the treaties comes into 

force, the definition of a trademark will be broader than the current 

definition. While some of the types of trademarks are already 


Country Profile 

recognised, even though they may not be explicitly identified in the 

definition of a trademark, the new definition will capture many forms 

of trademarks. 

Brand owners should review their portfolios to ensure they have 

captured all possible trademarks that may be deserving of protection 

in Canada. 

process, which was brought into force by way of the Combating 

Counterfeit Products Act mentioned above. 

This is a procedure whereby brand owners can file a list of registered 

trademarks, geographical indications or copyrights with the Canada 

Border Services Agency (CBSA), to provide that information to the 

CBSA should they suspect incoming goods are counterfeit. 

We also expect there may be increased opposition or summary 

cancellation proceedings in the future since trademark owners will 

not be required to provide evidence of use of their trademarks in 

order to obtain a registration. 

As such, if trademarks are registered in the future but use has 

not commenced within the requisite time period in Canada, we 

expect summary cancellation proceedings to increase as well as 

opposition activity. 

I think brand owners should therefore plan in their corporate 

strategies to engage Canada’s summary cancellation proceedings 

and opposition proceedings on an expanded basis, starting after the 

changes come into force, which we expect to be in 2019. 

What tools are available for Canadian brands looking to enforce 

their trademarks against counterfeits? 

Canadian brand owners can always look to sue for trademark 

infringement or passing-off in Canada’s Federal Court or provincial 

courts, and they can also try to engage the Request For Assistance 

There have been many recommendations by interested groups 

to the Canadian Federal Government on ways to improve 

the Request For Assistance process, which we hope will be 

addressed soon to improve Canada’s ability and reputation in the 

anti-counterfeiting regime. 

How might the renegotiation of the North American Free Trade Agreement 

(NAFTA) affect Canadian IP from an enforcement perspective? 

Both NAFTA and the Agreement on Trade-Related Aspects of 

Intellectual Property Rights (TRIPS) set minimum standards, which 

are often exceeded by either US or Canadian IP rights. 

As part of the NAFTA negotiations, the US has apparently been 

negotiating for a broader implementation of the enforcement 

provisions of TRIPS, but Canada has been focusing on modernising 

the language of NAFTA to reflect technological developments since 

the mid 1990’s. 

The enforcement of copyright in digital applications is one example 

where the US has been seeking tighter protection. IPPro 


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Case Report 

The Microsoft case: 

What are the consequences for personal data protection? 

Nathalie Dreyfus explains the potential for far reaching consequences as 

a result of the US DOJ v Microsoft, which will be heard at the US Supreme 

Court later this year 

US v Microsoft Corp 

The legal saga of the case of the US Department of Justice (DOJ) 

v Microsoft began in 2013 when the American authorities sent 

Microsoft a search warrant. The purpose of which was to obtain the 

contents of the online emails of a European customer as part of an 

investigation related to narcotics. The IT giant refused to comply and 

the request was taken before the American courts. 

In the first instance decision, the US District Court for the Southern 

District of New York considered that an American warrant to seize 

user data, such as emails, was valid, even though such data was 

situated outside American soil, in this case, in Dublin, Ireland. 

the case at hand. However, the DOJ did not stop there and appealed 

against this judgement before the US Supreme Court in October 2017. 

The latter is expected to deliberate on the case at the beginning of 

the summer. This much-awaited verdict raises concerns among the 

experts about the fundamental issues at stake in this case. 

The US and the GDPR 

One of the main points raised in the proceedings in this case 

was obviously how a finding potentially in favour of the US 

government would comply with the legislation of the EU and 

in particular the General Data Protection Regulation (GDPR), 

starting from 25 May. 

The Court based its findings on article 2703(a) of the Stored 

Communication Act (SCA) of Title II of the American Electronic 

Communication Privacy Act. This provision grants American 

governmental entities the ability to order a private online email 

company established in the US to disclose the contents of a user 

email pursuant to a warrant issued according to the procedures 

described in the Federal Criminal Procedure Rules. 

Microsoft appealed this judgement raising the question of the 

applicability of the Stored Communication Act outside American 

borders, on the basis of rule 41 of the Federal Rules of Criminal 

Procedure, in the belief that no Federal Court could authorise a 

warrant for property situated outside the legal limits of the territory of 

the US. The US Court of Appeals for the Second Circuit did not follow 

the judgement of the district court, finding in favour of Microsoft in 

July 2016. 

