IP For In House Lawyers

If you are an in- house lawyer, specialising in IP and in London on Tuesday, December the 11th, then IP For In-House Lawyers is the conference for you! There is a link on our side bar (the regularly updated 'forthcoming events') and the day long series of talks and workshops will provide a comprehensive guide to  UK and EU developments in IP law, specifically designed for in-house lawyers. Speakers include Kevin Mutch, Group Legal Director, Faberge, and David Wilkinson, Head of IP at Stevens and Bolton.  

It’s all at the Hyatt Regency Churchill Hotel, London W1A and there is a marvellous 20% discount for 1709 readers.

Work for hire: should patent law borrow from copyright?

Joshua L. Simmons (Kirkland & Ellis LLP, New York NY) writes to tell us of an unusual cross-discipline paper he has authored, which embraces a problem faced by both patent and copyright law. He explains:

"My new paper, "Inventions Made For Hire", was published last week. The PDF is available on SSRN here and an eBook version is available from the New York University Journal of Intellectual Property & Entertainment Law here. 

The article is a comparison of the developments in copyright law and patent law in the nineteenth century that resulted in copyright law developing a work made for hire doctrine while patent law only developed a patchwork of judge-made employment doctrines. The article theorizes that patent law did not develop an inventions made for hire doctrine, because inventive activity was almost exclusively perceived to be performed by individuals. It goes on to suggest that, as patentable inventions today are generally perceived to be invented collaboratively, the Patent Act should be amended to borrow from the Copyright Act and adopt a principle similar to the work made for hire doctrine".

It's an interesting thesis, and a plausible one.  What do readers of this blog think, though?

A pre-emptive strike for rights?

Following on from John and Elonora's blogs on moves to update copyright law in the European Union, and of course the ongoing moves to reform intellectual property law in the UK in the aftermath of the Hargreaves Review, comes news that a group of creators and copyright owners are urging the UK government to reconsider impending changes to copyright law which they say would seriously restrict the ability of British creators and copyright holders to license and earn revenue from their rights - buy widening and redefining exceptions to copyright infringement - perhaps to something more akin to the US 'Fair Use' doctrines.

Organisations representing a wide cross section of UK creators and businesses including art, music, film, TV, print and publishing, argue that the broad scope of potential copyright exceptions set to be announced later this month by the Intellectual Property Office, will damage both economic and cultural growth. Signatories include the Artists Collection Society, the Bridgeman Library, the BPI, the major record labels' association, The British Academy of Songwriters, Composers and Authors (BASCA), The Design and Artists Copyright Society (DACS), PRS for Music, PPL, The Musicians Union, The British Video Association, The Incorporated Society of Musicians and the Newspaper Licensing Agency. 

The exceptions they seem to be agitated by are expected to be for (a) private copying (b) use of works for education (c) wider exceptions for public performance (d) a new exception for parody and pastiche and (e) exceptions for text and data mining. Instead the group supports an alternative proposal Licensing UK that supports creators’ rights to license businesses where value is being created. 

In a press release the Group says that the proposal has been sent to Dr Vince Cable MP, Secretary of State for Business, Innovation and Skills and to the IPO in advance of the policy decision being finalised which should be by the end of 2012 and their new website says 

"Government is set on a course to introduce substantial new copyright exceptions that will take away the rights of creators to license their creative endeavours and the ability to make a return on the investment in producing their works. The UK is an exporter of creative content, talent and services. We are global leaders, in what we create, in our growing digital businesses in terms of the volumes of licences granted to facilitate legitimate services. Extending exceptions sends out a damaging signal that the UK government does not care about the rights of creators or their ability to earn licensing revenue. 

Creators and creative organisations call simply for the right to license their works to others at the point at which creative content creates value for them. Removing the right to license impedes the ability to create commercially viable services as business models evolve. The creative sector is forward-looking. It is actively promoting copyright licensing solutions, especially in support of the partnerships with tech companies with whom they are developing new digital business models." 

