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Is trade mark law censorship?

After a woman reported that plastic surgery left her ears in the wrong place, we look at whether trade mark laws are being used to censor customer review websites06 Mar 2008


A text transcription follows.

This transcript is for anyone with a hearing impairment or who for any other reason cannot listen to the MP3 audio file.

The following is the text spoken by OUT-LAW journalist Matthew Magee.


Hello and welcome to OUT-LAW Radio, the weekly podcast that keeps you up to date on all the twists and turns in the world of technology law.

Every week we bring you the latest news and in depth features that help you to make sense of the ever-changing laws that govern technology today.

My name is Matthew Magee, and this week we look at how a woman's claim that plastic surgery left her ears in the wrong place has led to a controversial law suit.

But first, the news:

Bank rapped for marketing to opt-out customers

And

Blackberry maker avoids patent payout

A bank that sent marketing communications to people who had opted-out of receiving them has been told not to do so again by the Advertising Regulator. ING Direct fell foul of the Advertising Standards Authority's code.
The company sent two newsletters to customers, one containing promotional offers, the other only containing product information. The second newsletter was sent to people who had said they did not want to receive marketing information from the firm.

The watchdog said that the sending of these newsletters was against the wishes of the people who had opted out.

The company was ordered by the ASA not to send "any marketing communications at all" to customers who had opted out of receiving them.

Research in Motion, the company behind Blackberry mobile devices, will not have to pay patent licence fees to a rival email software company after the High Court ruled that the rival's UK patent was invalid.
RIM took the court case to revoke a patent owned by Visto, which makes email software. It also asked the courts to declare that its software and machines did not infringe the patent.

Mr Justice Floyd said in his judgment that RIM's technology did infringe on the ground covered in the patent, but that the patent was invalid because it was a computer program and was not inventive enough.
The Patents Act, which is based on the European patent convention, says that anything which is solely a computer program cannot be patented.

Mr Justice Floyd pointed out that the fact that the technology involves a computer program does not automatically exclude it from patentability. "The exclusion only bites if the invention is only a computer program," he said. "The mere fact that an invention involves a computer program in some way does not exclude it from patentability."

In this case, though, he ruled that the technology was simply a computer program.


When an internet user calling herself Scarface 55 opted to have not one but two supposedly non-invasive, fast facelifts, she was expecting to come out looking younger and feeling happier.

Instead, she found herself recounting on plastic surgery consumer reviews site Realself.com how it all went wrong.

"I still look the same after 2 procedures," she said, "but now I have horrific scars down both sides of my face, stabbing pain, incessant itching, sutures coming through the skin, lumps & bumps, and my ears are in the wrong place".

This and other negative reviews are now at the centre of a fiercely fought US case which will test trade mark laws to the limit.

The review was of a procedure called Lifestyle Lifts and the company behind those says it is a one hour facelift that is less invasive or serious than a traditional one.

Lifestyle Lifts has now sued the reviews site Realself.com, claiming that the use of the term 'Lifestyle Lifts' on the site is trade mark infringement.

Realself has shot back with a counter-suit, claiming that the plastic surgery firm is trying to use trade mark law to censor the public.

The case will be keenly watched by a whole industry of consumer review sites who will want to know: can you use trade mark law to block unfavourable reviews?

Lifestyle Lifts says that the use of the name is trade mark infringement because the site carries advertising for plastic surgery products and procedures, potentially confusing consumers.

Realself founder Tom Seery told us that he believes the claim is spurious.

Tom Seery: Well their complaint is that we have infringed on their trade mark Lifestyle Lift and we believe that these allegations are completely not true. We are asserting that they are just using trade mark law to silence the critics in our community who have come forward and shared not so positive experiences with the Lifestyle Lift. From our evaluation with our lawyers they believe that we have not violated a trade mark here and that we are in our rights to provide a forum where consumers can talk about their experiences with this procedure.

So how would such a suit fare here? Could a company operating under UK trade mark law claim that criticism of it using its registered trade marks was illegal? We asked Judith Tonner, a trade mark expert at Pinsent Masons, the law firm behind OUT-LAW, to explain.

