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.

In brief, the ECJ held that:

1. 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.
2. 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).
3. 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”?

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.

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

1. Mr Fisher was the co-author of the song.
2. Mr Fisher was a joint owner of the musical copyright in the song, his share being assessed at 40%.
3. 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.

A new set of proposals by some of the leading individuals involved in intellectual property law, the Intellectual Property Court Users’ Committee, has set out to try and reduce this injustice and produced a report.

The report points out that the (London) Patents County Court has failed in one of its key aims: to offer a more cost-effective alternative to litigating intellectual property rights in England and Wales, as opposed to the High Court in London.  There are several proposals made by the Intellectual Property Court Users’ Committee, but one of the most significant is the proposal to limit costs recovery from the losing party from £25,000-£50,000 for intellectual property litigation.

If the government acts upon the proposals of the Intellectual Property Court Users’ Committee and make such proposals legally binding in terms of the Civil Procedure Rules, then this might go a significant way towards making legal proceedings in the UK more affordable, in the way in which other countries have already provided for.

As such, the proposals have the support of Strickland LLP, which is committed to providing IP litigation services to range of companies, from SMEs through the large blue-chip companies.

In a the recent case of Infopaq International A/S v Danske Dagblades Forening, Case C‑5/08, 16 July 2009, the ECJ considered whether reproduction of extracts from newspaper articles infringed copyright.

Facts

Infopaq International A/S (“Infopaq”) operated a business which collected summaries of selected articles from Danish daily newspapers.

Danske Dagblades Forening (“DDF”), a professional association of Danish daily newspaper publishers, became aware in 2005 that Infopaq was scanning newspaper articles for commercial purposes without authorisation from the relevant rights-holders. Taking the view that such consent was necessary, DDF complained to Infopaq about this procedure.

Infopaq denied that consent was required, and brought an action against DDF before the Østre Landsret (Eastern Regional Court), claiming that DDF should be ordered to acknowledge that Infopaq was entitled in Denmark to apply its data capture procedure without DDF’s or its members’ consent. The Østre Landsret dismissed that action, so Infopaq then appealed to the Højesteret (the Danish Supreme Court).

The Højesteret stayed the proceedings and asked the ECJ for a preliminary ruling on:

•    Whether the concept of ‘reproduction in part’ within the meaning of the Copyright Directive is to be interpreted as meaning that it encompasses the storing and subsequent printing out on paper of a text extract consisting of 11 words;

•    Whether acts of reproduction occurring during a data capture process, such as that at issue in the main proceedings, satisfy the conditions laid down in Article 5(1) of Copyright Directive and, therefore, whether that process may be carried out without the consent of the relevant rightholders, since it is used to draw up summaries of newspaper articles and consists of scanning those articles in their entirety to produce a digital file, storing an extract of 11 words and then printing out that extract.

The Law

Article 2(a) of the Copyright Directive states that:

“Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part:

(a) for authors, of their works”

Article 5(1) of the Copyright Directive provides that:

“Temporary acts of reproduction referred to in Article 2, which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable:

(a) a transmission in a network between third parties by an intermediary, or

(b) a lawful use

of a work or other subject-matter to be made, and which have no independent economic significance, are exempted from the reproduction right provided for in Article 2.”

The exceptions and limitations provided for in Article 5(1) can only be applied in certain special cases which do not conflict with normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the right-holder (Article 5(5), Copyright Directive).

Decision

The ECJ held that Infopaq’s data capture process did come within the concept of reproduction as set out in Article 2 of the Copyright Directive, if the elements reproduced were the “expression of the intellectual creation of their author”.

The ECJ also ruled that the act of printing out an extract of 11 words, during such a data capture process, was not transient in nature as required by Article 5(1) of the Copyright Directive. Therefore, that process could not be carried out without the relevant right-holders’ consent.

Comment

The battleground in copyright disputes and in copyright litigation will be over the question of whether the reproduction in question will constitute an “expression of the intellectual creation of their author”.   It has been left for the national courts to decide upon this issue.

In the courts of England and Wales, copyright infringement matters have been recently decided by assessing whether a “substantial part” of the copyright work has been reproduced.  The substantial part test is part qualitative and part quantitative.

The new test introduced by the ECJ seems to be different.  It doesn’t seem to place the reproduced text in its originating context, but instead asks whether this text alone is the expression of the intellectual creation of their author.  This will be difficult for the national court to decide during copyright litigation proceedings and will provide hours of fun for barristers in court (and thus hours of frustration for clients…).

The ECJ also gave some useful guidance about Article 5(1) of the Copyright Directive.  In particular, in respect of what amounts to a “transient” act for the purposes of that provision. The ECJ made clear that, amongst other things, in order to fall under this condition the process had to be automated so that the copy created was deleted automatically, without human intervention.  Again, the ECJ left it for the national courts to decide whether such acts of reproduction were transient given this guidance.

