Intellectual Property Law Updates

INFORMATION FOR READERS:
This resource aims to give a brief overview of developments in Intellectual Property law and other areas of law relevant to the music and entertainment industries. Each item is categorised according to relevant areas of the music or entertainment business, and by the date of uploading. Uploads are undertaken regularly and are organised on a monthly basis. These updates are designed to give general information for music and entertainment industry professionals and students interested in these areas. These Law Updates are not law reports or detailed references. Users who would like further information should research the relevant area thoroughly. Relevant references and links are therefore provided.

Law Updates also provides hyperlinks to other sites which may be of use or interest to legal professionals, academics, students and those involved in the music industry. These are provided at the end of Music Law Updates Archive under 'Music Business Law Links'. You will also find all of these links and other hyperlinks on the links page.

This resource is compiled by Ben Challis. Ben is a UK lawyer specialising in entertainment law and a graduate in law from Kings College London and The City University. He also holds the degree of Master of Arts in Mass Communications from the University of Leicester. Ben is a fellow of the Royal Society of Arts. Ben acts as General Counsel for 3A Entertainments, one of the UK's leading concert promoters, and is Executive Producer for television of the Glastonbury Festival. Glastonbury is the UK's leading music and arts festival attended by over 150,000 people. For Glastonbury, Ben combines the role of managing the Festival's broadcast and other media rights alongside acting as General Counsel for the Festival. Ben's other clients have included the Prince's Trust, the Granada Media Group, Pioneer LDCE and British Telecom. Ben regularly writes articles and other material on music business and intellectual property law, contributes to books and is a regular conference speaker in particular on the live music industry. He is currently preparing a collection of cases and materials on music business law for publication. Ben is a visiting Senior Lecturer in Law at Buckinghamshire Chilterns University College in England and sits as a magistrate (Justice of the Peace) in Hertfordshire, England.

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

DECEMBER 2005

COPYRIGHT
Record labels, music publishers, internet
The copyright industry tightens the screws on illegal peer-2-peer file swappers, swapping sites and software that facilitates file swapping.

Following on from the success of the MGM v Grokster case in the USA (Law Updates August2005) and other successes against peer-2-peer websites offering illegal download files (including cases in Australia, Korea and Taiwan) there have been a rash of recent news stories reinforcing the improving position of record labels, music publishers and film companies - although all still against a background of heavy piracy in illegal downloading and file swapping. iMesh has becomes the first of the ‘illegal’ P2P service to go legal (although UK based playlouder.com already offered a legal swapping service to its subscribers). iMesh’s new software blocks any music with a copyright from being downloaded. The service will charge using the subscription model, charging users $6.95 per month. However the real challenge will be to tempt the 5 million users of the old version that allowed free sharing to pay. In the week preceding the announcement the old version of the software was downloaded over 1.5 million times. In Hong Kong a magistrates court has convicted a man of attempting to distribute film content over the BitTorrent P2P network. Chan Nai-ming, from Hong Kong, received a three (3) month jail sentence after being found guilty of three charges (one charge per film) under S118(1)(f) of the Copyright Ordinance for attempting to distribute an infringing copy of a copyright work to such an extent as to affect prejudicially the rights of the copyright owner. The penalty for this criminal offence carries a maximum fine of HK$50,000 for each infringing copy and a maximum prison sentence of 4 years. He is the first person in the world to be convicted for distributing films via a P2P network (in this case Bit Torrent). In China the number one search engine, Baidu, had reportedly removed all links to sites offering free MP3's after pressure from the music industry despite the fact that these searches provided a large proportion of the companies business. However it appears that whilst direct links have been removed, a search by a user would still find ‘free’ music. Baidu have countered with a disclaimer on its site saying that “Baidu itself does not store, control, edit or revise information contained in the linked webpages. We highly value the protection of intellectual property rights. If any authors or copyright owners find the links infringe your rights, Baidu will take measures to remove alleged webpage content or block these links in accordance with relevant laws”. Last month, Sony BMG Music Entertainment, Warner Music Group Corp, EMI Group Plc and other music companies filed lawsuits against Baidu seeking to stop it from offering the service (LawUpdates October 2005 - Major labels seek to outlaw Chinese search engine). Finally, and four months after the US Supreme Court's landmark decision, Grokster has closed. A statement on the site (www.grokster.com) says: "There are legal services for downloading music and movies. This service is not one of them". It also gives details of its proposed new legal version, Grokster3G (www.grokster3g.com). The service is said to be in settlement talks with the RIAA as is Morpheus. However in Korea Soribada - only recently forced to close the Soribada P2P service - says it is launching new ‘open’ P2P software in defiance of the record industry.

http://www.nytimes.com/cnet/CNET_2100-1027_3-5911718.html http://www.digitalmusicnews.com/#102405arvato

http://www.timesonline.co.uk/article/0,,2-1841351,00.html

http://www.chinadaily.com.cn/english/doc/2005-10/25/content_487618.htm

and see Law Updates October 2005 Australian Court rules that Kazaa file swapping software is illegal: Universal Music of Australia Pty Ltd vs Sharman License Holdings (2005) whilst other P2P companies review strategies in light of the Grokster decision

