Fairway Fox – Ed Timberlake – The Right to be Forgotten – IP Fridays Episode 8

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This episode is about Fairway Fox and their case before the TTAB, where we learn about the importance of knowing the true owners of rights. Then we hear from Ed Timberlake and his passion for trademark prosecution. And finally, we tell you more about Google, the right to be forgotten and the recent decision of the European Court of Justice.

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Ed Timberlake

Ed Timberlake

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 8 – August 8, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

ET = Ed Timberlake

 

My name is Ed Timebrlake and I usually don’t like to use the term “IP” but I make an exception in the case of IP Fridays.

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you so much for tuning into yet another episode of IP Fridays. Today we are talking about the right to be forgotten and what the legislators in Europe have to say about Google. Then we have a really cool interview with one of our first listeners, Ed Timberlake. He is a very passionate trademark prosecutor and he tells us about trademark prosecution in the U.S. and some pitfalls and his favorite parts of the work as a prosecutor. Then, we also have a story about Fairway Fox and it is interesting because it has been a TTAB case that has been recently decided. The parties they used Accelerated Case Resolution procedures and that might be interesting for the practitioners listening to this podcast. But before we do that, we want to point out that one of our very faithful listeners, Robert Turlington, he pointed out that in our last episode we talked about Verisign and in fact Verisign is not a registrar as we said but in fact a registry. This is an important distinction because domains are not purchased from registries like Verisign, they are purchased from registrars like GoDaddy and so on.

 

So, without further ado, I hand over to Ken and he will tell us about the Fairway Fox.

 

KEN SUZAN’S DISCUSSION REGARDING FAIRWAY FOX

 

KS: Rolf, the TTAB issued an opinion on July 3, 2014, that has interesting factual issues and procedural points for the TTAB practitioner.

 

The opinion concerns former business partners Kristin Conolty and Kathryn O’Connor, who started a business together in 2008 to make “upscale, fashionable golf clothing” under the mark Fairway Fox. However, according to the TTAB there was no evidence that they had started doing business under Fairway Fox until 2009 when the partners sent sample clothing to potential customers. Conolty registered a sole proprietorship doing business as “Fairway Fox Golf” while O’Connor formed a single member LLC called Conolty O’Connor NYC LLC, a combination of the two partners’ names. However the partners had a falling out in 2012, after which both sold Fairway Fox golf clothing separately.

 

O’Connor applied to register the mark Fairway Fox, and Conolty opposed the application on the grounds of likelihood of confusion and claiming prior use. At this point the parties agreed to the Accelerated Case Resolution procedures, in which the parties submitted cross-motions for summary judgment with affidavits of evidence. The parties also stipulated to a likelihood of confusion, so the only issues before the Board were priority use and O’Connor’s defenses.

 

However, even though Conolty, the opposer, noticed only priority use as grounds for her opposition, she also argued and presented evidence on nonownership in her motion. Had O’Connor objected, the TTAB would not have been able to consider this ground, but O’Connor did not object and in fact also argued and presented evidence as to her ownership. The TTAB considered the ownership issue to have been tried by implied consent. As to ownership, the TTAB found that both owned the trademark for Fairway Fox equally as partners, but stopped before further considering the results of the parties’ business dispute, noting that the TTAB’s jurisdiction is limited to “determining the right to register.” Because the mark was not owned solely by the applicant, the applicant could not register the mark.

 

The procedural takeaway of this case is the importance of including all grounds and defenses properly when pleading, even when using the Accelerated Case Resolution procedures. Moreover, if one’s opponent does not properly notice a ground or defense, simply ignoring the issue is sufficient to avoid giving implied consent, though it may still be prudent to draw the Board’s attention to the fact that the ground or defense was unplead and thus unavailable for the opponent. Factually, the issue of joint ownership of trademarks will likely be important in other cases where there is a fledging business and the partners are not initially concerned with clearly establishing joint control of the business and ownership of any trademarks. Given that some new businesses may be formed by people who do not initially seek legal advice in this formation, whenever legal counsel is sought, counsel should attempt to settle the issues of trademark ownership up front as well as the normal concern of ownership interests in the business itself in order to avoid situations like this in the future.

