Archive for the 'In the Media' Category

The SPL’s big bar bill (broadcasting rights)

Over the past couple of years I have written periodic updates regarding the rights of English (or English-based) pub landlords to use “foreign” decoders to screen football matches in their pubs.  Following the European Court of Justice (“ECJ”)’s decision as reported in Football Association Premier League v QC Leisure, in  my post from last February I offered this summary of the state of play:

The ECJ decided that national legislation banning the use of overseas (non-UK, but EU supplied) decoders amounted to an unlawful restriction on competition, and it was probable that only certain elements of Sky’s broadcast of match footage was protectable by copyright….Provided a landlord is using an EU decoder of some description, the consequences very much remain to be seen.  Perhaps the best way to summarise the current situation is to borrow some football terminology:

  1. Win – Use a decoder supplied by Sky
  2. Lose – Use a decoder without paying for it, or a decoder obtained from/that accesses the feed of a non-EU rights holder
  3. Draw – Use a decoder supplied by a EU (but non-UK) rights-holder

A new development in the pub landlords v football rights holders battle emerged on Monday, when it was reported that the Scottish Premier League (SPL) is facing a £1.7m damages claim over its legal bid to stop a pub group screening live matches via a Polish broadcaster.  The case in question is The Scottish Premier League Limited v Lisini Pub Management Company Limited

The background of the case

The story starts way back in 2006, when new Rangers boss and “fitness fanatic” Paul Le Guen was at war with Barry Ferguson, and present-day SPL player of the year Charlie Mulgrew was being “made into a man” (and what a hunky one!) at Wolves. 

The SPL took proceedings back in against Lisini Pub Management Co Ltd for unlawful broadcasts of Celtic games in autumn 2006 using a broadcast signal from Poland.  At the start of 2007 Lisini signed an undertaking saying that they would stop using foreign decoders.  They then used a Polish decoder to screen a match in April 2007.  The SPL then obtained interdict to prevent any more use of foreign decoders.  And the case was then sisted to see what the ECJ had to say about the use of decoders supplied by EU rights-holders. 

Of course, as described above, the ECJ decided that the use of foreign decoders was probably OK, and Lisini Pub Management Co Ltd is now counterclaiming against the SPL, seeking damages of £1,761,749. 

The decision

In the Outer House of the Court of Session Lord Woolman refused to dismiss Lisini’s counterclaim, concluding:

 In my view the English Premier league case has an important bearing on the present action. The material facts are virtually identical. The ECJ gave clear answers to the precise questions referred to it. Its decision means that subscribers in member states are entitled to access broadcast signals from other member states. An EC citizen living in (say) Germany should not be prevented from obtaining a signal from Sky, BBC, RAI, Nova or Polsat.

The SPL sought to argue that the ECJ arrived at its conclusions without any detailed investigation of whether banning the use of overseas (non-UK, but EU supplied) decoders would actually have an anti-competitive effect on the market for live football broadcasts.   Lord Woolman found this argument “unconvincing”. 

What’s not reported amongst the “SPL face £1.7m claim” headlines is that I think Lisini will have to work quite hard to actually prove such a huge loss.   It will be interesting to see how they reach that figure – it’s not exactly “small beer”.


Leveson, Royal Charters and the future of press regulation in Scotland

On Monday the three main political parties in Westminster agreed on a plan to implement the Leveson Report’s press regulation recommendations in England and Wales.

The plan
The agreed approach involves a Royal Charter which will establish a new regulator for the press, and amendments to the Enterprise and Regulatory Reform Bill (to help entrench the Royal Charter so that it can only be dissolved by a two-thirds majority vote of both the House of Commons and also House of Lords) and the Crime and Court Bill (so that all “relevant publishers” who do not sign up to the new regulator will pay extra or exemplary (punitive) damages for libel and breaches of privacy). 

The Royal Charter is surprisingly difficult to find, but here is a link.  It remains to be seen whether the new plan will gain widespread acceptance.

Labour leader Ed Miliband has claimed that:

What we have agreed is essentially the royal charter that Nick Clegg and I published on Friday. It will be underpinned by statute. Why is that important? Because it stops ministers or the press meddling with it, watering it down in the future.

Tough talking, but what exactly does Ed Miliband mean when he says “essentially the royal charter”?  What might end up being different?

