Eminen Wins Back Domain Name
Artists , Trade Mark / June 2004

TRADE MARK Artists Eminem has won a cybersquatting case against a British company who used his name without permission.Eminemmobile.com, which sells ringtones and picture messages, has been ordered to hand the domain name back to the star within ten days. The site featured a disclaimer stating it is unofficial and not connected to Eminem but the ruling made by the United Nation’s World Intellectual Property Organisation (WIPO) found that Tim McIntosh and Visitair, which runs the site, had no legitimate rights to the domain name. It must transfer back to the rapper within the ten day period unless the company decides to appeal against the ruling. Eminem is the first rap star to use WIPO in settling a dispute over a domain name. Other singers, including Robbie Williams, Madonna and Celine Dion have used the organisation in the past to settle similar disputes. It is the second legal battle Eminem has been involved in this year, as he pursues a claim against Apple Computer for alleging the company used his hit single Lose Yourself in a TV advert without permission. See : http://news.bbc.co.uk/1/hi/entertainment/music/3653089.stm ‘Abusive Registration’ under the Nominet UK Dispute Resolution Policy In March 2004 Google Inc won an action brought…

EMI Files Lawsuit Against Electronic Arts

COPYRIGHT Music Publishing, Artists EMI Group Plc, one of the world’s largest music companies, has filed a federal lawsuit against Electronic Arts Inc., the world’s largest video game publisher, over claims of copyright infringement in EA’s highly successful sports games. The suit, filed in federal court in New York on Wednesday, says a number of EA’s recent sports titles, like “Madden NFL 2004“, “Tiger Woods PGA Tour 2004” and “MVP Baseball 2004” use songs that “embody copyrighted musical compositions that EMI owns, co-owns, administers or otherwise controls.” EA and other publishers have increasingly made music an important part of their games, debuting new songs by both up-and-coming and established artists in their games before the artist’s CD is released. Some have established divisions dedicated to producing and acquiring music for their titles. “This entire lawsuit is related to a single song that samples lyrics from another song,” Electronic Arts said in a statement. “Our use of that song was licensed directly from the artist. We have agreements for every song used in our games.” EMI claimed in the suit that EA sought licenses throughout 2003 from EMI for the use of certain songs for its sport games, but then released…

European Community Trade Mark Registration
Artists , Trade Mark / June 2004

TRADE MARK Artists, Merchandising Compass Publishing BV v Compass Logistics Ltd (2004) This case involved two companies with the same name, the claimant being the pan-European business consultancy Compass Publishing BV (“CP”) and the defendant the UK based Compass Logistics Ltd (“CL”) who offered management consultancy services. CL had been trading since 1995 using the name “Compass” and “Compass Logistics”. The claimants had secured a Community Trade Mark in 1996 for the word ‘Compass’ in a class including business and management consultancy. The Claimant filed three claims for infringement of its trademark. The defendant argued that the Community Trade Mark should be held invalid as by the date of the registration they, CL, had acquired a valuable and protectable goodwill in respect of the mark “Compass Logistics” and that they could have brought an action against CP using the law of passing off. The defendant argued that the mark should be declared invalid to the extent that it covered any field of business consultancy, particularly relating to logistics, where the use of “Compass” would cause confusion with “Compass Logistics”. The defendants argued that they had already built up goodwill in their name before the claimant’s registration of the mark Article 8(4) of EC…

New Trade Mark Act in Czech Republic
Czech Republic

TRADE MARK Record Labels, Music Publishers, Artists, Merchandising, Live Event Industry, Television, Internet As of April 1st 2004 a new Trademark Act (No.441/2003) will come into force in the Czech Republic. Although the structure of the Act has been considerably amended, there are only limited substantive changes in the law. However there are completely new are provisions concerning Community Trademarks, which will be automatically extended to the Czech Republic with the date of its accession to the European Union (these provisions will come into force as of May 1st 2004). The most important amendments are detailed in an article by Almut Rohnstock and a link is provided below. The definition of trademarks (Art.1) has been slightly amended, now including the possibility of colour trademarks; Art.2 now regulates which trademarks are able to claim protection in the Czech Republic, including CTMs and well-known trademarks according to Art.6 of the Paris Convention. Community Trademarks with seniority may also claim older rights (Art.3). Grounds for refusal ex officio (Art.4) as well as grounds for opposition (Art.7) and nullity (Art.32) newly include applications filed in bad faith. The provisions concerning oppositions and nullity (Art.7 and 32) based on known trademarks have been reformulated and expanded; the…

