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GDPR and the impact of a ‘no deal’ Brexit

GDPR and the impact of a ‘no deal’ Brexit

by | Jul 3, 2019 | Law for Online Business, Legal, Privacy

GDPR and the impact of a ‘no deal’ Brexit

The UK is scheduled to exit from the EU on 29 March 2019

There are substantial negotiations underway for transitioning of legal, trade and other relations between the UK and the EU after Brexit happens. At this stage, many of the negotiations have been unsuccessful either within the UK’s own parliamentary system or between the UK and the EU. Without agreements for transitioning and new agreements for interacting with the EU, the UK faces numerous disruptions to trade, security, medicine availability, travel, workplace regulations and citizenship of UK citizens in other parts of the EU.

There are a few options between now and 29 March 2019.

The first is that a deal will be put together for transitioning. This would be the most favourable outcome for continuity of business transactions and commerce. The second is, if no deal can be agreed upon, the date of Brexit may be extended by agreement to allow more time for negotiations. The third scenario is what is being called a ‘no deal Brexit’.

What does a ‘no deal Brexit’ mean?

If no agreement for transitioning can be reached and the exit date is not extended, the UK exit from the EU will happen on 29 March 2019 and there will be a degree of chaos attached.

For the many laws and rules currently intertwining the UK within the EU, there will be no deals in place for transitioning and planning. This will affect many laws and current practices, however for the purpose of this article, we are only looking at the management of data under the GDPR.

Why is a ‘no deal exit’ important for privacy legislation and who would this effect?

Under the GDPR (General Data Protection Regulations), the UK is currently part of the EU however from 29 March 2019 (or later date if this is extended), the UK will be an independent country.

If a no deal exit happens, the transfer of data between the EU and the UK will be restricted under the GDPR from 29 March 2019. It is possible that the UK will be granted adequacy status (yes, that is a technical term), but this cannot be assessed until after the exit has happened (and will likely take several months). In the meantime, the transfer of personal information from the EU into the UK must be completed using a standard contractual clause (‘SCC’) in the format approved by the EU.

Sounds complicated? Let’s break it down and look at the implications: 

Location of business receiving personal data Scenarios and action required prior to 29 March 2019
Head office of business within the UK and collecting data from any person within the EU or monitoring the behaviour of any person within the EU

Examples:

  1. You operate any kind of online membership subscription service that has EU resident subscribers.
  2. You have an online retail store that is open for EU residents to make a purchase.
  3. You provide advisory services and have clients resident in the EU.
ACTION: Review your privacy policy, make sure SCC’s are in place with businesses within the EU that you deal with eg hosting, cloud storage.
If you process data of EU citizens and transfer this data to the US under the US privacy shield, you will need to look at your agreements with the US to ensure a SCC is added into each of these agreements as the US Privacy Shield will not work with the UK anymore.
Unless you have an office in the EU, you will need to appoint a privacy representative in the EU.
Head office of business within the EU (but not in the UK)Look carefully at where your data goes. There will no longer be a free flow of data from EU to UK. Do you transfer data to the UK? Data subjects will have to be told.

Head office of business outside of the UK and EU and collecting data from any person within the EU or monitoring the behaviour of any person within the EU

Not much changes here, you should already have in place a compliant GDPR privacy policy and SCC’s protecting the flow of data of EU citizens. A review of your privacy policy will be required if you rely on the US Privacy Shield for the transfer of data of UK citizens
Any business relying on the US Privacy Shield for the transfer of data in or out of the UKThere is a particular paragraph that needs to be added to the privacy policy of the US entity (yes, the wording is specific) to ensure that the privacy shield takes effect.

 

How can Onyx Legal help you?

We can help you work out if you have to comply with GDPR and prepare appropriate privacy and cookie policies to comply with GDPR requirements. Book a time to talk to one of our team to find out more.

Make an Appointment

Pause Before You Threaten Legal Action for Stolen Intellectual Property

Pause Before You Threaten Legal Action for Stolen Intellectual Property

by | Jun 17, 2019 | Copyright, Dispute Resolution, Law for Online Business, Legal, Trademark

Pause Before You Threaten Legal Action for Stolen Intellectual Property

Stop and Pause: being too quick to assert your Intellectual Property rights could land you in hot water

Do you think that someone is using your work in an illegal way? Stop and pause before you threaten them with legal action, as accusing someone of infringing your intellectual property rights may leave you in the firing line.

Law exists in Australia to protect people from making dubious claims in relation to patents, designs, copyright and trademarks. This extends to sending cease-and-desist letters, sending circulars and advertisements.