http://www.chron.com/cs/CDA/ssistory.mpl/tech/news/3445671

http://english.chosun.com/w21data/html/news/200511/200511110027.html

http://www.mondaq.com/article.asp?articleid=36142&email_access=on

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The UK-based Royal Society for Arts (Royal Society for the Encouragement of Arts Manufacture, and Commerce – the RSA) has released their Adelphi Charter which outlines how the international community could and should change domestic and international intellectual property laws to better serve the public interest. In particular, the Adelphi Charter calls for a better balance between rights protection and the public domain, since the RSA suggests that the current schemes overly favour the protection of rights. The Charter lays out a “public interest” test that governments should have to meet before creating or extending intellectual property rights. The proposed test includes a presumption against creating new areas of intellectual property protection, extending existing privileges or extending the duration of rights, unless those seeking the change can establish though rigorous analysis and proof that the change will promote basic rights and economic well-being. The Charter also calls for extensive public consultation regarding changes to intellectual property laws. The charter recognises that creative effort should be rewarded but at the same time states that the laws breadth, scope and term over the last 30 years has resulted in a modern intellectual property regime which is radically out of line with modern social, economic and technological trends. The Charters says that this threatens the chain of creativity on which we and future generations depend. Amongst other things the Charter calls for laws to serve and not overturn basic human needs such as health, education, employment and cultural life, that the public interest requires a balance between public domain and private rights, that the monopolistic nature of intellectual property rights need to be balanced against the economic vitality of free competition, intellectual property protection should not extend to abstract ideas, facts or data, that patents should not be extended to mathematical models, scientific theories, computer codes, methods of medical treatment or methods of teaching, copyrights and patents should be limited in time and not extend beyond what is proportionate and necessary and that intellectual property laws should take account of developing countries social and economic needs.

Summary taken from an article by James Kosa in e-Tips Vol 4 No 9 (a publication of Deeth Williams Wall LLC). e-Tips is edited by Richard Potter QC. www.dww.com

See the article by Bill Thomspon at http://news.bbc.co.uk/1/hi/technology/4348970.stm

See http://www.economist.com/business/displayStory.cfm?story_id=5032375

The Adelphi Charter can be seen at http://www.rsa.org.uk/acrobat/adelphi_charter.pdf

See also articles on CREATIVE COMMONS: http://creativecommons.org/ and see http://en.wikipedia.org/wiki/Creative_Commons and see Eldred v Ashcroft where lead counsel was Lawrence Lessig who has developed the Creative Commons concept. See Wikidedia at http://en.wikipedia.org/wiki/Eldred_v._Ashcroft

See Law Updates April 2005 IFPI gain extra time to lobby

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COPYRIGHT
Internet, publishing
Google’s ambitious plan to ‘publish’ all of the world’s books looks set to stir up the doctrines of ‘fair use’ and ‘fair dealing’

Google Inc (Google) has embarked on an ambitious program to collect as much as possible of the world's book knowledge and make it full-text searchable via the Internet. This program, called the Google Print program, has two components. First, Google has worked with book publishers to make their titles searchable and easy to purchase online. Second, Google has taken to scanning, digitizing and making searchable parts or all of the collections of five major universities: Stanford University, Harvard University, Oxford University, the University of Michigan and The New York Public Library, including copyright-protected books from those collections. It is this second component that has drawn copyright holders' ire and thus far spawned two lawsuits. Although Google has placed the onus on copyright holders to opt out of the program or face having their works scanned, for protected works it will only make available snippets of text surrounding the keywords searched. This, Google claims, is "fair use" under the USCopyright Act, and no different than indexing web pages to make them accessible via search engines. On September 20, the Author’s Guild and a number of individual authors filed a class action suit against Google. On October 19, the Association of American Publishers, which represents more than 300 publishing houses, announced that it too was suing Google. The authors and publishers claim that even though only portions of their works will be displayed by Google, the search engine is “free-riding” on their efforts and stands to earn millions of dollars in advertising and other revenues through the Google Print Library service. While it remains to be seen how the courts might resolve the dispute, the Kelly vArriba case may give some hint of which way the wind may blow. In that case, the US 9 th Circuit Court ruled that a search engine did not violate copyright law by displaying thumbnail images of photos from a photographer's web site, because the search engine did not profit from the images and directed traffic to the photographer's site. The key difference may be that, while the photographers had already published the photos online on their own web sites, the authors and publishers of the printed works Google plans to scan have not. Kelly v Arriba, 280 F 3d 934 (9th Cir 2002), see: http://kellyarriba.notlong.com. In a separate matter Agence France-Presse (AFP) has filed a copyright infringement suit against Google in US District Court after Google put AFP headlines, photos and article leads on the Google News web page, <http://news.google.com>. AFP is seeking US$17 million in damages and an injunction barring Google from further publishing its news stories and photos.

From the article Google's Print Library Project Courts Copyright Controversy by Jason Young published in e-Tips Vol 4 No 9 (a publication of Deeth Williams Wall LLC). e-Tips is edited by Richard Potter QC. www.dww.com Kelly v Arrabia -Tips Vol. 4 No 9 www.dww.com/newsletter/oct26_05.htm

See also Adult website lawsuit against Google Image Search could have important ramifications for fair dealing and fair use : Law Updates November 2005. http://www.eff.org/legal/cases/Perfect10_v_Google/EFF_amicus_brief.pdf

See also law updates May 2005 Google sued over reproducing news extracts from AFP

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COPYRIGHT
Internet, record labels, music publishing, artists, television, radio
ARTICLE: Canada introduces new copyright legislation
By Tony Turco and Alex Matheson, Blake, Cassels & Graydon LLP

Synopsis: On June 20, 2005, the Canadian Government introduced a bill which proposes significant amendments to the Copyright Act (Bill C-60) and represents the next step in Canada’s ongoing copyright reform. The amendments focus primarily on the challenges that the Internet and digital technologies pose for copyright law.

