TRADE MARK All areas
Apple Computers and Apple Corp end two decades of litigation
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
---------------------------------------------------------------------------------------------------------------
TRADE MARK
All areas
Apple Computers and Apple Corp end two decades of litigation
Apple Inc will now take full control of the Apple brand and license certain trademarks back to the Beatles' record company Apple Corps for the Beatle's companies continued use. The dispute dates back to 1980, when the late George Harrison noticed an advert for Apple computers in a magazine. In 1976 Apple Computer’s founder Steve Jobs had adopted a white apple on a black background – with a small bite taken out – as the fledgling company’s logo. Whilst now multicoloured this was very similar to Apple Corp’s own logo which was a ‘plump green Granny Smith’ apple. Harrison felt there was potential for trademark conflict between Job’s mark and Apple Corp trade mark. Apple Corp had been set up by The Beatles in 1968 to manage their business affairs from recording, merchandising and books. The legal battle over the trademark (both the name and the logo) will now end with the added carrot that Beatles’ tracks may now be finally available for legal download – and they are likely to be very popular! The sides reached a settlement in 1981 allowing Apple Computer to use the name as long as it stuck to computers, while The Beatles' company would continue in the entertainment field. But as computers developed and their musical capabilities grew, the sides ended up in court in 1989, resulting in a new deal. They clashed again when Apple Inc launched the iTunes download store in 2003, with the record label claiming the computer firm had encroached on its territory again. That case ended up in court last year. Apple Corps lost, with Mr Justice Mann ruling that the iPod and iTunes did not breach the earlier settlement because the services and software were merely ways of retailing and distributing music and nothing to do with the creation of the music itself. Apple have also settled their trade mark dispute with Cisco over the use of the iPhone mark.
See Law Updates June 2006 Apple Computers survive assault from The Beatle’s Apple Corps: Apple Corps Limited v Apple Computer, Inc. (2006) EWHC 996 (Ch)
http://news.bbc.co.uk/1/hi/entertainment/6332319.stm
---------------------------------------------------------------------------------------------------------------
IMAGE RIGHTS
Artists
Tom Waits reaches settlement over German car
Tom Waits has reached a settlement regarding his dispute with German car maker Opel and their advertising agency McCann Erickson. Waits claimed that the car firm had deliberately used a sound-alike on one of their TV ads to imply he had participated in the marketing campaign. The singer sought an injunction to stop the ads and at least $300,000 in damages. The exact nature of the out of court settlement is not know, though Waits has pledged to donate the money he will receive to charity. Confirming they had reached an agreement with the singer, McCann Erickson said yesterday: "We respect Mr Waits, and deeply regret any embarrassment this may have caused". The settlement comes almost exactly one year after Waits won a similar court case in Spain where Volkswagen had also used a sound a like in a TV ad. Waits, famously critical of artists who take the advertising dollar off big business, said after yesterday's settlement was announced: "I'm glad to be out of the car sales business once and for all".
---------------------------------------------------------------------------------------------------------------
COPYRIGHT
Internet, record labels
EMI signs as streaming deal with AOL, Warners ties up with Last.FM , Viacom takes on YouTube and JASRAC are still not best pleased!
EMI Music has signed an advertising-supported music video streaming agreement with leading digital content provider AOL Europe. The agreement, covering the UK, French and German markets, enables consumers to stream music videos free-of-charge via the AOL portal. All forthcoming new releases will be available for music fans to stream, as well as music videos from EMI Music’s extensive back catalogue. EMI Music will also benefit from additional exposure for EMI’s artists via promotional activity such as “Artist of the Month” and “Breakers.” Exclusive “AOL Sessions” are also planned, with all recordings to be made available for AOL users to stream. Consumers will have access to music videos from EMI Music artists, including Coldplay, Corinne Bailey Rae, Norah Jones and Lily Allen, as well as Camille, Diam’s and Raphael from France, and Wir Sind Helden and La Fee from Germany. AOL is a global Web services company and a majority-owned subsidiary of Time Warner Inc. And Warner Music has entered into a streaming license with Last.fm covering the US and Europe. This is Last.fm's first content deal with a major. In the February issue of Five Eight there will be an interview with Martin Stiksel, co-founder of Last.fm, about the service and what it means for the future of traditional radio. However another US media giant is taking a different aporoach. Viacom, owner of MTV, Nickelodeon and Comedy Central, has demanded that all its clips be removed from the YouTube site. Viacom has been in negotiations with YouTube and Google for a number of months, but has now insisted