Judith Tonner: If the same situation was to arise here there is the kind of twofold side of it: is the person that is using the trade mark using it in the course of trade? If they are not using it in the course of trade and if there are similar goods and services they are not engaged in a similar field as the person that is complaining of the infringement.

There is an exception to infringement that it does not apply to use of a mark purely to identify someone’s goods and services provided it is in accordance with honest practices. Having looked at the website that the complaint is based on, it does appear to be just kind of average men and women in the US streets that are commenting on whether the product actually works or the procedure works. Which seems to following heavily into that kind of identification exception that they are not providers of cosmetic procedures themselves, they have been customers of the company and are just kind of making their views known. So it certainly does not strike me as being infringement especially from the UK point of view anyway.

Trade mark law is there to stop one company pretending its products are those of another company. So to break trade mark law you need to be causing confusion to potential customers, and that means that you have to be in the same business, said Tonner.

Judith Tonner: The people that are complaining of the infringement provide cosmetic surgery or some sort of cosmetic procedure. The people that host the forum provide a forum which you know, would people looking at that forum think necessarily that that web host or that company would also be able to provide you with their own cosmetic surgeries or procedures possibly not so there is certainly an argument that magazines and online comment sites are in a different area of trade so there isn’t the requisite likelihood of confusion.

In fact, had this been a UK case Lifestyle Lifts might be in danger of running into trouble just by issuing its law suit. In intellectual property cases, it is against the law to make threats of legal action which are baseless and change the other party's behaviour. Pinsent Masons’ litigation expert David Woods explains.

David Woods: The current threats laws are there to prevent people without properly considering the merits of a case making a claim. It provides a remedy for the threatened person to get a declaration that the threat is groundless and it could get damages if it took action based on the threat such as taking products off the shelf or they could get an injunction preventing further threats being made. In terms of a case here if you used the trade mark for descriptive purposes, the law is pretty clear that this is usually permissible as long as it is done in line with honest practices. It would appear that complaining about reviews would make a groundless threats claim.

Of course, this is a US case where trade mark law is different, so we asked Lifestyle Lifts to defend its suit. It declined.

There is more to this case, though. Realself has made claims in its countersuit that employees or associates of lifestyle lifts have planted fake positive reviews on the site, pretending to be satisfied customers.
Seery outlines his claim.

Tom Seery: We have filed a countersuit which we are claiming that Lifestyle Lifts or its agents have generated fake content on our site where they have posed as patients and we believe this is a violation of our terms of service with our community and anybody who comes to our site must accept them, these terms. We also think it has other elements of violation of federal and state law. Basically computer fraud is one of the acts that is cited in our case and the federal and state truth advertising laws.

In May the government in the UK will pass consumer protection regulations which outlaw exactly the kind of behaviour which Seery alleges.

The regulations will implement the unfair commercial practices directive, a new law designed to force businesses to act honestly and fairly. This means that David Woods will not be publishing fake reviews.

David Woods: The general scheme of the regulations is that there should not be any misleading actions or omissions. The idea is to keep traders honest. In terms of what we have got here one action would be in relation to the false or untrue information which is being provided in the reviews. If the consumer was to rely on it and it caused them to make a transactional decision they would not otherwise have taken, then that is a complaint that could be taken to the OFT and there would be a liability if that is proven. I think it is likely that if a consumer was suitably misled and as a result used the company for services then it would provide grounds for a complaint under the regulations when they come into force in May.

One of the most valuable aspects of the web for consumers is the stream of genuine customer reviews that sites such as Realself provides. The case is yet young and the courts unpredictable, but this is one that will be closely watched by consumers and businesses alike.

Seery said that he felt his company had to stand its ground.

Tom Seery: We believe that we have to vigorously defend the rights of our consumer community members to participate in an open and free forum that is unbiased so we are willing to step up and protect that right and we will do whatever it takes to continue operating as we do today.


That’s all we have time for this week, thanks for listening.

Why not get in touch with OUT-LAW Radio? Do you know of a technology law story? We would love to hear from you on radio@out-law.com. Make sure you tune in next week; but for now, goodbye.

OUT-LAW Radio was produced and presented by Matthew Magee for international law firm Pinsent Masons.

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