 

RC: Well Ken, thank you very much for this particular case. It is always really important to know about the ownership and to be certain about the ownership of the rights that you are enforcing and this is just a real cool and really good example of what can go wrong if you are not really certain about the ownership of your rights.

 

Next I will interview Ed Timberlake. Ed Timberlake is a listener of our podcast from the very first episode on and he has sent us really helpful comments and I had a chance to interview him about his real big passion which is trademark prosecution. So, here we go…

 

ROLF CLAESSEN’S INTERVIEW WITH ED TIMBERLAKE

 

RC: I am very excited today to be joined by Ed Timberlake. He is a former Examiner at the United States Patent and Trademark Office for trademarks and he is now a very passionate trademark prosecutor and besides that he has a very interesting Website. Not only his company Website but also you can see a really interesting Tumblr blog at http://timberlakelaw.tumblr.com/. You will find the address in the show notes and you can see that he is a very visual guy. So, Ed I am very happy that you are part of the show. Thanks very much.

 

ET: Yeah, I appreciate the opportunity to speak to you Rolf.

 

RC: So, why don’t you tell our listeners a little bit more about yourself?

 

ET: Ok, one thing that I find when I talk to a lot of other attorneys is that a lot of people who are doing a lot of trademark work now got into and found that area interesting maybe while they were in law school or after they got out of law school. In my case, I actually found myself kind of obsessed with trademark issues before going to law school. I actually didn’t really envision going to law school in the first place. There wasn’t anybody in my family who was a lawyer and I hadn’t really envisioned it as something I would end up doing. But I got obsessed conceptually with the idea of trademarks and how many different areas they sort of contained within them. They had this very interesting combination of kind of the art side, not only with logos but the artful and creative use of language, combined with this very practical commerce based side. I thought that was just a very interesting area where art and the commerce came together. So after being obsessed with trademarks for a while, I started to look around and think I’m already spending all day thinking about this…is there a job where you can get paid for doing that all day and the only avenue that seemed to present itself was to go to law school. By the time I went to law school I was already focused on trademarks and was lucky enough at the time that I got out of law school that the U.S. Patent and Trademark Office was hiring for trademark examining attorneys. So I went straight to the Trademark Office which was just a joy and a dynamite place, I don’t know how it is in every country but in the U.S. it is very fashionable to speak about the Federal Government as being inefficient and people are not particularly dedicated to their work in certain areas. I was completely surprised and very pleasantly surprised at the Trademark Office that everybody involved in it, at least on the trademark side, you have very little interaction with the patent side, but at least everybody on the trademark side just took their jobs very seriously, did very good work and were not just trying to shuffle things through. They were trying to do things right and would take extra time to make sure that something was addressed and so that, I honestly hadn’t really been prepared for that as an experience of working for the Federal Government. So that was actually a very enjoyable time and that was when, I guess it is in Alexandria now.

 

After leaving the Trademark Office, I went to the U.S. Copyright Office, which is also a very interesting place to be and a particularly interesting place, this was in the early 2000’s, particularly interesting time to be at the Copyright Office. There were just a fascinating number of issues. Sort of all of the digital issues just having to sort out how an analog law was going to work in a digital world and I don’t know that we will solve that at anytime soon but it was just very interesting issue to address. And then I had been living in North Carolina, but we’ve been in D.C. for about ten years. and decided it was time to move back home to North Carolina so we moved back to North Carolina and worked at a small boutique intellectual property firm and then now I have gone out on my own.

 

RC: Very good. Very interesting. I mentioned that you are quite a visual person and you have a dedicated blog for trade dress and many people outside the U.S. might not even know what trade dress really is all about so can you tell our listeners what really is the distinction between or what makes trade dress special within the trademark world?