This article was originally published in Blakes Bulletin on Intellectual Property, October 2005. LINK to http://www.mondaq.com/article.asp?articleid=35794&email_access=on

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Police in Spain have smashed a syndicate believed to be responsible for releasing over one million pirate music and film discs every month into the Spanish market. In what is the largest operation against music and film piracy ever undertaken in Spain, police arrested 69 individuals on October 26 th all allegedly involved in the illegal production, storage and retail distribution of music and film discs. All of the arrested persons were Chinese nationals. Over 60,000 recorded CD-Rs, almost 50,000 DVD-Rs and over 130,000 inlay cards, as well as over 200 CD drives and four industrial colour copying machines. Thousands of Euros in cash and 21 counterfeit identity cards – including four stolen passports – were also found in the searches. The group was believed to have been producing over one million CD-Rs and DVD-Rs every month. The music included both local Spanish artists and well-known international titles. Some of the films had not yet been legally distributed. On October 27 th as a result of follow-up enquiries, Spanish police raided more premises in the suburbs of Madrid resulting in six more arrests, the seizure of another 50 CD drives and 150,000 discs.

Spain , which has one of the worst piracy problems in Europe, suffers from a piracy rate of 24% - equivalent in value to US$77 million. Piracy has devastated the country’s music industry, with sales of recorded music having fallen by 32% since 2000. IFPI Chairman and CEO John Kennedy said: “ Spain was once a thriving legitimate music market known for the quality of its artists and the success of its music industry. Spain is now known for the most serious piracy problems in Europe. We are very encouraged by this operation and we hope and expect that these actions and those to follow will have a positive impact on Spanish music and the creative economy.” Spanish police held a press conference in the capital Madrid yesterday to announce details of the operation, which was attended by the Spanish Minister of the Interior, José Antonio Alonso who emphasised the massive damage done by piracy. He stated that this is the most important operation against industrial piracy undertaken by the police to date. He said that today a kilo of pirate discs is five times more profitable for pirates than a kilo of hashish. He added that in the past 18 months pirates had flooded the Spanish market with 50 million counterfeit music or film discs, destroying 1,200 jobs and leading to the closure of 85 small businesses in the sector. Spain was named as the only Western European country in IFPI’s 2005 Commercial Piracy Report.

Source www.ifpi.org

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TRADE MARK
Merchandising, artists, internet
ARTICLE: Hong Kong – are slogans registerable as trade marks?

This useful article looks at decisions in Hong Kong where the registrar of trade marks has confirmed that the same test of distinctiveness applies to slogans and other types of mark. The test of distinctiveness is laid down in British Sugar plc v James Robertson & Sons Ltd [1996] PRC 281 and elaborated in Nestle SA's Trademark Application (Have a Break) [2004] FSR 2. Pursuant to British Sugar the question is whether a mark can be regarded as distinguishing, without first telling the public that it is a trademark. Nestle’s Have a Break adds that the distinctiveness must identify a product as originating from a particular undertaking. Reference to the goods for which registration is sought and the expectations of reasonably well-informed and circumspect consumers are factors to be considered. In Hong Kong none of ‘Im lovin it’, ‘Your world is myworld’, ‘The Game Des!gners Studio’ and ‘Life made easier’ passed these tests (although the McDonalds slogan, I’m lovin it has been registered in Australia and New Zealand).

LINK to http://www.mondaq.com/article.asp?articleid=35698&email_access=on

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TRADE MARK
Record labels, internet
Beatles claim Apple mark continues to infringe

John Lennon's solo material will be made available for digital downloading before this Christmas - on almost every platform (like HMV and Virgin) save Apple's iTunes. The Beatle's Apple Corp remain locked in a trademark battle with the computer company over use of the name 'Apple'. The band reached an agreement in 1981 with Apple Computers over the use of the trademark - which they claim has been breached by Apple branching out into the music download market - and therefor the music business itself. It is understood that in 1981 the computer company agreed that it would not use the mark in the music business

The Times 9 th November 2005

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COPYRIGHT
Record labels, internet, technology
A diary of the Sony-BMG ‘rootkit’ fiasco – how not to introduce Digital Rights Management

In early November it became apparent that SonyBMG had launched a new form of copy restriction software embedded into CDs which restricted the purchaser’s end use of the tracks – in effect an anti-piracy measure – or digital rights management system (DRM). So far so good. Except the software sparked of huge protests and it all went horribly wrong for SonyBMG. After the software was discovered the Electronic Frontiers Foundation suggested that the software XCP2 was created ‘drawing from the playbook of spyware companies and virus-writers’. The EFF went on to say that by using a programme called a rootkit a Sony BMG music CD will now “infect [the] user’s computer with a new programme which will be buried within the operating system”. The program will monitor user’s computer activity to prevent piracy by users – for example by making extra copies of their music CDs. There is no "uninstall" feature on this programme (EFF EFFector Vol 18 No 38 4 th November 2005). A couple of days later the EFF said that ‘outrage from computer users and music fans’ has sparked Sony BMG into offering a new programme on its website that will show users if they have been infected with the rootkit. However, while users can see the programme running they cannot delete the programme. The Electronic Frontier Foundation has confirmed that the stealth program was deployed on at least 19 CDs in a variety of genres. The softare – called XCP2 – was created by a UK company called First 4 Internet and ostensibly "protects" the music from illegal copying. But the EFF says that it also blocks a number of legal uses like listening to songs on your iPod. The software also reportedly slows down the users computer and makes it more susceptible to crashes and third-party attacks. 18 files are installed and the software uses 15MB of memory on the user’s hard drive. And since the program is designed to hide itself, users may have trouble diagnosing the problem. Consumers can spot CDs with XCP by inspecting a CD closely, checking the left transparent spine on the front of the case for a label that says "content protected." The back of these CDs also mention XCP2 in fine print. As the news came out SonyBMG’s actions in using the software looked more and more unwise.

