QMJIP

Queen Mary Journal of Intellectual Property

Month: March, 2014

Friday lunchtime lectures at the Open Date Institute – Event review

by cpocock

On Friday, 17th January, as every Friday, the Open Data Institute held a lunchtime lecture. The ODI is a not-for-profit organisation which seeks to promote innovation and the open data philosophy.

This particular lecture was titled ‘Licensed and Open: using Law with Attitude’ and was designed to introduce the legal aspects of the open business model to an audience of entrepreneurs.

Chaired by Kathryn Corrick, this 45 minute session saw the speakers Amanda Brock and Dr Ian Walden run the audience through a crash course in how to monetize intellectual property with open licences.

Dr Ian Walden first set the context for this discussion grounding it in government policy and end-user demands. Necessarily, it was important to eliminate any misconceptions of the key terms so next came the double negative definition of ‘Open’ whereby “[it] doesn’t mean that it isn’t a source of revenue”. The correct understanding of the term then isn’t as ‘free’ but as ‘accessible’.
But it was in the delimiting of public and private law that the ‘fun’ started. As under the afore-mentioned definition, this open content is not free – and certainly not free of rights. However, in order to make it accessible, Walden stressed, it is important to comply with any restrictions imposed by public law. The ideal tool which allows this is a licence agreement, bringing the matter under private law. And that is where the ‘attitude’ comes in: the Open business model relies on private law licences so as to shape the agreement around the public law.

Having cleared that up, the conversation moved on to more practical concerns for businesses that are seeking to achieve such openness. Drawing from her portfolio of experience, Brock set out the main issues that arise and questions that need an answer to better tailor the agreement to those answers. Which business model and structure is more suitable for the project? What content can be subject to the licence? Should services surrounding the content be included in the licence? How extensively can the rights be licensed out and to what extent should they be?
Brock illustrated how the differences in answering these questions give rise to a different need in terms of licensing agreements.

After a brief Q&A, this luncheon ended on a resounding call for entrepreneurs to consult the guidance available online and ensure they are indeed using the appropriate terminology, carefully drafting their licences and adequately defining the scope of the licence to fit their purpose.

This ‘speed date’ provided a great introduction to the complexities of drafting IP contracts and licences with an appropriate amount of industry-specific terminology, thus allowing ‘start-ups’ to better understand the more intricate aspects relating to their different agreements.

For those wishing to learn more about open data, information concerning these weekly lectures can be found on the ODI website.

Catherine Pocock is Assistant Editor QMJIP and LLM Candidate at the Centre for Commercial Law Studies, Queen Mary University of London

The Europeanization of copyright law – Event Review

by cpocock

On Tuesday 26th, November 2013 Taylor Wessing LLP (London) held its fourth breakfast seminar on the theme of modernizing copyright law. Its early birds and copyright enthusiasts were able to enjoy a finger-licking-good breakfast buffet and hear an insightful discussion about ‘The Europeanization of copyright law’.

Chaired by Mark Owen, the panel called in experts from Germany (Dirk Wieddekind), France (Claire Saint-Laurent-Mantoux and Benjamin Giniez) and the UK (Lorna Caddy and Adam Rendle) to address the changes that recent CJEU decisions will bring in in the different jurisdictions.

A very practical approach was adopted in analyzing the different elements that might and should change due to case law such as pan-European licensing for instance whereby, as Wieddeking phrased it: ‘following Murphy, the law as we know it is dead’.

In talking about creeping harmonization the discussion also touched on topics such as the criteria for determining the subject matter for IP protection, exhaustion rights in digital content and its consequences on free movement of goods, market demarcation and partitioning.

Further, with a quick look to the 4th Global Intellectual Property Index (which can be found here) it was pointed out that the gap in protection of IP between the best and worst ranking jurisdictions is narrowing. This suggests that harmonization has de facto occurred and been accepted, despite the lack of any legislative change.

Finally the seminar came to a close with the general view that these changes might (to the benefit of businesses and for purposes of judicial certainty) be better dealt with by the Commission rather than being driven by CJEU case-law.

Catherine Pocock is Assistant Editor QMJIP and LLM Candidate at the Centre for Commercial Law Studies, Queen Mary University of London

Industry focus – Sealing the deal: how to work with distributors

by cpocock

Whilst most of the country was under the weather it seemed that a trip to Berlin for the Berlinale was most appropriate. Adjacent to the main festival activities and film screenings, keen members of the audience also had the opportunity to pick from a series of talks and debates turning around the film industry organized by the Talent Campus: how to market uneasy films (offering a focus on films like Shame and the now released Nymphomaniac), translating emotions in script writing, protecting rights (review to come), etc. On Sunday 9th, February, the session entitled ‘Sealing the Deal – how to work with distributors’ was most informative.

Destined primarily to engage with people who are in the process of producing cinematographic works, this session was chaired by Ben Gibson, the Head of the London Film School and brought Cristina Garza (Mundial, Mexico), Anna Higgs (Film4, UK) and Philip Knatchbull (Artificial Eye/Curzon, UK) together to talk about the acquisition of films by sales agents and the delicate choice they will be faced with when considering their marketing.

After a short introduction into the role and duties of a sales agent, the panel offered a most insightful perspective on the diversity of approaches as to the marketing of films.

The panel mainly focussed on emphasizing the need to select a distributor carefully so as to get the best possible marketing for a film. As each cinematographic work requires special care, a good agent will provide an individual adaptation of the distribution strategy to the specific film, taking into account for instance its content and target audience. Cristina Garza illustrated this point clearly by giving some compelling examples. Having to market two Brazilian-Portuguese art house films, she explained how although this generic description of the two works makes them sound quite similar, the marketing strategy of each work had to cater for the needs of a different audience.