And the website explains that Licensing UK is an alternative regime that "Rather than taking away creators’ rights and forcing divisions between creators and consumers, we call on the Government to work with creators, creative businesses and consumers" to ensure that 

1. Creators can be paid a fair price for the use of their creations and producers and distributors investing in those creations can achieve a fair return on their investments through balanced negotiations. 

2. Access to content by consumers should be as straightforward as possible, at a fair price. 

3. Businesses can connect the two and provide sustainable services to creators and consumers.

More information about Licensing UK can be found on the PRS for Music website   

The full consultation document is available here http://www.ipo.gov.uk/consult-2011-copyright.pdf

Commission signals intent for more copyright reform (or does it?)

A press release  from the EU Commission fires the starting gun for a new round of copyright legislation and lobbying.  Buried in the press release is a major political move in terms of the balance of power in the copyright debate.  It is quite short and worth quoting in full with commentary...

Commission agrees way forward for modernising copyright in the digital economy

At the initiative of President Barroso, the European Commission has today held an orientation [is that anything to do with orienteering? Did they have a map?] debate on content in the digital economy.

The digital economy has been a major driver of growth in the past two decades, and is expected to grow seven times faster than overall EU GDP in coming years [although given how little GDP growth there is in the EU, that is not much of a claim]. Online, there are new ways of providing, creating and distributing content, and new ways to generate value. This represents a challenge and an opportunity for all the creative industries, authors and artists and other actors [are actors not artists? at least they didn't say "enterprises"] in the digital economy.

The Commission's objective is to ensure that copyright stays fit for purpose in this new digital context. Good progress has been made in implementing the May 2011 Intellectual Property Rights Strategy, but there remain [sic - a pedant would say "remains"] a series of issues which need[needs?] to be addressed to ensure an effective single market in this area.

The Commission will therefore work for a modern copyright framework that guarantees effective recognition and remuneration of rights holders in order to provide sustainable incentives for creativity, cultural diversity and innovation; opens up greater access and a wider choice of legal offers to end users [how can a copyright framework guarantee more legal services without some element of compulsory licensing?]; allows new business models to emerge; and contributes to combating illegal offers and piracy [contributes to piracy? - no, contributes to combating piracy... we hope].

Today the Commission has agreed on two parallel tracks of action:

1) Immediate issues for action: launch of stakeholder dialogue

A structured stakeholder dialogue [translation anyone?] will be launched at the start of 2013 to work to address six issues where rapid progress is needed: cross-border portability of content [I can take my iPad and my CDs across borders; surely the issue, or non-issue depending on one's perspective, is cross-border availability of services?], user-generated content, data- and text-mining [is this a copyright issue?], private copy levies, access to audiovisual works and cultural heritage. The discussions will explore the potential and limits of innovative licensing and technological solutions in making EU copyright law and practice fit for the digital age.

This process will be jointly led by Michel Barnier, Neelie Kroes and Androulla Vassiliou  [THIS IS THE BIG NEWS - COPYRIGHT IS NO LONGER SOLELY CONTROLLED BY DG SINGLE MARKET BUT IS ALSO UNDER THE CO-CONTROL OF THE DIGITAL AGENDA TEAM, which is perceived to be more sympathetic to the agenda of Google and the other tech giants than to that of content and rights-holders, as well as the culture Directorate]. By December 2013 the College will take stock of the outcome of this dialogue which is intended to deliver effective market-led solutions to the issues identified, but does not prejudge the possible need for public policy action, including legislative reform. [so nothing is going to happen in any great hurry - after a year, the Commission will "take stock"]

2) Medium term issues for decision-making in 2014

This track will include the completion of the relevant market studies, impact assessment and legal drafting work with a view to a decision in 2014 whether to table legislative reform proposals[clearly they have not pre-judged anything, but why do they need to do legal drafting if there is no reform to be proposed...]. The following four issues will be addressed together: mitigating the effects of territoriality in the Internal Market; agreeing appropriate levels of harmonisation, limitations and exceptions to copyright in the digital age; how best to reduce the fragmentation of the EU copyright market [is this any different from "mitigating the effects of territoriality - anyone?] ; and how to improve the legitimacy of enforcement in the context of wider copyright reform. Based on the outcomes of this process the Commission will decide on the next steps necessary to complete its review of the EU copyright framework.

