Archive for the ‘Website law’ Category

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.

Website Law / Web Law – Court of Appeal of England and Wales considers effectiveness of exemption clauses on websites

Friday July 31st 2009, by Piers Strickland

Most people (especially cautious creatures such as lawyers) worry a bit when posting content online in blogs etc, especially anything which could be considered to be “advice”, legal or otherwise. The thought of some nicompoop relying on a blog instead of paying for proper detailed advice can keep website owners up at night. The Court of Appeal of England and Wales has kindly added to that paranoia. Many thanks, M’Luds.

In a case about a disclaimer on the website of a pool installers’ trade body, SPATA (Gary Patchett And Karen Patchett V Swimming Pool & Allied Trades Association Ltd), the Court of Appeal had to decide whether the disclaimer provided on SPATA’s website was effectively brought to the Patchetts’ attention to enable SPATA to escape liability.

The case was quite complex and entailed a review of the long-standing English case law surrounding exclusion clauses, including the case of Hedley Byrne v Heller. This old case set out a test for deciding the scope of a duty of care between advisor and advisee.

Altough SPATA won, the take away message from this case is that exemption clauses should be located on the same page as any “advice” given on a website. Hence, if your website has blogs or articles on it, then a link or reference to the exemption clause in question should be clearly visible on the same page. Constructing your site like this would increase the chances of any exemption clause at least being effectively brought to the attention of the relevant reader. (Whether the exemption clauses will be effective themselves is another question and will be determined by how well they are drafted.)

This court decision will be important in terms of Website Law / Web Law. Many (cautious) website owners will be reviewing their website terms and conditions and exemptions nervously in light of this new decision.

This case further serves to emphasise that Website Law / Web Law does not stand still. In order to maximise the chances of websites being fully compliant with the various “website laws”, website owners should seek periodic legal advice to ensure that they are minimising their exposure to legal liabilities, for example by tweaking their exemptions clauses and website terms of use.

Web law / Website law

Thursday July 30th 2009, by Piers Strickland

There is no single source of “website law” or “web law”. Instead, the law affecting websites (hereinafter described in this article as “Website Law”) is varied and complex, comprising elements of both civil and criminal law.

The following precise bodies of law may need to be considered by website owners operating in the UK:

Copyright issues – websites which host copied text and other content might run into copyright infringement issues. Website owners will also want to make sure that they own their important copyright and other important content (which may be protected by a range of intellectual property rights).
Trade mark issues – websites which use a trade mark in a URL address or otherwise use brands / trade marks in the course of trade may risk brand disputes (i.e. trade mark infringement proceedings or passing off disputes).
Domain name issues – use of a domain name which is too close to another’s brand may also lead to a brand dispute / trade mark infringement issues.
Defamation – any libellous content on your website could lead to a defamation issue on your website.
Data protection – website owners are likely to be processing personal data in a way which is likely to need consideration of the UK’s Data Protection Act. Breaches of data protection law can lead to criminal sanctions.
E-commerce laws, such as the Electronic Commerce Regulations and the Distance Selling Regulations.
E-marketing Law – such as The Privacy and Electronic Communications (EC Directive) Regulations 2003, which sets out laws relating to electronic marketing and related communications.

In other words, Website law is a complex area. Lawyers who do not specialise in the above area are not really well placed to advise on Website Law / Web law. If you require expert advice on Website Law, or on any other aspect of “Internet Law”, then please contact Strickland LLP.

In a series of future blogs, I will go into a bit further detail about the above areas of Website Law.

Recent posts

Subscribe

Categories

Archive