that some 100,000 clips (which, between them, generated 1.2B streams) are taken down. YouTube already has short-term licensing agreements in place with CBS, Warner Music, Sony BMG and Universal, but Viacom - like the UK independent labels - is unhappy with the share of advertising revenues currently being offered by the site to content owners. It is also unhappy that YouTube has not put sufficient content-filtering software in place as it had promised to by the start of the year. In another dispute YouTube have moved to appease the Japanese authors' society JASRAC; YouTube will post copyright warnings in Japanese on the site to stop unlicensed content being uploaded. The video-sharing site also pledged to develop software that would identify which files were licensed and which were not (although it would not confirm a date when this will be activated)
See www.ft.com See www.marketwire.com See http://media.aol.co.uk
---------------------------------------------------------------------------------------------------------------
COPYRIGHT
Internet, record labels
Jobs calls for an end to DRM
Set against a background of a record industry in turmoil and increasing consumer annoyance with and regulator disapproval of DRM and a lack of interoperability in downloads (in particular Apple’s own platform restricting DRM) Apple boss Steve Jobs has called on the major record companies to start selling digital music without copy-protection DRM or adopt the Apple Fairplay software. Jobs published an open letter on the Apple website at www.apple.com saying that labels could (1) do nothing (b) adopt Fairlplay DRM or (c) sell without DRM saying that only the third option would stimulate the market and benefit consumers. The RIAA seemed to respond by thanking Jobs for the offer of free Fairplay DRM! In Canada digital music store Puretracks has lifted controversial copy restrictions from part of its catalogue Wednesday, adding its weight to a growing number of industry players that appear increasingly open to unfettered file-sharing. Puretracks will offer 50,000 unrestricted digital files in an MP3 format that can be burned, e-mailed or copied to computers, portable music players and cellphones, said company president Alistair Mitchell. All the tracks come from smaller labels but they include indie giants known for favouring loose controls over music - Nettwerk, whose roster includes heavyweights Avril Lavigne, Sarah McLachlan and Barenaked Ladies.
http://www.brandonsun.com/story.php?story_id=43766
See also CMU Daily’s report on the recent Music Tank on the future of digital download and interview with keynote speaker Gary McClarnan's viewpoint at
http://www.cmumusicnetwork.co.uk/interviews
---------------------------------------------------------------------------------------------------------------
COPYRIGHT
Internet, record labels
Russian Court rules that music download sites are illegal
A Russian court has fined a company whose Web sites let users download songs for 15 U.S. cents following a lawsuit brought by Gala Records, a Russian subsidiary of EMI. The Moscow Arbitration Court ruled last week in favor of Gala Records, which sued Web sites http://www.delit.ru and http://www.delit.net for illegally selling soundtracks and music albums online without the consent of copyright owners. The court also fined the sites' parent company, Delit, 60,000 rubles (US$2,300; €1,750). Gala Record heralded the new ruling as a clear indication that "that one cannot distribute someone else's property on the Internet." Gala Records produces albums for several well-known Russian pop artists, including Dima Bilan, who came second in last year's Eurovision song contest.
http://www.iht.com/articles/ap/2007/02/14/business/EU-TEC-Russia-Downloading-Music.php
---------------------------------------------------------------------------------------------------------------
COPYRIGHT
Internet
Google’s use of news excepts ruled illegal in Belgium
A Court in Belgium has ordered the search company Google to stop showing excerpts of articles from French and German language Belgian newspapers on Google News and Google's websearch site for Belgium. This decision affirms an earlier ruling by the same court against the company, while halving the daily fine Google faces for non-compliance. Google failed to persuade the court that full-text caching plus excerpt-only reproduction could constitute fair use or that the burden lies with copyright owners to exercise an 'opt-out' option. Google intends to appeal. The Company argues that they company always complies with requests from copyright owners to remove infringing material and indeed that they only use ‘snippets’ of news. According to a spokesman for the company “ If people want to read the entire story they have to click through to the web publisher's site where the information resides. We believe search engines are of real benefit to publishers because they drive valuable traffic to their websites".
From the ever wonderful IPKat http://ipkitten.blogspot.com/2007/02/google-to-appeal-belgian-copyright.html
See also Google v Perfect 10 (Google image search can infringe) and Google v Field (Googlecashes are fair use) both US court decisions: both Law Updates March 2006. In Australia a federal judge held that Google could be in breach of Australia's Copyright Act because of its web links to unauthorised copies of copyright material (see Law Updates January 2007).