In the US (and indeed in many other territories) the law is still unclear on the legality of this sort of action (of inserting software onto another person’s computer) and indeed on the legality of compulsory End User Licence Agreements (EULAs) which might result in the user ‘agreeing’ to accept such software. In this case the user wouldn’t even have seen the EULA as they wouldn’t have known about the rootkit!!! In France the appeal courts have held that AOL’s online terms and conditions were unfair and illegal. EMI have said that that it does not use rootkits on its CDs. More on the legality issue later.

By the 10 th of November Live Eight magazine reported that a class action had been filed in California against the company and another could be filed in New York. The EFF publicly called for more consumers to join the class action. At the same time Sony-BMG said that they would suspend production of all CDs containing the rootkit after technology experts pointed out that the XCP stealth capacity could be used to mask malicious computer viruses. Sony BMG then posted a (very complex) uninstall procedure on its website. But to add to Sony-BMG’s woes, Microsoft then said that it considered the software ‘spyware’ and added XCP to detection and removal tools to its weekly spyware software update. By the 16 th November it was reported that SonyBMG were recalling millions of CDs including albums from Celine Dion, The Coral and Natasha Bedingfield because of the inclusion of the rootkit software on the CDs. And in a bizarre turnaround, on the 22 nd November it was reported that SonyBMG were now themselves being sued over the software – with an action brought by the Attorney General on behalf of the State of Texas. Attorney General Greg Abbot accused Sony BMG of “ surreptitiously installing "spyware" in the form of files that mask other files Sony installed as part of XCP. This "cloaking" component can leave computers vulnerable to viruses and other security problem” said Abbot adding that "Sony has engaged in a technological version of cloak-and-dagger deceit against consumers by hiding secret files on their computer."

Finally SonyBMG is exchanging all the CDs with XCP software for CDs without the software and

Sony has issued an apology letter to its customers. After this fiasco the question must be - where does digital rights management go now in light of the real issues of consumer security, privacy, user consent and user rights?

More on the Sony rootkit:
http://www.sysinternals.com/blog/2005/10/sony-rootkits-and-digital-rights.html
http://news.bbc.co.uk/1/hi/technology/4424254.stm

http://www.informationweek.com/story/showArticle.jhtml?articleID=173602634

EMI’s position http://news.com.com/EMI+We+dont+use+rootkits/2100-1029_3-5937108.html?part=rss&tag=5937108&subj=news

More on the Sony response:
http://sfgate.com/cgi-bin/article.cgi?file=/news/archive/2005/11/02/financial/f160614S41.DTL

See Professor Ed Felten's suggestions for preventing the operation of this type of software
http://www.freedom-to-tinker.com/?p=920

See the RIAA’s Cary Sherman’s comments at http://www.cpwire.com/artman/publish/article_1212.asp

Sony suspend production of rootkit CDs http://news.bbc.co.uk/1/hi/technology/4430608.stm and the Ghost in theCD http://www.nytimes.com/2005/11/14/business/14rights.html

State of Texas sues Sony BMG

http://www.businessweek.com/the_thread/dealflow/archives/2005/11/in_reversal_mus.html

Robert Hull and others v Sony BMG http://www.clintons.co.uk/html/forum_details.php?id=73

See Law Updates November 2005: The first five article are all on issues related to DRM; also see ‘Abusive contract terms struck down by French court in AOL Standard Form Contract’ / Also seeThe right way to fight spyware by Wendy Seltzer Law Updates June 2005 and at http://www.eff.org/deeplinks/archives/003536.php

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TRADEMARK
Artists
Beach Boys litigation resumes as Love takes on Wilson

Beach Boy Mike Love has filed a law suit against cousin and former Beach Boy Brian Wilson over the latter’s release of the concept album Smile which Wilson released in 2004 and a free CD giveway. The suit alleges the misappropriation of Love’s songs, likeness and the Beach Boys trademark. Smile was first recorded in 1967 but was disowned by Love and the album was, in effect, a Wilson solo project. However album was never completed and Wilson suffered a breakdown and withdrew from public life. Wilson was the Beach Boys main songwriter and although most tracks on Smile are written by Wilson and lyricist Van Dyke Parks, Love co-wrote the classic ‘Good Vibrations’ and maintains a share of the copyright in this. The trade mark issue relates to the band’s name: The remaining band members continued to perform after Wilson’s departure although both Dennis Wilson and Carl Wilson have now died (in 1983 and 1998 respectively). Love has continued to perform as the Beach Boys and has a licence to do so granted by Brother Records Inc which owns the Beach Boys Trademark. Brother itself is equally owned by four original members, Brian Wilson, Alan Jardine, Mike Love and the Estate of Carl Wilson. Alan Jardine tours as the Endless Summer Band after being prevented by court order from using the name ‘the Beach Boys’. The actual Smile album was released as ‘Brian Wilson presents Smile’ and whilst this might not infringe the Beach Boys’ trade mark, the new litigation seeks damages from a free give away by UK newspaper the Mail on Sunday where 2.6 million copies of a promotional ‘Free Beach Boys classic CD performed by Brian Wilson’ were given away. The Mail on Sunday’s promotional text described the 10 track CD as ‘ a free ten-track CD, Good Vibrations, featuring the Beach Boys' most-loved songs performed by Brian Wilson. With tracks such as California Girls, Good Vibrations and Wouldn't It Be Nice reworked by Wilson, the CD makes for superb listening. The songs are all classic pop numbers and we are giving you a fantastic chance to enjoy hot versions by the creative genius behind the band's original line-up’. Love seeks damages for loss of sales of legitimate Beach Boys product amongst other remedies.