Distribution Agreements
Contract , Record Labels / June 2004

CONTRACT LAW Record Labels ARTICLE: by Sarah Waddington The problems surrounding 3MV’s insolvency have brought to a head the sometimes thorny issue of ownership of stock. These problems should prompt every independent label to look at their own distribution agreement. A number of independent record companies distributed by 3MV may rue the day they did not pay more attention to the clause in their distribution agreement which governs when ownership of stock – records – passes from them to the distributor. Ownership of stock is one of the provisions in standard distribution agreements which need to be reviewed very carefully. The Sale of Goods Act 1979 allows contracting parties to agree the time at which ownership of goods will pass. In the absence of an express provision, ownership of goods passes when they are delivered. A number of 3MV’s distribution contracts expressly provide for ownership of records to pass on their delivery to 3MV and, in some circumstances, on manufacture. From that date those records are assets of 3MV. This is not in a record company’s interest – ownership of these records should be retained by the record company until payment for them is received. If ownership of records is…

World Piracy News
South Africa

COPYRIGHT Record Labels, Music Publishers, Internet Dutch police and the criminal anti-piracy enforcement team of the FIOD-ECD have completed an investigation into organised criminal groups resulting in the seizure of 17,000 pirate CDs and DVDs and the arrest of six people. Over sixty police offers carried out simultaneous raids on different addresses including a CD/DVD plant. A representative of the Indian Music Association was present because over 15,000 of the pirate DVDs seized were in hindi. Other DVDs included pirated copies of Finding Nemo and Lord of The Rings. Greek figures show that over 1.1 million CDs, CDRs and MCs were seized in 2003 under raids organised by the IFPI (an increase of 46.38% on 2002). In addition police sized a further 521,345 units in other raids. In 2003 1,941 individuals were prosecuted in Greece for music piracy offences. In the Ukraine a joint investigation between law enforcement agencies and the IFPI led to a major raid on a illegal warehouse. 210,000 CD and DVD inlays were seized along with more than 26,000 units. The IFPI say that almost all of the pirated material found in the Ukraine, Poland and other eastern European countries originate in Russia and are then ‘packaged’ locally across the eastern block. As Lithuania joins the…

Naomi Campbell triumphs in privacy battle: Campbell v Mirror Group Newspapers (2004)
Artists , Privacy / June 2004

PRIVACY Arists Model Naomi Campbell has won her privacy battle against the UK’s Daily Mirror after the newspaper reported her attendance at a Narcotics Anonymous meeting in 2001. The House of Lords re-instated the High Court’s award of £3,500. The Newspaper is left with legal costs estimated at £1 million. Editor of the Daily Mirror, Piers Morgan, was reported as saying “this is a good day for lying, drug abusing prima donnas”. By a majority of three to two, the House of Lords has reversed the decision of the Court of Appeal and reinstated the judgement of Mr Justice Morland in the High Court (see our early warning of March 2002) that the Mirror had breached the provisions of the Data Protection Act 1998 and her right to confidentiality in her treatment for narcotics addiction. The Courts held that the details of Campbell’s treatment (therapy) were medical records and therefore by their very nature confidential and private. Reference: See the article by Martin Soames, The Guardian (Media p10), May 10th 2004 COMMENT : Naomi Campbell’s argument was that she had and should be allowed to have therapy for drug addiction in private. Campbell’s original claim was threefold (1) a claim for…

Apple Fights Open Source Software in India
Copyright , Internet , Record Labels / June 2004

COPYRIGHT Record Labels, Internet In an intermittent war between the open-source community and the proprietary software industry, Apple Computers has slammed a legal notice on Sarovar.org for hosting a software tool called Playfair. Sarovar.org, a Thiruvananthapuram based Indian portal dedicated to the open source software community, had hosted Playfair, a tool that enables free download of music files from Apple’s properitary online music store, iTunes. iTunes contains around 500,000 music files and offers users the facility to download music by paying 99 cents per song. The downloaded music can be played only on iPods, again a proprietary Apple hardware that permits the playback of such music. However, PlayFair, written by a US programmer, enables a user to play the songs from Apple’s iTunes on any operating system. Playfair was first hosted by a US-based website called Sour-ceForge but Apple invoked the DMCA (Digital Millenium Copyrights Act) against PlayFair and asked SourceForge to remove the tool from its site. The tool was almost immediately relocated to Sarovar.org. On April 19, 2004, Sarovar.org received a legal notice from the Indian attorneys of Apple, citing provisions of the (Indian) Copyright Act and the (Indian) Information Technology Act by which they attempted to demonstrate…

EU Commission to Investigate ‘One Stop’ Licensing Schemes in Europe

COMPETITION/COPYRIGHT Record Labels, Music Publishers The European Commission has announced that it has warned 16 EU collection societies that an agreement between them to create a “one-stop shop” music licence may be in breach of EU competition rules. The agreement, known as the Santiago Agreement, was signed in October 2000 by five organisations – including the UK’s Performing Right Society (PRS) and Broadcast Music Inc (BMI) from the US. The Santiago Agreement is designed to tackle the problems that traditional copyright licensing schemes have faced in light of the growth of new technologies and Internet use, in particular the impossibility of limiting digital services by the notion of territoriality; once uploaded to the Internet, copyrighted music is accessible from almost anywhere in the world so the concept of ‘German’ or ‘British’ rights is inapplicable. The traditional licensing framework requires a commercial user wishing to offer such music to obtain a copyright license from every single relevant national society. The Santiago Agreement sought to adapt the traditional framework to the online world by allowing each of the participating societies to grant “one-stop shop” copyright licences which included the music repertoires of all member societies and which were valid in all their…

