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Copyright history on championsleague

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aussiemike
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PostPosted: Fri Dec 14, 2012 3:25 am    Post subject: Copyright history on championsleague Reply with quote

Hi All,
I am the current owner of the domain championsleague but am being sued by UEFA.
It has been in the courts of Kenya where I live for 15 years and is still ongoing.
Recently I was informed that UEFA had been refused copyright on the name back in the late 90's in the UK due to the names generic properties.
Can anyone point me in the right direction where I could find out if this were true?
Regards from Africa.
Aussiemike
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AndyJ
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PostPosted: Fri Dec 14, 2012 9:47 am    Post subject: Reply with quote

Hi Mike,
I think there may be a bit of confusion here over the terminology. It is highly unlikely that anyone has been refused copyright in a title of a competition, as the only way this might occur is if a court found that words of the title were either too common-place and therefore lacked originality or were too brief (what the law refers to as 'de minimis') to qualify. But this would only have come about if there had been a court case, say involving infringement, rather than a bureaucratic oversight function which your post implies.
What I think is much more likely is that UEFA were refused registration of a trade mark consisting of the words Champions League. One of the criteria for eligibility of trade marks is that it must not be purely descriptive. A second is that the proposed mark must have a distinctive character, so generic phrases (eg 'dog food' or 'cut flowers') can't be registered. This seems to fit with the ancedotal evidence you have been given.
Unfortunately what you were told appears to be wrong. Or at least if they were refused back in the 1990s then that is out of date now as various versions of Champion's League have been successfully registered as Community Trade Marks (ie they are valid across the EU). An example can be found here: E6280499.
The fact the UEFA hold these trade marks means that they have a strong case against you in the URL dispute, as this kind of evidence is usually enough to establish a prior claim to the domain name. Indeed a formal procedure (known the Clearinghouse) to link trade marks to URLs is currently being set up for the new Top Level Domains. Normally domain name dispute resolution is carried out by one of the bodies set up by ICANN, rather than the courts. However the procedure under Kenyan law may well be different.
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aussiemike
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PostPosted: Fri Dec 14, 2012 10:31 am    Post subject: Reply with quote

Thanks Andy,
You are right. I think it was a Trade Mark that was refused. Even so it would be good for my case if I could find evidence of this.
I bought this name back in 1998 before they registered the trade marks anyway. Not sure that will help me. I had not even heard of CL before 1998 either.
Also not sure if it helps but when one does a search of CL on google one will find anything from Handball to Motor racing and cricket and social clubs using the same name. There is even an African Champions League, Asian Champions League and Arab Champions League, none of which has anything to do with UEFA.
Thanks for your time anyway.
Regards
Mike
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AndyJ
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PostPosted: Fri Dec 14, 2012 9:56 pm    Post subject: Reply with quote

Mike,
A registered trade mark does not prevent someone else from using the same words in a different context where there would be no risk of confusing the public. So no-one would think an African Champion's League had anything to do with UEFA which clearly runs football on another continent.
As for trying to get details of any previous refusal to register the words, you can interrogate the IPO database online for refused applications, but it's really time-comsuming because they are listed by individual year and month, rather by applicant, plus I'm not sure how complete the earlier part of the online database is regarding refused marks. It might be worth contacting the IPO first with a general query and see what they advise. And in the case of Community marks, these handled by the Office for Harmonisation of the Internal Market (OHIM) which is based in Alicante, Spain. OHIM wasn't set up until 1994 and I don't know the extent of its early online records, especially with regard to refused marks. You can perform a search of the OHIM database here: OHIM by inserting your chosen words in the third box down (trade mark name), and leaving all the other boxes blank.
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aussiemike
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PostPosted: Sun Dec 16, 2012 7:41 am    Post subject: Reply with quote

Andy, I thank you gratefully for your time and advice.
Much appreciated.
Mike
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typonaut
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PostPosted: Thu Dec 27, 2012 9:19 pm    Post subject: Reply with quote

AndyJ wrote:
It is highly unlikely that anyone has been refused copyright in a title of a competition, as the only way this might occur is if a court found that words of the title were either too common-place and therefore lacked originality or were too brief (what the law refers to as 'de minimis') to qualify.


I think it's true to say that you cannot have copyright protection on titles, they don't meet the de minimis qualification.

AndyJ wrote:
What I think is much more likely is that UEFA were refused registration of a trade mark consisting of the words Champions League. One of the criteria for eligibility of trade marks is that it must not be purely descriptive.


I believe that's not quite right. "Champions League" is clearly descriptive, but as you point out it also has trademark protection. The so-called notorious case is "Baby Dry" for disposable nappies, which is also descriptive. I'm not sure of the rationale in "Baby Dry", but in other cases these descriptive phrases have been found to have "acquired" distinctiveness. Other examples of this acquisition might be "Mont Blanc", "Heidelberg" or "Leyland".