In particular, it came to the conclusion that US Congress had not 

explicitly provided that the SCA should apply outside US borders. 

To this extent, the court of appeals decided that the SCA did not 

authorise a US court to validate a warrant such as that referred to in 

Moreover, it is from this perspective that the European Commission 

intervened as an amicus curiae, in support of Microsoft’s position. 

Through a communiqué, it explained that, to the extent that the case 

refers to the transfer of data from the EU, it is governed by EU law. 

The new European legislation invites non-European national authorities 

to sign international and intergovernmental agreements to settle this 

type of dispute. Article 48 of the GDPR provides that “any judgment 

of a court or tribunal and any decision of an administrative authority 

of a third country requiring a controller or processor to transfer or 

disclose personal data may only be recognised or enforceable in any 

manner if based on an international agreement, such as a mutual 

legal assistance treaty, in force between the requesting third country 

and the union or a member state, without prejudice to other grounds 

for transfer pursuant to this Chapter”. 

GDPR represents a substantial economic challenge for companies, 

since the new European regulation provides for large fines—up to 4 

percent of total global annual turnover calculated on the company’s 

previous fiscal period—in the event of failure to comply with the 

provisions defined in article 48. 


Case Report 

Significant difficulties remain, however, for complying with such 

requirements, to the extent that these cross border agreements are 

often based on laws and policies that are obsolete. As an example, 

the mutual legal assistance treaties (MLAT) in terms of transnational 

criminal cooperation, propose fastidious solutions, which only 

guarantee minimum legal security. These demands take time, 

which remains a considerable source of frustration for the national 

authorities, in view of the lack of efficiency they imply. This is why 

the US legal authorities prefer conducting a more effective approach: 

that of the national warrants. 

This affair undeniably leads to the conclusion that a broader reflexion 

must be conducted on the legislation relative to personal data, on an 

international scale. 

At a time when cyber criminality is increasing, transatlantic 

cooperation is more important than ever. Now, without legislative 

action carried out on an international scale, a judgement in favour of 

the government in the Microsoft case will probably have considerable 

effects, according to Professor Théodore Christakis in his study of this 

dispute. In this measure, such an outcome would render transatlantic 

cooperation very difficult for the authorities in charge of keeping the 

peace, governments and undertakings. 

A ruling in favour of the American government would have the 

consequence of empowering the American authorities to oblige 

service providers present in the US to supply data, irrespective 

of where it is stored, which would go against the current legal 

requirements. In addition, such an outcome would signal to the 

European authority an incompatibility between US law and EU 

law, which would make them reluctant to authorise the transfer of 

European personal data to the US in spite of the privacy shield. 

The CLOUD Act 

This affair is obviously in echo of the new American legislation called 

the Clarifying Lawful Overseas Use of Data (CLOUD) Act voted 

by Congress and signed by US President Donald Trump, which 

offers a legal framework for the seizing of emails, documents and 

electronic communications located in the servers of US companies 

and stored abroad. 

One of the principal points of the CLOUD Act resides in the new article 

121 it introduces in the Stored Communication Act, which requires a 

communication service provider to be able to store, backup and even 

disclose the contents of any electronic records or communications, 

whether they are located on US soil or outside US borders. 

The CLOUD Act thus becomes an alternative to the current process 

of sharing user information between countries, the MLAT, the 

implementation of which is more straightforward and faster to execute. 

The major tech firms such as Apple, Facebook or even Google are 

delighted with such an initiative. They expressed themselves in an 

open letter in February in these terms: “The CLOUD Act encourages 

diplomatic dialogue, but also gives the technology sector two distinct 

statutory rights to protect consumers and resolve conflicts of law if 

they do arise. The legislation provides mechanisms to notify foreign 

governments when a legal request implicates their residents, and to 

initiate a direct legal challenge when necessary.” 

This opinion is, however, far from being shared with the associations 

that defend liberties such as the American Civil Liberties Union and 

the Electronic Frontier Foundation. 

This contested legislation is patently in conflict with the GDPR 

and in particular article 48, which, as explained above, deals with 

foreign—including American—investigations, by prohibiting the 

transfer or disclosure of personal data unless otherwise expressly 

agreed internationally. 