Well, according to the Royal Charter as drafted at present, a “relevant publisher” means:

a person (other than a broadcaster) who publishes in the United Kingdom:

i) a newspaper or magazine containing news-related material, or
ii) a website containing news-related material (whether or not related to a newspaper or magazine)

It’s an alarmingly wide definition, which could capture not just foreign news websites but also bloggers and perhaps Tweeters. It doesn’t entirely correspond with Culture Secretary Maria Miller’s assertion that:

a publisher would have to meet the three tests of whether the publication is publishing news-related material in the course of a business, whether their material is written by a range of authors – this would exclude a one-man band or a single blogger – and whether that material is subject to editorial control.

By way of example, here on Brodies Techblog we have a team of bloggers, we publish news-related material in our blogs (in that we comment on topical legal issues), and our posts are subject to editorial control before they are published. Did Cameron, Milliband and Clegg have blogs like this in their sights when agreeing the draft charter? Should a blog like this be treated differently from the blog of a individual, but high profile and influential blogger? It’s not clear.

What is clear is that there is still work to be done on the drafting of the charter.

Should the press be regulated like broadcasters?
An interesting – but often overlooked – aspect of the press regulation debate is that broadcasters are regulated by communications regulator Ofcom.

The traditional freedom of the press (particularly in comparison to broadcasting) has complex roots and justifications, including the practical issue of scarcity of broadcast spectrum, which has led to far stricter regulation of television and radio broadcasters.

As a consequence of Ofcom’s regulatory control over broadcasters, broadcasters’ websites are specifically excluded from the Royal Charter definition of “publishers” set out above.  These websites will continue to be regulated by Ofcom.

The Scottish dimension
Press regulation is a devolved competency of the Scottish Parliament.  Alex Salmond has said the concept of a UK-wide regulator backed by Royal Charter may be “an idea worthy of consideration”.

It appears that the First Minister is keen to distance himself from the report produced of the Expert Group on the Leveson Report in Scotland, better known as the “McCluskey Report” (in reference to the Group’s chair, Lord McCluskey), which was published three days before the Westminster announcement.

The recommendations were widely derided last week as being draconian and having gone too far.

Allan Rennie, editor-in-chief of Media Scotland, said:

it’s not just about the press, it’s about anyone in Scotland who dares to express an opinion.

Analysis of a Report and recommendations which appear stillborn are perhaps academic, but it’s not entirely easy to reconcile some of the more vigorous attacks on the McCluskey Report with the actual content of the Report’s proposed Draft Press Standards (Scotland) Bill.

For example, one of the most widely repeated claims over the weekend was that the proposed draft Bill would apply to any publication which can be viewed from Scotland (in other words, anything on the internet, regardless of where the author of the content in question is located). While it’s correct that in the case of allegedly defamatory publications posted on the internet it is generally accepted that “publication” takes place where the article is downloaded, the proposed draft Bill didn’t explicitly refer to this understanding of “publication”.

It referred instead to a publication which “takes place in Scotland”. Further, paragraph 20 of the McCluskey Report specifically stated that the proposed draft Bill was written in “plain English”. (On the other hand, it does seem curious that the proposed draft Bill dispensed with the “publishes in the United Kingdom” wording in several of the draft bills that have been in circulation recently, including Hacked Off’s “Proposed Media Freedom and Regulatory Standards Bill”.)

Differences under the Scottish legal system
Less ambiguous was the McCluskey Report’s conclusion that

we have reached the view that there is no practical alternative to making [the new regulation system] compulsory for all news-related publishers.

As discussed above, the new plan agreed by the three main parties in Westminster does not provide for compulsory opt-in, but instead envisages exemplary damages for publishers who fail to sign up to the new regulator.

However, because damages under Scots civil law are purely compensatory, the concept of exemplary or punitive damages is unknown in Scotland. This is explained in further detail in the Scottish Government’s “Carrots and Sticks” Leveson Briefing Note.

There are also other aspects of Scots Law which would require consideration should the Royal Charter plan be followed, including arbitration and court expenses (in Scotland “costs”).

However, none of these problems would be insurmountable, and the McCluskey Report itself noted at Paragraph 10:

Scottish legislation could provide for a separate Scottish Recognition Body. We do not consider that there is anything in such a proposal that would prevent the formation of a single UK-wide Regulatory Body if that as considered appropriate”.