But, it is certainly not a copyright matter, either way.
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AndyJ
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PostPosted: Thu Dec 27, 2012 10:38 pm    Post subject: Reply with quote

Hi Typonaut,
Nice to have you back on the forums. I hope you will continue to contribute, because although we get plenty of questions, there are fewer people prepared to chip in with advice and comment.
Andy
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aussiemike
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PostPosted: Fri Dec 28, 2012 5:29 am    Post subject: Reply with quote

This of course begs the question. Was it descriptive (In UEFA's view) back in 1998 when it was registered?
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Mike
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typonaut
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PostPosted: Fri Dec 28, 2012 1:36 pm    Post subject: Reply with quote

AndyJ wrote:
Hi Typonaut,
Nice to have you back on the forums. I hope you will continue to contribute, because although we get plenty of questions, there are fewer people prepared to chip in with advice and comment.
Andy


Hard to find the time to be honest. Sad
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typonaut
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PostPosted: Fri Dec 28, 2012 2:00 pm    Post subject: Reply with quote

aussiemike wrote:
This of course begs the question. Was it descriptive (In UEFA's view) back in 1998 when it was registered?


Not quite sure what the question is...

(i) Was it (Champions League the domain name) descriptive when it was registered?

(ii) Was "Champions League" descriptive when it was registered as a trademark by UEFA?

The first question doesn't really matter in terms of trademark law, because it isn't a trademark and the "purely descriptive" bar to terms is only a doctrine of trademark law. The question here is whether the domain name infringes the trademark, and UEFAs view is clearly that it does... but having said that the only person that has an enforceable view on that is a judge.

We don't actually know what the top level domain is (ie .com, .za, .eu, etc), so we also don't really know whether there is some logic that makes UEFA believe that you are infringing its rights on a territorial basis. ie that it is within the .uk top level domain and UEFA has a trademark registered in the UK.

Question two is really just a matter of process. When examining the trademark application did the examiner have the ability to reject it for being purely descriptive, did anyone oppose the application or has the validity/basis for the application been tested in court. And, if any of those did arise did UEFA claim that the term was not descriptive, or had acquired distinctiveness. For the latter here it would be necessary for UEFA to show that it had used the term for some period before trademark registration, and that the public associated the term with UEFA, rather than just being a descriptive term.

I don't know the history of the process, so cannot really answer other than in theoretical terms.
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aussiemike
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PostPosted: Sat Dec 29, 2012 6:37 am    Post subject: Reply with quote

Thanks Mr. Typonaut for your input.
The domain is .com and I am being sued in Kenya. The case has been going on now since 1998. It is costing me too much to defend against such an awesome association as uefa. Regardless of the rights and wrongs it looks like I may have to bail out.
All I was doing on this forum was trying to get something that might encourage me to continue. I truly believe I am not doing the wrong thing but what does that mean against all that money.
When I search google the only reference I can find to CL prior 1998 is predominantly information supplied by uefa. I had certainly never heard of CL before then. uefa only got the copyright in 2006 by what I can find out.
Anyway thanks for taking the time. Appreciated.
Regards
Mike
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typonaut
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PostPosted: Sat Dec 29, 2012 3:05 pm    Post subject: Reply with quote

Mike,

I think the first problem you have is that we probably can't give you much help with regard to a court case in Kenya, because the law there is likely to be different than in the UK. It may not be very different, but different enough to trip us up.

The second problem you have is that you have registered the domain in what is seen by many as an "international" top level domain, which a court probably won't take much persuading to find that it overlaps UEFA's territorial space.

The third problem you have is that your site has no content, just links to other sites. These are classic cyber squatting tactics, as is the inclusion of a Google ad. If you are deriving any income from link referrals or the ads this will also count against the bona fide nature of your claim.

The fourth problem you have is that your opponent has deeper pockets than you do. Which, unfortunately, is often a decisive factor in any legal dispute.

As to the claim on the name "Champions League", this Wikipedia page on the subject indicates that UEFA have been using the name since 1992. This obviously pre-dates your use, and I think you probably knew that already.

Generally speaking, in order to have a trademark claim the claimant must have a trademark registered in the state in which they seek to enforce it. I looked at the web site of the Kenya Industrial Property Institute, a post to which indicates that one cannot do an online search for trademark registrations, a visit to its office is necessary. You should already know whether UEFA has a trademark in Kenya for "Champions League".

If we look at UK registrations we can see a registration for UEFA of "champions league" dated March 1997 (which appears to be just the text string). We can also see "UEFA Champions League" registered in March 1995.

Both of these clearly pre-date your use of the domain name.

However, looking at UK registrations it is clear that there are also a number of other trademarks that incorporate the term "Champions League", which UEFA has not sought to oppose, and which are clearly in use within its territorial claim area: CHAMPIONS LEAGUE TWENTY20, CHAMPIONS HOCKEY LEAGUE, EHF CHAMPIONS LEAGUE.