The conversation also touched on an industry ‘hot potato’: the modernizing of film distribution. Philip Knatchbull spoke first of this and explained the quite innovative philosophy that Curzon Cinemas live by. He detailed their daring business model which offers a fantastic opportunity to experience distribution through the new media and adapt to the ways in which consumer habits have changed. This is most topical following the release on Saturday 22nd, February of Lars Von Tries’ new film ‘Nymphomaniac’ that might prove to be a cornerstone in film distribution. This ‘marathon’ of Lars Von Tries, looking to promote the benefits of ‘day and date’ releases, was a real Event where his new film – originally produced as one six-hour long piece, later (albeit reluctantly) cut into two volumes – was shown in Curzon cinemas in a single sitting of both volumes, whilst also being made available across all Curzon cinemas and online via the home cinema option. The idea of such a model is that, following the music industry’s partial failure to adapt to the new media age, the film industry can still save itself by answering the demand by consumers for immediate availability.

A major difficulty with this business model however, as highlighted by Knatchbull, lies in the need to circumvent the 13 week period whereby a film cannot be released for sale or online viewing before 13 weeks have lapsed since the first cinema release of the work. Unsurprisingly, the larger film distributors resist any innovation here and are still holding on to this sinking ship, maintaining that this window is essential to the film business as box office sales (mostly reliant on the first weekend’s box office) is bound to remain the/their largest source of income.

This only shows how refreshing and avant-garde Curzon’s approach is and, as the conversation moved to Anna Higgs’ work, how popular this model is becoming as it has also been adopted by Film 4 who first experienced with it with their release of ‘A Field in England’. This release was a joint project with the British Film Institute and was subjected to a case study (which can be found here). Again, elements of marketing came into play as it was necessary to build the media attention around the release and further gather information to reflect on the efficacy of this strategy.

It was nevertheless highlighted that these day-and-date releases will not always be appropriate and that creating such ‘event releases’ as for ‘A Field in England’ and ‘Nymphomaniac’ do necessitate a pre-existing public interest in the cinematographic work. However, this thought-provoking report might suggest that art house films would benefit from this alternative method. And as Ken Loach said later that week when he addressed a very attentive audience (Wednesday 12th, February): ‘[w]e need to make room for national and art house films in our cinemas’.

By way of conclusion then, if there were only to be a single point to take away from this discussion I would say that, on top of the above-mentioned insight into the possible future of the film distribution, it is important to ensure a case by case handling of every deal, the choice of distributor being essential in guaranteeing the film will get the right publicity, viewings and returns.

Catherine Pocock is Assistant Editor for QMJIP and an LLM Candidate at the Centre for Commercial Law Studies, Queen Mary University of London

Conference: Copyright and Freedoms in a Digital Europe: Liability of Intermediaries

by andreahebrard

Last Tuesday 10th of March a conference on “Copyright and Freedoms in a Digital Europe: Liability of Intermediaries “ was held in the Wolfson Theatre of the LSE New Academic Building.

The conference was organised by LSE Media Policy Project and the LSE law department, and was chaired by Anne Baron an Associate Professor in the LSE department of law.

“Rights holders in the music and film industries often criticise internet intermediaries and service providers for not doing enough to enforce copyright. Under current European Union policy, intermediary liability is enshrined in three directives: the Copyright Directive (2001), the E-commerce Directive (2000) and the IPR Enforcement Directive (2004), all of which allow for the possibility of copyright-holders suing an intermediary. A review of the Copyright Directive is just beginning, and reviews of the latter two commenced in 2012. At stake is the whether online intermediaries such as search engines, social media platforms and cloud computing services and/or internet service providers managing the networks should police content that is alleged to be infringing copyright.” 1

The speakers were, Dr Monica Horten, Geoff Taylor and Nicholas Lansman.

“Dr Monica Horten is a visiting fellow in LSE’s Department of Media and Communications, and an LSE author. Her book A Copyright Masquerade: How Corporate Lobbying Threatens Online Freedoms was published in 2013 by Zed Books. Her other published work includes The Copyright Enforcement Enigma: Internet politics and the Telecoms Package (Palgrave Macmillan, 2012), and she writes the IPtegrity blog on EU Internet policy. She has been cited in international media as diverse as The New York Times, Dagens Nyheter and Corriere della sera. In January 2014, she was nominated as an independent expert to the Council of Europe’s ‘Committee of experts on cross-border flow of Internet traffic and Internet freedom’ (MSI-INT).

Geoff Taylor is the CEO of The British Recorded Music Industry (BPI) and Director of both the Official Charts Company and BRIT Awards Limited, as well as a Governor of the BRIT School for the Performing Arts & Technology and a Trustee of the UK music business’ charity, The BRIT Trust. Prior to joining BPI in 2007 he served as General Counsel and Executive Vice-President at the international record industry association, IFPI after several years working in private legal practice focused on EU and competition law.

Nicholas Lansman is founder and CEO of Political Intelligence, a Europe-wide political communications firm. Political Intelligence advises a range of companies and organisations in a broad range of industry sectors including technology, media and communications. Nicholas has been Secretary General of ISPA UK, which represents the interests of the internet industry in the UK, since assisting with the establishment of the trade body in 1995. In 1997 Nicholas set up EuroISPA – the European Internet trade association which represents the internet sector at EU-level in Brussels.” 2

Each of the speakers had ten minutes to express their views on the matter.

Geoff Taylor:

Intermediaries, for example Google, constitute a huge demand; they represent an important part in the digital economy. According to him intermediaries should have a moral and ethical responsibility; this type of responsibility being more important than a legal one. The law does not reflect this ethical behavior so the law still needs to improve on this matter. He took the example of the internet search engines which should be liable at least in order not to have appeared on their first search results infringing websites. He then suggested to resolve this problem business to business for example via advertisements.

Nicholas Lansman:

Internet Service Providers (ISP) are blamed by the creative industries because they do not want to endorse the role of the internet police. ISP liability is still very limited even after two decades of policy conducted on the digital area. He did express his opinion through an historical summary on ISP liability. First, the court would tell ISP that they were hosting illegal contents and ISP would take them out. Secondly, the Industry moved towards the blocking of contents (eg. the Pirate Bay case). Then, some public entities were put into place to police online contents for example the Hadopi commission in France. Some legislation attempts were made like the digital economy Act in UK, this proved itself not to be efficient enough. Also, the press can exercise an important external pressure on the ISP to block the online expansion of pornographic, terrorism, bullying (and so on) contents. According to him, this inconsistency on ISP liability represents an“Animal Farm argument” because every stakeholder wants to protect its own interests and benefits. He then described the current situation. At the present, many improvements have been done for consumers. There are lot of choices to have access to online legal contents. So there is a flexibility in the accessibility of legal contents. Then he concluded on the future expectations. He suggested that there is a general expectation for a copyright reform; a reform which would properly balance commercial platform interests and copyright.