The Guardian 5 th November 2005 .

http://www.findarticles.com/p/articles/mi_hb4260/is_200409/ai_n13281524

http://www.billboard.com/bbcom/news/article_display.jsp?vnu_content_id=1001434600

For more information on the Beach Boys see http://en.wikipedia.org/wiki/The_Beach_Boys

and for details of earlier litigation see http://www.ivanhoffman.com/bandnames.html and

Brothers Records, Inc. v. Jardine (2003) U.S. App. LEXIS 1335 (9th Cir. January 28, 2003)

http://www.ipcounselors.com/20030304.htm

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A group of Canada's largest broadcasters is looking to take legal action against the Copyright Board over the issue of royalty payments after new payment structures mean radio stations will have to increase their royalty payments to songwriters and musicians, in some cases, by as much as 30 per cent. These are the first changes for 25 years. Corus Entertainment, which owns radio stations right across the country, says this ruling will cost the network millions of dollars a year and it could lead to layoffs. Corus is joining CHUM and other networks in the fight. They're asking for a judicial review of the ruling by the Copyright Board of Canada that radio broadcasters that earn more than $1.25 million will be paying a higher rate of 4.4 per cent of their revenues to SOCAN and 2.1 per cent of their revenues to NRCC. The old rate was 3.2 per cent to SOCAN and 1.44 per cent to NRCC (SOCAN is the Society of Composers, Authors and Music Publishers of Canada and NRCC is the Neighbouring Rights Collective of Canada). http://www.cbc.ca/story/arts/national/2005/11/07/Arts/radio_051107.html

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HEALTH & SAFETY, PRIVACY
Live Music
Canadian nightclub’s scanning of ID found to violate Alberta’s privacy legislation

The Alberta Privacy Commissioner has found that the scanning of patrons’ identification at the door of a nightclub violates the province’s Personal InformationProtection Act (PIPA). The report concluded that purposes for which the personal information was collected were not reasonable, contrary to section 11 of PIPA. The widespread practice of photo-scanning ID in nightclubs was apparently intended to deter violent or criminal behaviour. However, the Commissioner found that Penny Lane Entertainment, the owner of the nightclub, failed to demonstrate that the collection of this type of personal information would in fact address this issue. The complaint was filed by the author of this summary, Deeth Williams Wall summer student Nyall Engfield. The decision calls for Penny Lane Entertainment to purge the data that has been collected and cease the practice. Such a decision is not binding, but if Penny Lane Entertainment does not comply with the finding, then an inquiry that could result in a binding order will be launched.

Also see: http://makeashorterlink.com/?Y3C62502C. From a Summary by Nyall Engfield in E-TIPS, a publication of Deeth Williams Wall LLC. E-Tips is edited by Richard Potter QC . To review past issues of the E-TIPS ® newsletter, visit: http://www.dww.com/newsletter/archive.html

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In a somewhat short sighted and self absorbed press release (11 th November) The International Federation of Phonographic Industries (IFPI) has warned that a new Italian law passed on the 9 th of November ‘threatens music anti-piracy activity in Italy’. The IFPI called on the Italian Senate to reject the law when it comes up for final approval next week. The new bill of law, known as the Ex-Cirielli Law, could end three quarters of all pending criminal anti-piracy trials before they have the chance to be taken to court. This is because the Italian legislature are trying to reduce the time it takes for criminal actions to reach trial in Italy. Many readers (in the UK for example) would be astounded to know that cases can take up to nine (9) years to get to trial in Italy. The bill, approved by the Italian Lower Chamber, will shorten the period after which criminal cases pending trial are automatically dismissed to six years. Unfortunately the change, from seven and a half to six years will affect the majority of all pending criminal cases brought by the music industry. Of 471 cases pending in 2004, 382 will be dismissed and similar figures are expected for 2005. IFPI Chairman and CEO John Kennedy said: “The Ex-Cirielli law deals a huge blow to the Italian music industry and to all IP industries in the country. This law totally undermines our ability to fight piracy in a nation with one of the highest rates of piracy in the developed world. The IFPI added that “the new bill will turn into a general amnesty for the cases pending in the Italian Courts and will seriously impede any future anti-piracy criminal activity”. Whilst this may in itself be true, it could equally be said that we should applaud the actions of the Italian Government for reducing the wait for trials in Italy which can be unfair to victims, witnesses and defendants alike and hardly in the interests of justice – justice delayed is justice denied.

www.Ifpi.org

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Video Performance Ltd (VPL) reports that licence fee income for broadcast and public performance of music videos in the UK is up 9.5% to £8.7M. Broadcast income was £7M and public performance income was over £1M. This covers the financial year ending December 2004. VPL is the collecting society set up by the UK record industry in 1984 to grant licences to users of music videos such as TV broadcasters, television programme makers and video jukebox system suppliers. It is a sister association to Phonographic Performance Limited (PPL) which collectively licences the use of sound recordings. Whoever owns the rights in a music video can become a member – membership is free. VPL currently has approximately 900 members – from the major record companies to the smallest independents - and 50,000 music videos registered with us. The commercial licensing arms of VPL is known as Music Mall.

http://www.musicmall.co.uk/vpl/mm_design.nsf/splash?openpage

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COMPETITION
Telecomms, technology, internet
Monstermob’s mobile services prompt fresh complaints

Mobile giant monstermob is facing a fresh investigation from UK from telephone watchdog Icstis over claims that the company has sent out unsolicited ‘reverse bill chargeable texts’ to users. In effect the user pays for the text at premium rate even if they haven’t asked for the text. Here entrants to a ‘free’ competition are said to have received texts which they had to pay for. Ictis can impose fines on service operators or bar services from operating. Monstermob had previously been investigated by Icstis for a subscription text service which provided ineffective ‘stop codes’. Monstermob were warned but no other action was taken. The Advertising Standards Authority had prevously upheld a number of complaints against ringtone provider Jamster, the firm behind the ‘Crazy Frog’, ‘Sweetie the Chick’ and ‘Nessie The Dragon’ downloads. The ASA noted that Jamster’s style of advertising particularly appealed to children and young people and the adverts for these Jamster downloads did not make it clear that the service was a subscription service. Many young people who complained (often after parents had to foot large bills) thought that the purchase of a single download was a ‘one off’ transaction. Jamster failed in an application to the High Court to prevent the ASA’s adjudication being published.