There is therefore a strong wager to be made that the CLOUD act 

will be subject to further discussions at national and international 

level. This legislation compiled in the current litigation illustrates the 

divergence emerging between Europe and the US concerning the 

treatment of requests for confidentiality and data. They represent a 

strong position on the part of the overseas government to shed light 

on the obsolescence of the current legislation in a digital world. 

The firm Dreyfus & associés specialises in the field of IP. We are up 

to date on the new developments in European legislation and can 

provide you with all the help and advice you require concerning your 

IP rights in Europe. IPPro 

This legislation compiled in 

the current litigation illustrates the 

divergence emerging between Europe 

and the US concerning the treatment of 

requests for confidentiality and data 

Nathalie Dreyfus, founder, Dreyfus & associés 


J. Varbanov & Partners 

European and Bulgarian Patent & Trademark Attorneys 

One of the oldest and leading IP companies in Bulgaria 

Professional, cost effective services and quality advices 

Areas of practice: 

*IP Protection 

*IP Enforcement 

*Anti-counterfeiting 

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*IP watches 

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South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria 

Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47, 

e-mail: jvp@jvpatents.com 

www.jvpatents.com


Power to the enforcers 

Matthew Bassiur, head of IP enforcement at Alibaba, gives an update of 

the e-commerce company’s enforcement efforts 

Barney Dixon reports 

Third party support for Alibaba has grown in recent years. What do 

you think Alibaba does well in terms of enforcement? 

You are absolutely right. We are seeing a deeper appreciation for 

Alibaba’s efforts and a greater understanding of our role as a partner 

in intellectual property protection. In recent years, Alibaba has made 

it even easier for rights holders to work with us and protect their IP. 

These efforts are paying off for rights holders. Leading brands, small 

and medium-sized enterprises (SMEs) and industry associations, 

including some who were previously our most vocal critics, have 

voiced their support for and satisfaction with our programs. 

To illustrate, let me share some data from last year. While the number of 

registered accounts in our IP protection system rose 17 percent yearon-year, 

the number of takedown requests dropped 42 percent. We 

believe this is attributable to Alibaba’s efforts in proactively identifying 

and removing potentially problematic listings. Listings go through our 

scanning engine, which identifies and intercepts problematic listings 

within microseconds, and prevents their entry onto our platforms. In 

addition, our deep learning algorithms continue to apply complex 

modeling to proactively remove suspicious live listings. In fact, last 

year 97 percent of our proactive takedowns occurred before a single 

sale took place. 

the extra step of developing a simplified online form for submitting 

takedown requests in order to make it easier for them to report and 

remove infringing listings. 

Finally, when we do identify infringers, we take action, in 2017, we 

closed more than 240,000 Taobao stores. 

Our offline enforcement efforts are also an area of strength. Alibaba 

does not limit its IP protection efforts to online matters and we work 

closely with rights holders and Chinese law enforcement officials. In 

2017, there were hundreds of arrests based on information and leads 

provided by Alibaba. We are taking action in civil courts as well as 

assisting in criminal matters. 

To date, we have brought 12 civil actions in China. Last year, we sued 

two sellers of counterfeit Swarovski watches and we brought and 

won a lawsuit against a pet-food vendor by alleging damage to our 

brand and reputation for selling counterfeit cat food on our platform 

and in violation of our terms of service. We believe these are the first 

legal actions brought in China by an e-commerce company against 

infringing sellers on its platform. 

Do you think Alibaba has changed perceptions of its commitment 

on IP? How has Alibaba won over brands that may have previously 

argued that Alibaba doesn’t do enough? How does it build trust 

with brands? 

Additionally, in 2017 we launched enhanced data modeling to our IP 

protection platform to speed up the handling of takedown requests. 

As a result we’ve seen a two-thirds reduction in processing time and 

24 hour handling time during business hours has become the new 

norm. To assist small businesses and individuals, we have taken 

I believe perceptions have changed, yes. Collaboration between 

Alibaba and rights holders is essential for the protection of IP, and 

every day we are working with brands to understand their IP and 

how we can work together. We listen to, deeply value and take 

action based on what we hear from them. 