 

ET: Ok. Yeah. I think legally speaking it’s fair to say that trade dress constitutes mostly just really cool trademarks. They’re not really different, they’re not fundamentally different and I think there is a little bit of a danger in even separating them as a separate subject because really all of the trademarks, at least under the U.S. law, all of the trademarks are trying to do the same thing. It’s all about distinctiveness. It’s all about distinguishing your stuff from somebody else’s stuff. So in my opinion the things that would fall under the heading of trade dress just often do a particularly good job of setting that category of things, whether it be goods or services, apart from other things. Also it is also a little bit of a fortuitous coming together of technology and interest so I was really already interested in really anything that anybody files at the U.S. Trademark Office I find, I am automatically interested in, if someone could pay me to sort through the records of the USPTO all day long, I would be happy as a clam just looking through all those things. But some of the things that stand out tend to be the visual, things with visual elements, things that are three dimensional.

 

But also I think that the timing of it was such that I got on Twitter and I immediately loved Twitter but on Twitter you are very limited to the number of characters you can use whereas you are always free to attach an image. You have 140 characters but an image has got to be worth about 1,000 characters because you can get a big benefit just by showing something without having to say a lot about it. So I enjoyed being on Twitter quite a bit and that you could really convey a lot of information on Twitter visually made me think okay well maybe there is something here that I can pursue and then it has become so much easier to save the material. In the old days when you had to actually sit down and write something like you were writing brief in order to have a blog post. That would have been a very different kind of work.

 

Here, I’m not really doing anything different than what I would be doing all day anyway which is spending a lot of time looking through Patent and Trademark Office records, seeing what’s there and seeing what’s not there. It’s really a matter of simply flagging. You know, I’m able to save a lot of the more interesting things that I see and put some of them up on, I’ve got really stuff up all over the place on the internet. I’ve got one blog which is the Trade Dress blog and then I have a bunch of Pinterest boards. I don’t know why every trademark lawyer… I don’t know why we’re not all on Pinterest because it is so easy. When you see a record at the Trademark Office it is very easy to pin it to a Pinterest board and in no time at all amass a very big collection of really fascinating things that otherwise you see and you think are interesting but maybe you don’t get to share them with anybody else and so they may not even know they are out there. So there is a big benefit to bringing some of that to light.

 

Also, I should admit that one of the frustrating things, although I loved my time at the Patent and Trademark Office, one of the frustrating aspects of it was simply the volume of new trademark registration applications that were coming in every day. That meant that you didn’t really get to see, you didn’t get much of an overview, you were kind of buried under your own mountain of files that you didn’t get a good overview of all the things that were being submitted to the office. So I spent a lot of my time there wishing that I could just see, that it would be easier to see what type of things people were applying to register. Now of course that the records are online, it is very easy to see the kinds of things that people are applying to register and to me that is just fascinating. I check, I think, I don’t know anything about sports, I’m not much of a sports fan, but I think my behavior is I sort of reflectively, given a pause in the day, I just reflectively check the PTO filings as somebody might check the sports scores like oh I wonder what people are sending over there. So it’s a good time to be interested in this area and it’s nice that it’s so easy to send that out so other people online can see it. Hopefully somebody finds it interesting but either way I’m still probably going to be rooting through these records.

 

RC: Very cool. I mean I can see that you really do what you say and I just looked at your Twitter account and you are posting really cool images. One image that caught my attention today was the Gucci stripes that were obviously registered this week so that would be a really nice example for a trade dress case. So can you tell us what exactly was registered and what does that mean for Gucci and what does that mean for other people?

