The First Swedish Domain Name Judgement

Introduction

On 17 January 2001, the District Court of Stenungsund issued the first domain name dispute judgement ever decided by a Swedish court.

This case is between the Swedish car manufacturer Volvo Personvagnar AB ("Volvo") as Plaintiff and the company Scandinavian Car Tuning HB ("SCT") as Defendant.

Volvo has for a long time been the proprietor of the registered and well-known trade mark VOLVO in Sweden as well as in most other parts of the world.

SCT is specialised in producing and selling accessories such as various tuning systems and spare parts for cars manufactured by Volvo. In 1998, SCT registered the domain name www.volvo-tuning.com. SCT has since then used that registered domain name and has furthermore used the sign www.volvo-tuning.com in various advertising materials.

Volvo claimed, inter alia, that SCT and its founder should be prohibited from using the term "volvo" in its domain name www.volvo-tuning.com, since this constituted an infringement in Volvo's rights to the trade mark and trade name VOLVO.

Findings

Trade Mark Infringement

The Burden Of Proof

The District Court first of all states that since Volvo owns the trade mark VOLVO it is SCT that has the burden of proof for why it should be allowed to use that trade mark.

What Constitutes Use Of A Trade Mark

SCT claimed that a domain name is not a mark but merely an address and that, as a consequence of this, the use of a domain name can never constitute trade mark infringement. Further SCT claimed that the average VOLVO owner would not perceive the domain name www.volvo-tuning.com as constituting trade mark use but merely as a neutral description of SCT's business.

However, according to the District Court a manufacturer's marketing of its products or services on the Internet with the use of a domain name that contains a specific trade mark, constitutes use of that trade mark.

Necessary Use Of A Trade Mark In Line With Honest Practises

As a starting point the District Court establishes, with reference to Article 6.1 in the Trade marks Directive and corresponding rules in the Swedish Trade marks Act, that it is permitted in the course of trade to use a trade mark when this is necessary to indicate the intended purpose of a product or service, provided however that the use is in accordance with honest practices in industrial or commercial matters.

The District Court states that since SCT is specialised in tuning Volvo cars it is necessary for SCT to inform the public about this and such information can not be provided without using the trade mark VOLVO. Such use is also, according to the District Court, in line with the ECJ's judgement in the BMW case (C-63-97).

However, the District Court is of the opinion that SCT's use of the trade mark VOLVO is still impermissible, since it is not in accordance with honest practices in industrial or commercial matters. The primary grounds that the District Court presents for this analysis are as follows:

  • The use of someone else's trade mark in a domain name is "highly unusual" and such use often creates the impression that what is offered on the homepage is originating from the trade mark proprietor or that the trade mark proprietor has permitted the use of the trade mark. In line with this, such impression can be created by SCT's use of the trade mark VOLVO.
  • The fact that SCT has put disclaimers on its homepage is of no relevance for the question of whether or not SCT's use of the trade mark VOLVO is in line with honest practices in industrial or commercial matters. The reason for this is that the District Court is only to judge whether or not the use of the trade mark VOLVO in the domain name "www.volvo-tuning.com" is permitted or not and this domain name does not contain any disclaimers.

Exhaustion Of Rights

SCT claimed that since SCT is selling original VOLVO parts Article 7 in the Trade Marks Directive, the corresponding rule in the Swedish Trade Marks Act and the ECJ's decision in the Dior-case (C-337-95), prevents Volvo from opposing SCT's use of the trade mark VOLVO. To oppose such use Volvo would, according to SCT, have to prove that it seriously damages the reputation of the VOLVO trade mark.

However, the District Court stated that this case does not concern the question of whether or not Volvo may oppose SCT's use of the trade mark VOLVO in relation to its sale of original Volvo parts. The exhaustion of rights rules invoked by SCT can therefore not, according to the District Court, give support for SCT's use of the domain name www.volvo-tuning.com.

Trade Name Infringement

According to the District Court SCT's domain name "www.volvo-tuning.com" does not show such level of resemblance with Volvo's registered trade name "Volvo Personvagnar AB" that the use of SCT's domain name can amount to trade name infringement.

Judgement

The District Court found that SCT, by using www.volvo-tuning.com as a domain name and in advertising material had infringed, at least negligently, Volvo's rights to the trade mark VOLVO. SCT and its owner were therefore prohibited, under penalty of a fine of SEK 400,000, from using the trade mark VOLVO, alone or with any supplement, as the main domain for a site regarding the sale or service of private cars, including accessories or spare parts for such cars. Further SCT and its owner were ordered to deregister or change its domain name so that it no longer contains the trade mark VOLVO. SCT and its owner were also ordered to pay damages to Volvo in the amount of SEK 20,000.

Comments And Conclusion

Regardless of whether or not this judgement is materially correct the reasoning behind the judgement is not convincing. Thus, since it is further a lower court that has rendered the judgement it unfortunately does not have the ability of clarifying the law in the aspects covered by the case.

The District Court's judgement has not been appealed and the time limit for submitting an appeal has elapsed.