The Guardian (Cash) 6 th November 2005 and see Law Updates June 2005Ringtone advertising raises consumer protests worldwide

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The IFPI has unveiled the biggest escalation yet in its campaign against illegal internet file-sharing, announcing over 2,100 new legal cases against individuals and extending the actions to five new countries in Europe, Asia and - for the first time - South America. File-sharers in Sweden, Switzerland, Argentina, Hong Kong and Singapore are for the first time at risk of criminal penalties and payment of damages in an international campaign that has already seen thousands of people - the majority of them young men between the ages of 20 and 30 - pay sums of US$3,000 or more for uploading copyrighted music on peer-to-peer networks (p2p). This latest wave of cases, covering actions launched today or brought in recent months, takes the total number of legal actions against uploaders to over 3,800 in 16 countries outside the US. This is the fourth wave since the international campaign began in March 2004, and it targets users of all the major unauthorised p2p networks, including FastTrack (Kazaa), Gnutella (BearShare), eDonkey, DirectConnect, BitTorrent, WinMX, and SoulSeek. The move comes just one week after the landmark settlement between the p2p service Grokster and the US music industry. It also follows a series of court rulings in the last few months which firmly establish that unauthorised p2p services, as well as their users, can be held liable for music piracy. There have been key judgments in three continents since June – against Grokster in the US, Kazaa in Australia, Soribada in Korea and Kuro in Taiwan. Announcing the latest wave of actions at a press conference in Stockholm today, IFPI Chairman and CEO John Kennedy said: “This is a significant escalation of our enforcement actions against people who are uploading and distributing copyrighted music on p2p networks. For the first time there will be financial and criminal sanctions for this activity in countries in South East Asia and Latin America. This reflects the sharply rising levels of internet piracy in those regions. The message today is that, from Sweden to Hong Kong and from Singapore to Argentina, there are no havens for the theft of music on the internet” adding “in the last two years, by extending these legal actions to a total of 17 countries, the music industry has helped change the perception of music on the internet. Thousands of people – mostly internet-savvy men in their twenties or thirties – have learnt to their cost the legal and financial risks involved in file-sharing copyrighted music in large quantities. Some countries, such as Sweden, have to some extent been perceived as immune from the laws affecting everyone else – today we are making it clear that copyright laws will be enforced against illegal file-sharing in those countries just as elsewhere”. Kennedy added that “Today there is simply no excuse to steal music on the internet instead of buying music legally. There are 2 million tracks available on over 300 sites across the world where consumers can download safely and legally and buy, subscribe to or listen to online music at fantastic value. The music industry is making a vast catalogue of music available to consumers online, but at the same time we are determined to protect our music from copyright theft.” The legal actions follow a sustained education campaign by the music sector. Over 52 million instant messages have been sent directly to illegal music file-sharers in 17 countries. A campaign launched by leading charity Childnet International aimed at educating parents about file-sharing and downloading music has been distributed in schools and retailers around the world. A Copyright Security Guide for companies and governments has been mailed to organisations in six countries. Free software, Digital File Check, that helps people enjoy music on their computer safely and legally (go to www.ifpi.org) was launched initially in 6 countries in September. The IFPI say that The deterrence campaign has helped to contain internet piracy in the face of a dramatic expansion of broadband uptake. The number of illegal music files on the internet rose slightly to around 900 million in the first half of 2005, while broadband penetration globally rose 17%. The actions are helping to encourage the development of the legitimate digital music business. Legal downloads in the first half of 2005 were triple the level of the same period a year earlier, at 186 million tracks. That excludes sales of music on mobile phones and music subscription services, which are expected to see sharp growth over the next year.

Source IFPI press release www.ifpi.org

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The Copyright Tribunal held a 'Directions Hearing' on 9 November which gave the MCPS-PRS Alliance until 2nd December to respond to the BPI-led reference of its Joint Online Licence (JOL). This will set the rate (share / percentage) at which composers are paid for the online sale of their compositions. This was the date originally proposed by the Alliance and the one which the Alliance say their legal teams have been working towards. At the same Hearing, the 3rd October 2006 was set as the earliest date for the full Tribunal Hearing to begin. The Tribunal process freezes the 2005 JOL scheme until either the Tribunal makes a decision or until agreement between the parties is reached. In practice this means the 2005 JOL remains in place for 2006 and until further notice.

eM Magazine issue 22 http://www.mcps-prs-alliance.co.uk/apps/eZine/eM22.htm

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Karaoke disks licensing has been standardised with all other published dealer price percentage rates for MCPS physical product licensing. The new version of the licensing scheme (to be published imminently) amends the 8p/9p per track per product (for still and moving visuals respectively) to 12% of Published Dealer Price. MCPS believes this move will also stimulate the market by offering a more flexible licensing approach for the benefit of both members and licensees. The MCPS has also introduced a licensing scheme for Universal Media Discs (UMD) used with the latest Sony Portable Playstation (PSP). For audio-only music products, UMD can be licensed under the AP1 (Audio Products) and AP2 schemes (when containing purely audio-only content). The intention is to include audio-visual music UMD product under the DVD1 scheme and discussions with the BPI are being held to this end. Audio-visual non-music UMD products will be included under the new AVP scheme recently agreed with the British Video Association.