As an example, in 2016, Alibaba merged its notice and takedown 

systems into a single ‘one-stop’ IP protection platform. This was a 

significant undertaking for us, but we knew from our collaboration 

with rights holders that a more unified and streamlined notice and 

takedown system was something that would be well received. 

As I mentioned earlier, in 2017 we made enhancements to platform 

to allow for faster processing of takedown requests. 

We believe this is an industry first and Alibaba will hugely benefit 

from the input of the AACA and the Advisory Board. 

This year we announced that the AACA was adding more members 

to bring our full membership to approximately 100 brands. This not 

only triples the number of companies that will benefit from the AACA 

programs and initiatives, but provides even broader representation 

in the dozen industries. 

Alibaba has, for years, invested heavily in both technologies; it takes 

time for the development, testing and implementation of technological 

enhancement. It also takes time for those enhancements to be 

adopted and the benefits realised. I think in some ways the changes 

in perceptions we’re seeing now are the result of sustained, years 

long efforts by Alibaba. 

It also takes time to build the trusted relationships that enable 

our success. More than 100,000 brands operate on our platforms, 

including 75 percent of the world’s most valuable consumer brands, 

as well as countless small businesses, all of which have thriving 

businesses on Alibaba’s platforms. 

These businesses would not choose to work with us if they did not 

view us as a trustworthy partner. 

One of the key initiatives that Alibaba launched in 2017 was the 

AACA. Can you tell us a little bit about the AACA and any plans 

for 2018? 

What role does technology play in Alibaba’s work on intellectual 

property protection? 

The online environment is reflective of the offline reality and Alibaba 

takes a technology-driven approach to IP protection. As a leading 

global technology company, we leverage our advanced algorithms 

and machine-learning capabilities for our online and offline IP 

protection efforts. Online, we proactively monitor our platforms in 

order to identify potentially problematic listings and take action. Our 

data modeling is constantly improved upon to increase the accuracy 

in identifying, preventing or deleting suspicious listings. Offline, we 

use data and analytics to build cases for referrals to law enforcement. 

This is in addition to responding to many valid law enforcement 

requests for information to support their own investigations. 

Simply put, we leverage our big data and analytics to help target illicit 

manufacturers, distributors and suppliers of counterfeit products. We 

are also one of the few e-commerce platforms—if not the only one— 

to also have such a robust, proactive offline investigations program. 

We established the Alibaba Anti-Counterfeiting Alliance (AACA) 

in 2017, an alliance created among Alibaba and approximately 30 

global and domestic China brands, including Louis Vuitton, Uniqlo 

and Burberry. In September of last year, we created an Advisory 

Board to give AACA members the chance to participate in strategic 

decision-making and influence policies being considered by Alibaba. 

Advisory Board members include Swarovski, Adidas, Ford, Pernod 

Ricard and Sony, among others. 

Representation covers each of the industries represented in the AACA, 

including apparel, personal care products, consumer electronics, and 

the automotive industry. 

How else is Alibaba working to create a better environment for IP 

protection in China? 

In addition to the efforts I have already described, we view it as 

part of our responsibility to advocate for improvements in laws and 

enforcement penalties in this areas. 

The best example of this is the vocal public advocacy of Alibaba’s 

founder and executive chairman Jack Ma who last year called for 

stronger IP laws and enforcement in China including jail time for 

offenders. So it is very encouraging to see just such changes being 

discussed in China. IPPro 

Simply put, we leverage our 

big data and analytics to help target 

illicit manufacturers, distributors and 

suppliers of counterfeit products 

Matthew Bassiur, vice president and head of global IP enforcement, Alibaba Group 


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Supported Piracy 

Badvertising: 

This infringement is brought to you by… 

For copyright owners, ad-supported piracy is the new battleground. Bharat 

Dube and Bharat Kapoor of Strategic IP Information explain 

Sift through any newspaper, blog or academic journal, and the odds 

are you will find much scepticism about copyright law. After all, the 

public’s perception of copyright enforcement is often defined through 

news stories like ‘Film Company Sends Warning Letter to Visually 

Impaired 90-year Old Granny in Rural Bavaria’, or, ‘Music Label 

Forces 19-year old Singer to Cough Up $ 100,000 for YouTube Cover 

Song, Dropout of Harvard’. 