Alex Salmond has said that he shall continue cross-party talks on press regulation, and report to the Scottish Parliament after Easter. The Scottish Government has separately sought clarification from the UK Government on the impact of the proposed Royal Charter in Scotland.

For the timebeing, however, the future regulation of the press and the web in Scotland (or available in Scotland), and its scope, remains unclear, leaving publishers in the UK uncertain as to whether they will be subject to two different regimes or a single, harmonised, regime.

We will continue to follow this debate as it evolves.


Increased drug testing in the UK?

A consultation by the UK Government and the UK Intellectual Property Office has found widespread support for an extension to what is known as the “bolar” exemption. This exempts certain drug testing/research activities from liability for patent infringement in the UK. For many years the current UK exemption was seen as narrower and less liberal than most other European countries with the fear that this meant that more and more clinical research trials were taking place outside the UK due to the fear that those instructing and/or carrying out the research faced liability for patent infringement in the UK in relation to tests related to new or non generic drugs.  This was claimed to have resulted in a depleted skill base and increasing delays in getting new drugs to the market in the UK. 

Although no concrete assessment has been carried out there is a legitimate concern that the current position is placing the UK at a competitive disadvantage in the field of clinical research trials resulting in significant financial loss. Clearly a key issue in the assessment of where and who to instruct to carry out such trials will be the potential risk of liability for patent infringement. It is not surprising then that 94% of responses supported a wider exemption.

The consultation results conclude that Section 60(5) of The Patents Act 1977 should be widened and amended to include an exemption from infringement for activities involved in preparing or running clinical or field trials involving innovative drugs for the purpose of gaining regulatory approval in any country (i.e. not just for obtaining drug or regulatory approval in the UK or EU). It is likely that this will also extend to health technology assessment activities for example in compiling data to support assessment by organisations such as The National Institute for Health and Clinical Excellence (NICE).

The next step is legislative reform and given the clear support from both government and the related pharmaceutical and clinical research industries it is anticipated that the revisal could be in place in 12 months time.  At a time when there are wider initiatives such as the Patent Box (offering a very attractive rate of tax in the UK as from April 2013 for revenue generated from qualifying patents) aiming to encourage more innovation and investment in research and development in the UK, this proposal is to be welcomed. Hopefully this will result in more home based trials which should benefit pharmaceutical and life sciences organisations as well as clinical research organisations – all of whom are key players in the Scottish economy.

Robert Buchan


Kim Dotcom and Mega: Legal FAQs

You’re probably familiar with Kim Dotcom, the German-Finnish internet entrepreneur who currently resides in New Zealand, and is being pursued by the US Department of Justice regarding accusations of a “Megaupload” business empire built on rampant infringement of US copyright laws and the Digital Millennium Copyright Act. 

Much of what is currently being written about Mr Dotcom simply churns trite facts without actually offering much in the way of explanation.  I thought a blog which answered some of the main questions would be helpful.

How does the US have jurisdiction over Megaupload?
Why would Megaupload Limited, with its registered office in Hong Kong, be subject to US copyright laws and to the Digital Millennium Copyright Act?  The answer is that Megaupload deliberately carried out business in the US and with US residents.  The site leased more than 1,000 servers in North America (525 were at Carpathia Hosting, which received $13 million from Megaupload).   

Wired provides great analysis here, but the general principal is that individuals and companies can’t gain the benefits of doing business in a jurisdiction without complying with its laws and being subject to its enforcement efforts – assuming that the jurisdiction can gets its hands on you in “terrifying real life”. Which brings us to extradition!

Will Dotcom be extradited?
Under New Zealand’s Extradition Act, any request for extradition from New Zealand must relate to an “extraditable offence” which is defined as an offence that:

  • Carries a maximum penalty of not less than one year’s imprisonment in the requesting country; and
  • Involves conduct that would be regarded as criminal had it occurred in New Zealand, and would have carried a similar penalty

Unfortunately for Kim Dotcom, breach of copyright is just as illegal in New Zealand as it is in the US. 

Part 3 of the Extradition Act also provides a mechanism by which the requirements to provide evidence establishing a prima facie case in support of the extradition request can be replaced by the simpler “record of the case” procedure. This mechanism is available to select countries, including the US.  (A guide to New Zealand extradition prepared by the New Zealand Ministry of Foreign Affairs and Trade can be read here.)