Copyright Infringement In Music

Introduction

In a decision of 2 February 2001, the Svea Court of Appeal reversed a previous judgement by the Stockholm District Court in a case regarding copyright infringement in musical work.

This case is between the Swedish music publishing company EMI Music Publishing Scandinavia AB ("EMI") as plaintiff and another Swedish music publishing company Regatta Production AB ("Ragatta") as defendant.

EMI claimed that a melody ("the Regatta Melody") that was included in the song "Om Du vill bli min fru" that was written by the Swedish music group Drängarna and published by Regatta ("the Regatta Song"), infringed the copyright to a melody ("the EMI Melody") included in the song "Tala om vart Du skall resa" that was written by the Swedish music group Landslaget and to which EMI held the copyright ("the EMI Song").

Findings

The assessment of whether or not the EMI Melody is copyright protected

The Court of Appeal first turned upon the issue of whether copyright subsisted in the EMI Melody or not. Regatta claimed that the EMI Melody was neither original nor distinctive. The Court of Appeal agreed that the EMI Melody might be argued to be rather simple and build on simple conventional elements. However, according to the Court of Appeal the question of whether copyright subsisted in the EMI Melody had to be determined in the light of an overall assessment of that work as it appears to the listeners. It is an undisputed fact in the case that one of the characteristic features of Melody 1 is that its introduction is based on the "pentatonic scale", which is very unusual in Swedish folk music. In relation to this the Court of Appeal expressly commented on the fact that although Regatta claimed that the EMI Melody only consisted of simple melodious formulae Regatta had not been able to give any example of another musical work that consisted, wholly or partly, of the "pentatonic scale". In conclusion the Court of Appeal found that the EMI Melody was an independently created work in which copyright subsisted.

The similarities between the Plaintiff's and the Defendant's respective work

The next question that was determined by the Court of Appeal was whether the EMI Melody and the Regatta Melody were in fact similar. The Court of Appeal stated that due to the fact that both melodies are repeated several times in the respective song the respective melody is in fact what a listener is stuck to and recognises. According to the Court of Appeal, the prominent feature of both songs is the melodious character and thereby the existing differences in harmonics and tempo becomes less important. At an overall assessment the Court of Appeal found that the two melodies are strikingly similar and that the Regatta Melody objectively infringes upon the exclusive right to the EMI Melody.

The assessment of whether or not illegal copying existed

As a third and last assessment the Court of Appeal determined whether the Regatta Melody was independently created. As the basis for this assessment the Court of Appeal stated that due to the striking similarities between the two melodies strong evidence would have to be presented in order to rebut the presumption that the Regatta Melody was in fact copied from the EMI Melody. The composer of the Regatta Melody claimed that, in order to set music to a text which he had as a first step come up with, he used the opening tunes of an old Swedish melody that he knew from before called "Oxdansen". However, according to the Court of Appeal there are no obvious similarities between the Regatta Melody and "Oxdansen". But the similarities between the Regatta Melody and the EMI Melody are, according to the Court of Appeal, substantial. This is especially so, according to the Court of Appeal, since both these songs use the pentatonic scale as a base, which is not the case with "Oxdansen". Due primarily to the substantial differences between the Regatta Melody and "Oxdansen, the Court of Appeal concluded that there was little support for Regatta's claim that the Regatta Melody was in fact based on "Oxdansen". Instead the Court of Appeal held that Regatta had not proved that the Regatta Melody is not an illegal copy of the EMI Melody.

The basis for calculating damages

EMI claimed that 50 per cent of the proceeds from a song is normally related to the lyrics and 50 per cent to the music. Further EMI claimed that due to the fact that it was a prominent part of the music at issue that had been reproduced Regatta ought to pay compensation equivalent to 25 per cent of the total proceeds from the Regatta Song. In light of the fact that the EMI Song had been successful and played on the radio during several years and that the infringement referred to a salient part of the EMI song, the Court of Appeal concurred with EMI.

Judgement

Rescinding the District Court's decision the Court of Appeal ordered Regatta to pay compensation for the use of the EMI Melody by the amount of SEK 15,461 and the value in SEK at the day of payment of DEK 50,665.

Comments And Conclusion

The District Court denied EMI's claims. However, the District Court made a similar assessment as the Court of Appeal when it comes to the questions of whether the EMI Melody is a copyright protected work and whether the Regatta Melody shows great similarities to the EMI Melody. The different judgements is the result of the District Court believing Regatta's claim that the Regatta Melody was created independently of the EMI Melody.

The respective melody is undisputedly rather simple. Further, copyright protection is undisputedly not an object protection, like a patent right, but a protection against illegal copying. Based on these factors, this case is of great interest in relation to the following issues:

  • What level of originality needs to be met in order to receive copyright protection for a melody.
  • What burden of proof should be put on a party being sued for copyright infringement in order for that party to be able to prove that existing similarities are not the result of illegal copying activities.

The Court of Appeal's judgement has been appealed to the Supreme Court.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.