Archive for April, 2011

Royal rubbish – does unofficial wedding merchandise break the law?

Hip hip hooray! We’re all off work tomorrow! I mean, er, we’re all going to be celebrating the Royal Wedding tomorrow!

Royal Wedding hype is now in overdrive, and the list of incredible Royal Wedding tat on sale is almost as ridiculous as Prince Phillip’s legendary gaffes. Dobbies is selling the essential Royal Wedding rose, for patriotic gardeners everywhere (let’s hope the wedding outlasts the flowers). Heritage Condoms Limited is punting special royal prophylactics, which “combine the strength of a Prince with the yielding sensitivity of a Princess-to-Be”. And, in what is surely a dreary publicity stunt, mugs are onsale which “accidentally” star Prince Harry.

Is it legal?
This got me wondering about whether or not this tat – the “Royal Rubbish”, if you will – infringes any rights of the Royals. Official merchandise personally approved by Prince William and Kate is being overseen and sold through the Royal Collection, which looks after the Queen’s extensive art collection and arranges public exhibitions.

But what about all the other Royal Rubbish?  If it’s not official, does that mean that it’s illegal? Certainly, the use of royal arms, emblems and representations of a member of the royal family on souvenirs is prohibited by the Trade Marks Act 1994, unless permission has been obtained from the Royal Family. Selling unlicensed goods can lead to a criminal prosecution. (I’m not sure if it also qualifies as treason – if so, there is a sentence of life imprisonment!)

Temporary relaxation of rules
Happily, in the run-up to the wedding, Prince William has approved a “temporary relaxation” of the rules governing the commercial use of royal photographs and insignia on souvenirs. This allows the use of approved photographs of the royal couple and the full Coat of Arms of Prince William. Such use must be in “good taste”, carry no implication of royal approval and must make it clear they are commemorative items. There are also tough restrictions on what constitutes “souvenirs”, and all sales must cease by the start of October.

Overall this “temporary relaxation” seems sensible, especially in light of the disastrous attempts by the Diana Princess of Wales Memorial Fund charity to control the use of Diana’s image. In 1998, The charity was unhappy about companies using Diana’s name and/or likeness on memorabilia, and took particular issue with the Franklin Mint Co, which was producing plates, dolls and other memorabilia bearing Diana’s name and likeness. The charity tried to use the Californian district courts to sue the Franklin Mint Co for false endorsement and false advertisement, violation of California’s “post-mortem right of publicity” statute, violation of trade marks, and unfair competition.  The Court of Appeals’ judgement provides a good summary of why the Californian courts were not impressed with these claims, the principal problem being that Diana had been a resident of the UK, and UK law did not (and still does not) recognise a post-mortem right of publicity. The litigation continued for years, with an unwelcome twist being that the Franklin Mint counter-sued The charity for malicious prosecution of the first lawsuit!  At the start of this year the parties finally reached a $25 million settlement, and all settlements linked to the case were given to charity anyway.

False endorsement
How does this square with the British Chancery Court decision in Irvine v Talksport, in which it was held that false endorsement claims could be brought under the “passing off” doctrine, and that celebrities/public figures have a property right in their goodwill which they can protect from false claims or suggestions of endorsement of a third party’s goods or business? Well, in his judgement Justice Laddie emphasised, more than once, that the defendant had not actually sold merchandise bearing the celebrity/public figure’s name and/or likeness, and that the opinion did not address the question of whether UK law prohibits the unlicensed manufacture and sale of merchandise bearing celebrity/public figures names and/or likenesses.

So, enjoy the Royal Wedding, and use that tea towel which you bought down the Barras safe in the knowledge that whoever manufactured it is unlikely to end up in the Tower!

ISPs fail to overturn Digital Economy Act

BT and Talk Talk have failed in their attempt to overturn certain provisions of the Digital Economy Act (“DEA”) by judicial review.

Justice Kenneth Parker rejected arguments led by the ISPs that the contested provisions of the DEA will breach key pieces of European Union legislation. In Justice Parker’s opinion:

  • The Technical Standards Directive will not be breached because the DEA is not currently legally enforceable against individuals or ISPs, and therefore it is perfectly acceptable for the Government to notify the DEA to the European Commission at the same time that it notifies the forthcoming draft Initial Obligations Code (which is being prepared by Ofcom);
  • The E-Commerce Directive (and its “mere conduit” protection for ISPs) will not be breached because the DEA will not impose liability on ISPs for copyright infringement; and
  • The Data Protection Directive will not be breached because, although the “relevant data” to be processed by copyright owners (ie IP addresses) will, in Justice Parker’s opinion, constitute “personal data”, the processing will be relevant and lawful for the purposes of preventing copyright infringement.