Nevertheless the US is struggling to extradite Dotcom and is also struggling to make its case against Megaupload and the “conspirators” (Dotcom and various associates).  Dotcom actually received an apology from the Prime Minister of New Zealand for illegal surveillance.  A helpful timeline of the various legal twists and turns can be read here.

What’s the new service that he’s offering?
Kim Dotcom has launched a new service, Mega, which he says is distinct from Megaupload, and which he also insists is legal.

Mega is offering all users 50GB of free cloud storage, making it a potentially compelling competitor to the likes of Dropbox (2GB free) and SkyDrive (7GB free) — if you’re not worried about the service getting shut down like its predecessor.

Mega offers client-side encryption, meaning that (arguably) even Mega doesn’t know what is on the files that clients upload.  The only way a client file can be decrypted is if the client makes both the encrypted file and also the private encryption key publicly available.  This would presumably breach acceptable use of Mega, and Mega also has in place a take down process similar to what other content sharing websites (such as YouTube) offer, and which is required under US law in order for the website operator to qualify for “safe harbor” protection from copyright infringement claims.

Of course, the predecessor site Megaupload had a take down process as well, so this leads us to the next obvious question.

Is Mega legal?
Dotcom still insists that Megaupload was legal, despite the US Department of Justice’s claims that Megaupload’s overall operating model was geared towards criminal intent, because:

  • the vast majority of users did not have any significant long term private storage capability;
  • continued storage was dependent upon regular downloads of files occurring;
  • files that were infrequently accessed were usually rapidly removed, whereas popular downloaded files were retained;
  • only a small portion of users paid for storage subscriptions, meaning that the business was dependent on advertising revenue, and displaying adverts to downloaders;
  • an incentive programme was adopted encouraging the upload of “popular” files in return for payments to successful uploaders; and
  • (potentially most damning of all) there was a comprehensive take down process in use for child pornography and terrorist propaganda, but this same take down process was not deployed to remove infringing content.

Initial impressions would suggest that Mega does not share these strategies.  Certainly Dotcom would have to be incredibly foolish to not apply the take down  process this time around.  In fact, it’s perhaps a credit to Dotcom’s slick advertising/media persona, and Mega’s attractive user interface, that initial bloggers thought Mega would “dismantle copyright forever”.

As Jonathan Bailey succinctly puts it (in by far the best analysis of Mega which I have read):

where Megaupload provided incentives and tools that encouraged users to upload (often illegal) files for mass download, Mega  does not and in fact has a structure and service that puts barriers up against mass downloading of files, legal or otherwise.

What is certain is that we can expect plenty of fun and games over the next few months. 

When Mega launched this week as “The Privacy Company” their claims of super-security were bound to come under the highest levels of scrutiny (some cloud providers definitely perform better than  others in the security stakes – see my colleague Leigh’s analysis).  Yesterday the story was that Mega’s encryption was substandard, today the story (which is emerging as I write) appears to be some form of encryption prize – Kim Dotcom himself has just Tweeted:

We welcome the ongoing #Mega security debate & will offer a cash prize encryption challenge soon. Let’s see what you got ;-)

Who knows what tomorrow will bring?


Getting tangled in The Ivy

 A recent dispute concerning the use of the name “THE IVY” by a restaurant in Glasgow has served as a useful reminder of the value in carrying out trademark clearance searches before starting to trade.

Last year, the owners of “Glasgow’s Ivy Bar and Restaurant” received a letter threatening it with trade mark infringement from the owners of The Ivy, the famous restaurant in London, which is owned by Caprice Holdings.  The Glasgow restaurant was forced to change its name and according to The Herald the estimated costs and losses associated with this rebrand are around £30,000.  £20,000 of this is attributed to lost business and £10,000 was incurred in creating a new website, signage and other rebranding for the Glasgow restaurant. 

The law on trade mark infringement

In the UK, a registered trade mark is infringed if a person uses without the owner’s consent in the course of trade (i) an identical mark for identical goods/services and/or (ii) a similar or identical sign is used for similar or identical goods/services which results in actual or likely confusion amongst customers as to the origin of the goods/services and/or (iii) where use of a sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of a famous trade mark.

