Intellectual Property Law Updates

Law Updates also provides hyperlinks to other sites which may be of use or interest to students and those involved in the music industry. These are provided at the end of Law Updates under 'Music Business Law Links'.

This resource is compiled by Ben Challis. Ben is a UK lawyer specialising in entertainment law and a graduate of London University and The City University. Ben acts as General Counsel for 3A Entertainments and is Executive Producer for television of the Glastonbury Festival. Ben is a visiting Senior Lecturer in Law at Buckinghamshire Chilterns University College in England.

We are interested in your views on the Law Updates resource. Please forward any comments to : musiclaw01@aol.com

JANUARY 2004

COPYRIGHT
Record Labels, Music Publishers, Internet
-The Record Industry Suffers Major Setbacks In Three Separate Decisions-
The record and music publishing industries have been jolted by three separate decisions from Canada, The Netherlands and the United States of America, all of which create problems in applying copyright law to the personal use of downloaded music files, and P2P file swapping.
Firstly, the Canadian Copyright Board has ruled that the personal dowloading of files from the Internet is not illegal in Canada (although the provision of such a service would remain so). Whilst an unusual decision, Canada does have a system of blank tape, software and hardware levies which consumers pay, and alongside this also has an exemption for the personal use of music (contained in the Canadian Copyright Act). In a separate matter, in a case brought by Canadian collection society SOCAN, the Canadian music and telecommunications industries are also awaiting the appeals court's decision in the Tariff 22 case regarding the liability of telecom and Internet service providers for music downloading.
The Canadian ruling was followed by two separate decisions where courts also ruled against industry bodies.
In Amsterdam, the Netherlands Supreme Court rejected a case against Kazaa, the popular file-sharing program - ruling that the company cannot be held liable for the swapping of copyrighted music, movies and programs by users. The Court upheld an earlier appeals court verdict rejecting a suit filed by the Dutch music publisher societies Buma/Stemra.
Finally, in the USA, the Recording Industry Association of America (RIAA) faced a substantial setback in its efforts to stop music piracy when a Federal Appeals Court ruled that the RIAA cannot force ISPs to reveal the names and mailing addresses of alleged music swappers on their networks. By overturning a lower court's decision, the U.S. Court of Appeals for the District of Columbia Circuit eliminated a powerful tool used by the RIAA under the Digital Millennium Copyright Act of 1998 to learn the identities of computer users and to subsequently sue them for illegally downloading copyrighted music.

Further details of these decisons and industry comment will be found in future Law Updates. Meanwhile, for further information see:
http://news.bbc.co.uk/1/hi/technology/3335063.stm
http://rss.com.com/2010-1027_3-5130307.html?part=rss&tag=feed&subj=news
http://www.sunspot.net/news/nationworld/bal-te.bz.download20dec20,0,816665.story?coll=bal-news-nation

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TRADEMARK
Record Labels, Music Publishers, Internet, Film, Television, Merchandising
-ECJ: A Sound Can Be a Trademark-
Shield Mark BV -v- Kist (t/a Memex) C-283/01
This case arose from a referral from the Dutch courts (Hoge Raad der Nederlanden). The Claimant, Shield Mark BV, had registered a melody consisting of nine notes from Beethoven's Fur Elise and the sound of a cock crowing (as 'kukelekuuuuu') as sound marks in the Netherlands. Shield used the nine note sequence in advertising and used the cockerel crow as an opening sequence when software it distributed was opened. Shield became aware that the defendant was using the same nine note sequence in an advertising campaign and also used a cockerel's crow when software he distributed was opened.