Copydan Båndkopi reference heads for Luxembourg

Case C-463/12 Copydan Båndkopi is the latest case to be referred to the Court of Justice of the European Union (CJEU) for preliminary rulings on a number of questions relating to fair compensation of right holders. The questions, cut-and-pasted from the UK Intellectual Property Office website, are as follows:

1. Is it compatible with Directive 2001/29/EC [the InfoSoc Directive] for Member States to have legislation which guarantees compensation for the rightholders for reproductions made using the following sources:

(1) files where the use in question is approved by the rightholders and paid for by the customer (licensed content from online shops, for example);

(2) files where the use in question is approved by the rightholders and not paid for by the customer (licensed content, for example, in connection with a marketing action);

(3) the user’s own DVD, CD, MP3 player, computer, etc., where effective technological measures are not applied;

(4) the user’s own DVD, CD, MP3 player, computer, etc., where effective technological measures are applied;

(5) a third party’s DVD, CD, MP3 player, computer, etc.;

(6) unlawfully copied works from the Internet or other sources;

(7) files copied lawfully in some other way from, for example, the Internet (from lawful sources where no licence has been granted)?

2. How must effective technological measures be taken into account, (ref.Article 6 of the Directive) in the Member States’ legislation on compensation for rightholders (ref. Article 5(2)(b) of the Directive)?

3. In the calculation of compensation for private copying (ref. Article 5(2)(b) of the Directive), what constitutes ‘situations where the prejudice to the rightholder would be minimal’, as referred to in recital 35 in the preamble to the Directive, with the result that it will not be compatible with the Directive for the Member States to have legislation which provides for compensation for rightholders for such copying for private use (ref. in this connection the survey referred to in part 2 above)?

4. (a) If it is assumed that the primary or most important function of memory cards in mobile phones is not private copying, is it compatible with the Directive for the Member States to have legislation which guarantees compensation for rightholders for copying on mobile phone memory cards?

(b) If it is assumed that private copying is one of the several primary or essential functions of memory cards in mobile phones, is it compatible with the Directive for the Member States to have legislation which guarantees compensation for rightholders for copying on mobile phone memory cards?

5. Is it compatible with the concept of ‘fair balance’ in recital 31 in the preamble to the Directive and with the uniform interpretation of the concept of ‘fair compensation’ (ref. Article 5(2)(b) of the Directive), which must be based on ‘prejudice’, for the Member States to have legislation under which remuneration is collected for memory cards, whereas no remuneration is collected for internal memory such as MP3 players or iPods, which are designed and primarily used for private copying?

6. (a) Does the Directive preclude the Member States from having legislation which provides for the collection of remuneration for private copying from a producer and/or importer who sells memory cards to business concerns which sell the memory cards on to both private and business customers, without the producer’s and/or importer’s having knowledge of whether the memory cards have been sold to private or business customers?

(b) Is the answer to question 6(a) affected if provisions are laid down in a Member State’s legislation which ensure that producers, importers and/or distributors do not have to pay remuneration for memory cards used for professional purposes, that producers, importers and/or distributors, where the remuneration has nevertheless been paid, can have the remuneration for memory cards refunded in so far as they are used for professional purposes, and that producers, importers and/or distributors can sell memory cards to other undertakings registered with the organisation which administers the remuneration scheme, without payment of remuneration?