Caprice Holdings could have had claims against the owners of the Glasgow restaurant under all three heads.  UK case law states that descriptive or semi descriptive elements such as the words “Glasgow”, “Bar” and “Restaurant” are not considered to be part of the sign or real brand being used.  On that basis Caprice Holdings could have claimed trade mark infringement for identical sign/identical services being provided under the key brand name the “IVY”. Even if that was not the case and the trade marks were not found to be identical, the similarity of the respective trade marks and the fact that they are both are used to provide identical services means that there was a strong likelihood of confusion.  Any differences between the respective trade marks are not likely to be sufficient to distinguish Glasgow’s Ivy Bar and Restaurant from The Ivy.  In addition to those arguments, it is quite possible that Caprice Holdings would be able to show that THE IVY is a famous trade mark with a very well known reputation for restaurant and bar services and that by using “IVY” in “Glasgow’s Ivy Bar and Restaurant” they are seeking to ride on the coattails of the famous trade mark.  All such activities could have supported a claim of trade mark infringement.  In addition there could have been a claim of passing off to protect the unregistered trade mark/goodwill built up in THE IVY.  The existence of the trade mark registration however would have made the claim easier to establish.

Prevention is better than cure

This dispute serves as a useful reminder that prevention is better than a cure when it comes to trade mark infringement.  Businesses should carry out appropriate clearance searches before selecting and using a brand or trading name and it could save them having to carry out a time consuming and costly rebrand further down the line.  Although not always fully comprehensive a quick check of the free online trade marks database should have revealed that Caprice Holdings Limited owns a community trade mark (number E6057517) for THE IVY  which is registered in the UK for amongst other things, restaurant, bar and catering services.  Even a simple Google search for “IVY” brings up the London restaurant as the first search result and it is likely that anyone operating in the restaurant scene would be aware of the famous reputation of The Ivy.

If you have any concerns about a business or trading name that you or your company is using or plans to use and you wish advice on this please contact one of our IP team.  One of the options we can discuss with you is our IP Audit Toolkit which can help to identify your intellectual assets and develop strategies to use them.

Mark Cruickshank

Does your social media competition follow the rules?

A “witty” epigram (which I dreamt up all by myself) is: “competition laws are boring, laws about competitions aren’t”.  I really like reading about how competitions are regulated, with the added bonus that you also gain some interesting insights into companies’ marketing strategies and profit margins.

In recent years I have noticed that the relative ease of launching promotions on social media sites such as Facebook and Twitter has resulted in the internet being awash with competitions which fail to meet the applicable rules and regulations.

Although social media competitions are usually just a fun way of reaching out to potential customers, the consequences of failing to follow the rules – or even just failing to apply the rigour traditionally administered to “offline” competitions – can be distinctly less jolly.  For example, in November Boots ran a competition on Facebook and subsequently accidentally informed all 9,000 entrants that they had won a trip to Barcelona.  It’s thought the company was forced to issue £90,000 worth of apologies.

The CAP Code
It’s important to remember that all prize promotions – whether online or otherwise – must adhere to the Advertising Standards Agency (ASA)’s CAP code (the Government-approved Code of Non-Broadcast Advertising, Sales Promotion and Direct Marketing).

In the last couple of years the ASA has published plenty of rulings regarding non-compliant online competitions (see for example the recent “118 118” ruling) whilst also maintaining a public list of non-compliant online advertisers.

Although the ASA punishments are normally limited to a bit of bad publicity, and a warning of “don’t do it again”, in theory its sanctions can extend to revocation of trading privileges (for example bulk mailing discounts) and referral to the Office of Fair Trading.

There’s not space here to list all the applicable CAP Code competition rules, but here are some really important ones:

  • don’t run what the Gambling Commission would deem an “illegal lottery” (punishable by fines and/or imprisonment); 
  • avoid running an illegal lottery by including a “skill” element (which can be part of a competition run, for example, where the competitor has to purchase a “promotional pack” of goods, providing the “promotional pack” doesn’t cost more than a “normal” pack);
  • alternatively, avoid running an illegal lottery by offering free entry (or where one route to entry is not free, at least one alternative and equally publicised “free” route to entry which costs no more than what it would normally cost to use that method of communication));
  • if you are including a skill element, remember that the law applying to participants from Northern Ireland is slightly different (so participants from Northern Ireland should still be offered a free entry route even if participants from the rest of Great Britain have to purchase, for example, a “promotional pack”).
  •  always include a closing date (and don’t change it);
  • always state what the prize actually is;
  • clearly state any restrictions (for example age; geographical location);
  • include details of the promoter;
  • tell people how winners will be informed;
  • always make it easy to find the applicable terms and conditions; and
  • ensure that any prize draw is conducted in accordance with the laws of chance, either by using a computer process that produces verifiably random results (consider using, or by an independent person, or under the supervision of an independent person.