Dr Monica Horten:

She talked about the issue of Freedom of Expression in the digital Europe. She clearly expressed the fact that she was not talking about the blocking of illegal contents but the problem of the blockage of legal contents. ISP can block illegal contents but also legal ones; arguably this blockage of legal contents would count as being against free speech. She illustrated the problem of over blocking using the pirate bay case: 65% of the contents were protected by copyright and 35% were not; these 35% of contents were therefore legal. So, ISP could not distinguish between lawful and unlawful contents when over blocking, and this automatically count as an interference to freedom of expression. According to Dr Monica Horten, consumers expect that intermediaries do not interfere in their actions; consumers have a notion of freedom without interference. But today the problem of interference does not come from the States but from private companies. A bigger interest to copyright is developing because consumers are worried about their human rights being interfered. Finally, she considered an option; the European Union is currently preparing a Directive on the subject and should consider the fact that policy could put freedom of speech at risk.

On a personal note. The conference was very interesting and worth going; but its main subject seemed to be a bit left out. Moreover, the conversation was more focused on the music industry and others creative industries were hardly mentioned. Finally, a lawyer expertise was missing in the debate.

Andréa Hebrard is LLM Candidate at Queen Mary University of London and is working as a Queen Mary Intellectual Property Research Institute (QMIPRI) Student Research Fellow and Assistant Editor of Queen Mary Journal of Intellectual Property (QMJIP).

1. http://blogs.lse.ac.uk/mediapolicyproject/event-copyright-and-freedoms-in-a-digital-europe-liability-of-intermediaries/

2. http://blogs.lse.ac.uk/mediapolicyproject/event-copyright-and-freedoms-in-a-digital-europe-liability-of-intermediaries/

C-351/12 – Two rulings from the ECJ: Health spas are obliged to pay compensations for copyright infringement & centralisation of collecting copyright fee by one collective rights management society doesn’t infringe Community law

by Miina Viitala

The European Court of Justice interpreted its Directive 2001/29/EY Articles 3 and 5 on Copyright and Related Rights in Information Society, Article 16 of Directive 2006/123/EC of the European Parliament and of the Council of 12 December 2006 on services in the internal market and TFEU Articles 56 and 102 in its decision C-351/12 Ochranný svaz autorský pro práva k dílům hudebním, os (OSA) v Léčebné lázně Mariánské Lázně (27th February, 2014).[1]

The directive releases non-commercial institutional organisations such as hospitals from paying copyright fees. The Czech Republic’s domestic system differs slightly from the wording of the Directive; national law doesn’t oblige such entities to obtain any permission for streaming radio and/or TV-shows when shows are streamed for individuals receiving health care in hospitals. National law and the Directive’s interpretation can differ as the national law might enable less restricted interpretation regarding who is obliged to pay copyright fees.

The OSA (i.e. the Collective Rights Management Society) of the Czech Republic required a domestic health spa, offering commercial services, to pay copyright fees connected to radio and TV-streaming. Radio and TV shows were also enabled in each customer’s room. The health spa claimed to be under the domestic exception for not having to pay the copyright fee. This meant that no permission would be needed for streaming radio and TV-shows for customers receiving health-related treatments. If the national law were incompatible with the Community Directive, the OSA would not be able to rely on the Directive in a dispute between private legal entities.

The Health Spa also argued that the OSA was illegally using its monopoly in the marketplace as the copyright fees it was collecting were excessive when compared to those in neighbouring countries. Subsequently, this has the potential to give the Spa a competitive edge when compared to other, competing spas in neighbouring countries. The Spa argued that it would be entitled to enter an agreement with another collective rights management society located in another Member State.

The Krajský soud v Plzni District Court referred three preliminary questions to the European Court of Justice. First, the District Court asked whether the directive is to be interpreted in such a way that the exception would apply to a commercial Health Spa, meaning that such an establishment is not obliged to pay the copyright fee when offering copyright protected radio and TV-shows for its customers. Secondly, the District Court asked whether Article 3(1) of Directive 2001/29 must be interpreted as meaning that it can be relied upon by a collective rights management society in a dispute between individuals for the purpose of setting aside national legislation which is contrary to that provision. Thirdly, the District Court asked whether a monopoly system for collective rights management societies is in accordance with Community law (namely Article 16 of Directive 2006/123 and Articles 56 TFEU and/or 102 TFEU).

At its ruling, the ECJ stated that the directive is a restriction for the exception which doesn’t oblige health spas to pay copyright fees. As the spa has a commercial nature, it should pay its copyright fees if it wishes to stream copyright material for its customers. For the second issue, the ECJ stated that individual legal entities/individuals cannot rely on the directive in a way that domestic law differing from the Community law would not be implemented. Domestic courts should interpret the national legislation together with the directive. To the third issue the ECJ ruled that Community Law is not a barrier for the provisions of domestic law whereby the collection of copyright fees are granted for one collective rights management society. The Court noted that collective management society shall not abuse its dominant position within the domestic market with excessive copyright fees under Article 102 TFEU and the activities of collecting societies are subject to the provisions of Article 56 TFEU relating to the freedom to provide services.

Miina Viitala is LLM Candidate at Queen Mary University of London and is working as a Queen Mary Intellectual Property Research Institute (QMIPRI) Student Research Fellow and Assistant Editor of Queen Mary Journal of Intellectual Property (QMJIP)

WESTMINSTER MEDIA FORUM KEYNOTE SEMINAR: NEXT STEPS FOR THE UK MUSIC INDUSTRY – STREAMING SERVICES, SOCIAL MEDIA AND MARKET CONSOLIDATION (Part 2)

by Olumayowa O. Adesanya

The second half commenced with opening remarks by the Chairman, Andrew Bingham MP who also introduced the next speaker, Crispin Hunt[1]. His address was on the digital recording artist and how musicians do not necessarily benefit from the huge profit being made. Regarding live performances bringing a huge chunk of income for artists, he reminded us that not all artists are capable of pulling a crowd and where they do, such does not necessarily translate into huge profit after expenses have been deducted. He called on the UK to champion a better framework on the internet and ratify the Beijing Treaty on Audiovisual Performances. The highlight of his address was the identification of the new emerging world powers: Brazil, India and Google.