European Commission Seeks to Regulate Collection Societies

COMPETITION/COPYRIGHT Record Labels, Music Publishers The European Commission has launched consultations with a view to regulate collection societies which manage the marketing of copyrighted products such as CDs and DVDs. Collection societies act as trustees for rights holders, but the way they function may vary considerably within the EU and is an obstacle for businesses, the Commission said. This view is supported by the European ICT industry association (EICTA) which says many collection societies are actually slowing down businesses that distribute content online because they have to negotiate with one or more collecting societies in each country to obtain the rights to use content in that territory. EICTA is advocating official recognition and large-scale adoption of Digital Rights Management (DRM) systems. DRMs are used to protect and secure payments of online material such as music. They are based on direct licensing agreements which means that collecting houses could end up being bypassed because the products’ copyright would be managed directly by software. But the Commission paper says that those technologies have not yet been developed to a satisfactory level. It states that “a necessary pre-condition for their development is their interoperability and acceptance by all stakeholders, including consumers”. The EICTA…

Rapper Ras Kass Launches Action Against Priority Records, Capitol and EMI

CONTRACT Record Labels, Artists, Music Publishers Rapper Ras Kass (real name John Austin) has filed suit against Priority Records, Capitol Records, EMI Music and two Priority executives, claiming breach of contract, unfair competition, restraint of trade and other abuses. The suit, filed in California Superior Court in Los Angeles, seeks a rescission of the musician’s contract, and compensatory and punitive damages to be determined. According to the suit, in 1995, Austin, who was then a 22-year-old Patchwerk Records artist, signed a contract with Priority requiring delivery of one album, with an option for five more albums. The action claims that Priority failed to market and promote the albums “Soul on Ice” (1996) and “Rassassination” (1998). It also alleges that two Priority executives maliciously interfered with Austin’s career. The suit further alleges that the releases of Austin’s third and fourth albums were sabotaged, and that Priority interfered with a proposed group project for Sony that would have featured Austin, Xzibit and Saafir. According to the suit, owing to “fraudulent accounting practices,” Austin has received only $100,000 during the nine years of his contractual agreement, an average of approximately $11,000 per year. The 32-page filing broadly excoriates standard record-industry practices, and calls…

Warners Wins Chinese Infringement Action but Lament Low Damages
Copyright , Internet , Record Labels / June 2004

COPYRIGHT Record Labels, Internet Warner Music Group may appeal against a court penalty on a Chinese website that offered illegal song downloads because it says it is too lenient to deter piracy. Shanghai Rongshuxia Computer was ordered to pay 15,000 yuan to Warner Music Taiwan by the Shanghai Intermediate People’s Court on Monday, less than 10 per cent of the 250,000 yuan the company had sought. Rongshuxia is a partner of Bertelsmann, Germany’s biggest media company. Music companies have stepped up legal attacks on unauthorised downloading over the internet after piracy caused global recorded music sales to slump 7.6 per cent to US$32 billion last year. Warner Music and Bertelsmann’s BMG unit were among five companies that warned Chinese websites against piracy in March, the Beijing Times reported on April 15. Warner Music, sued Rongshuxia for offering 10 songs by Chinese female singer Na Ying for free download on its website from April 2002. Rongshuxia, mainly an online publisher of Chinese literature – it has more than two million texts on its site – withdrew the music files after Warner complained in March last year. Warner Music’s compensation claim was felt to be too high because it was based on…

Dutch Courts Clear Internet Search Engine of Copyright Infringement in Download Facilitation
Copyright , Internet , Record Labels / June 2004

COPYRIGHT Record Labels, Internet A court in the Dutch city of Haarlem has cleared Techno Design, the operator of music search-engine portal, Zoekmp3.nl, of copyright violation. The charge had been brought by BREIN, the Dutch entertainment industry’s anti-piracy association. The Dutch appellate court has already held that Kazaa was not guilty of infringement in a case brought by the Dutch Collection societies, BUMA and STEMRA. Zoekmp3.nl, which appears in the top twenty of the most popular Dutch websites, has access to some 30,000 music links. In its hey-day, Zoekmp3.nl had some 50,000 daily visitors and offered MP3 music files worldwide through an estimated 200,000 web pages. The court ruled that providing links to an MP3 file did not constitute disclosure or publication of contents according to Dutch copyright law. It went on to say that what Techno Design did is not unlawful, largely because providing services or assistance that could subsequently lead to infringement and unlawful trade by third parties is in itself not (yet) unlawful. The verdict means that the portal will not be shutdown and can continue to be used to search for music on the internet, regardless of whether its findings point to music that is legal…