If in doubt, bear in mind Rule 8.2 of Section 8 (Sales Promotions) of the CAP Code:

Promoters must conduct their promotions equitably, promptly and efficiently and be seen to deal fairly and honourably with participants and potential participants. Promoters must avoid causing unnecessary disappointment.

Social media sites have their own rules too
Once compliance with the CAP code has been addressed, social media sites’ own rules must be complied with.  The big risk here is that if either Facebook or Twitter don’t like your competitions, then they can disable or permanently delete your accounts.  (Anecdotal evidence suggests that deleted Facebook accounts are rarely restored.)

Twitter’s guidelines are fairly straightforward, Facebook’s less so. 

In fact, the Institute of Promotional Marketing is currently working with both Facebook and Twitter to develop guidelines for brands who wish to run social media competitions.

Nevertheless, it’s still possible to read Facebook’s Promotions Guidelines and Twitter’s Guidelines and identify some broad do’s and dont’s.

On Facebook:

  • Don’t post a competition as a Status Update and ask “friends” to act upon it.  Facebook doesn’t like corporate/marketing content where social content should be, and prohibits the use of any “indigenous functionality” (Liking, Sharing, Commenting, checking-in, uploading photos to a Wall or responding to a poll/questionnaire) as a means of entering a competition.  Facebook instead recommends hosting competitions on externally hosted applications embedded into a Page App tab on your Facebook page.  (Upon reflection, the prohibition on using “Like” to enter is quite sensible – how could you tell the difference between someone just liking the page because they like your brand, or someone liking it to enter the draw?)
  • Facebook does allow you to stipulate that only people who “Like” your page can enter the competition. You are also allowed to limit people entering your competition to those who have checked into your location or who are using your Facebook app.
  • Ensure that the applicable terms and conditions acknowledge that Facebook is not associated with your competition in any way and that any personal information collected from the entrants is being sent to your company.  (In my experience a lot of terms and conditions relating to Facebook competitions fail to include this vital disclaimer.)
  • After a competition winner has been chosen, contact them off Facebook. (Make sure to collect contact details during the registration process so you don’t have a problem with this.)  You can’t use Facebook messages, chat, or posts to contact the winner.

On Twitter:

  • Discourage competitors from posting the same Tweet repeatedly.  (Competitions saying “whoever retweets this the most wins” are definitely a bad idea).  Twitter dislikes multiple Tweets because they damage the quality of searches.  The best solution is to state that multiple entries in a single day will not be accepted.
  • Encourage users to include an @reply to you in their Tweet so you can see all the entries.  Many of the complaints that reach the ASA regarding Twitter competitions involve suspicions that entries haven’t been received.  Relying on a public search may not show all relevant Tweets.

And remember that the CAP code and Gambling Commission rules outlined above will still also apply, so think about how you ensure that your competition does not accidentally become an illegal lottery.

If you have any questions about running a social media promotion, please get in touch


Santa’s “Naughty List” and data protection compliance

Back in December 2010 Martin offered some wonderful advice to Santa Claus regarding his data processing obligations, and provided some further thoughts yesterday on how the proposed draft data protection regulation might affect Santa’s data processing activities.

With under a week to go until Christmas Day I thought it would be good to offer Santa some further advice about that Naughty List that his mince spies have spent all year compiling.

Complying with the First Data Protection Principle
Santa’s Naughty List contains lots of personal data about misbehaving children, and the First Data Protection Principle of the Data Protection Act 1998 (the “DPA”) provides that personal data shall be processed “fairly and lawfully”. In particular, personal data should not be processed unless at least one of the conditions in Schedule 2 is met.  (And further, if the personal data involved is “sensitive” – for example concerning the “commission or alleged commission of any offence” (!) – then at least one of the conditions in Schedule 3 also has to be met too).