http://www.mcps-prs-alliance.co.uk/apps/eZine/eM22.htm

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Salvatore Acquaviva has won a copyright case in Belgium against Madonna. The court upheld his claim that Madonna's 'Frozen' plagarised one of his songs. The BBC report that EMI, Sony and Warner Music have been ordered to withdraw the song from sale in Belgium. Mr Acquaviva's lawyer Victor-Vincent Dehin said the judge agreed that Madonna's single used four bars of the song Ma Vie Fout L'camp, which roughly translates as My Life's Getting Nowhere. In a separate matter Belgium RadioLijn5.com has reported that Belgium's Court of Appeal is considering a claim regarding Michael Jackson's hit song "You Are Not Alone". The claim in the case of Van Pasel v R Kellyand Zomba (2005) is based on the finding of the Belgian collection and rights society that the largest part of the melody of the 1995 song "You Are Not Alone" that R Kelly presented to Michael Jackson is "identical" to the 1993 song "If We Can Start All Over" composed by Belgian brothers Eddy &Danny Van Passel.

www.lijn5.com

http://news.bbc.co.uk/1/hi/entertainment/music/4449580.stm

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TRADE MARK
Artists
Image Rights: new ARTICLE

This is a link to the article Intellectual Property; Protecting image as trade mark
by Dr Peter Groves, Solicitor. Bircham Dyson Bell “ There are no image rights in English law, unlike the position in several other countries. However well-known a person might be, their image is not something that attracts protection of itself. They cannot stop photographs being taken, or even published. But the law has come to their assistance in small ways, such as the recognition by the courts that falsely claiming the endorsement of a celebrity may amount to passing-off (Edmund Irvine v TalksportLtd[2002] EWHC 367). Copyright, libel, malicious falsehood and the Trade Descriptions Act 1968 may also be useful. In addition, the Trade Marks Act 1994 tells us that among the various things that can be registered as trade marks are personal names ….. “ http://www.spr-consilio.com/art11.htm

Also see Law Updates November 2005 Trademark - Manchester United's manager fails to protect his own name on posters

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COPYRIGHT
Music publishing
ARTICLE: Conflicting terms resolved in favour of ‘essential term’ Mark Taylor v Rive Droite Music Limited
By Tom Frederikse, solicitor, Clintons
The court of Appeal have ruled that a song can only be declared finished by a writer and not by a music publisher:

Music publisher, Rive Droit Music (RDM) has (mostly) lost its appeal in a dispute with a songwriter, Mark Taylor, which involved fundamental issues of contract and copyright law. In Mark Taylor v Rive Droite Music Limited (published 4 November 2005), Mr Taylor had made 5 separate claims, including that his publishing contract had a 2-year term despite setting out provisions for 3 years’ advances, and that certain unfinished works were not “Compositions” and therefore not subject to the agreement. After a string of hits, Mr Taylor signed a third successive publishing contract with RDM in 1998 which contained a clause stating that the agreement was for a Term of two years (subject, as usual, to the ‘Minimum Commitment’ of 10 Compositions per year). The advance payments clause, however, clearly set out advances payable to the composer for each of three 12-month periods and RDM therefore assumed that it could trigger a third year by making that third payment. The trial judge ruled in favour of a 2-year Term and RDM appealed. The Court of Appeal was divided in their reasoning and findings but the majority held that, because the clause setting out the Term was “fundamental and essential … conceptually, legally and commercially”, it must prevail over the advance clause which, despite being commercially important, was less fundamental. The Court noted that this was “one of those rare cases in which … there had been some defect of draftsmanship” and conceded that the clauses “could not be sensibly read together”. On balance, the advance clause was seen as flying “more flagrantly in the face of the expressed intention” of the parties.

On the copyright point, Mr Taylor had during the Term of the contract taken part in some writing sessions with the artist Enrique Iglesias but the demos were unfinished and were not completed by the composer until after the contract had expired. The composer argued that the unfinished works were not “Compositions”. The issue for the court was, because the agreement covered only Compositions written “in whole or in part”, to determine whether the early unfinished work constituted a “fixed” Composition. The court recognised the “inherent uncertainty” in this assessment but nevertheless held that the unfinished works could not be “Compositions” because only a writer can decide when a work of his comes into existence and the court did not want to give Publishers such control over the writing process. Furthermore it was noted that, if such unfinished works were “Compositions” then writers might be able to more easily satisfy their Minimum Commitment by delivering an “unfinished” work (as a Composition) and then re-delivering the same-but-developed work as a second Composition.

This case should remind publishers to ensure contracts clearly cover those works started during the term but finished thereafter, whilst writers should know that they have considerable discretion to decide when a work is “finished”. We are all reminded, however, that it helps to read the contract carefully before signature.