The question was raised whether sounds or noises could be trademarks within the meaning of Article 2 of EC Directive 89/104/EEC. Article 2 provides that a trademark can consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. The European Court held that the list of examples in Article 2 was non-exhaustive, so sounds were not excluded as such. However, a sound would have to be able to be represented graphically. The ECJ held that the nine note sequence could be a trademark only where the music can be clearly and precisely represented graphically. Describing the nine note sequence as E, D#, E, D#, E, B, D, C and A would not constitute a graphic representation as it was not clear, precise or self contained. However the use of a musical stave with clef, musical notes, where appropriate rests, accidentals and all necessary notations showing pitch and duration would achieve this. The mark must accurately graphically represent the sequence of sounds forming the melody. To that end the 'sound sign' of the nine notes from Fur Elise was registerable in this form provided the mark was also capable of distinguishing the goods and services of one trader from another. But The ECJ held that the description of music by the use of words or by onomatopoeia (the 'cockadoodaldoo') would not achieve this. It was not a graphic representation of the mark and so would not be included under Article 2.

COMMENT : The Canadian Trade Marks Office has held that sounds cannot be registered as a trade mark as they cannot be represented visually. The Shield case can also be compared with the ECJ's decision that a smell could not be a trademark even though the formulae for the smell could be represented as a chemical formulae (see Slecmann -v- Deutches Patent und Markenamt, January 2003 Law Updates).

For further details on this case see the following pdf file:
http://www.ipjur.com/data/031127ECJ-C-283-01.pdf
and The Times 3rd December 2003

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PRIVACY, CONFIDENCE, DEFAMATION
Artists
-Battle Royal in the High Court-
On Friday 21 November, Mr Justice Lewinson imposed an interim injunction of the Daily Mirror preventing the newspaper revealing any more details about the Royal Family's lifestyle and the royal household which had been collected by undercover reporter Ryan Parry. Amongst details reported were the Queen's TV viewing habits (Eastenders is a favourite), her regular dining menus, her reading habits (Racing Post is laid out first every day) and drinking habits (gin and Dubonnet). Mr Parry was taken on after almost no security checks and given responsibilities which took him into direct contact with the Royal Family. The Mirror argued that it had acted at all times in the public interest and had exposed a very serious security breach involving the Queen and the Royal Family. However, it was clear that Mr Parry had signed an employee agreement which contained a confidentiality agreement. This would almost always override any right to a freedom of expression (article 10) contained in the Human Rights Act. The Royal Family argued that the publications in the Mirror were the plainest possible breach of confidence and the plainest possible intrusion into personal privacy.
The full hearing for the action began on Monday November 24.

Jonathan Coad of the Simkins Partnership adds the following:
The proceedings between the Royal Household (represented by the Attorney General) and the Daily Mirror and its undercover reporter (Ryan Parry) have been settled. The fact that proceedings were initiated and the statements made on the Royal Family's behalf at their conclusion before Mr Justice Lightman yesterday suggest a change of approach by the Royal Family on the question of their privacy and confidences. Mr Parry claimed to have obtained a job in the Royal Household by means of "basic subterfuge" (to quote Piers Morgan, the Daily Mirror's editor). However, before being employed, Mr Parry signed an agreement under which he undertook not to disclose information obtained during the course of his employment about either the Queen or the Royal Family, or her guests and members of the Royal Household. The Daily Mirror claims that the newspaper has "scored a famous victory in being allowed to keep all the money earned from syndicating the story worldwide". The newspaper has, however, agreed to a permanent injunction prohibiting further disclosures by Mr Parry or MGN, delivery up of all unpublished photographs and documents and the destruction of any unpublished stories. The Daily Mirror has agreed not to syndicate any further material already published or republish the pictures of the Duke of York and the Earl and Countess of Wessex. The Daily Mirror also agreed to contribute £25,000 towards the Attorney General's costs.
Jonathan Sumption QC (acting for the Attorney General and the Royal Household) described the Daily Mirror's actions at yesterday's hearing as "a highly objectionable invasion of privacy, devoid of any legitimate interest," since the public interest could have been better served by the Daily Mirror simply informing the Security Commission of any alleged failures of the Palace's vetting procedures. He added that the Queen and Royal Family "are entitled to a proper measure of privacy in their personal lives" and also "entitled to trust those who serve in their households, without having to make the corrosive assumption that their confidence may be betrayed at any moment with impunity." It is difficult to argue with Mr Sumption's statements, or understand how the public interest could have been served by the Daily Mirror publishing pictures of the private rooms of the Duke of York and the Earl and Countess of Wessex. In the breach of confidence action brought by Naomi Campbell against her personal assistant Mr Justice Lightman emphasised the public interest in duties of confidentiality entered into by contract being upheld by the courts. Doubtless this judgment was not forgotten by the Daily Mirror's legal team. One suspects that if Mr Justice Lightman had been given the opportunity to express his views on the subject, they would have been much closer to those of Mr Sumption than those of the Daily Mirror.