Followed by this was a discussion on artist-brand partnerships by Dominic Hodge[2]. After stating the role of FRUKT as an intermediary between brand investment and music, he emphasized that for commercial reasons, brand investment is not for all artistes. The methods identified for brand investment include endorsement, venue sponsorship, event creation, advertising support and Television shows amongst others. In this relationship, the brands benefit in terms of a wider reach to consumers, credibility, creative input from artists and more interacting/interesting stories. As for the artists, they gain the opportunity to expand their fan base while rewarding their fans, increased income from fees and licences as well as the chance to experiment.

The panel on Music and Social Media – disintermediation, business models and fan loyalty had in addition to Messrs Hunt and Hodge, Fiona Chow[3], Adam Graham[4] and Simon Wheeler[5]. Fiona explained the role of StuHub as a ticket marketplace (which is a part of eBay) and how brands create human connection with fans using the Jessie J competition as an example. Adam Graham went on to identify the important roles label play in the lives of artists signed on to them. These roles include not just creative management, but also offering mentorship and advice. Simon Wheeler advocated for the equal sharing of the value of the creative industry between brands and artists. The panel rounded up by saying illegal downloads are really a matter of conscience and artists ought to look beyond promotion of their works in order to generate more income. This is irrespective of the attitude of artists to the meagre royalties from digital platforms, which is that they might as well give out their works for free.

With closing remarks from Andrew Bingham MP and Michael Ryan, the Deputy Editor of Westminster Media Forum, the seminar came to a close.

It was a well-attended event with insightful and educating contributions from the speakers as well as the audience. Although the digital revolution has provided a level-playing field for upcoming artists to put their materials out there and promote both old and new artists, the ultimate question is: ‘If streaming is akin to radio, then why do artists earn a pittance in royalties?’


[1] Co-Chief Executive Officer Featured Artists Coalition.

[2] Planning Director and Managing Partner, FRUKT

[3] Head of European Communications, StubHub

[4] Managing Consultant, Cact.us and Chair, British Interactive Media Association

[5] Head of Digital, Beggars Group

WESTMINSTER MEDIA FORUM KEYNOTE SEMINAR: NEXT STEPS FOR THE UK MUSIC INDUSTRY – STREAMING SERVICES, SOCIAL MEDIA AND MARKET CONSOLIDATION (Part 1)

by Olumayowa O. Adesanya

On Friday, the 28th of February, the Westminster Media Forum hosted policy makers, media and legal practitioners, academics, students and other interested stakeholders to one of its numerous media-focused events. This particular session was titled ‘Next Steps for the UK Music Industry – Streaming Services, Social Media and Market Consolidation’. The Seminar was divided into two halves with Lord Clement-Jones[1] chairing the first half and Andrew Bingham MP[2] chairing the other half.

Intellectual Property legislations have struggled since the advent of the digital era to keep up with the changing times whilst still maintaining its relevance. This has not been made any easier given that infringement has become relatively simplified. Rather than battle the system, it has become apparent that creative industry stakeholders need to exploit the system to their own advantage.

Dr Alice Enders took to the podium to speak on the prospects of future growth in the music industry after the Chairman’s opening remarks. According to her, Smartphone adoption has triggered a growth in subscription services and DTO (Download-to-own) music with a commensurate decline in physical sales. Based on statistics provided by Enders Analysis, the United States ranks highest in digital sale of music while Japan has witnessed a decline owing to its transition off mobile. Notwithstanding, piracy remains a challenge, although marked improvements have been noted in developing countries like Brazil. She opined that the present challenge for the industry is in adequately monetising the ad-supported music market.

Up next was Francis Keeling[3] who identified the challenges to creating a sustainable business model in a dynamic market as: risk; developing the right sustainable model; education of mass consumers; and creating the right legal framework.

Dr Enders and Mr Keeling were joined by Mark Williamson[4], Jeremy Silver[5], Chris Butler[6] and Mark Foster[7] for a panel discussion: Digital Disruption – revenues, consolidation and competition. Before questions and comments were received from the floor, each speaker was given the opportunity of a brief address.

Mr Williamson highlighted how streaming services like Spotify had reduced digital piracy with special focus on the workings of Spotify (including its new platform: Spotify Artists) and how royalties are disbursed. Agreeing that there has been innovation in terms of the devices employed in digital entertainment, Mr Silver was not particularly sure that same could be said of the music itself. He went further to explain that irrespective of the influx of artists given the ease of access to the market, it would appear that consumers have a problem of discovery. To resolve this, streaming services mine data received from its users to determine consumer behaviour and preference in order to recommend new music to such users based on the data received. He termed this present era as the Digital Dark Age with the hope of us progressing into the Renaissance in the next couple of years. According to Mr Butler, the role of Google as a search engine and the owner of YouTube should not be overlooked in the lobbying for digital freedom against copyright. He noted the role adverts sponsored by legitimate companies play in generating income for unlicensed platforms with infringing material. This is in itself counteractive in the drive against piracy as income is generated albeit not from the material, but from the adverts. Mr Foster rounded up by emphasising the need for fragmented digital licensing models to be streamlined and at a lesser cost to suit individual needs of the consumers.

Based on questions and comments from the audience, the panel discussed a number of issues ranging from the relevance of licensing in the digital era compared to the analogue era (physical sales) to the costs involved in adding layers of music experience where streaming is concerned as opposed to live music. There was also a debate on access to music and the value placed on it by consumers when different models were examined. One major area of concern was digitisation of classical music by orchestras. Funding and audio quality are just some of the factors to be considered.