---------------------------------------------------------------------------------------------------------------
DATA PROTECTION & PRIVACY
Artists, all areas
ARTICLE LINK UK Enforcement Steps Up A Gear
http://www.mondaq.com/article.asp?articleid=46372&email_access=on
---------------------------------------------------------------------------------------------------------------
COPYRIGHT
Record labels
BPI take further action against CD Wow
The BPI, representing the British recorded music industry, has said that it is pursuing an order for contempt of court against one of the UK's biggest internet music retailers, CD Wow. The trade association is seeking fines, damages and costs in the High Court against the company. The case relates to undertakings CD Wow made in January 2004 to the High Court that it would cease illegally importing CDs and music DVDs into the UK from south-east Asia (a practice known as parallel importing). On February 19 counsel of CD Wow shareholder Philip Robinson confirmed that Mr Robinson accepted that CD WOW was in breach of its undertakings to the Court and that Robinson bore some responsibility for failing to comply with the Court undertakings. Counsel for Robinson apologised on his behalf and confirmed that he had agreed to pay £50,000 to the music industry for costs incurred by the industry in bringing the case against him. The CD WOW company has also now accepted that it has breached the undertakings that is gave to the Court but argues that it should not have to pay a fine, damages or costs. The case against CD WOW therefore continues. The BPI have said that they will produce evidence which it says shows that CD Wow has systematically broken undertakings embodied in a court order. The BPI alleges that despite previous court orders, CD Wow has continued to import CDs illegally and is seeking:
With retail sales of £21.7m in the UK in 2005, CD Wow is Britain's third biggest online music retailer with a 23% share of the online CD album market.
From the BPI at www.vpi.co.uk see also BPI sues CD Wow over illegal CD imports http://www.bpi.co.uk/news/press/news_content_file_949.shtml and see also Injunction forces CD Wow to withdraw misleading price statements http://www.bpi.co.uk/news/legal/news_content_file_758.shtml
---------------------------------------------------------------------------------------------------------------
COPYRIGHT
Film, record labels
West Coast copyright owners lost $5.2 billion in 2005 to piracy
A new study conducted by the Los Angeles Economic Development Corporation (LAEDC) says that global piracy and counterfeiting has cost Los Angeles-area companies $5.2 billion and the city at least $483 million in tax revenues in 2005. The report points to losses in local revenues, jobs, wages and taxes due to piracy citing the entertainment industries as the biggest victims.
http://www.fmqb.com/Article.asp?id=353659
---------------------------------------------------------------------------------------------------------------
TRADE MARK
Internet
ARTICLE LINK Domain Name Disputes - The Battle Is Joined
There was a time when it seemed that powerful trademark holders generally prevailed when they sought the transfer of Internet domain names that contained their trademarks. However, recent decisions show that domain name registrants have a fighting chance. This does not mean that trademark holders will not succeed when they seek the transfer of domain names that incorporate their marks – far from it. Yet, recent arbitration results stand for the proposition that domain registrants can try to fight off trademark holders when they can show legitimate uses for their domain names and lack of bad faith. This article is a useful overview of recent ICANN arbitration panel decisions by Eric Sinrod, looking at the marks ‘www.wargames.com’ and ‘www.pig.com’
---------------------------------------------------------------------------------------------------------------
COPYRIGHT
Television, internet
ARTICLE Does Sky have an enforceable a monopoly on live premiership football in the UK?
FACT v Gannon, MPS v Murphy
By Ben Challis, barrister
Whilst supping a pint and watching England's abysmal performance against Spain the other day, my lovely pub landlady asked me to look at a letter she had received from Sky TV. Now this pub is a properly licensed Sky pub but the letter referred to the broadcasting of premiership football - which is played out in 'non-Sky' pubs using foreign subscription services. These non-UK services legally acquire the rights to show the Premiership matches in say Greece and Poland by satellite broadcast but the signals can be 're-captured' back in the UK as satellite footprints tend to be pan-European in their very nature, unfettered by national borders.
The economics of this are important: BSkyB and Setanta Sports are reportedly paying £1.7 billion to hold the exclusive rights to screen live matches to the English Premiership in Britain for the next three years. Broadcasters in 208 other countries have recently doubled their payments to secure English premiership rights to a combined £625 million (The Observer, 12/02/07). To recoup their investment Sky charges consumers to subscribe to Sky and of course charges pubs and clubs a fee to publicly show Sky TV in a place of business (cf S72 Copyright Designs &Patents Act 1988). A public house will usually pay at least £1,000 per month (or £12,000 per annum) for Sky Television and whilst this includes Sky Sports and Sky Sports News it will not include all live premiership matches. An additional payment is needed for the full service.