Where identified, material is by Jonathan Coad of the Simkins Partnership and republished with permission.
See http://www.simkins.com
This material is © The Simkins Partnership and is for general guidance only.

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PRIVACY
Artists
-Paparazzi Cleared of Breaching French Privacy Laws-
Members of the paparazzi who took pictures of Diana, Princess of Wales and her companion Dodi Fayad before and after the fatal crash in Paris in 1997 have been acquitted of breaching French privacy laws. Whilst precedent had held that the inside of a car could be a private place under France's strict privacy laws, the court held that the crashed vehicle on a public road was a public place and that the Princess and Mr Fayed had known they would be photographed when leaving the Ritz Hotel before the car crash and therefore had submitted to the invasion of privacy. If they had been found guilty, the photographers could have faced imprisonment of up to one year and fines.

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MEDIA LAW
Television, Radio, Internet, Newspapers
-UK Media Warned Over Soham Trial Coverage-
In a speech to journalists and editors, the Attorney General, Lord Goldsmith QC, set out a series of guidelines for the press after he stated that the coverage of the Soham murder trial was 'unacceptable'. He reminded journalists at the Law for Journalists Conference that reports which asserted or assumed that the defendant was guilty were not acceptable. He also warned that stories which might prejudice the police's investigation and stories which prejudiced the defendant's right to a fair trial were also not acceptable.
However, on the same day, the Home Secretary, David Blunkett, said of Sajid Badat, arrested for possible terrorism charges, "This individual posed a very real threat to life and liberty of our country … this person has connections with the network of Al-Qaeda groups".

COMMENT : It is difficult to see how the Home Secretary's comments are anything but prejudicial to the defendant and his right to a fair trial in the United Kingdom. Whilst it is coincidental that the Attorney General's guidance were on the same day as the Home Secretary's comments (The Times, 29 November 2003) there has always been the presumption of innocence until proven guilty in the UK. The Human Rights Act 1998 and the European Convention of Human Rights (Article 6) have provided for the right of a fair trial. The Times reported that the Attorney General's office was to investigate the remarks as a breach of the laws of contempt of court. The Independent newspaper (1 December 2003) reported that the Lord Chancellor had also commented, in general terms, that pre-trial comments of this nature could not be acceptable.