Copyright owners have indeed, on occasion, been guilty of 

overzealous conduct of this sort, owing to a combination of naïveté 

and myopic legal advice. Yet, copyright owners have also pursued 

thousands of legitimate targets—mercenaries who indulge in 

industrial-scale media piracy, battering the revenues of law-abiding 

businesses. Unfortunately, in today’s world of man-bites-dog news, 

this rarely receives the attention it deserves. 

Stung by bad publicity, copyright owners have increasingly used 

uncontroversial, gentler strategies to counter piracy. Two of the most 

common are awareness campaigns targeting school and university 

students, and the promotion of affordable, accessible content 

through websites like iTunes, Netflix and Hulu. While such strategies 

have no doubt been effective, piracy still thrives in stubborn little 

pockets of the internet. A central reason for this is the financial 

ecosystem that supports piracy. Consider this example: last year, 

on the day of the horrific white supremacist car attack in Virginia, a 

concerned colleague of ours hastily typed ‘CNN live streaming’ on 

Google (or some such search string). 

Our colleague was directed to a live YouTube CNN feed, the first 

or second search result. It was only after some minutes that our 

colleague realised something was amiss. The feed was consistently 

interrupted by commercials like the shown on the right. 



Now, why would CNN keep interrupting a news story as important 

as this with annoying commercials? Also, while it is not surprising to 

see a well-known company like Verizon, or even Safelite, advertise 

on CNN, isn’t it odd to see a commercial for a quack-ish weight-loss 

cure? And what of the ghastly comments in the sidebar, from neo- 

Nazi nutcases rejoicing over the attack? Why was CNN allowing such 

comments on its YouTube channel? 

And how did we get to this dodgy website? Courtesy of a routine 

Google search, once again: 

The answer to all of this, of course, is that the live stream was not 

on CNN’s official YouTube channel, but rather a pirate channel. 

Hundreds of such rogue pages abound on YouTube, peddling news, 

sports, sitcoms and movies. 

Outside YouTube, the numbers probably run into thousands. As a 

simple example see the screenshots below, taken both with and 

without an adblocker: 

Quite evidently, pirate websites are supported by advertising. And 

these are not just spammy ads of the 1800-Gain-Back-Youth-and- 

Look-Sexy-Miracle-Pill variety (which, sadly, we can report from 

personal experience do not work). Rather, many of these ads are from 

perfectly respectable businesses. 

In 2014, a report authored by Mike Weatherley, who at the time was a 

British MP and intellectual property advisor to then UK Prime Minister 

David Cameron, estimated that 600 pirate websites generated over 

$200 million through ad revenues the previous year. The report found 

that nearly a third of the ads were of household brands, usually 

placed by ad networks a step removed from the actual company. 

In India, a report prepared last year by the Veri-site division of our 

company, SIPI, which was commissioned by the Federation of Indian 

Chambers of Commerce and Industry (FICCI) tracked 1,143 pirate 

websites and found a whopping 73 percent to be supported by ads. 

Over half were ads of well-known global brands. The report also 

found several instances of websites containing viruses and malware— 

something most visitors to pirate websites can attest to. 

It could be that brands and 

advertisers see piracy as a much lesser 

evil than hate speech—an eminently 

justifiable position 

Bharat Kapoor, COO, Strategic IP Information 



We live in a cynical age where the public and the 

commentariat frequently dismiss, even demonise, the 

interests of copyright owners 

What complicates matters is that pirates frequently operate in 

foreign jurisdictions. 

We live in a cynical age where the public and the commentariat 

frequently dismiss, even demonise, the interests of copyright owners. 

For example, we are aware of a case where the producer of a Bollywood 

blockbuster tracked down a file-sharing website to central Europe. 

The pirates, of foreign origin, hadn’t the faintest clue about Indian 

cinema, but got wind of the fact that the film was commercially 

successful and could earn their website thousands of clicks (and, 

therefore, significant ad revenues). 

We also received information that, in 2015, the Indian government 

had complained to the US government about 500-odd US websites 

abetting Bollywood piracy. 

The list included Google (see below, discussed in a paper by law 

professor Arpan Banerjee, who shared with us the information): 

For many, corporations like Disney and Fox are gluttonous merchants 

of “free market fundamentalism”, to borrow an expression from 

the noted copyright scholar William Patry (incidentally, also senior 

copyright counsel at Google). 

