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

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…

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

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
EU

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…

European Parliament Passes Tough New IP Enforcement Directive
EU

COPYRIGHT Film, Television, Internet, Record Labels, Music Publishing The European Parliament has passed a controversial Directive on intellectual property rights enforcement that give rights-holders ‘incredibly powerful tools’ in the fight against intellectual property infringers. The Electronic Frontiers Foundation commented that whilst this might sound like a good idea at first, a closer look reveals that the directive doesn’t distinguish between unintentional, non-commercial infringers and for-profit, criminal counterfeiting organisations. If this directive is adopted, a person who unwittingly infringes copyright – even if it has no effect on the market – could potentially have her assets seized, bank accounts frozen and home invaded. The EFF had encouraged its European supporters to write to their Members of the European Parliament (MEPs) to urge them to limit these harsh enforcement measures to cases in which infringement is undertaken intentionally and for commercial purposes and MEPs finally softened and the vote on Intellectual Property Rights Enforcement Directive took place in the European Parliament on 9 March and the directive was passed by 330 votes to 151. The law was drawn up to target professional pirates, criminals and counterfeiters who make copies of goods such as football shirts or CDs. During the debates, the directive…

E-Data Announces Successful Settlement with Microsoft, Tiscali, HMV, and OD2 in Europe
Internet , Patents / March 2004
EU

PATENT LAW Internet The E-Data Corporation has announced a world-wide agreement for past and future royalties has been reached with On Demand Distribution GmbH (OD2), settling the infringement actions against OD2, HMV Group , Tiscali and Microsoft. For infringing upon E-Data’s European patent EP0195098B-1, also known as “the Freeny patent.” This settlement resolves all outstanding litigation with the companies. As part of the agreement, financial terms of the settlement were not disclosed. The Freeny patent covers the downloading and recording of information, such as music, from a computer onto a tangible object, such as CDs, DVDs and MP3 players. The OD2 platform enables Tiscali Music Club customers and HMV customers to download individual music tracks for a fee using Microsoft’s Windows Media Player and Digital Rights Management technology. Bert Brodsky, chairman of E-Data Corporation stated, “We are quite pleased with this settlement as it further reinforces the scope and validity of the Freeny patent in Europe. While the OD2 service is still in the nascent stage, which is reflected in the settlement, the agreement sends an important message to other companies infringing upon our intellectual property. Importantly, OD2’s service in Europe parallels iTunes Music Store, a successful music downloading service developed by Apple in…

ECJ: A Sound Can Be a Trademark
EU

TRADEMARK Record Labels, Music Publishers, Internet, Film, Television, Merchandising Shield Mark BV -v- Kist (t/a Memex) C-283/01 This case arose from a referral from the Dutch courts (Hoge Raad der Nederlanden). The Claimant, Shield Mark BV, had registered a melody consisting of nine notes from Beethoven’s Fur Elise and the sound of a cock crowing (as‘kukelekuuuuu’) as sound marks in the Netherlands. Shield used the nine note sequence in advertising and used the cockerel crow as an opening sequence when software it distributed was opened. Shield became aware that the defendant was using the same nine note sequence in an advertising campaign and also used a cockerel’s crow when software he distributed was opened. The question was raised whether sounds or noises could be trademarks within the meaning of Article 2 of EC Directive 89/104/EEC. Article 2 provides that a trademark can consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. The European Court held that the list of examples in Article 2 was non-exhaustive, so sounds were not excluded as…

“Doublemint” Cannot Be Registered As a Trademark
Artists , Trade Mark / December 2003
EU

TRADE MARK Artists, Merchandising European Court of Justice C-191/01 The European Court of Justice has upheld the decision of the EU’s Office of Harmonisation of the Internal Market that the brand name ‘double mint’ could not be registered as a trade mark as it was not a mere brand name but a description of a product. Such descriptive words and phrases cannot be registered as they are to be kept free for use for everyone else. A wordmark with several different descriptive meanings is not registrable. Wrigley, who manufacture the chewing gum had won on appeal at the European Court of Fist Instance who accepted that the use of the two words together deprived the phrase of any descriptive function but the ECJ overturned this decision saying that the name is one which other chewing gum manufacturers might legitimately want to use. ECJ C-191/01 23 October 2003 See: http://www.ip-firm.de/index.htm