 

ET: Yeah, and that is one thing that I found that is very interesting is that occasionally I’ll post something and I’ll think well that’s not from an examination standpoint…I’ll think well that’s not really all that unusual but it’s a company that people have heard of and a lot of times that’s just enough of a hook on line to get people notice and say hey that’s a Gucci thing, I think I’ll look at it and maybe, my hope is, that maybe somebody who will see a tweet that way will click through to the actual record and will spend some time looking at these records to see how they are put together and seeing what information is in them and what information is not in them. As you know, I don’t know how it is in Germany, but at least in the U.S. there is a great deal of misunderstanding about how these things work. And the trademark area is not, I don’t think it is overly technically complex, but it is somewhat nuanced, and so I think that if people spent a little bit of time saying okay well what are the records and what is in the records and what does it say is covered and what isn’t, I just think we would all be able to communicate better about these issues.

 

Okay, about this record. It is a Gucci. The company is Gucci and it’s this stripe. It’s a band and it’s blue. I guess the description of the mark is the mark consists of a stripe containing three distinct bands of color with a red band in the middle and two blue bands. So you’ve got the blue bands on either side and the red in the middle. And you are absolutely right that somebody looking at that just simply out of the blue without any context might say well that’s a little broad. You can’t just corner the market in stripes. But, of course, that’s not at all what the registration says. The registration is limited to the specific goods that they’ve claimed here and this registration covers gym bags, wallets and cosmetic cases. So it is not really all that provocative of a filing because their use of these colors in this way, on the application the use goes back to 1963, so this is not really one of those situations where somebody is trying to really stake out an area to block people before they have really spent much time in the market. In this case, it’s really just a recognition that they have earned these trademark rights the old fashioned way. They’ve just actually used them for a long time so I think for people who are in that, the relevant people in that market, it wouldn’t seem like oh wait a minute you’re trying to claim too broad an area because Gucci is already in that space and they’ve already been in that space for a long time. But it’s just a particularly pretty combination of colors and I suspect if one went back through the records that you would find quite a few other, I don’t know if I want to say a family of marks, but quite a lot of other relevant related combinations of colors also that Gucci has been using for a long time.

 

RC: Right, so it is a rather fair registration because they have been in the market for such a long time. So the U.S. trademark law is a little different from, and especially the prosecution, is a little different from the rest of the world. So, what do you think are the most important lessons that you can tell our listeners what they should know about the U.S. trademark law compared to the other trademark laws that you know?

 

ET: Yeah, ok, I think this is an area that we all would do well to spend more time thinking about. Being somewhat familiar with U.S. law, if somebody comes to me and has something that they have been using for a while and they are interested in whether a registration would make sense, really at that point for anybody of really any size, part of the thinking process ought to be okay you are using this locally now and maybe we are only going to use this in the U.S. for right now, but let’s keep in the back of our minds other places that you might want to go and considerations that you might have in mind should you eventually go to that area. So I think that is something, it’s certainly not something that everybody needs to do – to run out and try to get registrations all over the place – but I think if you were outside of the U.S. and you thought the U.S. was ever going to be an option of a place to go, that ought to at least influence I think the conversation that you would have when you start registering things anywhere just like is there a way that we can describe something now that maybe you wouldn’t be necessary, wouldn’t be required to describe it that way in order to get it registered in Germany, but would set you up nicely to not have to go into a separate step if you were going to move into the U.S. And you are right, I feel badly for anybody outside of the U.S. trying to become acquainted with U.S. trademark law quickly because there are a lot of irregularities to it that we get used to seeing them here but if you weren’t facing them every day could seem a little bit like where are these things coming from and how are they coming and how can I prepare for them. I think that’s particularly true in the area of trade dress. There is not a lot of, and again trade dress is not a separate body of law altogether I mean the marks are really doing the same trademark things of distinguishing stuff but depending on the kinds of things, if you are talking about three dimensional things, particularly the big distinction in the U.S. is between the product, they call it the configuration of the product, the way the actual product is shaped versus the packaging, the external packaging that it comes in, and those are treated differently. I would say that if you are outside the U.S. and you are doing something, particularly something three dimensional, then it really would be smart to just to talk to somebody familiar with the area who could orient you to the landscape because if it was your first time into that area I think you could be surprised about how some of the twists and turns of the U.S. law would go and also I think it would be fair to say that if you are outside of the U.S. with something three dimensional, particularly bottles. For some reason there seems to be a lot of action in the bottle area. Maybe because liquor sales, liquor products, tend to be a little more expensive so they can spend some money on the bottle but there seems to be a lot of activity and very creative activity in using different bottle shapes. You wouldn’t want to have to have a different bottle shape for different parts of the country so if you are in Germany and you are thinking of setting your goods apart by the shape of your bottle, that would be a great time to talk to somebody about okay if we move into the U.S. what are the things that we would want to keep in mind and sometimes on a practical level what that translates into is it can be a little more expensive, the prosecution process can sometimes be a little bit more expensive because you are going to want to talk to somebody who is familiar with that area of law and there might be a couple of other steps to show in terms of what we call in the U.S. “acquired distinctiveness” if it’s the kind of thing that isn’t already going to be…isn’t something that can be registered right away then you might need to come up with alternate plans for how to handle those going forward until you can show some acquired distinctiveness in the U.S.