The idea behind this legislation is to stop rights holders from misusing their position.

For example, it may be easy to scare off a competitors by having lawyers draft a cease-and-desist that the competitor cannot afford to investigate, even if your competitor has not technically infringed your intellectual property.

A 2016 case of CQMS Pty Limited v Bradken Resources Pty Limited shows that if you wrongly allege infringement, the person you complained about may bring a claim against you.

In that case, CQMS alleged that Bradken had infringed a number of their patents. Their lawyers sent out a letter of demand, setting out the basis for their claim. The letter of demand was “fairly standard” and of the kind often sent by patent attorneys. When Bradken did not comply with their request, CQMS then pursued the claim in court.

CQMS lost the case and was then counter-sued by Bradken, who asserted that they had been the victim of an “unjustified threat”. The fact that CQMS had lost the case was evidence of the “unjustified threat”. It did not matter that CQMS firmly believed that they had a good case against Bradken and were prepared to follow it through in court.

Likewise, the 2016 case of Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd should serve as a warning to be careful. What you may think infringes intellectual property rights may not in fact, do so.

In that case, craft beer brewers Stone & Wood had a beer called “Handcrafted Stone & Wood Pacific Ale” and they alleged that competitor craft brewers Elixir had infringed their intellectual property rights by calling their beer “Thunder Road Pacific” and “Pacific Ale”.

Unfortunately, when filing court proceedings Stone & Wood claimed for passing off and contraventions of Australian Consumer Law, but did not include a claim for trade mark infringement in their original claim. Stone & Wood only added a claim for trade mark infringement after Elixir counter-claimed for groundless threats of legal proceedings for trade mark infringement resulting from the letters between lawyers before the claim was filed.  

The court found for Elixir, and said that the reactive amendment to Stone & Wood’s claim adding trade mark infringement only after Elixir made a claim fro groundless threats, served to support Elixir’s case.

These examples should deter you from firing off “cease and desist” letters without a careful strategy.

As it has not always been clear what a groundless claim or unjustified threat could be, in 2017 the UK Parliament passed the Intellectual Property (Unjustified Threats) Act to clarify the meaning. If a reasonable person believes that a communication contains a threat of legal proceedings to protect a registered trade mark as the result of an act done, that will constitute a threat of infringement proceedings. 

That threat will not be actionable if an infringement has occurred. Letters asking a person to cease and desist infringing behaviour will not be actionable if they identify the owner’s rights and do not threaten legal proceedings. 

At this stage, reform is not proposed in Australia.

What if someone is infringing your IP?

In light of the pitfalls noted in this article, what should you do if you think that someone is infringing your intellectual property?

1. Stop and pause

Take a deep breath before firing off any emails or letters to the other party.

Do not presume that just because your competitor is using similar words, colours or phrases that they are automatically infringing your intellectual property.

Do not send any kind of “cease and desist” communication unless you are genuinely intending to proceed with, and substantiate, the claim in court. Be aware that in some cases, if you fail in court, that is enough to establish an “unjustified threat”.

2. Check it out

Check what intellectual property rights you do have. Do you have all your designs, patents and trademarks registered? Are your claims valid in the country that you are asserting them? Just because you have rights in one country, does not mean you have rights in another.

Engage a lawyer who works in the area of intellectual property you seek to protect, if you are unsure about what rights you have.

3. Play if safe

If you believe that someone is close to infringing your intellectual property, there are some things you can do. You are allowed to notify another party that intellectual property in a particular design, patent or trademark exists.

We recommend getting a lawyer to look over any correspondence you intend to send, as there are scales of what is considered a threat.

What if you receive a cease and desist letter?

1. Don’t panic

Being on the other end of a cease and desist letter can be frightening, especially if the other party is speaking about pursing a claim in court.

Remember, these letters are not a summons to court.

Take a deep breath and take time to properly assess what is being asked of you. Don’t rush to pull down all your advertising material or respond with a knee-jerk reaction.

Letters from lawyers in your country should be taken seriously, but there are a variety of options available.

2. Read the letter

Read their communication with care to find out exactly what the other party asking you to do.

Are they talking about trademarks? Copyright? Or other contractual matters? Are they asking you to remove certain material? Or are they just asking for information?

Do they want a response by a certain date? Do they want you to remove the whole part of something, or just make minor changes?

3. Speak to a lawyer about whether a valid claim exists

Intellectual property law can be complicated, with varying degrees of permitted use.

Using similar colours and phrases will not automatically infringe someone’s intellectual property rights.