Justice Parker had more sympathy with the ISPs’ objection to bearing 25% of the costs incurred by Ofcom in carrying out functions under the contested provisions of the DEA. He ruled that these were administrative costs breaching Article 12 of the Authorisation Directive, and were therefore unlawful. (Nothing in the actual DEA will be changed, but the government will have to reapportion these costs. Note also that ISPs will still be required to pay 25 per cent of the costs of sending out letters to alleged infringers.)

Justice Parker then addressed the claim that the provision represented a disproportionate restriction on the free movement of services and/or the right to privacy and/or the right to free expression or to impart and receive information. He was reluctant to tamper with the legislation, saying: “the issues in this judicial review…are classically of the kind that Professor Lon Fuller famously described as ‘polycentric’ where it is hard enough for the legislature to seek to think through, and to weigh all the possible implications of a range of policy choices that are theoretically open, but it is nigh impossible for a judge…this Court must accord Parliament a wide margin of discretion in weighing the competing rights in this case.”

Despite this reticence, Justice Parker interestingly endorsed the DEA’s controversial “3 strikes and you’re out” regime, stating that it represented “a more efficient, focused and fair system than the current arrangements”. Justice Parker also noted that in any court actions against infringers the burden of proof will be on the rights holders to show that the accused is the party which has actually infringed copyright (as opposed to the party which has, for example, provided wi-fi access). He concluded by stating that he did not believe that any useful purpose would be served by referring to the European Court of Justice the questions of European Union law raised by the judicial review.

In contrast, BT and Talk Talk have announced that they are considering their options, and have not ruled out an appeal to the Court of Appeal, or a request that the Court of Appeal make a reference to European Court of Justice.

Personally, I’d disagree with Peter Bradwell from the Open Rights Group’s claim that “it is not a judgement about whether or not the Digital Economy Act is right in policy terms.” I think that close reading of the decision from paragraph 203 onwards leaves little doubt that Justice Parker tacitly approves of the reasoning behind the DEA.

The full text of the judicial review can be read here.

Digital Economy Act: The ISPs Strike Back!

I blogged last April about the Digital Economy Act (“the Act”), describing how it appeared to have been drafted without consideration or understanding of how the internet actually works, and how it also passed too much of the “pain” of online copyright infringement onto Internet Service Providers (“ISPs”).

Unsurprisingly, two of the UK’s biggest ISPs, BT and Talk Talk, complained vigorously about the Act from the outset, and last November they successfully sought permission for judicial review of the parts of the Act relating to online infringement of copyright. (Judicial Review is a procedure by which the courts supervise the exercise of public power. A person or organisation that feels that an exercise of such power by a government authority is unlawful may apply to the Administrative Court (a division of the High Court) for review of the decision and have it set aside.)

R. (on the application of British Telecommunications Plc) v Secretary of State for Business Innovation and Skills, took place at the end of last month. The ruling is not expected for at least another month, but various online accounts of the arguments presented by both the ISPs and the government have been written by interested parties who attended the Judicial Review in person.

It seems that the ISPs maintained their position that the Act conflicts with various aspects of European Union Law (including data protection laws).

The ISPs also struck at one of the government’s main justifications for the Act – that it is currently not possible to identify copyright online infringers. The ISPs argued that this justification was “illusory”, because using Norwich Pharmacal orders (and their Scottish equivalent) a rights holder can already force an ISP to identify who an IP address was assigned to. (This assertion is more or less correct.)

In defence the government lawyers apparently trotted out the hoary old warning about the perils of the judiciary meddling with primary legislation of Parliament, and rather more amazingly, the government also supposedly argued that because the Act does not yet have any legal effect on individuals or ISPs, there is little point in reviewing it right now. This is quite breathtaking – akin to saying “let’s not argue about whether I should turn this wheel until after we have crashed into that wall”!

The government’s response to the argument that tech savvy infringers could still avoid detection was to claim that only 0.2% of those using systems for sharing copyrighted material without permission were anonymising their IP address. If substantiated that is an interesting statistic – but I suspect that the Judge will be reluctant to invest too much faith in it, given that he earlier decried “howling” inaccuracies in some other government’s produced stats.

The net result of the Judicial Review, and other administrative and legal blocks on the Act, mean that it apparently won’t come into force until 2012 – if at all. Watch this space!

