What a contrast: Google uses London open data for tube and bus directions, while Paris public transport operator kills public transport app

This month brought contrasting news on the openness of public transport information in two EU countries. The Telegraph celebrated Google’s mapping service for adding live public transport information and directions. The mobile version of Google Maps has a function that detects a user’s location and that direct him to the nearest tube station or bus stop. Another great function is the alert-function, which warns users to get off their bus or train when they have reached their destination. What’s Google’s secret?

The service relies on Transport for London’s open data platform, which allows developers direct access to data on public transport in the capital, including up-to-date details of roadworks and tube suspensions. Google did not pay for access to the data, which has been freely available since last June.

Around the same time in France, a similar public transport information was killed by the Paris public transport operator (RATP). CheckMyMetro is a free iPhone and Android app that lets French metro users connect to each other and allows them to share information on inter alia incidents and delays. The Paris public transport operator filed a complaint with Apple arguing that the traffic information in the CheckMyMetro app infringed the operator’s database rights. As a result, Apple asked the creator of CheckMyMetro to remove the app from the App Store:

Dear Sirs,

The RATP is a French public company in charge of Public Transports in the Paris area French.
The RATP is the author of the Paris Metro map and the owner of corresponding French design registration (INPI deposit n°06 5325 –Nov. 17th 2006). French and International law on copyright as well as French law on Design thus protect this map. Moreover, the RATP is the owner of the trademark # (INPI deposit n°92402043 – January 21st 1992).

The RATP is concerned with the application “Check my metro” proposed for downloading by the publisher LittleSphere on the App Store and the iTunessince we did not authorize any reproduction or distribution of the said design and trademark.

Moreover, this app embeds the traffic information of our wap site without prior authorization which constitutes an infringement on our rights as producer of database conferred by the French law.

Such reproductions and diffusions may then be considered as counterfeiting acts, and the RATP is entitled to enforce its rights within the French jurisdictions.

Consequently, we ask you to remove the application “Check my metro” by LittleSphere of the App Store and iTunes and to inform the publisher in the same way.

The app is back in the App Store, however, the public transport information has been removed.

Although the French government has started an open data initiative called ETALAB, the Paris public transport information is outside of the realm of the open data initiative because it is in the hands of the public transport operator. The creators of CheckMyMetro, however, are not waiting for the information to be open. They have started their own OpenStreetMap-like project for the Paris Metro at www.checkmymap.fr.

Update, 16:00h: I’ve replaced ‘public transport authority’ with ‘public transport operator‘.

Keyword advertising and the L’Oréal v. eBay ruling

A couple days ago, the ECJ gave judgement in L’Oréal v. eBay. L’Oréal had sued eBay because some eBay-sellers offered L’Oréal counterfeit goods for sale. Some sellers also offered goods that were not intended for sale (such as tester or dramming products) or goods bearing L’Oréal trademarks intended for sale in North America and not in the European Economic Area. L’Oréal also submitted that eBay is liable for the use of L’Oréal trademarks in sponsored search results. eBay used L’Oréal trademarks in both the advertisement’s text and as a keywords to trigger  the advertisement. One of the questions before the ECJ was: is eBay’s use of L’Oréal’s trademarks in sponsored search, use in the sense of Article 5(1) of the Trademark Directive? In other words: is eBay’s trademark use actionable?

Trademark use in keyword advertising

The ECJ differentiates between two types of use by eBay. If eBay advertises to promote its own service of making an online marketplace available to sellers and buyers of products, then that use is not in relation to goods or services identical with, or similar to L’Oréal products. eBay ‘s online auction service is in no way related to L’Oréal perfumes, cosmetics or hair-care products. eBay’s trademark use is thus at the very most actionable under Article 5(2) of the Trademark Directive, which protects trademarks with a reputation (and does not require trademark use in relation to identical or similar goods or services).

However, in so far as eBay uses L’Oréal trademarks to promote its customer-sellers’ offers, then there is use  related to goods or services identical with those for which L’Oréal trademarks are registered. The ECJ compares the products offered by eBay-sellers with L’Oréal’s products. According to the ECJ, eBay’s advertisements create an obvious association between the trade-marked goods which are mentioned in the advertisements and the possibility of buying those goods through eBay. Even though eBay itself does not offer the infringing products for sale, the ECJ held that eBay’s use falls within the scope of Article 5(1) of the Trademark Directive.

This is in line with the EJC’s earlier decision in UDV North America  v. Brandtraders, in which the ECJ considered trademark use by an intermediary. UDV was the proprietor of the Community trademark Smirnoff Ice. Brandtraders operated a web site on which traders could anonymously place advertisements and negotiate the sale of goods. Brandtraders, in its own name but on behalf of another company, entered into a contract of sale of bottles of Smirnoff Ice with a buyer for which it used the SMIRNOFF trademark. The ECJ explained that the fact that a third party uses a sign in relation to goods that are not his own goods, does not by itself mean that such use is not covered by Article 5 of the Trademark Directive. Brandtraders was considered to have used the sign in such a way that a link was established between the sign and the goods marketed by Brandtraders.