The English Premier League is one of the plaintiffs alleging infringement of copyright before the US Courts against YouTube in respect of unauthorised football content appearing on the YouTube platform.

YouTube (now owned by Google) argued that because the Premier League had failed to register its copyrights, then this prevented the Premier League from claiming statutory damages for copyright infringement.

The Premier League argued that requiring foreign copyright owners to register their copyrights would violate the Berne Convention.  The Berne Convention is an international copyright treaty, to which the US has signed up. The Berne Convention states that the enjoyment and exercise of copyright “shall not be subject to any formality“, i.e. such as registration.  In the UK, copyright subsists automatically upon creation, subject to certain qualifying criteria.

The US Judge disagreed, stating that the US considered that the requirement, that foreign copyrights must be registered, was compatible with the US’s obligations under the Berne Convention.  The Judge went on to state that that non-US companies must register all works with the US Copyright Office, within three months of first publication of such works, if they ever wish to claim statutory damages for any subsequent infringement of these works.

Ultimately, the Premier League’s case for copyright infringement against YouTube in this respect wasn’t fatally damaged as it appears that they were able to rely on a different legal provision to retain their right to claim statutory damages.

However, this case serves as a reminder for copyright owners to consider registering their copyrights in the US, if they want to protect their ability to recover statutory damages before a US court.

Sources: Reuters and Outlaw.

In fact, TV format rights have not yet been recognised by the English Courts.  The English Courts did get the chance to have a look at this issue in the case of Hughie Green v NZ Broadcasting Corporation [1989] 2 All ER 1046.  Hughie Green claimed format rights in the show Opportunity Knocks.  In this case the Court held that there was no “format right”, at least in the manner claimed by Green.  This claimant perhaps fell down by not specifically detailing and expressing his rights in a way that would have been more likely be protected under the law of copyright.

Despite the lack of judicial recognition of format rights, as such, the television industry widely recognises and trades in format rights.  However, this is not mere self-serving delusion and folly by the television industry.  As the legal basis for protecting format rights becomes better known and understood (i.e.the various protective aspects of copyright and perhaps trade marks, design law etc), so format rights “owners” can be increasingly confident that if they had to enforce their rights in Court, they would be successful in doing so.

An excellent study into format rights has just been published by Bournemouth University, which has further details on this fascinating area: link.

UK Customs’ made the following statement:

“Our [previous] practice has been to seize these items accepting a witness statement from the right holder as confirmation that the goods are infringing and therefore liable to forfeiture. Should the owner disagree with this determination they have the right to challenge this through judicial proceedings.

We now accept that the burden of proof should be upon the right holder who must confirm the infringing nature of the goods by taking legal proceedings. More pertinently any proceedings must ordinarily be instituted within ten working days but no later than twenty working days after notification of detention. Right holders must therefore be prepared to institute proceedings within the time period set out in the Regulation. Goods will be seized only if the right holder gains a successful judgment and we are directed by the court to seize the items in question.“

UK Customs has defended these changes on the basis that they are needed to comply with Article 13 of Article 13 of Council Regulation 1383/2003, which has been implemented into the UK via SI 2004 No. 1473.

This is a blow for intellectual property rights holders, as UK Customs had been a very effective (and cheap!) way of acting against infringements coming into the UK.

However, no doubt some rights holders may have been over-using UK Customs in this respect.  This may be another reason why UK Customs felt that the balance needed redressing by putting the burden of proof on the intellectual property rights holders.

The new regime may well impose a significant costs burden onto intellectual property rights holders.  Issuing court proceedings for each infringement will certainly be an expensive business.  Also, while some intellectual property infringements will be quite straightforward, others, such as those involving parallel / grey imports, may be legally much more uncertain.  Therefore, intellectual property rights holders may even be forced to issue proceedings on weak / uncertain grounds, which is a recipe for even more expensive potential litigation.

In a time of recession and continuing problems with counterfeit goods, this news has probably gone down with intellectual property rights holders about as well as a cup of cold sick. Nice.

Mind you, HM Customs may end up saving some money, which might  go some way to repaying the Government’s £Gazillions of debt. Some good news for Gordon, at last.

Part of the concern seems to be that Google is trying to exert exclusive rights over certain works, specifically orphan works.  Any kind of exclusivity, particularly when one party is one of the largest IT companies in the world, and the leader in this specific field, raises significant potential competitions concerns.

As a result, it seems that Google’s attempts to clear the copyrights in question is just the first part of a larger legal battle.  The various competition authorities may prove an even tougher hurdle to overcome than the US authors.

The Google Books project is also an interesting example of the complex interplay between intellectual property rights (here copyright) and competition law.   Certain intellectual property rights offer monopolies, whereas competition laws seek to prevent (unlawful) monopolies.  The tension between these two positions add another dimension to this Google Books saga.