Left to Geoff Taylor[8], digital sales have not killed the creative industries, rather, it may be said to have boosted it with increasing revenues pouring in from cloud computing and the shelving of the Digital Rights Management (DRM) system. This is taking into consideration that as consumers migrate from physical to digital, some are dropping out. He attributed the increased investment in music to a number of factors: high quality music being produced; innovation in marketing; Music Export Growth Scheme; and strong copyright regulatory framework. He, however, lamented the domination of search results by pirate sites and emphasised the role of online intermediaries (particularly advertisers and e-commerce payment service providers) in addressing infringement by denying their services to illegitimate platforms.

His address was followed by the panel on Commercial Innovation – Licensing, Copyright and New Services where he was joined by Cliff Fluet[9], Francis Lowe[10], Peter Jenner[11] and Ben Chapman[12]. The conclusion of the panel was that multi-territorial licensing proposed by the EU Directive ‘on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online uses in the internal market’ is a step in the right direction with moves for greater transparency and accountability. As with the previous panel, each speaker presented an address prior to the discussion.

The focus of Mr Fluet’s address was on author’s attitude towards recognition and remuneration where some artists are content with just recognition forgetting monetary gains are made from their music being played, which are not necessary remitted to them in the form of royalties. He also discussed the withdrawal of digital rights from collective licensing and advocated for a one-stop-shop Digital Service Provider licenses, which he termed the ‘Holy Grail’. The role of the Performing Right Society in managing both mechanical and performing rights was explained by Ms Lowe. She made mention of bespoke licence packages created to suit individual client’s requirements and needs with smaller licences being sold online. So far, there have been 2,000 sales. In addressing the role of private copying in view of cloud services, she discussed the levies issue on personal gadgets and cloud services. She finished by lauding the UK for its stance on stronger copyright framework. Mr Jenner highlighted the unfairness of Non-Disclosure Agreements to copyright owners who are not getting fair remuneration and advocated for a wholesale retail market similar to domain names. In the words of Mr Chapman, BBC Playlister has three functions: Remember, Recommend and Replay.

Thus, the first half of the seminar ended with closing remarks from the Chairman followed by a coffee break.


[1] Member, All-Party Parliament Group on Music

[2] Member, All-Party Parliament Group on Music

[3] Global Head of Digital Business, GDB, Universal Music Group

[4] Director, Artist Services, Spotify

[5] Specialist Adviser on Creative Industries, Technology Strategy Board and Executive Chairman, Semetric

[6] Head of Publishing, Music Sales Group and Chairman, UK Music Publishers Association

[7] Managing Director, UK and Ireland, Deezer

[8] Chief Executive, BPI (British Recorded Music Industry)

[9] Partner, Digital Media and Branded Entertainment, Lewis Silkin

[10] Head of Legal, Policy and Public Affairs, PRS for Music

[11] Partner, Sincere Management and President Emeritus, International Music Managers’ Forum

[12] Head of Popular Music, Radio and Music multiplatform, BBC

The current stage of Unitary Patent Court – France ratified the Bill – Malta’s status not yet officially confirmed

by Miina Viitala

The French National Assembly voted to ratify the Bill on the Unitary Patent Court (UPC) on 13th February.[1] In order for the agreement to be binding President François Hollande now has to sign it. On the official webpage of the Assembly, it declares the following: ‘Est autorisée la ratification de l’accord relatif à une juridiction unifiée du brevet (ensemble deux annexes), signé à Bruxelles, le 19 février 2013, et dont le texte est annexé à la présente loi.’/ ‘The process of ratification of the legislation regarding the unified patent jurisdiction has been authorised and signed in Brussels (19/02/2013) and it has been annexed to the current statute.’[2]

The only other country which has ratified the agreement so far is Austria. In order for the Unitary Patent Court to be established there have to be at least 13 countries which have ratified the Bill and those 13 countries are to include France, Germany and the United Kingdom, i.e., the ones hearing the disputes. The Agreement on the Unitary Patent Court has been signed by all Member States excluding Croatia, Poland and Spain. Italy will take part in the Unitary Patent Court system but won’t take part in other aspects of the European patent with unitary effect. The United Kingdom and Germany (the remaining mandatory participants) haven’t yet ratified the Bill and assumedly the UK won’t do this before 2015. In the UK, the Bill is progressing through the Parliament and in Germany some progress may be made since the elections.

There are signs that Malta has also ratified the Unitary Patent Court agreement in January but neither Malta nor France is yet confirmed as having ratified according to the Commission’s webpage.[3] An article in the Malta Independent states that the agreement was discussed in the Parliament in January: ‘PN MP Jason Azzopardi said that he had signed the ratification on behalf of a PN-led government.’[4] The official webpage of Malta’s Parliament claims that last month’s meeting included a discussion of ratification of the Unitary Patent Court Agreement but nothing has yet been released on the issue officially. Even if the ratification is not yet official, it can be safely assumed that the ratification has taken place and France wasn’t the second but the third Member State to ratify the agreement on the Unitary Patent Court. It can be assumed that Malta’s ratification will be published by Brussels soon.

After the President’s signing, the French Bill is then to be registered with the Council of the European Union. This phase is seen more or less as a mere formality and after that the Bill will be published in the Official Journal. At the time of writing, only Austria had reached this phase. In relation to the Unitary Patent Court, different Member States are currently at different stages. Belgium is assumedly ratifying the Bill during the spring. Denmark is holding a referendum on the Unitary Patent Court in May[5] and Ireland will also have a referendum on the issue, but the date has not yet been announced.[6] No other progress in other countries has been released.

Miina Viitala is LLM Candidate at Queen Mary University of London and is working as a Queen Mary Intellectual Property Research Institute (QMIPRI) Student Research Fellow and Assistant Editor of Queen Mary Journal of Intellectual Property (QMJIP).

 


[1] National Assembly of France Notice: http://www.assemblee-nationale.fr/14/ta/ta0294.asp

[2] Translation provided by Miss Andréa Hebrard (QMPRI)

Trade Marks and Designs: The Designers’ Perspective – Event Review

by Pedro Malaquias

Last Wednesday, 26 February 2014, the UCL Institute of Brand and Innovation Law hosted the well-attended seminar ‘Trade Marks and Designs: the Designers’ Perspective’. After a short welcoming speech by Professor Robin Jacob, the floor was delivered to The Honourable Mr Justice Birss, who presented the topic and the afternoon speakers: Matthew Cockerill, Chris Griffin, Alexander Carter-Silk, Simon Malynicz and Attilla Kurdash.