(c) Is the answer to questions 6(a) and 6(b) affected

(1) if provisions are laid down in a Member State’s legislation ensuring that producers, importers and/or distributors do not have to pay remuneration for memory cards used for professional purposes, but the concept of ‘professional purposes’ is interpreted as conferring a right of deduction applying only to undertakings approved by Copydan, whereas remuneration must be paid for memory cards used professionally by other business customers which are not approved by Copydan;

(2) if provisions are laid down in a Member State’s legislation ensuring that producers, importers and/or distributors, where the remuneration has in fact been paid (theoretically), can have remuneration for memory cards refunded where they are used for professional purposes, but (a) it is in practice only the purchaser of the memory card who can have the remuneration refunded, and (b) the purchaser of memory cards must submit an application for refund of remuneration to Copydan;

(3) if provisions are laid down in a Member State’s legislation ensuring that producers, importers and/or distributors may sell memory cards to other undertakings registered with the organisation which administers the remuneration scheme, without payment of remuneration, but (a) Copydan is the organisation which administers the remuneration scheme and (b) the registered undertakings have no knowledge of whether the memory cards have been sold to private or business customers?

If you would like to tell the IPO what you think about this case please email policy@ipo.gsi.gov.uk by 12 December 2012.

This blogger has, as usual, no idea of the background to this reference, though he knows that Copydan is a Danish body and suspects therefore that this reference emanates from Denmark.  He also notes that some of the questions descend to a level of factual specificity which, he thinks, make it improbable that the CJEU will provide detailed answers.

If any readers can shed light on the background to this case, we will all be grateful.

Transferring a Copyright Interest Under French Law

A ruling by the French Cour de cassation handed down on May 16th last(see here) provides the occasion to explain some fundamental principles applicable to the transfer of copyright interests under French law.  (The distinction between an assignment and a license is not well-recognized in French copyright law.  What matters is the intent to transfer or convey some copyright interest or prerogative.)

A photographer assigned (or licensed) his rights in a picture with a view to creating a poster incorporating his original photographic work.  He subsequently discovered that the poster had been reproduced on a blog without his consent and brought legal proceedings aganinst the blog's author.

The trial judge held that his action was inadmissible inasmuch as the poster was a derivative work (oeuvre composite) and he had authorized the use of his photographic work for the creation thereof.

The Cour de cassation reversed, holding that the trial court had failed to verify whether the initial assignment/license covered the reproduction of the poster by a third party to illustrate a web site or blog.

The Cour de cassation's reasoning is clearly sound and is based on two cardinal principles of French copyright law:

- firstly (enshrined in Section L.131-3 of the Intellectual Property Code) that any transmission or transfer (whether charcaterized as an assignment or a license) of a copyright interest is subject to the requirement that each right be mentioned separately and that the scope thereof be precisely delineated as to its extent, purpose, place and term;

- secondly (enshrined in Section L.113-4 of the Intellectual Property Code), that any use of a derivative work in which a pre-existing work is embodied is subject to the rights of the author of such pre-existing work.

On a procedural note, it is interesting to point out that the Cour de cassation was ruling on a direct appeal (on matters of law only) from a trial judgment (bypassing an appellate court), a relatively rare phenomenon.

EU to revise InfoSoc Directive with a FLET approach

Gangnam Style upgraded

Tomorrow the EU Commission will hold an orientation debate on content in the Digital Economy. This will address the points raised in a document released last week (which you can find on the website of  IP Watch), in particular "whether the copyright framework remains fit for purpose in the digital context." [This refrain seems to have become more popular than Gangnam Style, at least in copyright circles]  

Consumers and businesses are said to agree that copyright rules have to be made more flexible and their views were a major factor in the rejection of ACTA. The growth of Pirate Parties in some Member States is another indicator of this trend, explains the document.

Therefore the time is apt for the Commission "to agree on orientations on copyright in the digital economy for the second half of its mandate, taking into account the opportunities and challenges for the full value chain of the internet economy. The European Council has also recognised the need to modernise the copyright system in the Compact for Growth and Jobs."

