Troll’s summons gone wrong
Copyright trolls are companies that obtain copyrights from many photographers and other authors, then use software to scan the Internet for infringements. Once they find a website on which the image has been posted without permission, they try to scare the operator and demand exorbitantly high sums. As all of this happens automatically, they often make mistakes and there isn’t even any infringement.
This way of working seems to pay off. Some companies are frightened into paying the excessively high costs. Others, without seeking professional advice, pick up the pen themselves, making false concessions or (even more often) failing to address the legally most important points. By doing so, they give the trolls a free pass in court.
Of course, there are also cases where there simply is infringement. It is then often appropriate to pay a fee to the author. However, the fee must be set at a correct level. A fee of thousands of euros (usually) isn’t.
Rage against the Permission Machine
In a recent judgment, the Corporate Court of Ghent, backed by the EU Court of Justice, disagrees with such practices. It is unacceptable that financial objectives take precedence over the effective protection of copyrights.
The plaintiff, Permission Machine BV, uses automated search engines to search for infringements of its clients’ copyrights. It then systematically sends a license offer to the (alleged) infringers. The payment of a license fee is clearly the goal, while the actual cessation of the infringement seems unimportant.
For example, in 2019, the Defendant, Kortom VZW (a non-profit organization), received a communication from Permission Machine: Kortom had used 3 photos in its newsletter on government communications, without permission. Permission Machine put the npo in default. As an accomplished copyright troll, of course, it also offers a license for no less than 848.00 euros.
Kortom’s newsletter is always removed after a month. When Permission Machine asks for 848.00 euro in license fees, the images have already been removed from the website. Kortom refuses to pay the amounts. After sending several reminders, Permission Machine sues the ngo in summary proceedings in March 2021. Permission Machine demands that the alleged copyright infringements cease and that Kortom pays the costs of the proceedings (1,440.00 euros). Such a verdict will then be used to scare future victims.
The judge, however, disagrees with Permission Machine’s way of working. He refers to recent case law of the European Court of Justice. The Court was asked whether a company such as Permission Machine can rely on all the instruments of enforcement that authors themselves can rely on. For example: a claim to stop copyright infringement. To this the Court answered with a very expansive “yes, but”. This because the general right to use these instruments is limited in the case of abuse.
A person who holds a copyright, but does not exploit it himself and only claims damages based on this right, can only use the instruments and procedures if it is judged that this does not constitute abuse. It is up to the national courts to determine whether there is abuse, but the Court provides a number of example circumstances.
Specifically, it is suggested that a judge look at the method of operation and the objectives. A modus operandi where the focus is always on financial compensation and not on actually stopping infringement may indicate abuse.
Therefore, the Corporate Court of Ghent now decided that Permission Machine is indeed abusing the cessation tool. The purpose is financial gain and not the effective protection of copyrights. The judge deduced this from the following elements:
- The cessation of infringement is not a priority in the communication to Kortom, where Permission Machine demands the payment of a fee. It even mentions that removal will not suffice to escape payment of the fee.
- Permission Machine makes no effort to prove that the images are indeed copyrighted and that the protection of these rights is entrusted to them.
- The requested fees seem arbitrarily determined. They are then compounded with unproven costs.
- There was a long period of time between the demands for payment and the final claim for cessation. This makes it appear that this claim is intended more as a punishment for non-payment than as a measure of actual copyright protection and cessation of infringement.
- The claim was filed unannounced.
- The damage from the use of the images is very limited. The newsletter is temporarily online. The website has a limited audience.
It is clear to the judge that the instrument of claim to cessation is misused in this case. Accordingly, the claim is judged unfounded.
The European and Ghent rulings undoubtedly have consequences for the practices of copyright trolls in Belgium. Threatening a summons and claiming damages to force a payment will become a less effective means of pressure. Of course, it remains important to respond appropriately to the communications of these shrewd creatures companies.
The image in the header is part of a work by John Bauer. John Bauer died in 1918, so his work is in the public domain.
Written by Barbara Verstraeten & Thierry Van Ransbeeck
Did you receive a ‘Notice of absence of formal requirements’ from the EUIPO?
Before publishing your EU trademark application, the EU Intellectual Property Office (EUIPO) will examine if the formal requirements are met.
If you are located outside of the European Economic Area, the deficiency will usually be a lack of local representation. The EUIPO’s notice will read along the lines of:
“No representative has been appointed. According to Article 119(2) EUTMR, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area must be represented before the Office in all proceedings other than filing an application for a European Union trade mark. The representative appointed must be from within the European Economic Area. Article 120(1) EUTMR sets out who may act as a representative before the Office. A list of representatives can be found through eSearch on the Office website.”
While companies from any country can file an EU trademark application, only those established in the EEA can do so without a local representative.