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COPYRIGHT
Record Labels, Music Publishers, Internet
-File Sharing Illegal in Taiwan-
A 22 year old Taiwanese man (Mr Chung) who shared music files over the Internet without the permission of record labels was forced to make an apology and agree to 'cease and desist' from file sharing in a settlement hailed by the music industry yesterday as a landmark in the fight against online piracy. "This case proves that peer-to-peer file-sharing infringes copyright," International Federation of the Phonographic Industry (IFPI) Taiwan branch secretary-general Robin Lee told the Taipei Times in an interview. As in other territories, the music industry in Taiwan claims that peer-to-peer web sites break the law as they allow subscribers to download music via the Internet without paying royalty fees to the rights holder. But so far only 'proactive' file swapping sites such as the 'old' Napster have been effectively shut down. There is continuing litigation worldwide against sites such as KazaA and Grokster with mixed results so far (see http://www.musicjournal.org/03dontshootthemessenger.html)
Taiwan has now followed the approach adopted by the RIAA in the USA and has brought an action against an individual. "We will use this case to let everybody know that users of peer-to-peer web sites are breaking the law, and we will bring more cases to court if peer-to-peer (file swapping) doesn't stop," Lee said. The IFPI in Taiwan, which represents 12 local and international record companies, has launched three cases against individuals and two against the peer-to-peer web sites (Ezpeer.com.tw and kuro.com.tw). The decision against Chung is the first result in the court cases. Last week, the prosecutors office of the Panchiao District Court decided to defer prosecution in the case against Ezpeer subscriber Chung after he admitted that he infringed the copyright law and agreed to publish an apology in the local press. The apology appeared last Friday.Chung also signed agreements that he would not use peer-to-peer websites again, or share music files without the prior permission of rights holders. However, it should be noted that this is not a final court decision. The news comes as Taiwan's music industry struggles to survive against mass piracy. Taiwan's legitimate market in recorded music has dropped dramatically in value from NT$12 billion in 1997 to NT$4.9 billion last year, according to IFPI figures. The two file swapping websites, Kuro and EzPeer have 500,000 and 300,000 members respectively, and each charges a monthly subscription fee. However, Taiwan does have a legitimate download run by iBIZ Entertainment Technology Corp. Chunghwa Telecom's Hinet Internet service; computer giant Acer Inc have also negotiated deals for music sites and five other companies are in discussions the IFPI announced.
As of 4 December 2003, Taiwan prosecutors have filed criminal charges against the country's largest peer-to-peer service, Kuro. The prosecutor's office filed charges under the Copyright Law against Kuro's management team. Separate charges have been brought against a number of subscribers to the service. IFPI Taiwan marked the announcement of the indictment by asking that Kuro cease its operations immediately. Kuro is a centralised peer-to-peer service, which charges users to distribute unauthorised copies of music files among themselves. Using a modified form of the original 'Napster' technology, it is in essence a 'Napster for money'. More than 30,000 users make available over five million music files for copying on the Kuro network at any one time. The subscription service, launched in 2001, claims to have half a million paying customers. The problem is that nobody in the creative chain is compensated; only the service itself makes money. IFPI Taiwan filed a criminal complaint with the criminal prosecutor earlier in the year, alleging that Kuro was knowingly aiding and abetting copyright infringement, for profit.
IFPI Chairman and CEO Jay Berman said: "This indictment is fully consistent with court decisions in other countries including the US, Japan and Korea, that have held similar P2P services liable for copyright infringement. People need to understand that legal action can and will be taken against those who distribute copyrighted work without the permission of the creators. Everyone involved in the cycle of music creation is being adversely affected by this illegal activity, and it is having a devastating effect on the ability of the industry to invest and sustain the careers of new artists."

See: http://www.taipeitimes.com/News/biz/archives/2003/11/27/2003077458
and http://www.ifpi.org

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COPYRIGHT
Record Labels, Music Publishers
-IFPI Voices Disappointment Over Postponement of Amendments to the Russian Copyright Law-
The international record industry has expressed its strong disappointment at the Russian Parliament's decision to postpone adoption of the already long-delayed, critical amendments to the Copyright Law. IFPI Chairman and CEO Jay Berman said: "We are deeply disappointed at the postponement of these amendments which, while not completely comprehensive, are a crucial first step towards bringing Russia into line with international standards of copyright protection. This delay sends worrying signals over Russia's publicly voiced commitment to tackle its very serious shortcomings in copyright protection and enforcement. Copyright piracy is now at unprecedented levels in the Russian Federation, with far-reaching consequences to its culture, economy and levels of foreign investment." For a number of years, the industry has been calling on Russia to urgently adopt changes to its Copyright Law to make it compatible with the requirements of the international treaties it wishes to join or those previously signed, in particular the 1996 WIPO Treaties. The long-awaited amendments were aimed at bringing Russia in line with international standards by tackling three crucial reforms to the country's copyright system: adapting rights to face technological changes brought about by the growth of the Russian internet market; safeguarding international repertoire by protecting pre-1995 sound recordings and pre-1973 works; and strengthening enforcement standards to combat Russia's vast CD overcapacity. The IFPI estimates that the value of pirate product in the Russian market is US$350 million, making Russia the second biggest pirate market in the world after China. In addition, Russia has become a leading exporter of pirate discs; in the last three years approximately 1,000 different international titles were seized in 26 countries outside of the country matched to 18 Russian CD plants.