I wouldn’t give a for any other domain name

ICANN, the US quango responsible for Internet domain names yesterday approved a new domain name – .xxx. Unsurprisingly, the domain name is aimed at, and was sponsored by, the wonderfully euphemistic “adult entertainment industry”.

But owners of other businesses might wish to pay attention too.

As with other new TLD launches, to counter any cybersquatting there will be a short sunrise period for legitimate trade mark holders to register domain names before the domains go on general sale. However, unlike previous TLD launches, this sunrise period will have three phases – two for the adult entertainment industy, and one for other businesses.

New sunrise procedure
Usually, brand owners will have a large estate of domain names (covering various TLDs and spellings/phrasings) that all point to the same website. When a new TLD is launched, the brand owner will pre-register that domain name and simply add it to its estate.

The reason for the dual track process for .xxx registrations is that if a .xxx domain points to another website, then web-filtering software designed to block .xxx domains might also block the other website (on the basis that it is obviously linked). Clearly, this could cause problems for brand owners who defensively register the .xxx version of their domain name, only to find that their main website is also blocked.

To get around this, the registry responsible for running the new TLD, ICM Registry, will be allowing non-adult entertainment industry brand owners to pre-register their domain through a specific sunrise process. Once registered, the domain name will display a page which says that the domain name has been registered under ICM’s brand protection programme. This will ensure that there is no third party cybersquatting/brand hijacking, whilst also ensuring that there is no link through to the brand owner’s main website.

It is expected that the sunrise periods will commence in September this year, with the new domain name becoming publicly available in November. You can follow progress and pre-register at the ICM Registry website.

Of course, it is presumably possible for brands with a reputation for more risque advertising to utilise the new TLD for specific marketing campaigns. I wonder if Castlemaine Breweries will be one of them?

Interim report on the banking industry published

This week’s interim report by the Independent Commission on Banking caught the headlines in terms of the economic and regulatory implications of its recommendations and conclusions.

Beyond these headlines, though, there were some interesting views regarding the structuring of operational services for banking groups which, if adopted, will require careful thought and planning for banking operations and those dealing with them. This includes reviewing the sourcing arrangements and contracting structures currently used by banking groups for outsourcing and procurement of services, intra-group arrangements, and the way in which they hold and process data.

You can read more about this in our Legal Update.

Kate Bush and Ulysses

The James Joyce Estate has granted Kate Bush permission to use extracts from Ulysses in a song titled “Flower of the Mountain” – over twenty years after her original request was refused

The probable reason for the James Joyce Estate’s change of mind is that copyright in Ulysses is about to expire.  Under UK and EU copyright law, for editions published during the author’s lifetime, copyright in the work usually subsists for 70 years after the calendar year of the author’s death.  Joyce died in 1941, meaning that Ulysses will no longer be protected in the EU from 1 January 2012.

It’s debatable whether Bush ever needed the permission in the first place.  You infringe copyright in the UK if you copy a “substantial part” of a work. What is a substantial part has been the subject of some litigation (including the “Macarena” case!!).

But can a 100 word pop song ever copy a “substantial part” of a 10,000 word book?

Well  it is clear that “substantial part” is not calculated by reference to the percentage copied but rather the nature of what part was copied. So, for example, if you only copy 2% of a composition, but that 2% is the main melody or “hook” then that is likely to be a substantial part.

So my typical lawyer’s answer is “maybe”.

I can’t actually find a case about a song infringing the copyright in a book, which indicates that it’s quite unusual. Of course our Kate has some form here. Her biggest ever hit, the splendid Wuthering Heights, was based on Emily Bronte’s novel of the same name.  The song features lyrics which mention the names of characters from the novel, allude to the plot of the novel, and directly quote at least two sentences from the novel.  Luckily copyright infringement wasn’t a concern because copyright in Wuthering Heights had long since expired.

I also note that  Franz Ferdinand referenced Ulysses in song in 2009 without repercussions.

In addition to copyright Kate would also have to worry about the separate right of the James Joyce Estate to object to “derogatory treatment” of Ulysses under rights known as “moral rights” .  The exact nature of author’s moral rights vary from country to country, but in the UK the rights have been statutory protected since at least 1988, and also last for the same term as the work’s copyright.

Perhaps this evening I’ll put on The Red Dress (the Kate Bush record of course, not the item of clothing) and dig out my copy of Ulysses.  I’ve read all the explanations of what the book’s about, I’ve been to the Martello Tower at Sandycove, but I’ve still never got past Chapter 1!

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April 2011
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