 

RC: Yes, I completely agree. I just had to adjust a list of goods and services for a German client to be compatible with Germany, with Europe and with the U.S. and that was a real big headache.

 

ET: I will say from the standpoint of being a trademark examiner at the U.S. Patent and Trademark Office you could see those IDs come in, you could spot those from a mile away because when I was there they still had some of the files in paper so you would just see the printout of where this was one of those things where everything in the class is in there and you would have to sort through and say these are the ones you can keep and yes, as you know, the first time that you do that it is really very painful but hopefully after you do it over a little bit of time you can recognize certain areas like this is going to be a problem area but these three things are just fine as they are.

 

RC: Yes, sure. So a trademark in its lifecycle has different phases. For example, first the trademark is created and then they come to you and ask if you can protect their trademark, then you recommend a search, then you do the search, then you file the trademark and then maybe the goods and services are objective, and then after that maybe the sign itself is objective for being descriptive or something else and then finally it gets registered or not. So there are different stages within the life of a trademark application and which one is the phase that really fascinates you most and which do you really love to work in most, which phase?

 

ET: To me, and as you have laid it out it sort of identifies the problem. To me the most interesting area is generally before people talk to me. To me sort of the holy grail of trademark prosecution would be if you could have a relationship with somebody a relationship with a business or maybe be in a certain type of business and be identified in such a way that people would come to you before they’ve gotten too far down the road. Where they would come to you and say we are thinking of doing something in this area and if you could get a little bit of consultation at the very beginning of the stage, before they think they need to talk to a trademark lawyer, that to me is the ideal area. That to me is where you get the most value for your money talking to a trademark attorney at that point in my opinion as opposed to any other stage in the process. I think that people tend to in their mind they tend to switch or invert that a little bit of that and think well I can do a lot of that early stuff without talking to a lawyer and then if we need a lawyer later on, if it comes to suing somebody, then we will pay for the lawyer. Nothing against people who are doing good trademark litigation work, but to me that’s a really bad way to spend your money. If you had to budget how much money would you want to spend on the different areas, it seems to me that you would get better value talking to somebody at Day 1 or Day Zero and maybe stay out of the areas that would have driven you into litigation in the first place. That’s my own personal sort of bias. I just don’t find litigation really all that interesting and I know we need to have it out there and I know that we set precedents, but to me the really fascinating part is the creation part. I am a little bit of a stickler about some of the terminology that people bat around because for instance oftentimes trademark lawyers will say that we can help you in the trademark selection process and to me it’s really almost even better not to think of it as a selection process because it’s not like there is a list up here…let me open up my list of possible trademarks and you just select from the list…you really – trademark rights in order to distinguish your stuff from other people’s stuff you are not talking about selecting a trademark you are talking about really forming, forging, you have to do some hard work of thinking and connecting your stuff with some kind of symbol so that that bond gets made between those two things. I think selection is just far too passive a word. I think we need really active, I think maybe forging trademark rights would be a better way to think of it. So I don’t know, I haven’t quite figured out how to get people to talk to me before they think they need to talk to a trademark lawyer. Maybe just getting the word out like this will help. And then if you can have that conversation and say hey let’s not even go with those three things that we thought might be good ideas but have various problems. If you can go forward, if you can do that screening process at the beginning and so you are only moving forward on good solid ground, then I think the whole rest of the process can be a fairly enjoyable, fairly pleasant experience for everyone. Another reason that a lot of litigation doesn’t really grab my attention all that much is because a lot of it isn’t that interesting. A lot of it is two big companies fighting over marks that are not really doing a very good job of distinguishing their stuff and they are running into each other. So if you pick a mark that is not going to set your stuff apart very well and then you run into somebody else who also has a mark that is not setting their stuff apart very well, then that is a big expensive headache but it is not really leading to very fascinating revelations in trademark law.