4. Do nothing

Unfortunately, operating in the public arena opens you up to allowing anyone to contact you. Some people like to act aggressively with the intent to intimidate you or disrupt your business practices. In a case like that you might simply respond that you disagree with their position, or not respond at all. 

Be careful if you choose not to respond to a letter, particularly if it is from a lawyer within your country. If there is a chance you are infringing someone’s intellectual property rights then you could be at risk of further proceedings. 

If there is a chance the claim is valid – address it immediately and do not hide it at the bottom of you to-do-list in the hope that it will go away. In most cases, it usually does not!

5. Comply

After reading the letter and seeking advice, it may be that you decide to comply. This will probably be the easiest and most cost effective solution.

However, you should consider the consequences of doing so. Will you have to change your whole business strategy? Will it cost a lot to make the required changes?

How can Onyx Legal help you?

We can help you assess the risk of action you want to take in response to a threat of action claiming your infringement, or if you want to issue a letter notifying another party of their infringement.

Once we have properly assessed your position, we can work with you to develop an appropriate strategy to move forward in the way that best suits your position.

Make an Appointment

Is it OK to Use Trade Marks in Adwords, Keywords and Metatags?

Is it OK to Use Trade Marks in Adwords, Keywords and Metatags?

by | May 17, 2019 | Law for Online Business, Legal, Trademark

Is it OK to Use Trade Marks in Adwords, Keywords and Metatags?

Trade marks can be used in hidden text 

In March 2016 Her Honour Justice Katzmann made it very clear that using a competitor’s trade mark in the unseen back end of your online advertising accounts is not a breach of trade mark law, nor is it misleading or deceptive. Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255.

Credit reporting company Veda Advantage (now Equifax) registered a string of trade marks including the name ‘Veda’.

Malouf Group Enterprises used 86 variations of the Veda trade marks in its online advertising to attract customers to its credit repair services. Most of Malouf’s advertising limited the use of the Veda trade marks to keywords selected in the back end of its Google Adwords campaigns.

Veda sued, relying on three main causes of action:

  1. Trade mark infringement within the meaning of s120 of the Trade Marks Act
  2. Misleading and deceptive conduct in contravention of s18 of the Australian Consumer Law
  3. Making false and misleading representations in contravention of s29(1)(h) of the Australian Consumer Law

Malouf was found to be innocent of any infringement or contravention where the keywords that resulted in the ads used Veda trade marks, and the ads themselves did not. We’ll get to why in a minute.

There were two other categories of ads. The first were ads that used the word “Veda” as a description, such as “Fix Your Veda File Now”, and the third potentially drew a link between Veda and Malouf’s business, showing the words “The Veda Report Centre”. Only the last category was a breach.

When is a trade mark, not a trade mark?

When it isn’t being used as a trade mark, and ‘use’ is quite specific.

In a clearly reasoned judgement, Her Honour stepped through the relevant law to conclude that:

When selecting keywords and including them in an Adwords campaign, the advertiser is not using those words to distinguish the goods or services from goods or services of another trader. The advertiser is using those keywords to identify internet users who might have an interest in the product or service.

All Adwords account users have the ability to use the same keywords at the same time, which adds weight to the argument that those keywords are not being used as trade marks.

Where the keywords used are “invisible and inaudible, indeed imperceptible, to consumers” their use cannot be as a trade mark to distinguish goods or services.

Where trade marks are used in a way that is merely descriptive of services, like “fix my Veda file”, that is not use as a trade mark.

In response to Veda’s argument that the use “in physical or other relation to the services” (from section 7 of the Act) did not have to be visible to the consumer, Her Honour responded “I doubt very much whether the Parliament had in mind a metaphysical relationship, no matter how expansive the concept of use was intended to be.”

YOU CAN’T INFRINGE TRADE MARKS IN METATAGS EITHER

In endorsing a decision of Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd Her Honour agreed that metatags were:

  • invisible to the ordinary internet user
  • used by search engines to direct a user to a website
  • once arriving on the website, it would be obvious to the user whether or not the trade mark had any relation to the business of that website
  • as the metatag would only be discernible after reaching the website, and may have nothing to do with the website content, it couldn’t be used in that context as a badge of origin for the website services

INTERNET USE IN THE 21st CENTURY

Whilst previous cases found that the display of search results from one advertiser as a result of input of a competitors trade were likely to be misleading or deceptive, the Veda case thankfully catches up to the real world, accepting that internet users:

  • know the difference between Ads and organic search results
  • habitually scroll past the Ads in favour of organic search results
  • know advertisers are responsible for add content
  • know organic results are generated by website content
  • don’t expect companies placing Ads and companies with organic search results to be the same
  • actually look at URLs and understand which companies they are likely to be associated with

NOT MISLEADING IF THERE IS NO REPRESENTATION TO A CONSUMER

In looking at whether the display of advertising content without trade marks in search results was misleading and deceptive, the first question turned on whether or not a representation had been made.