Adidas-Salomon AG v Fitnessworld Trading Ltd
Trade Mark / December 2003
EU

TRADE MARK Merchandising European Court of Justice case C-408/01 This case upheld the decision of the case of Davidoff et Cie SA v Gofkid Ltd (C292/00) and the European Court held that article 5(2) of Directive 89/104/EEC could be used by owners of registered marks to prevent use in relation to services which were both similar to the use of the mark by the registered owner and in relation to goods and services which were not similar. Here Adidas, who have a mark registered at the Benelux Trade Mark Office, wished to use EC trademark law to protect their mark: the mark is three parallel stripes of equal width running on the side and down the length clothing. The stripes are always of a contrasting colour to the base colour of the clothing. The defendant marketed fitness clothing with a similar double stripe motiff. The ECJ held that a member state must offer protection in cases of use by third parties of a later mark or sign which was identical or similar both in relation to goods and services which were not similar, and for goods and services which were covered by the mark’s registration or use. As for the similarities of…

Will Smart CDs provide an answer to file swapping?
Copyright , Record Labels / November 2003
EU
USA

COPYRIGHT Record Labels Recording companies are looking at a new generation of smart CDs that promise to stifle music fans’ ability to use file-swapping networks while still allowing them some freedom to make copies and share music. BMG Entertainment’s new album by hip-hop singer Anthony Hamilton will be the first commercial release to use a technology that restricts copying but lets buyers play protected CDs on computers and burn copies onto blank CDs. Fans can even send a limited number of copies to friends over the Internet. BMG is using the new copy-protection advancements by embedding Comin’ From Where I’m From with MediaMax CD-3 technology from Phoenix-based SunnComm Technologies Inc. With MediaMax CD-3, each song is written onto the CD twice, once in a format readable by standard CD players and the other as a Windows media file playable on a computer. BMG has set up the CD so fans can burn each track three times per computer. Songs can also be e-mailed to a limited number of people, who can then listen to the song up to 10 times each. SunnComm says that most people, unless they are hackers or truly determined, won’t be able to circumvent the limits, including one…

EU Copyright Directive will finally be implemented in UK law
EU

COPYRIGHT Artists, Record Labels, Music Publishers, Internet, Film, Television Legislation implementing the European Copyright Directive has finally been laid before the UK Parliament. Among other things, it extends the UK’s copyright laws to deal with digital piracy, albeit ten months behind the EU’s deadline. The Copyright and Related Rights Regulations 2003 will amend the Copyright Designs and Patents Act of 1988 and will come into force on 31st October. The Copyright Directive, passed in 2001, was the EU’s attempt to update copyright protection to the digital age. It is also the means by which the European Union and its Member States will implement two 1996 World Intellectual Property Organisation (WIPO) Treaties: the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The new Regulations are available at: http://www.legislation.hmso.gov.uk/si/si2003/20032498.htm

Microsoft, OD2 and Tiscali face patent action
Internet , Patents / November 2003
EU
USA

PATENT LAW Internet Microsoft MSN Music Club, Tiscali Music Club and Peter Gabriel’s OnDemand Distribution (OD2) are facing a patent infringement lawsuit in a German court over their on-demand music services. New York-based E-Data filed the lawsuit last Tuesday in the German court of Mannheim, seeking an injunction against the German subsidiaries of Microsoft, Tiscali and OD2 to defend its European patent EP0195 098B-1. The patent covers the downloading and recording of information, such as music, films and text from a computer onto a tangible object such as a CD or a sheet of paper. The patent also covers nine other European Union countries (the UK, Austria, France, Switzerland, the Netherlands, Italy, Luxembourg, Belgium and Sweden. The original patent was granted in the US in 1985 to Charles Freeny for his “system for reproducing information in material objects at a point of sale location”. Both the MSN Music Club and the Tiscali Music Club use OD2’s music catalogue of over 200,000 recordings. Because E-Data’s US patent has expired, Apple’s popular digital music store, iTunes, is not subject to any action but E-Data’s lawyers have written to Apple to alert them to potential patent problems should iTunes be launched in Europe…

European directive on patents for computer software
Internet , Patents / November 2003
EU