See: http://www.ifpi.org

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TRADE MARK, IMAGE RIGHTS
Artists
-England Rugby Star Considers Protecting His 'Kicking' Ritual-
Jonny Wilkinson, hero of England's triumph in the 2004 Rugby World Cup, is considering using trade mark law or patent law to protect his distinctive 'cradle' ritual which he uses to focus his mind before taking penalty or conversion kicks in the game.
The Scottish football team, Celtic FC, has succeeded in registering still images (a graphic representation) of their distinctive pre-match on field 'huddles' as a trademark, and a number of sports stars have had their photographic images registered as trademarks. But registration of the actual movement sequence itself would be a new departure in UK trademark law.
Movement marks themselves are not unknown and a number of companies have registered moving images but these have been in a graphic form (for example, a rotating company logo). At the most basic level, for trade mark registration to succeed the 'movement mark' would have to be capable of being represented graphically and of distinguishing the goods of one person from that of another.
However, it is possible that a complicated and original sequence of moves could have protection in copyright law just as a choreographed sequence of steps would be - as a dramatic copyright. Alternatively, it has been suggested that a sequence of movements which are new, non-obvious and invented and which have a practical end result with a commercial use could be protected by way of a patent.

See: http://www.thetimesonline.co.uk/law/

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COPYRIGHT
Record Labels, Music Publishers, Internet, Computer Software
-World Piracy News-
Malaysian software pirates are selling copies of the next generation of Microsoft's flagship Windows operating system, years before its official release and at a fraction of the expected price. Compact discs with a version of the system code-named Longhorn are being sold openly for less than $A 3.50 (£2.00) per copy . Malaysia is one of the worst offenders, with CDs, CD-ROMs and DVDs sold openly in stores and street stalls. Longhorn is still in development and won't officially be ready until 2005 at the earliest.

A Japanese peer-to-peer file-sharing network which claimed to keep user identities untraceable has failed to work and two users in Japan have been arrested. The developer of the P2P software has also had his home searched by police. There are around 250,000 users of the supposedly anonymous file-trading network, called Winny, which rides on the more well-known Freenet network. Freenet is an open-source project and is part of a growing number of projects aimed at giving people the ability to communicate online without being tapped, traced or monitored.

There is some evidence from the USA that the controversial RIAA lawsuits against ordinary computer users are making a dent in the file-swapping world. According to Web analysis firm Nielsen/NetRatings, weekly usage of the Kazaa software in the United States plummeted from a high of 7 million people in early June to just 3.2 million people in late October. CD sales have also risen in the last two months although this could be attributed to the pre-Christmas release schedule and big albums from artists such as Britney Spears. Sharman Networks, who own the controversial Kazaa software, have used legal tools to eliminate a pirate modified version called Kazaa Lite K++ which was touted as a way to protect Peer-2-Peer users from "organisations such as the Recording Industry Association of America (RIAA) invading their privacy" and also blocked features of the Kazaa software deemed as 'adware' and 'spyware'. Sharman Networks has reportedly contacted the Internet Service Provider of every Web site which hosted Kazaa Lite K++ and threatened each under the provisions of the USA's Digital Millenium Copyright Act unless access to the modified software was removed. This follows a move earlier in the year when Sharman used the same legislation to force Google to remove links or face a legal action. Sharman itself still face numerous legal challenges from the RIAA and other music industry groups over the legitimacy of the Kazaa software itself (see Law Updates October 2003, June 2003 and December 2002).

