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LABnews September 1997

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9. Intellectual property

9.1. France - Court ruling on domain name grabbing

A French court has ruled for the first time on a case concerning a French trademark and the use of an Internet domain name registered in the United States .

On 21 August 1997 the Tribunal de Grande Instance of Draguignan issued a cease and desist order on the basis of trademark infringement involving the use of the domain name saint-tropez.com by the French company Eurovirtuel.

The municipality of Saint Tropez, which holds a French trademark on the name of the resort, commissioned the company Eurovirtuel to set up a Web site. The site was set up as www.nova.fr/saint-tropez. The company however registered the domain name saint-tropez.com under a U.S.-administered generic top-level suffix and set up a separate Web site.

The municipality of Saint Tropez sued for trademark infringement, and breach of contract for failure to inform the municipality. The French court, dismissing the defence of the defendant company, affirmed jurisdiction on the domain name registered in the United States and ruled in favour of the municipality.

Contrary to the previous English case on the harrods.com domain name, the court did not directly order Network Solutions, the U.S. company, in charge of the administration of the .com generic top-level domain name, to release the registration; it did however directly order the defendant to withdraw the domain name and to publish the judgement on the commissioned Web site of the municipality of Saint-Tropez.

The text of the judgement is available on the Internet at the Legalis.net Web site (http://www.legalis.net/legalnet/judiciaire/tgi_sttropez.htm)

9.2. Greece - Copyright protection of "automated musical styles"

In a recent decision, the Athens First Instance Court ruled that the production of "electronic musical styles", incorporated within a music cartridge containing seven traditional Greek dances constituted an original intellectual work. Originality was based on the choice by the author of the musical instruments forming this "virtual orchestra" and their particular musical expression by using an adequate software tool. For those reasons the work was protectable under the Hellenic Copyright Act (law 2121/1993) both as a musical anthology and a computer program.

The court decided that the "automated musical styles" had been produced by the plaintiff, a musician and computer programmer, after the expiration of his former work contract with the defendant, who was the exclusive distributor in Greece of a market leading Japanese producer of electronic musical instruments. The defendant had illegally used this cartridge to promote the synthesisers’ sales in the Greek market.

According to the court, electronic storage, duplication and further reproduction of the work by the defendant without licence and explicit consent of the author were acts clearly violating the plaintiff’s copyright. The Court ordered seizure of the illegal copies already marketed by the defendant.

The text of the judgement is reported in Greek in Company and Business Law Report, 1997, vol. 24.

9.3. Domain name administrator subject to antitrust scrutiny

Network Solutions Inc., the company handling the Internet generic top-level domain name register, is being subject to an investigation by the U.S. Department of Justice Antitrust Division. The Department of Justice has requested information on the domain name registration services.

The investigation was disclosed in a filing with the Securities and Exchange Commission for the purposes of a stock offer. The Network Solutions filing can be retrieved on the Internet at the Securities Exchange Commission Web site (http://www.sec.gov). Network Solutions is also facing a private antitrust suit from a company called PG Media Inc.

In the complaint filed with a federal district court, which can be seen at the PG Media Web site (http://namespace.pgmedia.net/ns./litigation_cont.html), PG Media claims that the refusal of Network Solutions to allow access to the central root zone of its file server, where the domain names administered by Network Solutions are resolved, is a practice restraining competition. According to the complaint, the relevant market is that of registration of non-governmental Internet domain names. This is done for a fee by Network Solutions.

Network Solutions manages the registry of the Internet generic top-level domain name system (.com, .org, .net, .gov, .mil) under contract with the National Science Foundation, a governmental body. Its contract will expire in March 1998.

9.4. Linux trademark dispute settled

A trademark dispute on the LINUX mark was settled with the assignment of the trademark to Dr Linus Torvalds, the Finnish author of the popular Linux operating system, and the reimbursement of the defendant Mr Della Croce for his trademark filing fees and costs.

As a result, the cancellation proceedings were dismissed filed with the U.S. Patent and Trademark Office (PTO).

In 1994 Mr Della Croce filed an application for the U.S. trademark LINUX, in the class pertaining to "computer operating system software to facilitate computer use and operation". The PTO petition for cancellation was filed in 1996 when he started asking for a 10% trademark royalty on the distribution of the Linux operating system in the United States.

The present development of the Linux operating system is commonly regarded as a product of the Internet community. Dr Torvalds renounced copyright fees for the Linux system, only requiring that the copies be freely distributable and accompanied by the source code. Linux was subsequently developed by the author in cooperation with other IT professionals from several countries, all operating pro bono via the Internet. Since 1991 the operating system has been distributed free of charge via the Internet and marketed in low cost software distribution.

However, although the copyright terms pertaining to ensure that the product remains free were covered by the Free Software GNU License, trademark issues were not considered.

The press release following the settlement and the petition for annulment are available on the Internet at the Web site of the law firm handling the litigation(http://www.iplawyers.com)


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