Clintons website is at www.clintons.co.uk

The full text of the judgment may be accessed via: http://www.lawtel.com/~5e91557d55f748dab23e182d4149793d~/content/display.asp?ID=AC0104860ChD.pdf and see http://www.clintons.co.uk/html/forum_details.php?id=71

See also Hyperion Records v Sawkins Law Updates July 2005

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COMPETITION
Radio, record labels
US Senator introduces bill against US ‘payola’ as Warners settle with Spitzer

Senator Russ Fiengold (Democrat, Wisconsin) has introduced legislation that seeks to close the loopholes on payola-like practices and stop alleged "muscling" practices by broadcast-venue owner companies from forcing performers to play for reduced fees or for free. Senator Feingold has crafted his Radio and Concert Disclosure and Competition Act of 2005 after studying the New York Attorney General Eliot Spitzer's $10 million settlement in July with Sony BMG Music Entertainment, and realizing there is a need to help artists and also regulate such practices on the radio side to prevent abuse of a dominant position by large conglomerates who control venues as well as radio stations and other media. In The US, Warner Music Group has become the second major label company to settle with New York attorney general Eliot Spitzer's office in its ongoing payola investigation. WMG is paying out $5 million - which will be donated to nonprofit organisations - and a further $50,000 to cover the cost of the enquiry. Spitzer accused the label of dishing out iPods, $800 gift cards and cash bribes of up to $20,000 to DJs and radio stations. In July, Sony BMG was the first record company to reach settlement, paying out $10 million in settlement. WMG has agreed to abandon the practice of providing radio stations and their employees with financial incentives and promotional items in exchange for airplay of its recordings (Billboard.com 22 November 2005).

http://www.cpwire.com/artman/publish/article_1212.asp http://www.billboard.biz/bb/biz/newsroom/legal_management/article_display.jsp?vnu_content_id=1001525019

http://news.ft.com/cms/s/49de9400-5bc5-11da-b221-0000779e2340.html
http://www.nytimes.com/2005/11/23/business/media/23payola.html
http://www.nypost.com/business/58116.htm

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HEALTH AND SAFETY
Artists, Live Concert industry
Leeds Coroner records a verdict of accidental death in stage dive tragedy

The Leeds Coroner, David Hinchcliffe, has recorded a verdict of accidental death after the inquest into the death of Patrick Sherry, 29, frontman of Bad Beat Revue and a married father-of-two. Sherry jumped up to grab a lighting rig during a gig at the Warehouse in Leeds but fell head-first on to the venue's solid wood floor on the 20th July 2005. His older brother Brendan, 33, who is also in the band, saw the accident. A witness said: "He put the microphone down and crouched before leaping off the stage, which was about a metre high, and trying to grab the rig. I don't know whether he caught it or not, but his momentum carried him forward. He went upside down and hit the floor head-first. The whole thing lasted about five seconds. It was horrendous." Patrick, of Silsden, West Yorks, was taken to Leeds General Infirmary where he died the following morning of head injuries

http://www.mirror.co.uk/news/tm_objectid=15775794&method=full&siteid=94762&headline=rock-singer-is-killed-in-stage-diving-stunt--name_page.html

http://www.yorkshiretoday.co.uk/ViewArticle2.aspx?SectionID=55&ArticleID=1094715

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The Electronic Frontiers Foundation (in EFFector Volume 18 No 38, 4 th November 2005) reports that the MPAA and RIAA has presented their plans for the future of digital technology to the House Subcommittee on the Courts, the Internet and Intellectual Property. They gave the House drafts of three bills they would like passed: the Analog Content Protection Act, the HD Radio Content Protection Act, and the Broadcast Flag Authorization Act. l.

EFF Analysis: Halloween on the Hill
http://www.eff.org/deeplinks/archives/004106.php#004106
The MPAA's Analog Bill:
http://www.eff.org/IP/Video/analog_hole_discussion_draft.pdf
The RIAA's HD Radio Bill:
http://action.eff.org/site/DocServer/Analog_Hole_Discussion_Draft.pdf?docID=281
The Broadcast Flag Bill:
http://action.eff.org/site/DocServer/Broadcast_Flag_Discussion_Draft.pdf?docID=321

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The Australian Federal Court has issued a order forcing Kazaa to filter copyrighted music from its system within ten days or cease its operation. Under the new order, Kazaa has been told to put in place filters that will stop the swapping of a large number of copyrighted songs, ranging from Madonna and the Beatles to more niche and local artists, by a deadline of 5 December. The final warning comes two months after Kazaa, until recently the world’s biggest internet peer-2-peer file swapping sitre, was ruled in breach of copyright by the Federal Court of Australia. Kazaa’s operators, Sharman Networks, had previously appealed the September judgment. But the judge in Sydney, Justice Murray Wilcox, said that to avoid complete shutdown, Kazaa must now, as a first step, put in place the new keyword filter system by December 5th. The court order comes within weeks of judgments against unauthorised peer-to-peer services in the US, Australia, Korea and Taiwan. The new filter, involving 3000 keyword to be selected by record companies, will apply to all new versions of the Kazaa software from 5 December 2005. The filter can be updated if necessary on a fortnightly basis to target the latest and most popular music releases nominated by record companies. Explaining his order, Justice Wilcox said the record companies are “entitled to have the benefit of a judgment in their favour. That is very important. Copyright infringement is occurring on an enormous scale at this moment.”

Source IFPI press release www.ifpi.org

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COPYRIGHT
Record labels, music publishers, internet, film, broadcasting
Intellectual property theft mooted as pan-European crime

Intellectual property theft has been advanced as one of the new offences under a proposed pan-European body of criminal offences. The European Commission has insisted that seven core crimes (including counterfeiting the Euro, money laundering, people-trafficking, marine pollution, private sector corruption, credit card and cheque fraud and computer hacking and virus attacks) must become law. IP theft is a ‘proposed’ offence which could become part of the pan-European system some time in the future. The new proposals are not without criticism as many member states (including the UK, Holland and Italy) oppose any involvement of the EU in criminal matters which are seen as domestic issues and pan European legislation is see as a challenge to parliamentary sovereignty an power grabbing by Brussels. The Times 24 November 2005

http://www.timesonline.co.uk/article/0,,2-1779849,00.html

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