Archive for the ‘Copyright’ Category

Copyright update: Hope of copyright clarification for computer programs

Friday July 30th 2010, by Piers Strickland

In a recent decision in the High Court, SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch), 23 July 2010, The Honourable Mr Justice Arnold made a reference to the European Court of Justice (ECJ) concerning the extent to which certain elements are protectable by copyright as a computer program.

In particular, Arnold J considered that guidance from the ECJ was required as to what extent the following features were protectable by copyright:

Programming languages.
Interfaces.
Functionality.

Arnold J concluded that the resolution of the case depended on a number of important issues surrounding the interpretation of Articles 1(2) and 5(3) of the Software Directive and Article 2(a) of the Information Society Directive, and that he should refer such issues to the ECJ.

COMMENT: Despite making a reference to this ECJ, Arnold J expressed his own view in his judgment: i.e. that it should not be an infringement of the copyright that subsists in a computer program to replicate its functions without copying its source code or design. This view is consistent with the previous decision of Navitaire Inc v Easyjet Airline Company and another [2004] EWHC 1725 (Ch). The outcome of this case should be carefully scrutinised by those software companies who wish to replicate certain aspects of software products already on the market.

Copyright Law and Database Law Update – Football Fixtures Lists Protectable by Intellectual Property Rights

Tuesday June 15th 2010, by Piers Strickland

The High Court of England and Wales has recently held that English and Scottish football fixture lists are protected by database copyright.

The Judge in this important piece of copyright litigation held that pursuant to section 3A of the Copyright, Designs and Patents Act 1988, which implements Article 3 of the European Database Directive (96/9/EC) (the “Directive”), that the process of preparing these football fixture lists involved very significant labour and skill, and was not merely the application of rigid criteria to the processing of data. Accordingly, this meant that this “correct” kind of labour and skill (in qualitative and quantitative terms) qualified the fixtures lists for database copyright protection.

The Judge also held that the fixture lists were not protected by the sui generis right in the Directive (known as the “database right” in the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032)), as there had not been any substantial investment in obtaining, verifying or presenting the content of the lists, as opposed to creating them.

COMMENT

This decision will be welcomed by UK football organisations and other sporting bodies that compile their fixtures in a similar way to that of the English and Scottish football leagues. It will also cause concerns for those companies whose businesses rely on reproducing such fixtures lists. Such companies should perhaps review the way in which they are reproducing football fixtures lists etc, to make sure they are not vulnerable to a claim of copyright infringement.

This case was specific to its facts and will not necessarily help all database owners. The Judge was clear that it was the “correct” type of skill and effort which went into preparing the fixture lists which was crucial. Not all databases will utilise this type of skill and labour and so might not benefit from database copyright in the same way. Of course, this could mean that companies reproducing databases of different kinds (to football fixture lists) might be less at risk of infringing copyright and/or the database right.

Trade Mark Law Update – Google case clarifies EU trade mark law

Monday June 14th 2010, by Piers Strickland

The European Court of Justice’s decision in the Google v Luis Vuitton case (Case C‑236/08 Google France, Google Inc. v Louis Vuitton Malletier) has given some guidance on the law (in the UK and the EU) concerning using third party trade marks as Google Adwords (or similar).

In brief, the ECJ held that:

It would not be trade mark infringement to use a third party trade mark as a Google Adword, so long as it was clear (and not confusing) in the search results that the advertiser in question was not the source of the trade marked goods and/or services.
Google was not liable for registered trade mark infringement (on the basis that an Internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94).
The ECJ also stated that an ISP company, such as Google, would not be liable, so long as they didn’t play an “active” role of such a kind as to give it knowledge of, or control over, the data stored. If the ISP has not played such a role, that ISP cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

Comment

This case gives some importance guidance on trade mark law in the UK and the EU on the subject of using third party trade marks as Adwords on Google. Having said that, as with many questions of intellectual property rights infringement, there is still a significant grey area. In particular, you need to look at the advert in question (the one brought up by use of the third party trade mark as an Adword) and ask the following questions:

1. Could an Internet user be confused into thinking that the advertised goods / services are those of, or, are linked in some way, to the trade mark owner?

2. Is the trade mark expressly referenced in the advert itself?

If the answer to the above questions is “no” in all respects, then the chance of the use of trade mark (as an Adword) will be less likely to be considered an instance of trade mark infringement.

In most cases, adverts can be amended to stay on the safe side of the law of registered trade marks. If you need any advice on registered trade mark law in this respect, please contact us.

Also, the third numbered point above of the Judgment is important in terms of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 (the ‘E-commerce Directive’), as it is the first ECJ on the hosting defence in the E-commerce Directive. This defence can be crucial for ISPs in matters such as defamation and copyright infringement. Unfortunately, this ECJ decision leaves a lot of questions predictably unanswered, such as what conduct is required before it can be said that such conduct is something more than merely technical, automatic and passive, and, also what time period can be considered as “expeditious”?