The first on the stand was Matthew Cockerill, Associate Design Director at Seymour Powell. Resorting to Dick Powell’s iconic definition, Cockerill started by identifying a designer as a ‘radar-scanner probing art, architecture, technology, fashion, pop, everything and subliminally translating that into design’[1]. Designers are in the ideas business and cannot simply ask people what they want as this would lead only to improvements to the existing products, not to new products (joking with this point, Cockerill noted that cars might have never existed, as faster horses were the obvious solution as a mean of transportation).

The speaker then described the process for designing new products and the importance of the realities surrounding a creator. Ideas and inspiration come also from the works of other people, frequently serving as a starting point for a successful product design. However, inspiration should not be confused with slavish copy; the differences are easily perceived by any designer. Cockerill finished his presentation by making a short reference to the problem (without a visible solution, as far as this blogger could understand) that a designer faces when an idea defines the future of a certain product category, mentioning, at this point, the approximation of mobile phone designs following the successful launch of iPhone by Apple.

The next speaker was Chris Griffin, managing director at pi global and CEO of the Museum of Brands, Packaging & Advertising. By recounting his company experience (with 35 years, 4269 projects, but only 5 incidents, all of them solved before reaching court proceedings), Griffin explained that designing is mostly done within the law. This is the case despite the fact that, from a short survey conducted by the speaker, in a 3 year design course students usually do not attend more than 4 yours (in total) of IP instruction. Griffin questioned whether this lack of instruction should be seen as a general opportunity or, instead, as a big problem.

The second speaker then explained that, in its relations with clients, a designer is requested to transfer global rights in everything that it produces (from concept sketches and prior art to the ideas as conceived). At the same time, the designer has to warrant that its work does not infringe any prior right, having to navigate in a world (the IP world) which is seen by designers as a complex maze.

Insisting on the fact that case law is just a marginal example of the designer’s practice (the top of the iceberg are the cases, but a lot more is beneath them), Griffin noted that the costs of IP (especially patents) can also exclude some (e.g. small enterprises, charities) from the protection granted by IP. At the same time, he referred to the importance of education and moral community rules, which might be a lot more effective than injunctions and damages. In a humorous final note, Griffin showed that even an informed public will have trouble in getting out of the IP maze. In asking whether a certain image constituted an infringement, the speaker received a divided show of hands by the audience.

Next in line was Alexander Carter-Silk, partner and head of Technology & Intellectual Property at Speechly Bircham and author of ‘The Development of Design Law Past and Future’ (you can find him in Twitter @leagleeagle). Focusing not on the law itself, but mostly on the history and value of design, the speaker explained that designs cause an emotional reaction with an object and, therefore, result in heuristic and cognitive biases. The separation between form and function was discussed, as was the question of what has more importance in defining the value of a product nowadays (function, quality or aesthetics).

Further questions were raised for the audience. Where does inspiration stop and plagiarism start? What is wrong and what is right? If design cannot be dissociated from a cognitive bias, how can a judge decide correctly? Provocatively using it as an example, it was questioned if the decision on Dyson v Vax[2] was the right one.

The law perspective was provided by Simon Malynicz, Barrister at Three New Square. Concentrating on trade mark law, the speaker started by questioning how Trade Mark law accommodates innovation and creativity and by quickly answering that it does not. On the one hand, the registration of descriptive trade marks can be obtained if evidence of acquired distinctive character is provided, which shows that the system cares only about what can work as a brand. On the other hand, and despite the quite broad definition resulting from article 2 of the Trade Marks Directive[3], the fact is that the registrability of non-conventional signs faces several difficulties, as the public is said not to be used to seeing such signs as conveying trade mark significance (Bongrain[4], Dyson[5] and Vibe[6] were provided as examples); evidence of the opposite is hardly possible, as surveys are faced with suspicion (as shown by the pending kit-kat case[7]).

Malynicz continued his presentation by sceptically saying that trade mark law might be seen as protecting innovation and creativity by denying protection. The accommodation of these values would result in trade mark law not allowing the registration of certain signs in order to leave them free for other competitors. Another possibility would be to say that trade mark law should not be used to protect what is to be protected by other rights. References to functionality followed (Lego[8], Philips v Remington[9], Nestlé v Unilever[10] and Julius Samann v Tetrosyl[11] were mentioned at this point).

The last speaker of the night was Attilla Kurdash, Owner of and Managing Director at Gina Shoes, which, according to the company website, remains ‘the last and only British designer label creating luxury footwear in London today’[12]. Kurdash made an emotional presentation about the company experience with IP problems, describing his judicial experience as a scary and consuming process. Differently from solicitors and barristers, Kurdash argued, the emotional connection between owners and their companies and products makes any case a “big deal”, costing too much time and resources, even if settlements can be reached before court proceedings are initiated. Kurdash finished his presentation by criticizing the current design law framework, which does not provide an appropriate framework for the real value of designs.

Birss J summed up the key points of the five presentations and opened the floor to questions. The first of the comments went back to the point raised by Griffin regarding the empty space of education for IP creators, arguing that such is a duty that the IP community must perform. However, the discussion quickly evolved to the need for IP lawyers and judges to be educated by designers. As mentioned by Cockerill, a designer knows what a copy is, but legal professionals face doubts in assessing such an issue. Could expert evidence solve this problem? A divided panel could not reach an agreement (costs and cognitive bias were raised against such possibility). The event finished following the design community’s appreciation of Dyson v Vax and a very brief explanation of the grounds for the decision by Professor Robin Jacob: it all goes back to the ‘informed user’.

 

Pedro Malaquias is a Portuguese Qualified lawyer. Currently, he is a LL.M. candidate at Queen Mary, University of London and works as a Student Research Fellow at Queen Mary Intellectual Property Research Institute (QMIPRI) and as Assistant Editor at Queen Mary Journal of Intellectual Property (QMJIP). @PedroMMalaquias


[1] Seymour Powell, R., Seymour Powell Publicity Brochure (London: n.d.).

[2] Dyson Limited v Vax Limited [2011] EWCA Civ 1206.