Santa has to tread carefully here (not easy after gorging on so much sherry and mince pies!) because the Information Commissioner has provided clear guidance that enticing children to divulge personal data with the prospect of a prize (or similar inducement) is likely to breach the requirements of the Data Protection Act.

For children of a certain age (11 or under), Santa should ensure that parental/guardian consent for any disclosure of personal data has been obtained.  (This is potentially a good result for Santa, as a naughty child would have been unlikely to consent to Santa processing his/her data and therefore limiting his/her prospects of presents.)

But before Santa heads down the chimney, he also has to comply with Paragraph 2 of Part II of Schedule 1 to the DPA, which provides that for the purposes of the First Data Protection Principle, personal data isn’t processed fairly unless the data subject is provided with:

  • the identity of the data controller;
  • if he has nominated a representative for the purposes of the DPA, the identity of that representative;
  • the purpose or purposes for which data are intended to be processed; and
  • any further information which is necessary, having regard to the specific circumstances in which the data are or are to be processed.

Complying with the Fourth and Fifth Data Protection Principles

Having dealt with the First Data Protection Principle, we then arrive at a pair of subordinate clauses.

The Fifth Data Protection Principle requires that data is not kept for longer than is necessary.  It’s virtually impossible to provide an easy answer as to how long is truly “necessary”, but Santa should consider:

  • the current and future value of the information;
  • the costs, risks and liabilities associated with retaining the information; and
  • the ease or difficulty of making sure it remains accurate and up to date.

Ensuring the data is accurate and up to date is actually the Fourth Data Protection Principle. In order to comply with this principle, Santa should:

  • take reasonable steps to ensure the accuracy of any personal data he obtains;
  • ensure that the source of any personal data is clear;
  • carefully consider any challenges to the accuracy of information; and
  • consider whether it is necessary to update the information.

Keeping the Naughty List up to date must be a huge undertaking, especially when candidates even appear from heavenly sources.

Of course, Santa wouldn’t be the first individual to have compiled a blacklist that potentially breaches the DPA. 

You may remember that in 2009, a secret blacklist of construction industry workers made the headlines.  That blacklist was found by the ICO to have been established and maintained in contravention of a number of the Data Protection Principles described above.

The exact nature of the information held is still coming to light, and the ICO is still trying to deal with the fallout.  The private investigator who compiled the blacklist was fined £5,000 – the maximum fine available at that time for persistent breaches of the DPA. 

It’s likely that if such a blacklist was discovered today it would be deemed to be a deliberate breach of the DPA (or at best risking a breach likely to cause substantial damage or distress), with the result that whoever compiled it could face a monetary penalty of up to £500,000.

This isn’t to say that blacklists are impossible to maintain.  For example, Stockholm football club Djurgården has a “hooligan register” (though everybody on it has to be informed, and their details immediately deleted if they successfully contest their inclusion). 

So, if Santa follows our guidance above then he might keep the Naughty List on the right side of the law.  Not that he’s probably too bothered – if you spend all night out sleighing, then you’re probably more worried about the police then the ICO!
Merry Christmas!


Significant changes to Scottish IP Court Rules

The Scottish IP Dispute Resolution Regime – Big Changes AND all for the Better

Significant changes to the Scottish Court of Session Intellectual Property Action rules will come into force on Monday 19 November 2012.  These have been driven by the desire of the Scottish IP judges and Scottish IP practitioners to improve Scotland as a forum for resolving IP disputes.

We believe that these new rules are the most significant changes since the inception of the relevant rules dealing with Intellectual Property Actions in the Court of Session.

We have prepared an e-bulletin setting out the changes that have been made, which can be found here.

For further information please get in touch with your usual Brodies contact or Gill Grassie/Robert Buchan who are both partners in our IP Dispute Resolution team.  


Gill GrassieRobert Buchan



Court of Appeal confirms Apple must publish non-infringement decision

We have blogged a couple of times in the last few months on the Samsung v Apple case in England in which Samsung obtained a Court order that its Galaxy tablets 10.1, 8.9 and 7.7  did not infringe Apple’s registered design for the i-Pad.  Most recently, I wrote about the order which Samsung obtained from the High Court which forced Apple to publicise the decision of non-infringement on its website and in the press.  As I mentioned at the end of that blog, Apple appealed this decision and as a result the order to publish was suspended pending the Court of Appeal’s ruling.