If you search Wikipedia you'll also find several other uses of the term "Champions League" with reference to football competitions (CONCACAF Champions League, AFC Champions League, CAF Champions League, etc). (It could be that these uses are licensed by UEFA, but the UK trademarks certainly are not.)

All of which goes towards finding that the term "champions league" is actually descriptive, and not suitable for trademark registration. Which is something that you will have to argue in court, or against officials at KIPI if that is the process. UEFA will probably claim that its use has acquired distinctiveness, which is up to you to disprove.

The other claim that UEFA may have against you, if they do not have a trademark in Kenya, is "passing off". But I do not know whether this concept exists within Kenyan law so can't really give you any pointers - effectively it means that UEFA is suffering damage because the public is confusing your output with its.

Finally, I think you need to ask yourself what is the purpose of the dispute from your perspective - you are clearly not really using the domain in trade. So, wouldn't it be easier/more profitable all round to negotiate a settlement with UEFA and sell them the domain name?

You need to get appropriate legal advice on this matter, so as to understand your rights/obligations. If this dispute were taking place in the UK you could probably get a conditional fee arrangement with solicitors/barristers, who may well like the idea of going up against UEFA, because it has the potential to go at least to the Court of Appeal, and possibly higher, and then they would get their name up in lights. Rolling Eyes

So the other question for you is whether you can find a lawyer in Kenya prepared to represent you on the same basis (if that's legal there).
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aussiemike
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PostPosted: Sun Dec 30, 2012 6:45 am    Post subject: Reply with quote

Thanks again Typonaut,
I registered over 150 names back in 1998. All of them place names and silly names like whatswong.com, mentalrentals,com many many many. None I thought that imposed on anyones business. To be honest CL was a hand me down from a client who passed away. I thought it generic enough to keep it going. I had never heard of CL before then. Seems I bit off more than I could chew. I still believe I have a case as there are hundreds of CL versions registered. Some you have mentioned above. The other thing that pisses me off is the fact that uefa had registered euro2008 20 years prior to the event but neglected to register what they now call their premier competition at the same time. All this years before I register the .com version. There is something very fishy going on here. They have uefacl.com and are claiming rights to cl as well. Bit like cocacola or pepsicola trying to lay claim to cola.com. The only disturbing thing here is the depth of their pockets. I have tried to negotiate with them but I have it on good authority that they will not let go regardless because the lawyers in CH want a holiday in Kenya. If they settle they don't get to come down here for the case. It's a win win for them. Hard to deal with that scenario.
Regards
Mike
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typonaut
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PostPosted: Sun Dec 30, 2012 2:50 pm    Post subject: Reply with quote

The first thing you need to be clear about is what they are suing you for. It is probably trademark infringement, but you need to be sure because you cannot build a proper defence until you know that. The second issue is, if it is trademark, then do they have a trademark registered in Kenya? You need to check this at KIPI, or have someone do it for you.

These two things are the basic blocks of your defence, and you cannot do anything to counter the suit until you have this information. You probably need a lawyer too.

You say you have tried to negotiate with them, but that the lawyers aren't interested in a settlement. This seems an unlikely scenario to me, but let's assume that it is true. Try to find out which part/person within UEFA is making the decisions, and contact them directly.

If you don't get anywhere with this, then contact the press. This may seem like a little tiny issue that they would not be interested in, but on the other hand the press are experts at taking little tiny issues and blowing them up out of all proportion. I'd contact the sports, technology and law desks at national newspapers across Europe. Build an argument that you've had the domain a long time, you're just the little guy getting picked on by the large corporate (because they have deep pockets), and if you want to throw in your allegation about the lawyers that may help too. You also need to show the generic basis to the domain name.

However, your use of the domain, as I have noted before, bears all the marks of a cyber-squatting operation - so be prepared for negative feedback.
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aussiemike
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PostPosted: Mon Dec 31, 2012 6:21 am    Post subject: Reply with quote

Thanks Typo,
Will take your advice. I do have a lawyer but was just checking stuff on the side.

It is all rather complicated so I should at this stage fill you in a little more thoroughly. It is not really UEFA suing me, it is me appealing against a WIPO UDRP ruling that went against me in the beginning. The stupid thing is that the UDRP was not even in existence when I bought the domain in question.

When I discovered that WIPO and UEFA share the same office block in Geneva I thought that a little to coincidental. Bit like ganging up on the kid who lives on the beach in Kenya. I then asked ICANN if the appeal could be held in Kenya. They said yes. Thought it better that I was on home soil. Might get a better chance of a fair ruling.
Half way through the appeal I wanted to sell the domain. This is allowed under the UDRP (8. a. ii. ) if the buyer agrees to abide by the ruling of the courts final judgement. When this request was denied by the court here I saw the writing on the wall and thought best to get out. If I cannot win a ruling that is written down in black and white I thought not much chance to win anything. So now it is down to damage limitation.
I think going to the press might be construed as contempt though.
Cheers
Mike
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