PATENT LAW Telecommunications, Internet The European Parliament (September 24th 2003) has passed a resolution for a proposed directive to harmonize rules on software-related patents in its member states titled Directive on the Patentability of Computer-Implemented Inventions. Its aim is to provide clear guidance on what software-related subject matter may be patentable. Under the proposed Directive, in order for a computer-implemented invention to be patentable, it must make a technical contribution to the state of the art. An invention will not make a technical contribution merely because it involves the use of a computer, network or other programmable apparatus. The invention may only be claimed in the patent as a product or a technical production process using hardware under the control of software. See: http://www3.europarl.eu.int/omk/omnsapir.so/calendar?APP=PDF&TYPE=PV2&FILE=p0030924EN.pdf&LANGUE=EN

Nokia hit by piracy of handset games
Copyright , Internet , Record Labels / November 2003
EU

COPYRIGHT Record Labels, Telecommunications, Internet The secret codes protecting games which can be played on Nokia’s combined telephone/games platform N-gage have already been cracked and the games can be downloaded from the internet and can be played on other games consoles. The software for the games had already been licensed to a number of companies including Samsung and Siemens. Source: www.timesonline.co.uk/business

WIPO RESOLVES EURAIL DOMAIN NAME DISPUTE
Artists , Internet , Record Labels , Trade Mark / September 2003
EU

TRADE MARK Record Companies, Artists, Mechandisers, Internet An administrative panel of the World Intellectual Property Organization (WIPO) has recently decided a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) between Eurail (the European joint venture supplying tickets and passes for rail and ship travel in Europe) as Complainant and Epasses of San Francisco as Respondent. Eurail uses the names “Eurailticket” and “Eurail Pass” for its tickets and passes. It has registered “EURAIL” and “EURAILPASS” as trade-marks in the US and other countries. Epasses has a web site offering Eurail Passes and other tickets for use on railways in Europe. The dispute concerned the domain names www.eurail.biz, www.eurailpass.biz and www.eurailpasses.biz. which the Respondent registered. The Panel applied the three-part test set out under paragraph 4 of the UDRP. (1) It ruled that the disputed domain names are confusingly similar to the Complainant’s registered trade-marks. (2) However, a distinction for the purpose of the second part of the test was made between eurailpass.biz and eurailpasses.biz on the one hand and eurail.biz on the other. In the former case, there was no evidence that Epasses use of the domain names and sites had been illegitimate, especially in view of its legitimate…

THE COPYRIGHT CAGE
EU
USA

COPYRIGHT Record Companies, Internet, Music Publishers, Artists, Merchandisers, Radio, Television INTRODUCTION : This article, by Professor Jonathan Zittrain, suggests a new approach to copyright law in the digital age. The article was first published on www.legalaffairs.org in their July/August edition. Bars can’t have TVs bigger than 55 inches. Teddy bears can’t include tape decks. Girl Scouts who sing “Puff, the Magic Dragon” owe royalties. Copyright law needs to change. By Jonathan Zittrain. A couple of years ago I was talking with a law school colleague about cyberlaw and the people who study it. “I’ve always wondered,” he said, “why all the cyberprofs hate copyright.” I don’t actually hate copyright, and yet I knew just what he meant. Almost all of us who study and write about the law of cyberspace agree that copyright law is a big mess. As far as I can tell, federal courts experts don’t reject our system of federal courts, and criminal law experts split every which way on the overall virtue of the criminal justice system. So what’s with our uniform discontent about copyright? I think an answer can be gleaned from tax scholars. Without decrying the concept of taxation, every tax professor I’ve met regards the U.S. tax…

THE CULTURE, MEDIA & SPORTS COMMITTEE TELLS IT LIKE IT IS
Artists , Privacy / August 2003
EU
UK

PRIVACY LAW Artists The House of Commons Culture, Media and Sports Committee has published its long-awaited report on Privacy and Media Intrusion. In it the Committee made a series of recommendations. The one which has gathered the most publicity is that the Government “bring forward legislative proposals to clarify the protection that individuals can expect from unwarranted intrusion by anyone – not the press alone – into their private lives.” As the Committee rightly says: “This is necessary fully to satisfy the obligations upon the UK under the European Convention on Human Rights.” This was illustrated recently by the Peck case. There is already by means of the Human Rights Act a legislative provision providing some protection for individuals against intrusions into the private lives of individuals. This is by the importation (albeit obliquely) of Article 8 of the European Convention on Human Rights into our law. Here are some of the other recommendations made by the Committee. The Committee recommended that the PCC “should consider establishing a dedicated pre-publication team to handle enquiries about [prior restraint] issues from the public and liaison with the relevant editor on the matters raised.” This is because it is at present only by…

