jurisdictional issues on the internet - the brazilian perspective

Limitations on court's powers to compel defendants to defend themselves

Which people can courts exercise power over?

Would mere accessibility of a webpage create personal jurisdiction?

the "sliding scale" for the evaluation of Internet contactsnature and quality of commercial activity conducted over the Internetactive presence on social networks is enough?local language?

"Zippo Test"

"Effects Test"Brazilian Superior Court of Justice

Traditional LegalApproach

PersonalJurisdictionProblem

Which Law to apply to the dispute?Characterization of TMinfringement sometimes depends on local regulations

...

...Brazilian Superior Court of Justice


Choiceof LawProblem

Will the future decision be enforceable against the defendant's assets?

...public order issuesBrazilian Superior Court of Justice


Enforcement of DecisionsProblem

Cost to litigate > benefit to trademark holderEx. to enforce a trademarkagainst a domain name

very high cost of in Court approaches for international dispute resolution

complexityinefficiency

Multiple jurisdictionsrisk of contradictory decisions

Side effects of Traditional Legal Approaches

Same "old"problems...David G. Post, 1998

FIFAWorld Cup Sponsors

protecting foreign trademarks

Art. 32 - To utilize trademarks, products or services, with the purpose of obtaining economic or marketing advantage, by means of direct or indirect association with Events or Official Symbols, without authorization by FIFA or by person appointed by FIFA, inducing third parties to believing that such trademarks, products or services are approved, authorized or endorsed by FIFA:Penalty - detention, from three months to one year, or fine.Sole paragraph. Under the same penalty shall incur those who, without authorization by FIFA or by person appointed by FIFA, binds the usage of tickets, invites or any other form of authorization to access the Events to actions of marketing or commercial activities, with the intent of obtaining economic advantage.

by association

Art. 33 - To expose trademarks, businesses, establishments, products, services or to practice promotional activityn non authorized by FIFA or by person appointed by FIFA, attracting in any way the public attention in the the Official Venues of Events, with the purpose of obtaining marketing or economic advantage:Penalty - detention, from three months to one year, and fine.

by intrusion

ambush marketing

Art. 36 - Crimes defined by this Law shall be enforced until December 31st 2014.

Including a pre-establisheddeadline for enforcement

Choice of Lawproblem

Creates new trademarkcriminal offenses

recognition of FIFA’s trademarks, logos, and designs as famous and/or well-known in Brazilinclusion of the FIFA’s marks on the domain names black list of the ".BR" authority

shorter concession deadlinesand exemption from official fees

setting up a specialfast-track for FIFA’s marks

commitment to reject, ex officio, any trademark application similar to FIFA’s marks

EnforcementProblem

Ensures the enforcement of foreigntrademark rights(FIFA trademarks)

Art. 52 - The controversies between the Union and FIFA, FIFA Subsidiaries in Brazil, their legal representatives, employees or advisors whose subject is related to the Events, may be settled by the General-Attorney of the Union, in administrative seat, by conciliation, if convenient to the Union and to the other parties.Sole paragraph. The validity of the Term of Settlements which involve payment of indemnificati-ons is conditioned to:I - homologation by the General Attorney of the Union; andII - its publication, previously to homologation, in the Official Gazette, and its posting of the integral text, by at least five working days, in the website of the General Attorney of the Union.

EnforcementProblem

Creates an AdministrativeConciliation Instance

Federal Statute 12.663/2012


Prohibits ambush marketing by associationwith the Olympic symbols and trademarks

EnforcementProblem

Ensures the enforcement of the Olympic's symbols and trademarks

Federal Statute 12.035/2009


obligation to keep some connections logs for one yearconnection providersnot responsible

Notice and Take Downin Court system

application provider

Notice and Take DownBrazilian Copyright Bill


liability for damage caused by content generated by third parties

Pending bill

Civil RightsFramework forthe Internet

Other Bills

New Statutes?

119% in 2012!

Personal JurisdictionProblem

Fastest growth onbig economies

Boom on BrazilianUDRP Cases

at WIPO, ABPI or CCBC


UDRP for the ".BR"domain names

SubtopicSubtopicSubtopicSubtopicSubtopic

Substantive JurisdictionUDRP Problem

broader approach

SACI


at WIPO, for foreigntrademarks

Mediation and Arbitrationwithin the Brazilian Trademark Office

Self regulatory ethics codefor email-marketing


Administrative instancefor decisionCAPEM

EnforcementProblem


worldwide repository of TMsTrademark Clearinghouse

Out of CourtAlternative / CollaborativeApproaches

ContemporaryApproaches

Jurisdictional Issueson the Internet

The Brazilian Perspective