As the High Court of Ireland observed in EMI v Eircom: “Among 

younger people, so much has the habit grown of downloading 

copyright material from the internet that a claim of entitlement seems 

to have arisen to have what is not theirs for free.” 

Adding to this are legal complications. Identifying and suing pirates 

overseas is extremely difficult, especially when many governments 

are not proactive in enforcing foreign copyrights. 

And while advertisers and brands are easily identifiable, it is hard 

to argue that the unintentional placement of ads on pirate channels 

amounts to infringement. 

Under these circumstances, dismantling advertising on pirate 

websites, through a non-litigious arrangement, could be a neat 

solution for embattled copyright owners. 

Here, the City of London’s Police IP Crime Unit (PIPCU) has been a 

success story of sorts. PIPCU maintains an Infringing Website List for 

online advertisers to be aware of. 

PIPCU can also block ads on infringing websites reported to it. Yet, 

pirates can evade PIPCU actions by migrating to different domains, 

free speech laws constrain action in many cases, and, most 

importantly, PIPCU is confined to Britain. 

Therefore, effective action against ad-supported piracy can perhaps 

best arise from a privately ordered arrangement, involving discussions 

between copyright owners and other stakeholders. 

Not necessarily a bad thing. No end-user targeted. No messy lawsuits. 

No police. No adverse publicity. 

Weatherley has called on to Google to “take the lead” and “maximise 

the prioritisation of sites with legitimate content” in search results. 



Google has certainly recognised the problem of “badvertising” (to 

borrow a term from the FICCI-SIPI report) in the context of hate websites. 

According to recent news reports, YouTube will impose stricter 

criteria for the types of videos that can earn money from it, to prevent 

racist and extremist YouTube channels from benefiting commercially. 

This after a host of complaints to Google from reputed corporations, 

peeved at their ads showing up on hate channels. 

But why has badvertising on pirate websites and YouTube channels 

not triggered the same response? It could be that brands and 

advertisers see piracy as a much lesser evil than hate speech—an 

eminently justifiable position. 

Furthermore, considering the popularity of illegal downloading, some 

brands may even feel happy, or at least indifferent, about having their 

ads on pirate websites. 

Consider the screenshots to the right, from the FICCI-SIPI report, 

showing ads from Facebook and Shaadi (an Indian matchmaking 

portal) on a pirate website. 

Both Facebook and Shaadi cater to a young demographic, as does 

the pirate website. So why should these ads be a problem for either 

Facebook or Shaadi? 

One response could be that a sense of ethics should guide Facebook 

and Shaadi’s advertising policies. 

Another argument could be that such badvertising could harm 

Facebook and Shaadi’s brand image if users end up downloading 

viruses and malware. 

One could also point out that pirate websites often contain ads for 

pornographic websites, which Facebook and Shaadi may not like to 

see their ads being placed next to. 

Here, copyright owners will have a fair amount of convincing to do. 

Nevertheless, as the old fable reminds us, persuasion is better than 

force—especially if the latter has to be exercised against inoffensive 

grandmothers and teenagers. IPPro 

Both Facebook and Shaadi cater 

to a young demographic, as does the 

pirate website. So why should these 

ads be a problem for either Facebook 

or Shaadi? 

Bharat Dube, CEO, Strategic IP Information 


Record 

Emmanuel Harrar of IPzen explains how brands should take responsive 

and preventive action against cybersquatting as WIPO cases reach a 

record high in 2017 

In recent years, the number of disputes related to cybersquatting has 

greatly increased. This fraudulent practice consists of registering a 

domain name that is identical to or imitates a trademark, with the sole 

purpose of taking undue advantage of it. 

This phenomenon is symptomatic of the new challenges facing 

companies in the internet era. Massive speculation has grown up 

around domain names, the economic value of which can sometimes 

be considerable. 

Cybersquatting issues are now settled through UDRP proceedings, 

which have also seen a recent increase. 

When summing up the year 2016, the World Intellectual Property 

Organization (WIPO), the principal arbitration and mediation centre 

in charge of such proceedings, observed an exponential increase in 

these cases. 

They reached a record high in 2016 with 3,036 cases handled, 

representing an increase of 10 percent over the previous year. 