 

RC: Right, so we could talk a lot longer but unfortunately our time is running out a little bit. It has been a pleasure to have you on the show. Thank you very much. If people wanted to get in touch with you, what would be the best way to reach you?

 

ET: I am all over the place on the Internet, but feel free to email me at ed@timberlakelaw.com and it will come straight to me. One last tip I wanted to point out just because it is easy for everyone to access and it can be a nice little framework. At the Patent and Trademark Office…the Trademark Examining Attorneys used what is called the Trademark Manual of Examining Procedure (the “TMEP”). In there, in Section 818, it is called The Application Checklist. I have spoken to a lot of people out in the world, and a trademark examining attorney might turn to this when looking at a new file, the examining attorney might look at this to say okay going through these steps do I have everything I need and what sorts of issues do I need to keep in mind. I find that for practitioners out in the world, particularly abroad, that might be a very handy way of thinking okay have I hit everything and am I prepared to address all of the issues there are covered here. It also has handy links to different sections of the TMEP where it discusses how to meet those requirements. If you haven’t looked at Section 818 of the TMEP it might be a good place to get a reference.

 

RC: That’s really helpful. That’s probably the most important tip in the whole interview. I didn’t know about that. Probably that is a really good place to go. Thank you very much.

 

ET: It has been my pleasure. Thank you.

 

RC: Well, let’s move onto the next story which is the European Court of Justice having issued a decision about the right to be forgotten in the case of Goggle and Ken has all of the latest.

 

KEN SUZAN’S DISCUSSION ABOUT THE RIGHT TO BE FORGOTTEN

 

KS: Rolf, a recent European Court of Justice [“ECJ”] ruling found that EU citizens have a so-called “Right to be Forgotten,” that is, have the right to request search engines to cease listing certain results when their name is searched when the results are “inaccurate, inadequate, irrelevant or excessive.” This ruling reveals the tension between national attitudes within the EU as well as outside with respect to the proper balance between privacy and free expression, as well as creating obligations on any search engine with a business presence in an EU country.

 

The European Court of Justice [“ECJ”] issued a ruling last May that was referred to it from the National High Court in Spain. A Spanish lawyer, Costeja Gonzalez, had brought Google before the Spanish data protection agency which was established to enforce a 1995 EU directive on data protection. Gonzalez wanted Google to remove references to two online newspaper articles from a Spanish newspaper which contained announcements from 1998 that Gonazalez’s house was to be auctioned to cover his unpaid debts. Gonzalez argued that these results were irrelevant as the house had been sold and his debt fully paid for years, and that the search results were causing him reputational harm. The data protection agency agreed with Gonzalez about Google’s responsibility under the 1995 data protection directive, but disagreed with him on his request to require the newspaper itself to remove the articles or modify them so that his name was removed. Google appealed this result to the National High Court, which in turn transferred the case to the ECJ for the ECJ to answer some preliminary questions about the status of certain elements of the case under EU law in general and the 1995 data protection directive particularly.