[3] Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

[4] Bongrain SA’s Trade Mark Application [2005] RPC 14.

[5] Dyson Ltd v Registrar of Trade Marks [2003] RPC 47.

[6] Vibe Technologies Ltd’s Application [2009] ETMR 12.

[7] Société Des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch).

[8] Lego Juris A/S v OHIM, Mega Brands, Inc [2010] ETMR 63.

[9] Philips Electronics NV v Remington Consumer Products Limited [2003] RPC 2.

[10] Nestlé SA v Unilever Plc [2003] R.P.C. 35.

[11] Julius Samann Ltd & Others v Tetrosyl Limited [2006] FSR 42.

[12] http://www.gina.com/about-us.aspx accessed 28 February 2014.

March IP events

by Pedro Malaquias

On November 2013, QMJIP started to publicise IP Events in its Twitter page (@QMJIP), using the hash tag #IPevents. Since then, we have tried to promote as many IP events as possible, as we find such information of utmost relevance for the IP community. From now on, such information will also be made available in the QMJIP blog.

If you have knowledge of or are organising any IP event not shown on the following list, we would be grateful if you let us know. Simply leave us a comment in here or tweet us @QMJIP #IPEvents and we will add it!

Here are the events for March 2014.

UNITED KINGDOM:

  • On 3 March 2014, ITMA will discuss in Leeds the ‘‘Recent developments in Chinese trade mark law and practice‘. See more here.
  • Talkscience: Patently obvious? The role of patents in biomedical discovery and invention will be discussed at The British Library Terrace Restaurant on 4 March 2014. Interested? Check the event website.
  • On 5 March 2014 (repeated on 9 March 2014), CLT is holding the CPD course Drafting and Negotiating IP Licences in London. Registration and other information can be found here.
  • On 6 March 2014, in Oxford, the Oxford Intellectual Property Research Centre will host one more of its OIPRC Invited Speaker Seminar. Although the title is not yet available, the convenors have: Dev Gangjee, Emily Hudson & Robert Pitkethly. More information here.
  • On 10 March 2014, in London, another CPD seminar – Update on US IP Law and Practice – is being held by The Chartered Institute of Patent Attorneys (CIPA). Further details can be found at CIPA’s website.
  • On 10 March 2014, the LSE Media Policy Project organises the event ‘Copyright and Freedoms in a Digital Europe: Liability of Intermediaries‘. Details here.
  • On 11 March 2014, in the Spring dinner meeting of the British Group of Union, in London, the topic “Enforcing your IP Globally – Tales from the Front Line” will be discussed. Tickets can be obtained from dinners@union-gb.com.
  • Want to “Become a Certified Patent Valuation Analyst“? Check the Management Forum course, held in London, on 11 and 12 March 2014. More details available here.
  • The Ninth Annual International Intellectual Property Lecture at Emmanuel College: Intellectual Property Law and the Problem of Aesthetic Progress will be held in Cambridge by CIPIL on 11 March 2014. Further details can be found here.
  • On 11 March 2014, in Oxford, the Oxford Intellectual Property Research Centre will host an Intellectual Property Law Discussion Group on ‘Economics of Intellectual Property‘. More information here.
  • IP Protect Expo 2014 is “an industry exhibition with a parallel conference programme” – London, 11 to 12 March 2014. Check the event website.
  • On 12 March 2014, in London, FICPI will host its UK Annual Seminar, where it will be discussed the updates on the Unitary Patent as well as the changes to European Trade Mark Law and UK Patent Law, as well as variety of topics in relation to Chinese law, including the Chinese Utility Model system- Details here.
  • The Competition Law Association (CLA) will be holding an evening meeting on Thursday 13 March, in London. Johanna Gibson and John Noble will discuss “Lookalikes – an unfair practice and unfair competition?”. Check the event leaflet.
  • The fifth annual symposium, Trademark Law and Its Challenges 2014, presented by The McCarthy Institute for Intellectual Property and Technology Law and Microsoft Corporation, co-sponsored this year by Oxford University School of Law and the International Trademark Association (INTA), will take place in the British Library Conference Centre in London on Thursday, March 13, 2014. All the details can be accessed here.
  • 13 March will be a really busy day for IP in London, as BLACA will also host (at the offices of Berwin Leighton Paisner) its seminar on parody. Details will be available on BLACA’s website.
  • Management Forum will host “Fundamentals of European Claim Drafting“, a two-day course “ideal for trainee patent attorneys and patent attorneys“. London, 13 and 14 March 2014. Interested? Check the course website.
  • Case law of the EPO will be discussed in the seminar “Patenting Medical Technology” organised by Management Forum, in London, on 14 March 2014. Check the seminar details here.
  • On Saturday 15 March 2014, in Cambridge, the CIPIL Annual Spring Conference 2014 will be dedicated to “Exhaustion without Exasperation: Intellectual Property, Parallel Imports and Border Measures“. More information here.
  • Between 17 and 18 march 2014, in London, the Pharmaceutical Trade Marks Group will host its Spring Conference ‘Realities in Realms of Regulation of Pharmaceutical Trade Marks‘. Details here.
  • The Managing Intellectual Property International Patent Forum 2014 will occur in London, between 18 and 19 March . Check the leaflet.
  • The Centre for Commercial Law Studies will host the European Patent Convention Course between 18 and 20 March in London. ‘The lectures will provide an introductory overview of the law and practice of European patent law. The emphasis will be on the substantive and procedural law under the European Patent Convention, including the jurisprudence of the EPO Board of Appeals. In addition, the creation of a Unitary Patent Court will be addressed. Emphasis is placed particularly on the relationship between the UPC and national patent systems, as well as problems of applicable law‘. Further details and registration can be found here.
  • On 19 March 2014, the QMIPRI will host one more of its Policy Watch Research Cafes series. Florian Koempel will, as usual, be the group leader. For more information, check the CCLS events webpage.
  • On 19 March, The Chartered Institute of Patent Attorneys (CIPA) will discuss “Russian IP Legislation & Eurasian Patent System” in London. Details available here.
  • The ITMA Spring Conference 2014 “Media, Pop Culture and the Law” will be between 19-21 March 2014 in London. Programme, registration and further information can be found at the following website.
  • Management Forum will host “Guide to Formal Requirements of the EPO“, a two-day course for administrative staff in the patent profession. London, 27 and 28 March 2014. Interested? Check the event website.
  • On 28 March 2014, Management Forum will provide, in London, an Introduction to Patent Practice in Latin America. Check the event website.
  • On 28 and 29 March 2014, in Cambridge, The Centre for Research in the Arts, Social Sciences and Humanities (CRASSH) will host the conference ‘Creativity, Circulation and Copyright: Sonic and Visual Media in the Digital Age’. Details available here.