However, pubs are able to receive satellite signals from non-UK satellite broadcasters which also contain live English Premiership football – and many publicans can and do use these services and consequently there have been a recent spate of cases about the liability of publicans for using these services, the legality of decoders sold to pubs to receive these services and indeed whether or not publicans are guilty of a criminal offence. Sky have written to Landlords saying that the Football Association Premiership League has begun two High Court actions against two suppliers of foreign satellite equipment in the (AV Station and separately against QC Leisure). But this article looks at the issue of criminal charges against publicans.
Sky have highlighted the successful prosecution of a publican in the case of Media Protection Services v Murphy. Here a South Coast publican was found guilty on two charges of copyright infringement after District Judge Arnold appears to have ruled that screening live matches via any other broadcaster than Sky was illegal. Sky owns the exclusive rights to screen the Premiership live in the UK under licence from the Football Association Premiership League (FAPL). It was held that the act was illegal as it breached Sky's copyright. The charge was brought under s297(1) of the Copyright Designs & Patents Act 1988 and the publican was found guilty of dishonestly receiving a programme with intent to avoid payment (the publican had been up before the DJ on a previous occasion on the same charge) and was fined £3000 and £5000 costs. The Nova TV signal came from Greece and the pub subscribed for this service. The facts of Murphy highlights the economics of the issue - it was pointed out that the pub was paying only £750 for the Nova subscription compared to the comparative cost of £4,000 for a similar Sky service. However Murphy also highlights one of the main issues with S297(1) in as much as the statute appears to be limited to signals received from service provided in the UK:
297 Offence of fraudulently receiving programmes
(1) A person who dishonestly receives a programme included in a broadcasting service
provided from a place in the United Kingdom with intent to avoid payment of any
charge applicable to the reception of the programme commits an offence and is liable
on summary conviction to a fine not exceeding level 5 on the standard scale.
Section 297A of the provides that
(1) A person commits an offence if he –
(a) makes, imports, distributes, sells or lets for hire or offers or exposes for sale
or hire any unauthorised decoder;
(b) has in his possession for commercial purposes any unauthorised decoder; or
(d) advertises any unauthorised decoder for sale or hire or otherwise promotes any
unauthorised decoder by means of commercial communications .
I have added emphasis to the wording of 297(1) as the section states that the provisions apply only to a ‘broadcasting service provided from a place in the United Kingdom’. Professor William Cornish (2003 pp518-520) says that within Europe as a result of the Satellite & Cable Directive (Dir 83/93 SI 1996/2967) broadcasting occurs at the stage of the ‘up-leg’ to the satellite rather than at the down-leg to reception. Using this argument surely this is not a broadcasting service provided from a place in the United Kingdom. Whilst the signal originated in the United Kingdom, that signal is then sent to and received in Greece and in effect ‘re-packaged’, to then be subsequently re-broadcast by way of satellite to the (primarily) Greek market as a legal signal. But of course with a pan-European footprint the satellite signal can be picked up in the UK just as Sky’s satellite signal can be picked up in Spain and France. But it is up-legged in Greece.
Before going on it is sensible to remember that this is a complicated area involving both competition law and copyright issues. The decision of the European Court of Justice in Cine Vog v Coditel (No1) is material: Here it was successfully argued that the re-transmission of a French film, La Boucher, shown by (and legally licensed to) a German Channel in Belgium by a different Belgium channel was unlicensed and an infringement of Belgian copyright law. The Belgian company had argued that the first transmission in Germany had exhausted any rights in the material throughout the European Community but the ECJ did not accept this and held that territorial licensing was a justifiable method of maximising the economic potential of a copyright (Cornish, 2003 pp518-520) although it is prudent to note measures to promote European free trade under the provisions of the Television Without Frontiers Directive. But here we have a signal from Greece received by way of satellite – not a ‘re-transmission’ – and all that happens is that signal is then used to screen football in a pub in the UK .
The dilemma for Sky appears to be this: Whilst Sky have the exclusive broadcast rights for certain FAPL matches in the UK, The Nova signal itself is also licensed by FAPL and is therefore at least in theory when up-legged it is legal as part of a licensed satellite broadcast. It only becomes illegal in the UK if it is re-transmitted – by another broadcaster. But here we are not looking a re-transmission.