A new group that includes Microsoft Corp and Universal Music is hoping to make it easier to play music and videos across competing technologies. The Content Reference Forum has published its first set of uniform standards for delivering music. However, the goal is to allow consumers to get movies and other digital content as well, quickly and in any format they want in any country, while licensing fees and copyright protections are enforced. The Forum say that their mission is to "develop a universal way to distribute digital content across various media and geographies. The organisation's goal is to create a dynamic marketplace where participants can promote, sell and legitimately share content; consumers can get the right content for their location, platform and preferences; and the underlying commercial agreements and rights surrounding the content are respected." If a consumer wants to play a song encoded, for example, for the Apple i-Tunes system and cannot play it on a Windows Media Player on his or her computer, then his or her song request would go to a clearinghouse device that would deliver the song in the proper format. However, there is no guarantee the standards will be embraced. Manufacturers and producers may decide it makes better sense to push their own hardware and software which will force consumers to buy their products rather than make their content playable on a competitor's product.

See: http://www.smh.com.au/articles/2003/12/03/1070351635046.html
http://asia.cnet.com/newstech/security/0,39001150,39159923,00.htm
http://www.ilmc.com
http://www.zdnet.com
http://www.crforum.org

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HEALTH & SAFETY
Live Concert Industry
-Indictments Issued in Great White Tragedy-
After a ten month investigation into the Rhode Island tragedy on 20 February 2003 at the Station Nightclub when pyrotechnics ignited during a performance by Great White caused an inferno, the Grand Jury has now issued criminal indictments. The fire killed 100 people, including Great White guitarist Ty Longley, and injured about 200 others. In the first indictments, former Great White tour manager Dan Biechele, and club owners Michael and Jeffrey Derderian were each charged with 100 counts of involuntary manslaughter with criminal negligence and 100 counts of involuntary manslaughter in violation of a misdemeanor. They were arraigned in Kent County Superior Court; all three pleaded not guilty. Bail for the Derderians was set at $50,000, and $100,000 for Biechele, who lives in Florida; all were expected to make bail by the end of the day. At the same time it is estimated that over US$1 billion of civil lawsuits have been filed.

See: http://www.billboard.com
and Law Updates February 2003 and March 2003.

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TRADE MARK
Record Labels, Artists, Merchandisers
-Beneficial Ownership of Intellectual Property Rights-
R Griggs Group Ltd & Others -v- Ross Evans (1) Raben Footwear Pty (2) & Others (2003)
The claimants manufacture and sell the well known Dr Marten boots and footwear. Dr Marten is a registered trade mark and used by the claimant under licence. The boots also carry the Air Ware logo, a trade mark owned by the claimant. In 1988 a combined logo incorporating both logos was produced and thereafter used on footware produced by the claimant. The first defendant was a freelance graphic designer retained by the second defendant. He designed the combined logo. The second defendant (and the other two defendants) took an assignment of copyright in the combined logo from the first defendant. The claimant sought a declaration that it was the beneficial owner of the copyright in the combined logo. Peter Preston QC held that (1) when a freelance designer was commissioned to create a logo for a client it would normally be necessary, in order to give business efficacy to the contract, to imply a term assigning the copyright beneficially to the client in order that the client could prevent others using the logo (Robin Ray -v- Classic FM plc [1998]) and (2) The first defendant, the freelance designer, was the first owner of the copyright when he created the combined logo. It was not shown that the amount he would be paid would have been materially different when considering the uses the combined logo would be put to, and it was obvious that the right to use the logo would belong to the claimant and not to the designer. The claimant therefore owned the combined logo - and moreover it was not merely a licence from the designer to the claimant - the claimant was the beneficial owner. The second to fourth defendants had no ownership and were not purchasers for value without notice.

Source: Kilburn & Strode Trade Mark Attorneys http://www.kstrode.co.uk

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© 2004 Ben Challis