Copyright Law Update – Getty Images successfully recover damages for copyright infringement

Wednesday September 16th 2009, by Piers Strickland

In a case reported on Outlaw, Getty Images has managed to successfully recover damages for copyright infringement from a removals firm who copied a Getty controlled photograph and reproduced it on their website without authorisation. The removal firm in question, JA Coles, subsequently removed the photo, upon receipt of a complaint from Getty, but did not pay damages or indeed respond to Getty’s subsequent correspondence.

Outlaw reports that: “[JA Coles] has agreed to pay £1,953.31 in damages and interest over the use of the picture, plus Getty Images’ legal costs”.

COMMENT: Getty Images are well know for enforcing their rights pro-actively. Most, if not all, copyright lawyers in this country will have had at least one client contact them with a letter before action from Getty Images complaining about alleged copyright infringement.

It appears that Getty uses technological automated methods to spot infringements, so the chances of instances of copyright infringements of their photographs coming to light is perhaps quite high.

Judging from certain blogs and bulletin boards, many people are shocked that Getty would pursue an alleged infringer for damages after it has removed the image from its website. However, Getty will no doubt argue that the value of their business and future revenue streams very much depend on protecting their copyrights robustly.

One thing, however, is clear. If you have copied an image owned or controlled by a company such as Getty (without permission) and reproduced this image in some material form, then this is likely, in many circumstances, to constitute an act of copyright infringement. Normally, a company such as Getty would be entitled to damages or a notional licence fee (which I understand to be around the £2,000 mark for Getty’s business). Innocence is no defence to such an act of copyright infringement and simply removing an image after an act of copyright infringement has taken place does not expunge the original act of copyright infringement.

Furthermore, copyright infringement cases, even small ones, do not go onto the small claims track in the Courts. Instead, such cases are often issued in London’s High Court. In the High Court, the winning party can often recover their legal fees from the losing party. Companies such as Getty often retain very expensive lawyers. Therefore, a company who ignores a warning letter about copyright infringement could be faced with a very expensive legal case on its hands, even if it just emanated from a “minor” infringement.

Lesson: if you happen to receive a copyright infringement warning letter, don’t ignore it, as that it usually a recipe for even more pain. Seek professional advice.

Copyright litigation update: musician succeeds in copyright claim dating back to the 60’s

Wednesday August 12th 2009, by Piers Strickland

The House of Lords has just handed down its judgment in the case of Fisher v Brooker & Others. This case concerned whether Matthew Fisher was entitled to claim ownership to any of the copyright in the iconic song “A Whiter Shade of Pale“.

In the first instance proceedings, the Honourable Mr Justice Blackburne made the following three declarations:

Mr Fisher was the co-author of the song.
Mr Fisher was a joint owner of the musical copyright in the song, his share being assessed at 40%.
The defendants’ licence to exploit the Work was revoked on 31 May 2005, the date when the action was started, 38 years after the initial release of the record.

This was, in effect, a strong victory for the claimant, despite the fact that the song dated back to the 1960s.

The case was appealed to the Court of Appeal, who upheld the decision that Fisher was a joint owner of the copyright in the song. However, the Court of Appeal upheld the defendants’ appeal that given Fisher’s “excessive and inexcusable delay” before bringing a claim, i.e. from the 1960’s to 2005, it was unjust that Fisher should succeed in his claims to a joint interest in the song (i.e. whether he was entitled to the commercial spoils deriving from the song) or to have the implied licence to the respondents revoked.

The case was further appealed to the House of Lords (the highest court in the land for such cases of copyright infringement), which held that the Court of Appeal was wrong to hold that Fisher could on the one hand own the copyright in question, but then be barred from any chance of obtaining an injunction for copyright infringement. The House of Lords noted that there was nothing under English law which set a time deadline for laying claim to ownership of copyright. (The position in Scotland is apparently potentially different.) The House of Lords also noted the crucial distinction which exists between “the exercise of rights (i.e. exploiting copyright) and the obtaining of discretionary remedies (i.e. getting an injunction)”.

Accordingly, Fisher is now at liberty to enjoy his share deriving from the copyrights in the song and also has the theoretical right to obtain an injunction. However, this theoretical right to an injunction would have to be determined by the trial judge in a claim for copyright infringement and be decided on the merits. Although it was Fisher’s position that the proceedings were not about getting an injunction, such a claim was part of the originating copyright infringement proceedings. In any event, it may well be that any further attempt to enforce an injunction against the defendants might be refused on equitable grounds relating to delay etc, but the point is that Fisher is not prevented from trying.

Hopefully for all parties, further proceedings will not be needed after this judgment from the House of Lords.

COMMENT: This case is bad news for the music industry. One of main issues was on the subject of delay and related legal concepts, such as laches and estoppel. The court rejected a defence on these grounds in respect of a claim to ownership of copyright. This claim might therefore result in other aged musicians thinking about the possibility of launching their own copyright claims on the basis that they have not got their fair share of the historical spoils from a song.

Each case will have to be assessed on its merits. But the case of Fisher v Brooker does offer considerable encouragement for potential claimants for musical copyright infringement (and for their lawyers). Music companies are bound to be less impressed and may be talking to their insurers about this increased risk of a claim in respect of poorly drafted historic music agreements.

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