According to WIPO, the increase was caused by the creation of new 

generic top level domain names (gTLD), of which 340 were created 

in 2016. Cybersquatting proceedings related to these new gTLDs 

represented almost 16 percent of WIPO cases and concerned 5,374 

domain names in total. Domain names .xyz, .top and .club were 

identified as the new gTLDs that generated the largest number of 

filings. In parallel, country code top level domains (ccTLD) represented 

some 14 percent of the cases filed with WIPO, with 74 percent of 

national domain directors having appointed WIPO to perform the 

service of settling disputes. Domain names ending in .com were 

identified as those being subject to the highest number of filings with 

a wide majority of 66 percent. 

Francis Gurry, CEO of WIPO, responded to this increase in the 

number of filings by calling for continued vigilance from trademark 

owners and consumers alike, highlighting the fact that this is even 

more important as a considerable number of these disputes involve 

incidents of online counterfeiting. 

Last year was no different with 3,074 cases. This only represents 

a 1.3 percent increase compared to the previous year, however it 

should be emphasised that this figure has in fact doubled since 2000, 

the year the proceedings entered into force. 

WIPO has shed light on the three most active sectors in domain 

name disputes. The first position goes to the banking and finance 

sector, which saw 12 percent of cases; the fashion sector is in 

second position with 11 percent; and lastly, as would be expected, 

the internet and information technologies sector, with nine percent. It 

is not surprising that the cybersquatters prefer these sectors which 

are highly sensitive domains, or business sectors that are susceptible 

to infringement. In almost a third of the legal cases related to 

banking and finance filed in 2017, the plaintiffs also mentioned the 

practices of fraud, phishing or scams. In parallel, in more than a third 

of the cases related to fashion in 2017, the plaintiffs alleged acts of 

copyright infringement. 

Concerning the geographic origin of the filings, the US takes the lead 

with 920 cases, followed by France and the UK with 462 and 276 

cases, respectively. 


WIPO Cases 

In addition, and not surprisingly, as in 2016, the extension that was 

the most involved in last year’s proceedings was .com, with slightly 

more than 70 percent of the contentious domain names. The new 

extensions now represent 12 percent of domain names in UDRP cases. 

If any proof were necessary, these statistics demonstrate the huge 

success of the UDRP proceedings—faster and less expensive than 

legal proceedings—which have been widely adopted by major firms 

around the world. 

In 2017, WIPO published its new Jurisprudential Overview 3.0, an 

up-to-date summary of WIPO case law on UDRP principles, which 

cites around 1,000 decisions and covers hundreds of questions of 

substance and procedure. As the main global domain name resource, 

the WIPO overview consolidates the changes that have occurred in 

the case law since 2011. 

The new WIPO summary also has sections dealing with the 

principles of consolidation of the cases faced with the allegations 

of counterfeiting and other illegal activities (such as identity theft) in 

relation to contentious domain names and their website contents. 

procedure that was “fast, effective, profitable” and “uniform for 

resolving disputes”. 

Following a formal process for drawing up policies, reports from the 

personnel and public comments, UDRP was finally adopted as a 

consensual policy by the Internet Corporation for Assigned Names 

and Numbers (ICANN), and then implemented on 24 October 1999. 

Since it was adopted, it has acquired and maintained a place as 

an online tool that is essential and effective for advice on brand 

protection all over the world. The success rates of the plaintiffs 

continue to increase year after year, reaching 85 percent 

This reminds us of the extent to which increased vigilance on the 

internet is indispensable for the perpetuation of a business. The 

domain name has become a veritable showcase for undertakings 

who wish to be visible on the web in order to attract customers, 

and so making sure none of the names registered by third parties 

with fraudulent intentions infringes IP rights is an essential reflex for 

safeguarding the company’s image. Businesses must therefore take 

both responsive and preventive action. 

In June last year, WIPO also began to provide dispute settlement 

services for .eu and .se domain names. From now on, the organisation 

will provide services for 76 country domains of this type. 

Exponentially important proceedings 

UDRP continues to be an important tool for undertakings all over 

the world for combating cybersquatting, but also the rise of other 

types of malevolent behaviour, such as phishing, identity theft and 

infringement. 

The UDRP will be 19 years old in August, making it timely to say a few 

words about its origins and evolution. 