Use in relation to goods and services is not enough to constitute trademark use in the sense of Article 5(1) of the Trademark Directive. Trademark use should be liable to have an adverse effect on one of the functions of the trademark. Whether eBay’s use affects the functions of L’Oréal’s trademarks is decided based on the result of the black box created by the ECJ in its Google France v. Louis Vuitton and Portakabin v. Primakabin decisions:

94. As regards, finally, whether the use of a keyword corresponding to a trade mark is liable to have an adverse effect on one of the functions of the trade mark, the Court has made clear in other cases that there is such an adverse effect where that advertising does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the advertisement originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party (Google France and Google, paragraph 99; and Case C‑558/08 Portakabin and Portakabin [2010] ECR I‑0000, paragraph 54).

Conclusion: Nothing new here!

Search Engines Searching for Trouble?

I just uploaded a modified version of my Research Master’s thesis, which is titled ‘Search Engines Searching for Trouble? Comparing Search Engine Operator Responsibility for Competitive Keyword Advertising Under EU and US Trademark Law‘.

In my thesis, I compared EU and US law regarding the liability of search engines for competitive keyword advertising. To be precisely: their liability for linking search engine advertisements to a trademark owned by the advertiser’s competitor without explicit reference to the trademark in the advertisement’s text. Download it!

Update 2/9/2011: Also available at SSRN.

This work by Stefan Kulk is licensed under a Creative Commons Attribution 3.0 Unported License.
Based on a work at www.stefankulk.nl.

No more trademarks on Australian cigarette packages

An interesting read on NewScientist.com about Australian draft legislation that promises to be a landmark in the global fight against tobacco.

EARLIER this month the Australian government released draft legislation that promises to be a landmark in the global fight against tobacco. If passed, from January 2012 cigarettes and hand-rolling tobacco will have to be sold in plain, unappealing olive-brown packs plastered with large, graphic health warnings. The only thing distinguishing one brand from another will be the name written in a standard font on the top, bottom and front of the pack, below the health warning. This is a world first.

The legislation also proposes that cigarettes themselves should be completely plain. That means no branding, no coloured or flavoured papers, no gold-banded filters and no different gauges like slimline and mini cigarettes.

So, no more trademarks on Australian cigarette packages. The tobacco industry fights back:

Within hours of the announcement, British American Tobacco and Imperial Tobacco declared they would challenge the decision in courts and seek billions in compensation on the grounds of “seizure of intellectual property”. The government’s own advice is that the legislation will survive the challenge, a position supported by senior legal commentators. Mark Davison, professor of law at Monash University in Victoria, described the industry’s argument as “so weak, it’s non-existent”. He told The Australian newspaper: “There is no right to use a trademark given by the WTO [World Trade Organization] agreement. There is a right to prevent others using your trademark but that does not translate into a right to use your own trademark.”

Although I don’t smoke and I think we should try to ban smoking as much as we can, I can feel the industry’s pain. There is probably a lot of good will attached to the cigarette brands. Now that tobacco advertising bans are growing, there will be no more ways left for cigarette brands to distinguish themselves. I never read about an explicit right to using a trademark, but a ban on using a particular trademark on packages and in advertisements renders that trademark completely useless. In my view, such a ban does conflict with the foundations of trademark law: to allow entrepreneurs to distinguish themselves and guarantee a certain level of quality to consumers. From a trademark law perspective, a ban on using trademarks on cigarette packages is not the way to go.

Another thought. How long until trademarks for products that pose major health risks can no longer be registered? Will trademark law become a tool to regulate all sorts of unwanted commercial speech?

The Full Jullian Assange Extradition Judgement

The full Jullian Assange extradition judgement can be found here: http://www.judiciary.gov.uk/Resources/JCO/Documents/Judgments/jud-aut-sweden-v-assange-judgment.pdf.

In fact as I am satisfied that extradition is compatible with the defendant’s Convention rights, I must order that Mr Assange be extradited to Sweden.

Assange has seven days to appeal the decision.

Negotiating with Computer Systems

I was shopping online for flowers and found a nice bouquet that I wanted to buy as a present. I entered my personal details, filled in my credit card number and made my way to the checkout page. There I saw that $ 15 was added just for delivery. It was the first time that these extra costs were mentioned. I firmly closed the browser window as I felt sure that I could get a better price at another online flower shop.

Dear Customer,
We were so sorry to see you leave our site a few minutes ago. If you come back now we will be waiving the $14.99 Service Fee on any order that you place! From You Flowers offers Same Day Delivery anywhere in the US when your order is placed before 3pm in the recipient’s time zone!

I didn’t do a full search for other webshops yet, so I went back and confirmed my earlier order. $ 15 dollars off, that’s a good deal! Without realizing it, I had negotiated with a computer system.

There probably is a system in place that contacts customers that leave in the final stages of the checkout process. I am not good at bargaining in shops – I am a coward – but by showing the computer system that I was in doubt, I bargained without knowing it. The system of course didn’t recognize my emotional state of indecision, it was simply a matter of counting down time. It made me think what other simple negotiating skills can be implemented by simple computer scripts without entering the field of computer recognition of emotions.

I was always under the impression that prices on the Internet were fixed and bargaining was something you could only do in the offline world, with real people. Now I know better. How many euros and dollars could I have saved by simply postponing the checkout process?