An examination of recent court cases finds a range of decisions relating to prosecutions under s297(1): The case of Flint concerned the Original Bay Horse, Horwich, Bolton. Here the publican was cleared by magistrates of using a decoder and foreign subscription card as the court found that the publican had not acted dishonestly and did not avoid paying a fee and indeed the justices decided no fee payable was payable. Again in Moss magistrates found the publican not guilty of the offence charged, finding no dishonesty. The leading decision appears to be that of the Bolton Crown Court, sitting as an appeal court from the Rochdale Magistrates Court in Federation Against Copyright Theft v Gannon. Brian Gannon, the owner of the Fishermans Inn in Rochdale had been found guilty by Magistrates of contravening s297(1) of the CDPA. Gannon appealed to the Crown Court and on Friday 24th March 2006, HHJ Warnock, sitting with two lay Justices, upheld Gannon’s appeal. In delivering the court’s decision, it seems HHJ Warnock said that not only was the court satisfied that Brian had not been dishonest, but that the Federation Against Copyright Theft who brought the case had not even established vital generic elements of the alleged offence. According to press reports the court held that they were not satisfied so they were sure
The Crown Court were further not satisfied so they were sure
However the court was also not satisfied that it was sure that
The Court was satisfied so it was sure that
So here the Crown Court differed from District Judge Arnold who (and again according to press reports) found that the signals received in the Plymouth pub run by Ms Murphy were the same signals that were broadcast in the UK which were " subjected to nothing more than normal technical procedures which... should not be considered as interruptions to the chain of broadcasting." and so were a broadcasting service provided from the U K. Here I have to differ from District Judge Arnold; as Cornish says (above) and leaning towards the approach in Cine Vog the signal is surely a signal from a Greek broadcaster; In fact it is hard to see how the FAPL could argue (or can be allowed to argue otherwise) as the FAPL have licensed this broadcast as a separate satellite broadcast outside of the United Kingdom and thus when looking at a the Nova service as licensed by the FAPL surely this cannot be a UK broadcast. In my own very limited experience of the technical basis of satellite broadcasting gained when I worked at a pan-European satellite broadcaster, this is also a ‘non UK’ signal technically: despite the fact that the content of Greek signal is the ‘same’ as the feed that the UK, it emanates as a broadcast from Greece: thus the cautious approach of the Crown Court in Gannon must surely be correct.
So, where does this leave Sky and FAPL? HRH Judge Warnock has made it clear (post judgment) that the Crown Court did not find the use of foreign satellite services legal. Indeed the Court said there had been unlawful use of the FAPL’s copyrights. What the Court said was that the necessary mens rea (the actual dishonesty) for the alleged offence committed by Mr Gannon under s297(1) was not established. But when looking at the offence as charged, surely s297(1) can only be constructed to apply to publicans who in effect take a UK Sky signal and show this without paying Sky the proper subscription fees. I would add to this that it would be an infringement of copyright under s16(1) and s16(2) of the Copyright Designs and Patents Act 1988 for another UK broadcaster to take Sky’s signal and re-transmit this and of course it would be an infringement of copyright for Sky or any other UK broadcaster to take a broadcast from a foreign broadcaster (whether terrestrial, satellite or cable) and re-transmit this without permission in the UK except under fair dealing provisions. So taking a foreign signal and publicly showing this in a pub may be an infringement under sections 16(1), 16(2) and 19 of the CDPA as they may constitute performing showing or playing a work in public but even if this was so, how could that lead to the conclusions that such an act was a criminal offence under s297(1)?
This writer remains confused and has noted that Murphy will be heard on appeal at the Plymouth Crown Court on March 12th and 13th. The writer also notes that Bolton Football Club have asked for a review of five local pub’s premises licences on the grounds that by showing premiership football they are committing ‘criminal’ offences and that the prevention of crime is one of the four stated licensing objectives under the Licensing Act 2003 but again this writer wonders what the ‘crime’ actually is here.
Copyright Designs & Patents Act 1988 (as amended) HMSO accessed 12 February 2007 at
Satellite & Cable Directive (Dir 83/93 SI 1996/2967)
Cornish, W. and Llewelyn, R. (2003) Intellectual Property Sweet & Maxwell: London
Cine Vog v Coditel (No1 ) [1980 ECR 881]
FACT v Gannon (2006) http://www.pubfootball.co.uk/law.php accessed 12 February 2007 Please note this is not a confirmed official court record or law report and indeed this source is a site designed to promote the uptake of foreign satellite services. Flint (2006) is taken from the same source.
For background on FACT v Gannon and MPS v Murphy see http://www.morningadvertiser.co.uk/news_detail.aspx?articleid=17168&categoryid=35
MPS v Murphy (2007) http://www.morningadvertiser.co.uk/news_detail.aspx?articleid=26439&linkedfrom=search&from=&to=&keywords=®ions=¤tpage=0
---------------------------------------------------------------------------------------------------------------
© 2007, Ben Challis