Her Honour found that the choice of a keyword was a representation by the advertiser to Google, not to a consumer, and so can’t be misleading, particularly in the case where it isn’t even visible to the consumer.

Where Veda was used as a description in the Ad copy, Her Honour found that it was unlikely for internet users to be misled when the associated URL did not also contain the word Veda.

On the other hand, the ads containing the words “The Veda Report Centre” where found to be likely to misled or deceive the public due to their authoritative air.

GOOGLE’S RESPONSE?

Google had its own run in with the ACCC in 2012 over Adwords. The ACCC said that Google was participating in misleading and deceptive conduct by displaying sponsored links where the advertiser did not have a right to use trade marks which generated those sponsored links. One of the examples in that case was an ad for STA Travel that was displayed after entering the search terms “Harvey Travel” and “Harvey World Travel”.

Google was finally absolved of any wrongdoing in 2013 when the High Court unanimously decided that the words used to generate sponsored links were the responsibility of the advertisers and not Google. This placed Google in the same position as traditional advertisers like television, radio and print.

The Court decided that reasonable internet users were capable of telling the difference between ads and organic search results and would understand that Google itself wasn’t making any representations by displaying the ads.

In that case Google was able to demonstrate that when it had notice of a possible misrepresentation occurring if a particular keyword was used, it could stop an account holder from using that keyword. It might be for this reason that there has been a block on the use of a large number of trade marks in competitive advertising through Google Adwords.

How can Onyx Legal help you?

If you are concerned that someone is infringing your trade mark, or you have received a nasty letter saying that you are infringing someone else’s trade mark rights, let us know.

We can help prepare a notice to another person letting them know they are infringing and asking them to stop it, or help you response to that type of letter.

We can also help you assess whether any letter you receive is a legitimate risk to you or your business, or not. Claims from overseas are not always legitimate.

Make an Appointment

Unfair Contract Terms – B2B Contracts Under Investigation

Unfair Contract Terms – B2B Contracts Under Investigation

by | Apr 17, 2019 | Consumer Law, Contracts, Law for Online Business, Legal, Service Agreements

Unfair Contract Terms – B2B Contracts Under Investigation

Is your business in line for an ACCC investigation?

From November 2016, business to business transactions came within the coverage of some provisions of the Australian Consumer Law. The big change was the application of unfair contract terms to business to business contracts involving small businesses, with the intention of helping small business. 

Although the law doesn’t currently make the inclusion of unfair contract terms in a contract illegal, the ACCC is pushing for updates in the law to specify that unfair contract terms are illegal, and to empower the ACCC to issue penalty notices. Until those changes are introduced, either the ACCC or a small business suffering loss, must apply to the court to seek to have the unfair contract term declared void and unenforceable – a slow and cumbersome process. 

Not every B2B contract is covered. The core elements are:

  • the contract is for goods, services or the sale or grant of interest in land
  • one party will be a small business with less than 20 employees
  • the value of the contract involved will be less than $300,000 or, if for more than 12 months duration, have an up front price of less than $1,000,000
  • the contract is a standard form contract rather than something specifically negotiated between the parties.  

Clauses highlighted as potentially unfair include:

  • the ability to end or cancel an agreement unilaterally
  • broad indemnities or excessive limitations of liability
  • unilateral right to change contract terms, including pricing
  • limits on a small businesses ability to exit a contract, including penalties for early termination
  • extended payment terms which may be of detriment to the recipient 

The ACCC has investigated the standard contracts adopted by companies in industries such as car hire, waste removal, telecommunications and agriculture and a number of businesses have agreed to change their contract terms as a result.

This is possibly also the reason for Coles and other large retailers announcing in 2017 that they would start paying small suppliers within 14 days, a big change from the 30-90 days or more some suppliers had experienced.

At present, only a court or tribunal (not the ACCC) can decide that a term is unfair. As at early 2020, the legislation was under review.  ACCC can ask for enforceable undertakings and start court action if it investigates the contract terms of a business and forms an opinion that those terms are unfair. If a court or tribunal does find a term ‘unfair’, the term will be void – this means it is not binding on the parties. The rest of the contract will continue to bind the parties to the extent it is capable of operating without the unfair term.

The ACCC sets annual priorities for investigation and successfully took action against Ashley & Martin Hair Studios and Mitolo Group potato traders in 2019. Don’t let your business become that example.

