Is trade mark law censorship?
OUT-LAW Radio, 06/03/2008
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 websites
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.