EUROPEAN COURT OF JUSTICE DECISION PAVES THE WAY FOR HARMONISED EC TAXATION FOR TOURING ARTISTS
Artists , Taxation / August 2003
EU

TAXATION Artists Arnoud Gerriste Case C-234/01 12 June 2003 The European Court of Justice has paved the way for the harmonisation of EU taxation of touring artists by radically overhauling the German system of taxation of foreign entertainments. The system had long been derided by artists and their advisors and the International Live Music Conference (ILMC) has campaigned for root and branch reform of the system. The Fifth Chamber’s decision of 12 June held that with respect to foreign artist taxation in Germany: (1) foreign artists must have the right to deduct expenses prior to a performance profit being taxed (2) when profitable, foreign artists must have the right to be taxed at the normal, progressive tax rates applicable in Germany (or indeed any member state) and (3) the free taxable amount [for example a personal allowance which can be earned free of tax] is not applicable to foreigner entertainers when calculating the tax payable. The court ruled that ‘Article 49 of the EC Treaty and Article 50 of the EC Treaty preclude a national provision which, as a general rule, takes into account gross income when taxing non-residents, without deducting business expenses, whereas residents are taxed on their net income, after…

GLOBAL SALES OF ILLEGAL CDs TOP 1 BILLION UNITS
Brazil
China
EU
Mexico
Poland
Russia
Spain
Taiwan
Thailand
Ukraine
USA

COPYRIGHT Record Labels, Music Publishers, Artists, Internet A report published by the International Federation of the Phonographic Industry (IFPI) shows that the illegal music market is now worth $4.6bn (£2.8bn) globally. It believes two out of every five CDs or cassettes sold are illegal. The IFPI said much of this money is going to support organised criminal gangs, dispelling the myth that it is a “victimless crime”. Jay Berman, chairman of the IFPI, said: “This is a major, major commercial activity, involving huge amounts of pirated CDs. The IFPI’s top 10 priority countries where labels want a crackdown on piracy are Brazil, China, Mexico, Paraguay, Poland, Russia, Spain, Spain, Taiwan, Thailand and Ukraine. The IFPI also pointed out that when factoring in unlicensed downloads then “only one in three music products in the UK is authorised.” Despite the increase in the amount of CDs illegally produced and sold around the world, up 14% on 2001, there has also been a rise in the amount of CDs and recording equipment seized. The number of discs seized on their way for public sale was more than 50 million, a four-fold rise on the previous year. The IFPI is concerned in two main…

GLOBAL CLAMPDOWN ON PIRACY
China
EU
Italy
Russia
Thailand

COPYRIGHT Record Labels, Music Publishers The PRS/MCPS Alliance have announced a number of global successes in combating the sale of illegal music product. In ITALY collection society SIAE joined with the police in a series of high profile raids across the country targeting 454 premises and resulting in charges brought against 137 people with 78,000 CDs, 5,000 DVDs and 6,000 VHS cassettes confiscated along with 17 sets of mastering equipment. In RUSSIA a number of government agencies have joined forces with the trade mark protection agency and various intellectual property organisations to tackle counterfeiters. Russia has one of Europe’s highest piracy levels with well over half of all music product sold being illegal copies. In THAILAND the British Government has formally asked the Thai Government to clampdown on illegal copies of music product flooding onto the world market. Thailand is the third largest exporter of illegal music product after China and Taiwan. See Mbusiness7 (PRS/MCPS magazine Spring 2003)