 

The essential issues were:

(1)               Whether Google (and by extension all other Internet search engines) fell within the definition of a personal data “controller”, which means one who processes personal data, under the 1995 data protection directive.

 

(2)               In what circumstances would a non-EU search engine be considered to be “established” within or using equipment located in an EU member state under the 1995 data protection directive, and thus subject to the directive.

 

(3)               Whether a search engine would be required to remove listings for articles or other information lawfully uploaded by third-parties who themselves are not required to remove the information.

 

On the first question, Google argued that it does not process the data that is displayed in its search results. That the said data was really processed by whatever third parties created the web sites to which the search results linked. The ECJ, however, agreed with Gonzalez that Google does perform data processing when it receives a search query from a user before displaying the results. Because Google automatically indexes data on websites, stores it temporarily, and then displays the query results in a particular order of preference, the activity of a search engine like Google does process the data in question. Therefore, Google is a data controller of the data.

 

On the second question, the ECJ simply stated that a search engine need only have a branch or subsidiary within an EU member state that sells advertising on the search engine in order to be considered to be established within the EU and thus subject to the 1995 data protection directive.

 

The third question, however, was more difficult for the ECJ to resolve. After considering the interests of all involved, the ECJ settled on a balancing test that is highly fact dependent on any situation. In Gonzalez’s case, the balancing test applied by the Spanish data protection agency found that the original newspaper did not have to remove its information for Gonzalez’s rights to be protected, but that it is possible that in some cases the original publisher might be required to remove its information to protect the individual affected. The ECJ also considered that there are many occasions where the original publisher would not be subject to EU regulations, so requiring the original publisher to remove the information before the search engine was required to delist the link in the search results would often result in no privacy protection for the individual affected. Finally, there could be other circumstances where the public had a right to the information being included in search engine results, which would allow for no “right to be forgotten” for the individual affected.

 

The European Commission defends the ECJ’s finding of a right to be forgotten under the 1995 data protection directive, even though others argue that this is a strained interpretation. The 1995 data protection directive itself was written prior to the commercial explosion of the Internet, and by its language seems to contemplate “data processing” in the context of database operations rather than in a dynamic content delivery context such as search engine results. The 2012 update to the data protection directive allows for an individual to request an end of access to incomplete or inaccurate data, rather than the 1995 directive’s focus on obsolete data no longer needed for processing.

 

So, is this the beginning of 1984 in the EU? Well, not quite. Even though this ruling does impact privacy concerns, the changes to the search engine results are only applied to the EU country specific versions of the search engine. Google users in Europe have the option of using the U.S. version of Google, the .com instead of .co.uk or .de for example, by selecting “Use Google.com” option at the bottom of the screen – no need for tricky VPNs or IP masking. Moreover, the removal of results only seems to apply to results linked to an individual’s name: for example, one of the first removal requests received by Google was to remove the listings for three Guardian articles about Dougie McDonald, a Scottish football referee who resigned as a result of a scandal. However, the Guardian found that if you search for “Scottish referee who lied,” the articles are still accessible.

 

Rolf, what are your thoughts about this case?

 

RC: Well as a patent and trademark prosecutor I am not really an expert in this field but as a private person I would say that all of the statements that I make in the public domain and are now being processed by all of these companies like Google they are all recorded and stored and being made searchable so the ruling is giving back some control to the citizens but in fact I think the ruling is not really practical so I think it will be a very big burden to the companies like the search engines to really put this into action. I’m really interested to see how the search engines will implement this decision.

 

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You have been listening to an episode of IP Fridays. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms. None of the content should be considered legal advice. The IP Fridays podcast should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents of this podcast are intended for general informational purposes only and you are urged to consult your own lawyer on any specific legal questions. As always, consult a lawyer or patent or trademark attorney.

 

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