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European IP Bulletin, Issue 20, March - Hot Topics

Hot Topics

1.  Norway Proposes New Digital Copyright Law

The Government of Norway has recently proposed a new copyright law intended to bring Norway’s law in line with the European Union rules. Although Norway is not part of the European Union (EU), it is bound by the latter’s directives through the European Economic Area Agreement.

The proposed digital law, which could be in place by 1 July 2005, will make it illegal for Norwegian music fans to transfer music from one medium to another, or circumvent the anti copying protection used in new CDs and DVDs. The provision of software or hardware which could be used to circumvent the anti copying protection will also be illegal. The new law will, however, allow the users to overcome the security codes if the copying is for private use and involves the same format. In other words, users will be allowed to copy a disc onto another disc, but it seems doubtful they will in future be able to transfer their content from one format to another, for instance make copies from one’s own CDs to an MP3 player. If so, acts which are currently allowed under private use which do not restrict the copying to one format, may become illegal. The proposal sets out fines and a maximum penalty of three years imprisonment for those caught under the new law.

The proposal comes in the wake of a ruling by a Norwegian Court acquitting a defendant accused of violating the laws by using the DeCSS program to overcome security codes on his DVDs. In that case, the Court held that the defendant was within his rights to make or use a tool to circumvent codes embedded within his property for private use.

2.  The Game Group V Garth Sumpter

On 18 January 2005, one of Nominet UK’s Dispute Resolution Service Independent Experts gave his decision in the matter of The Game Group plc v Garth Sumpter.

The decision relates to a domain name dispute concerning the domain name “Game.co.uk”. The issue for expert determination was whether a change of use by Garth Sumpter (the “Defendant”) of the domain name Game.co.uk had become an abusive registration because it was being used in a manner which took unfair advantage of or was unfairly detrimental to The Game Group plc’s rights. The issue in the case was a combination of paragraphs 1 and 2(a) of the Nominet registration policy, which set out the requirements for abusive registration.

The Game Group Plc, through various changes of name, had built up a very successful business, both in retail and over the internet, selling computer games and associated hardware. Its domain name was Game.net. The Game Group plc established that it had significant and sufficient goodwill in the domain name 'Game'.

Conversely, the Defendant’s business was originally that of an IT management consultancy with particular emphasis on games software. It was effectively a B2B business. From time to time, there had been discussions between the parties about the possibility of The Game Group plc buying the Defendant’s domain name, but this came to nothing because the price requested was too high.

From about 2002, the Defendant changed the nature of its business from consultancy services to being an internet vendor of games software and hardware. Although it was only a small business, the expert found that there was sufficient evidence of confusion such that an English passing off action could probably be maintained. There was evidence of confusion both from the public (although limited) and from the trade, where a number of journalists picked up the wrong website when referring to the business of The Game Group plc.

Due to the large volume of trade which The Game Group plc had through its website Game.net, it was able to establish that it had rights in the domain name “Game” and that, as from 2002, the change of business of the Defendant had caused the registration to become abusive. One argument which the Defendant employed was that the name Game was generic. It was held that this was not so; it had become distinctive. Further, it was shown both by the earlier use as a consultancy and by independent use by a third party, HASBRO, who had the domain Game.com, that is was possible to use the name Game in a different way without creating confusion.

A further factor, although not conclusive, was that the Defendant had offered to sell the domain name Game.co.uk to The Game Group plc for a sum of money which was significantly larger than the acquisition cost. However, the argument that the Defendant’s pricing of the website was in itself a matter which made the registration abusive was rejected because it had not been the Defendant’s plan from the outset to sell the domain name. This was only something which developed over time.

One further matter which was taken into account was the failure of the Defendant to put its evidence under a declaration of truth. Although that was a procedural defect, the independent expert commented that this failure devalued the Defendant’s evidence. However, at no time did he suggest that he was rejecting such evidence.

Accordingly, the independent expert required the Defendant to transfer the domain name Game.co.uk to The Game Group plc. An appeal is pending.

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