EU UNVEILS NEW ANTI-PIRACY LAWS
EU

COPYRIGHT Record Labels, Music Publishing The European Union Justice & Home Affairs Commissioner Antonio Vitorino unveiled a tough new draft anti-piracy code on Thursday January 30th designed to standardise the approach to piracy throughout the European Community. The new legislation would direct all member states to treat large scale piracy and counterfeiting as a criminal offence as well as a civil offence meaning that offenders would be liable for damages, fines and possible imprisonment. Rights owners could sue for damages and ancillary remedies such as accounts for profits and destruction orders whilst the authorities could shut down infringing companies and seize assets. The legislation would work alongside revised border controls allowing for the seizure of counterfeit and pirate goods. www.reuters.com

USE OF SIMILAR MARKS
Trade Mark / February 2003
EU
Germany

TRADE MARKS Merchandising Davidoff et Cie SA -v- Gofkid Ltd (2003) European Court of Justice C292/00 (2003) This case concerned an action by Davidoff who distributed luxury cosmetics, clothing, tobacco, leather and other goods under the trade mark Davidoff which is registered in Germany and other countries. The defendants owned the markDurfee – registered in Germany later than the Davidoff mark. The marks had the same script and the same distinctive styling of the letter D and ff. At first instance the claim was refused as it was held that there was no risk of confusion between the marks. The ECJ held that despite there being no risk of confusion between the marks, Articles 4(4)(a) and 5(2) of the EEC trade mark Directive 89/104 provided specific protection for the first registered mark against a later mark which was identical with or similar to the first registered mark and which was intended to be used or was being used on goods or services similar or identical to the first registered mark. (The Times, 22 January 2003).

A SMELL CANNOT BE A TRADE MARK
Trade Mark / January 2003
EU

TRADE MARK Merchandising Slecmann -v- Deutches Patent und Markenamt  European Court of Justice C273/00 (2002)  EC law provides that a trade mark may consist of any sign capable of being graphically represented particularly words including personal names designs letters numerals shapes of goods or their packaging provided that such signs are capable of distinguishing the goods and services of one undertaking from those of other undertakings (EC 89/104) The Court’s decision was that a smell (defined as balsamically fruity with a slight hint of cinnamon) could not be registered as a trademark whether as a chemical formulae, a description in words or by depositing a sample. For background information on trade mark law see www.fjcleveland.com

NEW SOURCES OF INCOME FOR SONGWRITERS
Artists , Copyright , Music Publishing / January 2003
EU
USA

COPYRIGHT Music Publishing, Artists and Composers A recent study by the Informa Media Group shows that downloading mobile phone rings is a fast growing and lucrative business. Informa found that in 2002 songwriter’s collection societies collected in excess of £44 million for composers and publishers and that the global income from mobile tone rings was in excess of US$1 billion. See www.cnet.com for further information.

NEW ACTIONS IN CYBERSPACE
EU
USA

COPYRIGHT Record Labels, Music Publishing, Internet Following on from the Recording Industry Association of America’s successful action against Napster (RIAA -v- Napster, Judge Marilyn Patel, July 2000) where a preliminary injunction was granted Effectively shutting Napster down, further cases have now reached the courts. In April 2001 Aimster applied to the US District Court requesting that it declare that its service was legal. A number of organisations including the RIAA reacted by filing lawsuits against Aimster alleging contributory and vicarious copyright infringements. The District Court agreed that Aimster had clear knowledge of the infringements taking place using its service and that Aimster materially contributed to these infringements, could supervise them if Aimster wanted and Aimster financially benefitted from the (infringements) on its service. A preliminary injunction was granted. A decision of the activities of KaZaA in the USA is expected soon. BUT in a Dutch decision, the activities of KaZaA were held NOT to infringe copyright in an action between KaZaA BV and the Dutch collection societies BUMA/STEMRA. The Court held that as KaZaA BV could not prevent the exchange of copyright material between its users the service itself was not unlawful although the acts carried out by some users were certainly…

NEW COUNTRIES SIGN UP TO INTERNATIONAL TREATIES PROTECTING INTELLECUAL PROPERTY RIGHTS
EU
USA

COPYRIGHT Record Labels, Music Publishing, Artists and Composers The World Intellectual Property Organisation (WIPO) has announced that the total number of contracting states for the Berne Convention (which sets out and defines minimum standards of protection for economic and moral rights for authors of literary and artistic works) is now 149 nations and that the total number of contracting states to the Geneva Convention (protecting phonographic copyrights) has reached 69. Email: Publicinf@wipo.int for further information.