CONTINENTAL EUROPE

  • Between 2 and 5 March 2014, IPI will host the ‘11th Annual International Patent Information Conference & Exposition, IPI-ConfEx 2014‘ in Berling, Germany. The conference website is available here.
  • The 5th Global IP Exchange takes place in Münich, Germany, 3 – 5 March 2014. Details can be found in the event page.
  • MARQUES – The Association of the European Trade Mark Owners will held its 12th Spring Team Meeting on 6 and 7 March 2014 in Amsterdam, The Netherlands. The programme and registration form can be found in the conference website.
  • On 7 March 2014, in Copenhagen, an international one-day conference on ‘IP Governance by Private Collective Entities‘ will be held. Further details and registration can be obtained here.
  • On 10 March 2014, in Münich, Germany, GRUR Int/JIPLP will discuss ‘The different notions of “copyright-protected work” in Europe’. Details here.
  • In Brussels, on 12 March 2014, it will be held the ‘ECTA Workshop on Trade Marks, Packaging and Lifestyle Regulation‘. More information can be found in the link.
  • IP Strategies in South America will be discussed by the French Association of Intellectual Property Specialists (ASPI – Association Française des Spécialistes en Propriété Industrielle de l’Industrie. The conference ‘PI et Amerique Latine‘ will be held in Paris on 13 March 2014. Programme and registration here.
  • On 13 and 14 March 2014, in Budapest, KIM, HIPO and EPO will hold a ‘Conference on the training of UPC judges‘. Details here.
  • The Academy of European Law is hosting the conference “Update on Geographical Indications in the European Union” on 20 and 21 March in Trier, Germany. Find more information here.
  • 25 and 27 March 2014 are the dates of the 11th Annual Nordic IPR forum, hosted by Legal IQin Stockholm, Sweden. The event website can be reached through the link.
  • Starting on 30 March 2014, but lasting until 4 April 2014, the California Lawyers for the Arts will host, in Paris, France, the ‘Lights on Paris: Intellectual Property and Cultural Policies in the Digital Age‘. Check the leaflet with all the details.

UNITED STATES OF AMERICA

  • On 4 March 2014, in Stanford, California, the Stanford IP Association (SIPA) and the ABA Forum of Entertainment and Sports Law are co-hosting the half-day conference ‘Convergence of Entertainment and Technology‘. Further details here.
  • On 4 and 5 March 2014, INTA will hos the conference ‘Maintaining the Perfect Partnership‘ in New York. Overview, details and programme are available here.
  • On 5 March 2014, in Alexandria, Virginia, the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) is hosting a roundtable event to ‘solicit public opinions regarding the written description requirement as applied to design applications in certain limited situations’. The event will also be webcast live through the USPTO website. Details can be found here.
  • On 17 March 2014, in Alexandria, Virginia, the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA). The event will also be webcast live through the USPTO website. Details can be found here.
  • On 18 March 2014, in Beverly Hills, California, the USC Gould School of Law will host the 2014 Intellectual Property Institute. Check the event website.
  • Between 20 and 22 March 2014, marcus evans will host the IP Law Summit Spring 2014 in Las Vegas, Nevada. Check the event website.
  • On 21 March 2014, in Arlington, Virginia, the Center for the Protection of Intellectual Property Law of the George Mason University School of Law and the Wisconsin Alumni Research Foundation will host the conference ‘From Lab to Market: How Intellectual Property Secures the Benefits of R&D‘. Additional information is available here.
  • On 21 and 22 March 2014, in Stanford, California, the Stanford Law School will host the two-day conference ‘Patent Trolls and Patent Reform‘. Additional details and registration here.
  • On 25 March 2014, in Washington D.C., Managing Intellectual Property will host ‘U.S. Patent Forum – Overview‘. Details here.
  • On 27 March 2014, in Washington D.C., the George Washington University Law School will discuss ‘The Case Against the Protection of Negative Trade Secrets: Sisyphus’ Entrepreneurship‘. Details here.

SOUTH AMERICA

  • Porto Alegre, 15-18 March 2014 Intellectual Property Seminar. Further details here.
  • On 19 to 21 March 2014, in São Pualo, ASPI (the São Paulo Intellectual Property Association) will hold the 14th International Congress of Intellectual Property “Propriedade Intelectual Transfronteiras: Jogando com o Futuro‘ (Intellectual Property Transborders: Playing with the Future). The congress website is online here.

ASIA

  • On 10 March 2014, in Dubai, Bird & Bird will host the seminar ‘Applied TMT in the UAE‘. Invitation for the event is available online.
  • On 10 and 11 March 2014, in Jerusalem, the Interdisciplinary Center Herzliya (ICH) will commemorate the 80th anniversary of Reinhold Cohn Group & the 20th anniversary of the IDC Herzliya by holding the international conference on ‘The Measure of Intellectual Property New Principles, Future Dilemmas‘. Further information available here.
  • On 13 and 14 March 2014, in Singapore, The Chartered Institute of Arbitrators (Singapore Branch), in association with the WIPO Arbitration and Mediation Centre and the Singapore International Arbitration Centre will host the symposium ‘Innovation Under The Global Spotlight – Overcoming Challenges, Changing Mindsets‘. Check the event website.

Pedro Malaquias is a Portuguese Qualified lawyer. Currently, he is a LL.M. candidate at Queen Mary, University of London and works as a Student Research Fellow at Queen Mary Intellectual Property Research Institute (QMIPRI) and as Assistant Editor at Queen Mary Journal of Intellectual Property (QMJIP). @PedroMMalaquias