As registered EUIPO Trademark & Design Attorneys, we can help you solve this type of deficiency. For instance, the above issue can be solved by us registering at the EUIPO as the representative for your application. In most cases, the cost for this action is only € 70,00 per trademark application.
If you don’t remedy formal deficiencies, the EUIPO will refuse your trademark application. You will not get your filing fees refunded.
The deadline to remedy the deficiency will be mentioned on the EUIPO’s notice. It’s usually 2 months. So don’t hesitate, and contact us for assistance.
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If your dream is to fill in templates and copy-paste legal articles, look elsewhere.
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- Experience: A first professional experience is a plus, but not a requirement.
- Areas of expertise: Intellectual property and more generally speaking: economic law.
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- Languages: Very good knowledge of Dutch and English is essential. You can distinguish yourself by having good knowledge of French or another language.
- Education: Master’s degree in law. Good academic results are a strong plus, but don’t show the whole picture.
- Personal guidance and training. We set the bar high, but you won’t be on your own.
- Direct contact with exciting companies. You will connect with both experienced business people and enthusiastic world changers.
- Interesting, varied legal work for a very diverse national and international clientele. On day one, you might work on an IP infringement case for a multinational. The next day you’re reviewing contracts for a start-up. Another time you’re assisting an SME with its trademark strategy.
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Did you read something above that doesn’t apply to you? Contact us anyway, maybe your other talents will make up for it. Knowledge of Dutch and English, however, is essential.
How do I pick a name for my company?
We should distinguish between two situations:
- Your company name will remain purely administrative. Your company name will be used and appear on invoices, but your products or services will bear another (brand) name;
- You will also use your company name as a brand name. Whether you place it on products or offer services under this name, it is a recognition mark for your customers.
In the first case, the task is less daunting. From a legal point of view, you only need to ensure that no company with the same or very similar name exists. You can quickly look this up in the Crossroads Bank for Enterprises.
If you are not going to use the name to (potential) customers, you should not take much account of its appeal. Of course, don’t go overboard; you wouldn’t want to ask a supplier to invoice Smoochie Ltd, would you?
Company name and brand name
The second situation requires more effort. You need a name that attracts, makes you curious, is not confusing and will not cause any legal issues. Keep these five tips in mind:
Not too long, not too short
Have a look at Interbrand’s annual ‘Best Global Brand’ list and you will see how often they are between five and ten letters long.
This, of course, is no coincidence. Overly long company and brand names are difficult to remember. Short abbreviations, on the other hand, are easily confused. Was it CFD or DCF?
Avoid negative connotations and difficult pronunciation
The name you have in mind is reminiscent of your childhood – but means toilet in Lithuanian. You thought of a nice pun on your own name – but this is also the name of a wanted terrorist.
Even if you deliver products or services offline, your company name will be frequently typed into search engines. You want your leads and suppliers to find you, not toilets or terrorists.
Tip: Write your company name into Google Translate without selecting a language. If it has a meaning in any language, it will be selected automatically. In any case, search extensively via search engines and social media for uses of the word in question. Especially if you want to be active internationally, this is essential.
Also make sure that your company name is easy to pronounce. You don’t want staff to have to introduce themselves on the phone as salesmen of @M@~i BV.
In order to clearly indicate what the company offers, many founders look for a name that is descriptive. A new garage becomes “The Garage”. A lighting business becomes ‘Light’. It’s trendy, but not always a good idea.
On the one hand, you will never be able to register this name as a trademark, so that you cannot stop competitors from using it too. On the other hand, it is very difficult to come out on top in search engine results with such a name. Often, a combination of the two will happen to you: an established name in your sector with great SEO sees that you are successful, puts your descriptive name on its website a number of times and nobody can find you. Very annoying.
If you want your name to reflect what you do, try to give it a twist that will make it stand out.
Trademark and domain name available
When a trademark is registered, the owner of the registration gets an exclusive right to use this trademark or a similar one for identical or similar activities. You should therefore check beforehand that nobody has such a monopoly on the name you have in mind. Hint: we can help you with this.
In many sectors, it will also be important to have a website to attract and inform customers. For that, you need a domain name. Nowadays, there are many alternative top-level domain names in addition to the classic .com, .be, etc. So here you have some room to be creative. If .be or .com does not work out, go for .travel, .tattoo, .lighting or something else that is relevant to your sector.
Also make sure there are no social media profiles that could be confusing for your customers.
Conclusion: Will your company name also be a brand name? Then think carefully about this name.
Good names create, without being descriptive, a visual image to which you can later relate your expertise and style of working. The classic Flemish solution *first letters of the partners’ names* can work, but you can also be more original: a flower, an animal, a historical figure you look up to, a musical genre :), … it can all serve as a starting point for a solid company name.
Try not to ‘fall in love’ with the first good name you think of, but wait until you are sure that you can use it as a brand and domain name. Also, avoid overly descriptive names if you want to prevent others from benefiting from your efforts.