What the Commission is going to discuss includes the following:

I) The balance of rights and obligations, in particular: the nature and role of the different players in the internet value chain for the production, distribution and consumption of creative content. Particular attention shall be dedicated to user-generated content, aggregators, users' activities online, direct licensing, enforcement.

He's certainly fit and is
also ready to fix copyright

II) The EU copyright framework, as resulting from the InfoSoc Directive. To preserve a fair balance of rights and interests between right-holders and consumers, the directive included a number of possible exceptions and limitations, while leaving significant flexibility to Member States for their transposition. This situation is said to cause fragmentation of the Single Market and legal uncertainty.

Following the adoption of the IPR Strategy in May 2011, the Commission has taken various steps to respond to the challenges of copyright in the digital economy, including the adoption of the Orphan Works Directive, the Memorandum of Understanding on Out-of-Commerce Books, and a proposal for a directive on collective rights management.

But these initiatives have not addressed all the challenges identified above. Therefore, there is a need to review and modernise the copyright framework set out in the InfoSoc directive. In particular, the elements calling for specific consideration are four: Fragmentation - Limitations&Exceptions, Enforcement, Territoriality (FLET, for those who love acronyms or just want to learn things faster).

1.   How best to reduce the fragmentation of the EU copyright market. Currently distinct copyrights exist for the 27 national territories and must in principle be subject to appropriate licensing for distribution in each Member State. Options floated in the 2011 IPR Strategy include the creation of a European Copyright Code, the setting up of an optional unitary copyright title which would exist in parallel with the national regimes, and the obligation of multi-territorial licensing.

2.  The extent to which the current level of harmonisation as well as the scope of the limitations and exceptions to copyright are appropriate for the digital age, given that they were implemented to varying degrees in the Member States.

3.  How to improve enforcement. Any change in the copyright directive will have to be mirrored in parallel revisions of the Enforcement Directive (the IPRED directive). The impact of a possible copyright reform on fundamental rights [have you noticed all those references to fundamental rights in recent CJEU copyright cases?], as well as the consequences on the EU's international obligations in the field and on the EU's position towards third countries would also have to be assessed.

4.  How to mitigate the effects of territoriality in the Internal Market by looking at all options, including introducing a "country of origin" approach or an approach based on the "targeting" of certain publics. [remember what the Court of Justice said in Sportradar (noted here and here)?] This needs to take into account the fact that some restrictions on the provision of services are commercially based and not related to copyright [perhaps the decision in Murphy (noted here) went too far?]

What recipe for EU copyright?

Work to prepare a full revision of the legal framework should be completed by early 2014 so that the Commission is in a position to decide whether to table legislative proposals during this mandate.

III) Specific issues, including cross-border portability, user-generated content, text and data mining,  private copying levies,  the audiovisual sector, and some activities of cultural heritage (in particular format shifting).

The questions which the members of the Commission are called to answer are the following:

1) Do you share this analysis of the developments of the internet economy and its implications for the copyright directive?

2) In particular, do you agree with the terms of the revision of the [InfoSoc] directive outlined in the present note?

3) Do you agree that in parallel rapid progress should be made on the ... issues identified here?  Are there other areas which should be prioritised in the short term?

Tajik accession resonates with Dixie

A WIPO notification, Phonograms Notification No. 87: Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, has just been published.  This gives the welcome news that the Republic of Tajikistan has decided to accede to this Convention (sometimes called the Geneva Convention) a mere 41-and-a-bit years after it was concluded.

The Convention takes effect for Tajikistan on 26 February 2013 -- a date which has no apparent religious, cultural or political significance in Tajikistan at all. It is however a date with profound significance for the recorded music industry: on 26 February 1917 the Original Dixieland Jass Band recorded "Livery Stable Blues", the first ever jazz single, for the Victor Talking Machine Company in New York.