The Court of Appeal has now issued its decision in this case (a copy of the decision can be found here).  Essentially it upheld the High Court’s ruling of non-infringement and importantly it also upheld the order, albeit in refined terms, on which Apple had to publicise the decision.  The Court of Appeal considered the publication issue afresh because there was a considerable amount of new material which had come to light since the original decision had been issued and whilst it reached the same conclusion it did so on different grounds. 

Subsequent to the initial High Court decision of non-infringement, which applied throughout Europe, Apple applied to a German court and obtained an order which prevented Samsung selling its Galaxy Tab 7.7, also effective throughout Europe.  The Court of Appeal said that this caused confusion in the market place and customers were left uncertain whether or not they were purchasing an infringing product, and if they did, whether it would be supported.  Interestingly, the Court of Appeal said that given the massive publicity of the High Court’s original finding (in which the headline that Samsung’s products were ‘not as cool’ as the Apple ones was seized upon by the media) it would not have granted the order for publication had it not been for the confusion caused by the German court’s decision.  This was what made it necessary.  The Court did however vary the terms of the High Court’s order and said that it would be sufficient for Apple to publish on its UK website a link entitled “Samsung/Apple UK judgment”, which led to a short notice summarising the High Court’s decision, for a period of one month.  It also required Apple to advertise the decision in the press, including the Guardian and the Financial Times, in a font size of not less than Arial 14 and on a page before page 6 of those publications.

No such publication has yet been made by Apple and so the question now remains whether it will further appeal and seek suspension of the Court of Appeal’s decision to the Supreme Court.  We will continue to monitor this case for further developments with eager anticipation!


Mark Cruickshank

OFT finds that websites are continuing to fall short on consumer protection laws

The Office of Fair Trading (OFT) has recently published the results of its annual survey of over 150 websites to check whether or not they complied with consumer protection law.

The survey, which included the 100 top online retailers and most popular clothing sites, had some interesting results.

Key areas of non-compliance
Amongst the areas of concern, the OFT noted the following:

  • 33% of sites that provided information on returns placed unreasonable restrictions on consumers. For example, by only accepting returns in their original packaging.
  • The law – under the Consumer Protection (Distance Selling) Regulations (which apply to most contracts “concluded at distance – for example, over the Web or by phone/mail order) consumers have the right to inspect the goods that they have purchased and have a seven working day ‘cooling off period’ in which they can return the goods, though there are some exceptions to this, such as where the goods are perishable or customised. If goods need to be returned in their original packaging, un-opened, then it is difficult for consumers to inspect the goods to check if they are fit for purpose. It’s also important that the return period runs from the correct date, and isn’t subject to other unreasonable conditions. 

  • 62% of sites had no email contact address.
  • The law – the E-Commerce Regulations set out certain information that websites should contain, such as the registered or principal office of the organisation, its VAT number, if UK VAT registered, and a contact email address.

  • 24% of websites notified consumers of unexpected additional charges at checkout.
  • The law – The reach of the Advertising Standards Agency (ASA)’s remit now extends to advertising and promotions on an organisation’s own website. One of the main consequences of this is that pricing information should comply with the ASA’s CAP code – in particular, pricing should be transparent and not misleading. Websites should display total prices payable – if you can’t opt out of a charge then it’s not additional. Similarly, if most of the customers of a website pay VAT then prices displayed should be VAT-inclusive. For more information on ASA’s advertising rules see this earlier TechBlog post.

Website health check
The survey did show that the general awareness by website operators of their basic legal obligations in relation to trading online is improving. 

However, while the survey is a useful indicator of compliance with certain aspects of the law, it focussed only on the “fair trading” aspects of consumer protection law. It doesn’t look into some other key areas of legal compliance – for example what organisations do with the personal information of their customers.

Fair trading rules are just one aspect of a wider matrix of rules applying to trading online. The problem is that there are a lot of different aspects to website compliance and these will vary depending on whether or not the site is a trading website or whether it deals with consumers rather than businesses. Knowing exactly what is required can be complicated.

Brodies can help by carrying out a health check of your website, to audit its compliance with the key legal requirements and recommend changes that you should make to comply with the applicable laws. If you are interested in this, please get in touch.

Leigh Kirktpatrick

Twitter: @BrodiesTechBlog feed

December 2017
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