The ACCC website includes updates of recent prosecutions and enforceable agreements when made. 

How can Onyx Legal help you?

If your standard form contract hasn’t been reviewed in a few years, call us to arrange a fixed price review and update of those terms. If your standard form contracts are very old (they might still refer to the Trade Practices Act 1974 or retention of title) then we might suggest a whole new contract, starting from scratch. Either way, we can provide you a fixed price before we get started.

Make an Appointment

Internet Piracy Laws Australia

Internet Piracy Laws Australia

by | Feb 7, 2019 | Law for Online Business, Legal

Internet Piracy Laws Australia

How do Australian anti-piracy laws work?

As a small or medium business, stopping internet piracy of your content involves a claim under Copyright Law, after you have asked someone to ‘cease and desist’ stealing your material.

Since mid-2015, Australian ISPs (internet service providers) have become vulnerable to claims by big music and film publishers in an effort to reduce illegal downloading in Australia.

The first cases have now made their way through the Federal Court system, resulting in site blocking of PirateBay, KickAssTorrents and a variety of other websites.

the first step

A copyright holder applies to the Federal Court for an order under section 115A of the Australian Copyright Act, introduced in June 2015. The biggest film and music publishers in the world are typical applicants. 

The applicant has to show that the ISP enables access to online content outside Australia that has the main purpose of making it possible for people to infringe copyright. So the two key provisions are:

  • the infringing website has to be located outside Australia (domain names, hosting and ISPs were all considered)
  • the website has the main purpose of making it possible for people to infringe copyright.

Everyone comes to the party when an anti-piracy claim is made.

In Universal Music Australia Pty Limited v TPG Internet Pty Ltd there were 5 applicant companies and 34 respondent companies.

In Roadshow Films Pty Ltd v Telstra Corporation Ltd there were 15 applicants and 50 respondents.

With the consistency in orders, it is possible that the respondents won’t always participate in future court matters (Foxtel filed a new claim in May 2017) and will simply sit back and wait for the orders.

online piracy Australia, internet piracy laws Australia, anti-piracy laws Australia

What does an Australian ISP have to do to stop online piracy?

The recent court decisions give ISPs 15 days to disable access to the domain names identified in the orders. Only the mirror sites identified in the orders have to be blocked. Given that there is often more than six months delay in a claim being filed and a decision coming down from the court, pirate sites will have ample time between the start of proceedings and the issuing of orders to create new mirror sites. The Court has kept the right to review claims of mirror sites under a new application before additional orders can be made. ISPs have to take reasonable steps, and the orders remain in effect for 3 years.

The site blocking provisions don’t affect end users, so experienced down-loaders will no doubt find the alternative offerings without delay.

Downloading from pirate sites is illegal, and people who download that material can be sued, as shown with the 4000 people sued in the Dallas Buyers Club court case (since abandoned). It is unlikely to be a cost effective exercise for music or film publishers in Australia to sue individuals because the courts have already determined that damages will be assessed at around the retail value of a new release DVD.

Anyone trying to access a blocked site will be redirected to a message “Access to the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.”

We would ask if you’ve seen that message yet, but don’t want you to incriminate yourself.

How can Onyx Legal help you?

If you would like to understand more about how to protect the copyright in your online materials, or stop someone else from copying it, Make an appointment to talk to us.

Make an Appointment

Transition from Onyx Online Law to Onyx Legal

Transition from Onyx Online Law to Onyx Legal

by | Dec 17, 2018 | Law for Online Business, Legal

Transition from Onyx Online Law to Onyx Legal

Transition From Onyx Online Law to Onyx Legal

We have a new name!

From the beginning of 2019 we will be transitioning from Onyx Online Law to Onyx Legal.

Why? Well, as a forward looking business we give strategic consideration each year to where we are headed, and revisit what we have achieved toward the end of the year. As part of that process we consider the feedback we have received from our clients and the very kind people who refer our services to others.

One piece of feedback we have been receiving is that the whole ‘online’ reference confuses people and that based on our name, some people think we are either only helping people ‘online’, or don’t provide full services in the corporate and commercial legal space.

So, to clear up any confusion, we thought we’d review our name. We wanted to stick with Onyx, it represents who we are and how we help people really well. So it we just had to work out what went with it, and made sense to our clients and potential clients.

In growing into the new Onyx Legal brand, we have to say that the availability of the new top level domain name .legal did have a little bit to do with it. We thought it would be cool to have a .legal domain name.

So, that’s how we got here. Over the next year you will see our rebranding come out and a new website.

Thank you for your support and we look forward to continuing to work with you into the future!

The Onyx Legal Team