The policy was developed at the end of the 1990s in response to 

the growth of the internet and to the generalised cybersquatting 

that followed. At the instigation of the US, WIPO summoned a vast 

international consultation to envisage solutions to the problem. 

Among the final recommendations, UDRP selected an administrative 

IPzen: a solution 

By subscribing to one of IPzen’s range of services to defend your 

rights, you will be able to contemplate your IP rights serenely, without 

fear of potential misuse. As soon as IPzen detects misuse of your 

rights by a user, the results will be forwarded to you automatically. 

IPzen enforcement is the service specially designed for the transfer 

or cancellation of a domain name that infringes your rights. IPzen will 

do the necessary to withdraw any contents that could compromise 

your commercial interests, and provide you with special support in 

resolving disputes. 

Thanks to IPzen, you can also detect and notify the legal services of 

the social networks of any misuse of user names. 

You can therefore take advantage of 24/7 monitoring set up in 

particular on Facebook, Twitter, MySpace, Instagram, YouTube, 

Dailymotion, LinkedIn, Viadeo, and many other social networking 

sites, to combat cybersquatting and username squatting. IPPro 

UDRP continues to be an 

important tool for undertakings all over 

the world for combating cybersquatting 

Emmanuel Harrar, CEO and founder, IPzen 


Industry Events 

AIPPI Israel Conference 

Tel Aviv 

IACC Annual Spring Conference 

Seattle 

April - May 2018 

29-01 

aippi.org 

May 2018 

16-18 

iacc.org 

INTA 

Seattle 

ECTA 

Athens 

May 2018 

19-23 

inta.org 

June 2018 

13-16 

ecta.org 


The world’s premier IP directory 

www.ipproconnects.com 

www.ipproconnects.com 

15

Industry Appointments 

Movers and shakers at Fish & Richardson, Foley & Lardner and more 

Fish & Richardson has added Elizabeth King to its Houston office 

as of counsel. 

King, who has 20 years experience in domestic and international 

trademark law, joins the firm’s trademark and copyright group. 

She is a skilled litigator with experience in handling trademark 

infringement cases in federal courts, before the US Court of Appeals 

for the Federal Circuit, and before the US Patent and Trademark 

Office (USPTO). 

King previously served as principal partner at Sutton McAughan 

Deaver, as well as serving as examining attorney at the USPTO. 

Cynthia Walden, group leader of Fish & Richardson’s trademark and 

copyright practice, commented: “[Elizabeth King] is a top-notch 

attorney with impressive expertise developing global trademark 

protection strategies for large clients with complex issues. She will 

be a valuable resource for our clients and a great addition to our deep 

bench of seasoned trademark and copyright lawyers.” 

Holland O’Neil, chair of Gardere Wynne Sewell, commented: 

“Both Foley and Gardere have historically been recognised for a 

commitment to client service and an ability to counsel clients through 

their most multifaceted legal and business challenges.” 

“By integrating our resources, we’ll have distinctive capabilities and 

channels to provide our clients with strategic and innovative counsel, 

ultimately continuing to enable our shared client-first culture.” 

Jay Rothman, Finley & Lardner Chairman & CEO, added: “In short, 

Foley and Gardere are better together.” 

Barnes & Thornburg has added Mark Nelson as partner to its 

intellectual property department in Dallas. 

Nelson has more than 20 years experience in handling large 

multifaceted patent litigation cases. His practice covers a wide range 

of areas including telecommunications, gaming, semiconductors 

and more. 

Foley & Lardner has merged with Gardere Wynne Sewell. 

The newly combined firm will have 1,100 lawyers in 24 offices across 

the US, Mexico, Asia and Europe. 

As part of the merger, Foley will expand geographically in intellectual 

property to Texas, while deepening the practice to benefit the rugged 

business climate of the state. 

Nelson commented: “The firm places incredible emphasis on putting 

clients first by providing first-class legal work at a fair and reasonable 

price. I’m excited to be part of the growth of the Dallas office.” 

Mark Bayer, managing partner of Barnes & Thornburg Dallas office, 

added: “Having someone with his reputation will help us grow the IP 

department in Dallas and will attract other practitioners that sync with 

our core practices, client base and firm culture.” IPPro

IPPro The Internet Issue 140

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